PTAB

IPR2015-00001

ABS Global, Inc. v. INGURAN, LLC

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1. Case Identification

2. Patent Overview

  • Title: PHOTO-DAMAGE METHOD FOR SORTING PARTICLES
  • Brief Description: The ’987 patent discloses methods and apparatuses for sorting animal sperm cells using flow cytometry to create enriched populations with desired characteristics. The technology is primarily aimed at preselecting the sex of animal offspring for the livestock industry by sorting sperm based on DNA content (i.e., X vs. Y chromosomes).

3. Grounds for Unpatentability

Ground 1: Anticipation over Keij - Claims 1, 2, and 5-8 are anticipated under 35 U.S.C. §102 by Keij.

  • Prior Art Relied Upon: Keij (J.F. Keij et al., "High-speed photodamage cell sorting: An evaluation of the ZAPPER prototype," Methods in cell biology 42 (1994)).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Keij, a 1994 journal article, discloses every limitation of the challenged claims. Keij described a "photodamage cell sorter" that uses a laser to ablate unwanted cells as a high-speed alternative to conventional droplet sorters. The article explicitly suggested applying this method to sort X or Y chromosome-bearing sperm cells for insemination, referencing earlier work by Johnson. Petitioner asserted that Keij taught flowing stained sperm cells, exciting and detecting fluorescence to classify them, and then photo-damaging the undesired cells with a lethal laser pulse to produce an "enriched" population.
    • Key Aspects: For the dependent claims, Petitioner contended that Keij's disclosure of "KILL" and "LIVE" operational modes constituted a "sort strategy" (claim 2). The inherent random distribution of X and Y cells in a fluid stream, combined with the phenomenon of "coincident arrival" also disclosed by Keij, was argued to meet the limitations regarding first, second, and third particle sets (claims 5 and 6).

Ground 2: Obviousness over Johnson and Keij - Claims 1, 2, and 5-8 are obvious over Johnson in view of Keij.

  • Prior Art Relied Upon: Johnson (L.A. Johnson et al., "Sex Preselection: High-Speed Flow Cytometric Sorting of X and Y Sperm for Maximum Efficiency," Theriogenology 52 (1999)) and Keij (1994 journal article).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that Johnson (1999) taught a complete method for high-speed sorting of stained X- and Y-bearing sperm cells using a conventional flow cytometer with charged-droplet sorting, thus disclosing all limitations of the challenged claims except for the "photo-damaging" step. Keij expressly taught that photodamage sorting is a high-speed alternative that can replace conventional droplet sorting, and that most commercial flow sorters (like those used by Johnson) could be converted to photodamage sorters with only minor modifications.
    • Motivation to Combine: A person of ordinary skill in the art (POSITA) would combine Johnson and Keij to achieve greater speed. Both references explicitly stated that increasing speed and throughput was a primary goal in sperm sorting to improve commercial viability. Keij directly taught substituting its photodamage system for the conventional droplet sorter to gain this known benefit.
    • Expectation of Success: A POSITA would have a high expectation of success because Keij explained that existing commercial sorters could be easily modified. Furthermore, the ’987 patent itself described both photodamage and droplet sorting as "conventional techniques," suggesting their interchangeability was a predictable solution.

Ground 3: Obviousness over Johnson, Shapiro, and Keij - Claims 1, 2, 5, 7, and 8 are obvious over Johnson and Shapiro; Claim 6 is obvious over Johnson, Shapiro, and further in view of Keij.

  • Prior Art Relied Upon: Johnson (1999 journal article), Shapiro (Patent 4,395,397), and Keij (1994 journal article).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground presented an argument similar to Ground 2. Johnson provided the foundational method for sorting sperm with a conventional droplet sorter. Shapiro, a 1983 patent, taught replacing the droplet sorting mechanism with a "kill laser" to eliminate unwanted cells, describing it as a distinct method from physical sorting.
    • Motivation to Combine: The motivation was identical to that in Ground 2: to gain the "superior speed, as well as reliability" that Shapiro touted as the key advantage of its laser-based method over conventional sorting. For claim 6, Keij was added to the combination to provide an explicit teaching of "sort strategies" for handling coincident particles, which are inherent in any high-throughput flow cytometry system like the one proposed by combining Johnson and Shapiro.
    • Expectation of Success: The combination was presented as a routine substitution of one known sorting component (a droplet sorter) for another known, faster component (a photodamage laser), a predictable design choice for a POSITA seeking to improve a known process.

4. Key Claim Construction Positions

  • "classifying the stained sperm cells as either having characteristic A or having characteristic B": Petitioner argued this term should be construed broadly to mean classifying at least some of the cells. This construction is crucial because flow cytometers cannot always evaluate every cell (e.g., coincident or dead cells), and the prior art supports a system that classifies only a subset of the total cell population.
  • "photo-damaging": Petitioner proposed this means "using a laser or other light source to ablate or otherwise render ineffective the target cells." This broad construction does not require physical removal (sorting) of cells, which is critical for the teachings of Shapiro and Keij (where unwanted cells are killed but remain in the collection sample) to apply.
  • "enriched population of sperm...": Petitioner argued this means "a population of sperm cells where the ratio of live sperm cells having the desired characteristic to total live cells is higher than in the mixture prior to photo-damaging." This construction avoids any requirement for physical separation and defines enrichment based on the change in viability status, aligning with how photodamage works.
  • "sort strategy": Proposed to mean "a decision process for determining which particles or groups of particles are photo-damaged." This construction encompasses the logic used to handle ambiguous events, such as closely spaced cells, allowing the "KILL" vs. "LIVE" modes in Keij and the "sort windows" in Johnson to meet the claim limitation.

5. Relief Requested

  • Petitioner requested that the Board institute an inter partes review and cancel claims 1, 2, and 5-8 of the ’987 patent as unpatentable.