PTAB

IPR2014-01062

Hamilton Storage Technologies Inc v. University Of Virginia Patent Foundation

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Automated Ultra-Low Temperature Storage and Retrieval System
  • Brief Description: The ’762 patent discloses an automated apparatus for storing and retrieving containers of thermolabile materials, such as biological samples, at ultra-low temperatures. The system uses an interchange mechanism within a freezer compartment to move containers between storage devices and a climate-controlled chamber, which acts as an airlock to prevent temperature fluctuations and frost accumulation.

3. Grounds for Unpatentability

Ground 1: Obviousness over Coelho in view of Knippscheer - Claims 32 and 34 are obvious over Coelho in view of Knippscheer.

  • Prior Art Relied Upon: Coelho (Patent 5,638,686) and Knippscheer (Patent 5,233,844).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Coelho, which describes a cryogenic robotic storage device, discloses nearly all limitations of claim 32. Specifically, Coelho taught a sealed freezer container with multiple concentric annular storage racks, an access portal (climate-controlled chamber), a robotic arm (interchange mechanism), and a translating device (a sled moving along a slit) to align the robotic arm with the various storage racks. Petitioner contended the only element missing from Coelho was a specific "climate system for controlling the climate" of the access chamber. This element, Petitioner asserted, was expressly taught by Knippscheer, which discloses using a dry gas purge and coolant vapor to evacuate humid air from its antechamber. For claim 34, Petitioner argued Coelho’s annular storage racks are stationary.
    • Motivation to Combine: Petitioner asserted a person of ordinary skill in the art (POSITA) would combine the references because they pertain to highly similar automated freezer systems and address analogous problems of maintaining a stable, cold-preserving environment. Critically, Petitioner noted that Coelho expressly references Knippscheer publications in its discussion of the state of the art, providing a direct motivation to combine their teachings.
    • Expectation of Success: A POSITA would have a reasonable expectation of success in modifying Coelho’s access portal with the climate control system from Knippscheer. Applying a known dry gas purge to an access chamber to better control humidity and temperature was argued to be a predictable and straightforward improvement.

Ground 2: Obviousness over Knippscheer in view of Kumada - Claim 32 is obvious over Knippscheer in view of Kumada.

  • Prior Art Relied Upon: Knippscheer (Patent 5,233,844) and Kumada (Patent 4,928,502).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner argued that Knippscheer discloses most elements of claim 32, including a cryogenic storage apparatus with a freezer compartment, a storage device (annular shelves), a climate-controlled antechamber with a climate control system, and an interchange mechanism (lifting arm and transmission assembly). However, Petitioner contended Knippscheer only discloses a single storage device and lacks a translating device to move the interchange mechanism between multiple storage devices. Kumada, which discloses an automated system for storing blood, was argued to supply these missing elements by teaching a plurality of storage cases (a second storage device) and a manipulator that moves along a rail (a translating device) to access any of the cases.
    • Motivation to Combine: Petitioner argued a POSITA would be motivated to combine the teachings of Knippscheer and Kumada to expand the storage capacity of the Knippscheer system. Both references address the automated low-temperature storage of biological materials, and modifying a system to increase capacity is a common and predictable design goal.
    • Expectation of Success: A POSITA would have a reasonable expectation of success in incorporating Kumada’s established design for multiple storage units and a translating robot into the Knippscheer system. Petitioner argued this would be a straightforward integration of known components to achieve the predictable result of expanded capacity.

  • Additional Grounds: Petitioner asserted an additional challenge for claim 34 (requiring a "stationary" storage device) as obvious over Knippscheer in view of Kumada and ordinary skill, arguing that using a stationary rack is a simple and well-known design choice. An alternative ground (Ground 4) was also presented, arguing that if the preamble's "ultra low temperatures" phrase is deemed limiting, the claims would still be obvious over the primary combinations in view of the ordinary knowledge of widely available ultra-low temperature freezer systems.

4. Key Claim Construction Positions

  • "for storing containers at ultra low temperatures" / "a freezer compartment": Petitioner argued the preamble phrase "for storing containers at ultra low temperatures" merely states an intended use and does not limit the claims to a specific temperature range (e.g., -50°C to -90°C). They contended the term "freezer compartment" should be interpreted broadly, consistent with its use in the art and the patent specification, which describes operation at a wide range of temperatures.
  • "interchange mechanism": Petitioner proposed this term should be given a broad, functional construction as it is not a standard term of art and the patent provides no specific structural definition. Their proposed construction was any mechanical device or set of devices capable of performing the claimed functions of giving, receiving, or passing containers between itself and the climate-controlled chamber or storage device.
  • "translating device disposed in said freezer compartment": Petitioner argued this term should be construed as a machine, tool, or contrivance located within the freezer compartment for the specific purpose of moving the interchange mechanism to align with two or more storage devices.

5. Key Technical Contentions (Beyond Claim Construction)

  • Placement of Translating Device Motors: Petitioner contended that in cryogenic systems, it is a common and obvious design choice to place motors for translating mechanisms outside the freezer compartment to avoid the harsh, cold environment where they may not function properly, as disclosed in Coelho. Petitioner argued that even if a designer chose to place the motor inside the freezer, this would be an obvious and known alternative, not an inventive step.

7. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of claims 32 and 34 of the ’762 patent as unpatentable under 35 U.S.C. §103.