PTAB

IPR2016-00927

ABS Global Inc v. Inguran LLC

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Digital Sampling Apparatus and Methods for Sorting Particles
  • Brief Description: The ’092 patent is directed to systems and methods for sorting particles, such as cells, in a flow cytometer. The invention purports to replace traditional analog electronics with a digital signal processor (DSP) to analyze, classify, and generate sorting signals based on digitized waveform data from a photodetector.

3. Grounds for Unpatentability

Ground 1: Obviousness over Godavarti and Leary - Claims 1-3, 5-9, 11-13, 16, 18-19, 21, 28, 32, 40-41, and 43-46 are obvious over Godavarti in view of Leary.

  • Prior Art Relied Upon: Godavarti (a 1996 journal article on digital analysis of flow cytometric waveforms) and Leary (a 2002 conference proceeding on real-time cell sorting).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Godavarti taught a flow cytometer system that used digital sampling and a processor to analyze and classify cell waveform pulses, teaching nearly all elements of the challenged claims. Godavarti recognized the benefits of digital processing over analog systems but stated that the DSPs available in 1996 were not fast enough to perform real-time cell sorting. Leary, published before the ’092 patent’s 2003 priority date, disclosed a high-speed cell sorter that used a commercially available digital signal processing board for real-time data classification and sorting, demonstrating that the speed limitation identified by Godavarti had been overcome.
    • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would have been motivated to combine these references because Godavarti explicitly contemplated future real-time sorting applications once faster DSPs became available. Leary provided the enabling technology—the faster, commercially available DSPs—that Godavarti foresaw. A POSITA would combine Godavarti’s digital processing architecture with Leary’s teaching of available high-speed DSPs to achieve the predictable and desirable result of a real-time digital cell sorter.
    • Expectation of Success: The combination involved upgrading an existing system (Godavarti) with a more powerful, commercially available component (faster DSPs, as shown in Leary) to achieve a well-understood and previously predicted outcome. This presented a straightforward engineering path with a high expectation of success.

Ground 2: Obviousness over Godavarti, Leary, and Johnson - Claims 4, 26-27, 42, and 49 are obvious over Godavarti and Leary in further view of Johnson.

  • Prior Art Relied Upon: Godavarti (1996), Leary (2002), and Johnson (a 1999 journal article on high-speed sperm sorting).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground builds on the combination of Godavarti and Leary to create a real-time digital cell sorter. Johnson was introduced to teach the specific application of flow cytometry to sort sperm cells, a limitation recited in the challenged claims. Johnson described a method for sorting sperm into populations of X-chromosome bearing, Y-chromosome bearing, and a third population of unresolved or unaligned cells. This directly maps to the claim limitations requiring sperm cell sorting and classification using a three-population model.
    • Motivation to Combine: A POSITA would have been motivated to apply the improved general-purpose digital sorting technology of Godavarti/Leary to the well-known and commercially significant application of sperm sorting disclosed by Johnson. The combination represented a simple application of a new tool (real-time digital sorting) to a known problem (sperm cell separation), a routine and obvious design choice.

Ground 3: Obviousness over Godavarti, Leary, and Piper - Claim 10 is obvious over Godavarti and Leary in further view of Piper.

  • Prior Art Relied Upon: Godavarti (1996), Leary (2002), and Piper (a 1992 WO publication on pulsed laser flow cytometry).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground addresses claim 10, which depends from claim 1 and adds the limitation that the electromagnetic radiation source is a "pulsed illumination device." Piper explicitly disclosed the advantages of using high-repetition-rate pulsed lasers in flow cytometers for cell sorting. These advantages included achieving higher signal levels and better beam uniformity.
    • Motivation to Combine: A POSITA would have been motivated by Piper's express teachings to modify the base Godavarti/Leary system by substituting the standard laser with a pulsed laser. This modification would have been a common-sense design choice to gain the known and predictable benefits of improved signal quality and system performance as described by Piper.

4. Key Claim Construction Positions

  • "sampling" (all contested claims): Petitioner argued this term should be given its plain and ordinary meaning, not limited to a specific frequency range. Petitioner noted that the Patent Owner had argued in related litigation for a construction limited to 25-200 MHz. Petitioner contended that since the claims (except for claim 21) do not recite a specific range, importing such a limitation would be improper under the broadest reasonable interpretation standard.
  • "detecting waveform pulses" (claims 1 and 40): Petitioner argued that this term does not require distinguishing live cells from noise, debris, or dead cells. The patent specification, according to Petitioner, defines a "waveform pulse" simply as a pulse within the analog output of the photodetector. Petitioner asserted that the subsequent claim steps of "extracting features" and "discriminating" are the elements that perform the function of distinguishing between cell types, not the initial "detecting" step.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-13, 16, 18-19, 21, 26-28, 32, 40-46, and 49 of the ’092 patent as unpatentable.