ABS Global Inc v. Inguran LLC

1. Case Identification

• Case #: IPR2015-00001
• Patent #: 8,206,987
• Filed: October 1, 2014
• Petitioner(s): ABS Global, Inc.
• Patent Owner(s): XY, LLC.
• Challenged Claims: 1, 2, and 5-8

2. Patent Overview

• Title: Photo-Damage Method for Sorting Particles
• Brief Description: The ’987 patent relates to methods and apparatus for sorting animal sperm cells using flow cytometry. The technology is directed to creating enriched populations of sperm cells with desired characteristics, such as specific DNA content, to preselect the sex of animal offspring.

3. Grounds for Unpatentability

Ground 1: Anticipation of Claims 1, 2, and 5-8 under 35 U.S.C. §102 over [Keij 1994](https://ai-lab.exparte.com/case/ptab/IPR2015-00001/doc/1005)

• Prior Art Relied Upon: Keij (a 1994 journal article titled "High-Speed Photodamage Cell Sorting: An Evaluation of the ZAPPER Prototype").
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Keij disclosed every limitation of the challenged claims. Keij described a high-speed "photodamage cell sorter" that used a laser to ablate unwanted cells, which it presented as a high-speed alternative to conventional droplet sorters. Petitioner contended Keij taught a method of sorting a mixture of stained sperm cells by flowing them in a fluid stream, exciting fluorescence emissions to classify them, selecting undesired cells, and photo-damaging them to produce an enriched population. Keij also explicitly suggested its method could be used for sorting X or Y chromosome-bearing sperm cells. For dependent claims, Petitioner asserted that Keij's disclosure of "KILL" and "LIVE" modes for handling coincident cells constituted a "sort strategy" (claim 2) and inherently resulted in the claimed particle sets (claim 5).
  • Key Aspects: The core of this ground was that Keij provided a complete blueprint for the claimed invention, including the specific application to sperm sorting and the use of photo-damage as the sorting mechanism.

Ground 2: Obviousness of Claims 1, 2, and 5-8 under 35 U.S.C. §103 over [Johnson 1999](https://ai-lab.exparte.com/case/ptab/IPR2015-00001/doc/1006) in view of Keij 1994

• Prior Art Relied Upon: Johnson 1999 (a journal article on high-speed sperm sorting) and Keij (1994 journal article).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Johnson 1999 disclosed all elements of the challenged claims except for the use of "photo-damaging." Johnson taught a high-speed method for sorting stained sperm cells (X vs. Y) using a flow cytometer that employed a conventional charged-droplet sorting mechanism. It also disclosed using different "sort windows" to prioritize purity or speed, which Petitioner mapped to the "sort strategy" limitation. Keij, as established in Ground 1, taught that photo-damage sorting was a known, high-speed alternative to the droplet sorting used by Johnson.
  • Motivation to Combine: Petitioner argued a person of ordinary skill in the art (POSITA) would have been motivated to replace the conventional droplet sorter in Johnson's system with the photo-damage technique taught by Keij. Both references explicitly stated that higher speed and throughput were critical goals in sperm sorting. Keij presented photo-damaging as a superior method for achieving higher sorting rates. Therefore, a POSITA would combine the teachings to gain the recognized benefit of increased speed for the established sperm sorting process of Johnson.
  • Expectation of Success: Petitioner contended a POSITA would have had a reasonable expectation of success, as Keij taught that most commercially available flow sorters (like those used by Johnson) could be converted to photo-damage sorters with only minor modifications.

Ground 3: Obviousness of Claims 1, 2, 5, 7, and 8 over Johnson 1999 in view of [Shapiro 1983](https://ai-lab.exparte.com/case/ptab/IPR2015-00001/doc/1007); and Claim 6 over Johnson 1999, Shapiro 1983, and Keij 1994

• Prior Art Relied Upon: Johnson 1999, Shapiro (Patent 4,395,397), and Keij (1994 journal article).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground presented an argument parallel to Ground 2. Johnson 1999 again served as the primary reference teaching the overall sperm sorting method via droplet sorting. Shapiro 1983 was presented as an alternative to Keij, as it also taught the use of a laser to kill unwanted cells in a flow cytometer as a substitute for droplet sorting, touting its "superior speed as well as reliability."
  • Motivation to Combine: The motivation was identical to that in Ground 2: to improve the speed and throughput of Johnson's established sperm sorting method by incorporating the known, faster photo-damage technique from Shapiro. For claim 6, which requires specific strategies for handling coincident particles, Petitioner argued that since the phenomenon of coincident cells is inherent in flow cytometry, a POSITA implementing the Johnson/Shapiro combination would have naturally looked to known strategies, such as the "KILL" and "LIVE" modes described in Keij, to resolve them.
  • Expectation of Success: The substitution of one known sorting mechanism (droplet) for another known, faster mechanism (photo-damage) was argued to be a routine and predictable design choice for a POSITA.

4. Key Claim Construction Positions

• "photo-damaging": Petitioner proposed this term be construed as "using a laser or other light source to ablate or otherwise render ineffective the target cells." This construction was argued to be consistent with the specification, which describes selectively activating a laser to "ablate such cells... or otherwise render them ineffective."
• "enriched population of sperm...": Petitioner argued this should mean "a population of sperm cells where the ratio of live sperm cells having either characteristic A or characteristic B to total live cells is higher than in the mixture prior to photo-damaging." This construction was asserted to be necessary because in a photo-damage system, unwanted cells are killed but not physically removed, so enrichment occurs by changing the ratio of live desired cells to total live cells, not by physical separation.
• "sort strategy": Petitioner proposed this term means "a decision process for determining which particles or groups of particles are photo-damaged." This was based on the specification's discussion of "high recovery" versus "high purity" strategies for handling closely spaced or "coincident" particles.

5. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1, 2, and 5-8 of the ’987 patent as unpatentable.