PTAB

IPR2016-00927

ABS Global, Inc. v. INGURAN, LLC.

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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 biological cells, using a flow cytometer. The invention replaces traditional analog electronics with a digital signal processor (DSP) to analyze waveform pulses from a photodetector, classify the particles, and generate a sorting signal.

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 1996 in view of Leary 2002.

  • Prior Art Relied Upon: Godavarti (a 1996 journal article titled "Automated Particle Classification Based on Digital Acquisition and Analysis of Flow Cytometric Pulse Waveforms") and Leary (a 2002 conference proceeding titled "Advanced ‘Real-Time’ Classification Methods for Flow Cytometry Data Analysis and Cell Sorting").
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Godavarti taught a digital data acquisition system for a conventional flow cytometer, describing the use of digital sampling and processing to extract feature values from pulse waveforms. Godavarti recognized the benefits of digital over analog processing but noted that then-available electronics were not fast enough for real-time sorting, expressly stating that its design called for "real-time performance" in a "next-generation" system. Petitioner contended that Leary, published before the ’092 patent's priority date, disclosed a high-speed cell sorter using a digital signal processing board for "Real-time, second-stage data classification & cell sorting." Leary explained that DSP boards had become available at reasonable prices, removing the previous engineering and financial barriers to implementing real-time digital sorting.
    • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would have been motivated to implement the real-time sorting system envisioned by Godavarti using the faster, commercially available DSPs and methods disclosed by Leary. The combination represented the predictable implementation of Godavarti's forward-looking statements once the enabling technology, as shown by Leary, became accessible.
    • Expectation of Success: A POSITA would have had a high expectation of success. Leary demonstrated that the primary obstacle identified in Godavarti—insufficient processing speed—had been overcome by 2002 and that the necessary digital components were commercially available and being successfully used for the exact purpose of real-time cell sorting.

Ground 2: Obviousness over Godavarti, Leary, and Johnson - Claims 4, 26-27, 42, and 49 are obvious over Godavarti 1996 and Leary 2002 in further view of Johnson 1999.

  • Prior Art Relied Upon: Godavarti (1996), Leary (2002), and Johnson (a 1999 journal article titled "Sex Preselection: High-Speed Flow Cytometric Sorting of X and Y Sperm for Maximum Efficiency").
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground addresses claims directed specifically to sorting sperm cells. Petitioner argued that the combination of Godavarti and Leary provided the foundational real-time digital sorting apparatus. Johnson disclosed the specific application of a flow cytometer to sort sperm cells into X- and Y-chromosome-bearing populations. Critically, Johnson taught that successful sorting required accounting for a third population of unaligned or unresolved cells and described estimating population statistics for all three groups.
    • Motivation to Combine: A POSITA would have been motivated to apply the improved digital processing system of Godavarti and Leary to the well-known and commercially valuable application of sperm sorting as taught by Johnson. This was presented as a straightforward application of a general-purpose technology to a known, specific problem.

Ground 3: Obviousness over Godavarti, Leary, and Piper - Claim 10 is obvious over Godavarti 1996 and Leary 2002 in further view of Piper 1992.

  • Prior Art Relied Upon: Godavarti (1996), Leary (2002), and Piper (a 1992 WO publication titled “Pulsed Laser Flow Cytometry”).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground targets claim 10, which adds the limitation of a "pulsed illumination device." Petitioner asserted that Piper explicitly taught the advantages of using high-repetition-rate pulsed lasers as sources for flow cytometry. These advantages included achieving high instantaneous illumination intensities (for high signal levels) and relaxed beam focusing requirements.
    • Motivation to Combine: A POSITA would have been motivated to modify the Godavarti/Leary system by incorporating the pulsed laser taught by Piper. This combination would have been a matter of common sense to achieve the known and predictable benefits of improved signal quality, a constant goal in the field of flow cytometry.

4. Key Claim Construction Positions

  • "sampling": Petitioner argued that this term should be given its broad, ordinary meaning. It contested the Patent Owner's position from related litigation that the term should be limited to a specific rate between 25 MHz and 200 MHz. Petitioner pointed to claim 21, which explicitly recites a rate "of about 105 MHz or higher," arguing that the inclusion of a specific rate in one claim implies that other claims lacking such language should not be so limited.
  • "detecting waveform pulses": Petitioner contended that this term does not require distinguishing between live cells and noise, debris, or dead cells. It argued the patent specification defines "waveform pulse" simply as a pulse in the photodetector's analog output. The subsequent steps of "extracting features" and "discriminating" are separately recited claim elements that perform the function of distinguishing between cell types.

5. Key Technical Contentions (Beyond Claim Construction)

  • Petitioner’s central argument was that the claimed invention represented a quintessential case of obviousness under KSR Int'l Co. v. Teleflex Inc. The petition asserted that the transition from analog to digital processing in flow cytometry was a predictable technological evolution, not a patentable invention. The primary obstacle was merely the speed of commercially available DSPs. The prior art demonstrated that this barrier had been overcome by the patent’s priority date, making the claimed combination of known elements to achieve a predictable result obvious to a POSITA.

6. Relief Requested

  • Petitioner requested that the Board institute an inter partes review and enter a final written decision canceling claims 1-13, 16, 18-19, 21, 26-28, 32, 40, 41-46, and 49 of the ’092 patent as unpatentable under 35 U.S.C. §103.