PTAB

IPR2015-00579

IntRomedic Co Ltd v. Given Imaging Ltd

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petition

1. Case Identification

2. Patent Overview

  • Title: Device for In-Vivo Imaging
  • Brief Description: The ’634 patent discloses a swallowable capsule for in-vivo imaging of the gastrointestinal tract. The sole claim recites a capsule with a housing containing a dome-type optical window, at least one CMOS or CCD imaging camera, at least two white LED illumination sources, an optical system with a lens separated from the window by a gap, and a transmitter.

3. Grounds for Unpatentability

Ground 1: Obviousness over Yoon, Katsunori, and Gastric Camera Patent - Claim 1 is obvious over Yoon in view of Katsunori and in further view of the Gastric Camera Patent.

  • Prior Art Relied Upon: Yoon (Patent 6,277,064), Katsunori (Japanese Patent Pub. No. 10-216085), and Gastric Camera Patent (Japanese Patent No. 57-45833).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Yoon, which discloses the distal imaging portion of a traditional endoscope, teaches the core optical assembly of the claimed invention, including a dome-shaped window, a CMOS camera, a lens, and a gap separating the lens from the window. Petitioner contended that Katsunori teaches the missing elements: the use of multiple (blue/crystal) white LEDs arranged around the imager for even illumination. Finally, the Gastric Camera Patent teaches encapsulating such an imaging system in a swallowable housing and adding a wireless transmitter to create a complete, untethered device.
    • Motivation to Combine: A POSITA would combine these references to create a less invasive, swallowable imaging capsule. The motivation was to leverage the well-understood optical assembly of a traditional endoscope (Yoon), incorporate modern, efficient lighting (Katsunori), and place it in a known wireless capsule format (Gastric Camera Patent) to avoid the pain associated with tethered endoscopes.
    • Expectation of Success: A POSITA would have an expectation of success because the combination merely integrates known components for their intended purposes, each performing its predictable function.

Ground 2: Obviousness over Iddan and Secondary References - Claim 1 is obvious over Iddan in view of Welch Allyn, or in view of Katsunori and Danna.

  • Prior Art Relied Upon: Iddan (WO 1999/030610A1), Welch Allyn (European Patent No. EP0941691A1), Katsunori (Japanese Patent Pub. No. 10-216085), and Danna (Patent 5,734,418).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that Iddan discloses a basic capsule endoscope with a dome window, a gap, a generic light emitter, a camera, and a transmitter. However, Iddan provides only a general description of the imaging system. Welch Allyn was argued to supply the specific missing details, disclosing a compact, energy-efficient imaging unit with a plurality of white LEDs arranged circumferentially around a low-power CMOS camera.
    • Motivation to Combine: Iddan identified a need for energy savings in its capsule. A POSITA, seeking to implement Iddan’s general concept, would have been motivated to integrate the specific, compact, and energy-efficient imaging unit from Welch Allyn to improve performance and battery life. The combination of Katsunori (teaching white LEDs) and Danna (teaching space-saving CMOS cameras) provided a similar motivation to upgrade Iddan's generic design with state-of-the-art components.
    • Expectation of Success: Success was expected as it involved substituting a generic imaging system with a superior, known imaging system to achieve the predictable benefits of improved image quality and power efficiency.

Ground 3: Obviousness over Olympus, Katsunori, and Danna - Claim 1 is obvious over Olympus in view of Katsunori and Danna.

  • Prior Art Relied Upon: Olympus (JP-1992-14453), Katsunori (Japanese Patent Pub. No. 10-216085), and Danna (Patent 5,734,418).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner argued that Olympus, filed in 1990, discloses a swallowable capsule with a structural layout nearly identical to the claimed invention, including a dome-shaped window, a gap between the window and the lens, two LEDs positioned off-axis, a CCD camera, and a transmitter. The primary differences were that Olympus disclosed unspecified LEDs (not necessarily white) and a CCD camera (not CMOS). Katsunori was cited for its teaching of using blue/crystal white LEDs for gastrointestinal imaging, and Danna for teaching the interchangeability and advantages (smaller size, lower cost, less power) of CMOS cameras over CCD cameras.
    • Motivation to Combine: A POSITA seeking to update the older Olympus design would be motivated to incorporate the newer technologies taught by Katsunori and Danna. The need for color images in medical diagnostics would motivate the use of white LEDs (Katsunori). The well-known benefits of CMOS cameras (Danna) becoming available in the mid-1990s would motivate replacing the older CCD technology to reduce size, cost, and power consumption, all critical for a capsule endoscope.
    • Expectation of Success: There was a high expectation of success in making these upgrades, as they represented a straightforward technological evolution of known components to achieve predictable improvements.

  • Additional Grounds: Petitioner asserted additional obviousness challenges over Welch Allyn in view of the Gastric Camera Patent (Ground 2) and over Boston Scientific in view of Katsunori and Danna (Ground 4).

4. Key Claim Construction Positions

  • "white LED": Petitioner proposed construing this term as "White light produced by a blue LED chip (emitting light in the blue spectrum range) and a refracting crystal." This construction was based on the patent’s specification and was argued to be critical, as the availability of this specific technology in the late 1990s was a key factor rendering the invention obvious.

5. Key Technical Contentions (Beyond Claim Construction)

  • Petitioner's core technical contention, applicable to all grounds, was that the claimed invention was merely the inevitable product of combining known elements after key enabling technologies became commercially available. It argued that design choices like a dome shape (for swallowability), a gap (for focus), multiple off-axis LEDs (for even illumination), white light (for color diagnostics), and CMOS cameras (for low power and small size) were all obvious and well-understood principles in the field of endoscopy by the time of the invention.

6. Arguments Regarding Discretionary Denial

  • Petitioner argued that its grounds were not redundant with those considered in a prior reexamination of the ’634 patent. Specifically, for the ground based on Olympus (which was previously considered), Petitioner introduced a new secondary reference (Katsunori) that it argued expressly disclosed the "white LED" limitation that the examiner had previously found lacking. Furthermore, Petitioner noted that other primary references, such as Yoon and Welch Allyn, were not part of the prior reexamination at all, making those grounds fundamentally new.

7. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of claim 1 of the ’634 patent as unpatentable.