Agilent Technologies, Inc. v. Thermo Fisher Scientific (Bremen) GmbH

1. Case Identification

• Case #: Unassigned
• Patent #: RE45,386
• Filed: December 13, 2017
• Petitioner(s): Agilent Technologies, Inc.
• Patent Owner(s): Thermo Fisher Scientific Inc. and Thermo Fisher Scientific (Bremen) GmbH
• Challenged Claims: 1-8, 10, 12-20, 22-23, and 25-50

2. Patent Overview

• Title: Mass Spectrometer With Collision Cell
• Brief Description: The ’386 patent discloses a mass spectrometer apparatus and method for elemental analysis that aims to reduce spectroscopic interferences. The invention features a triple-quadrupole system with a pressurized collision/reaction cell positioned between two mass-selective quadrupoles, which are operated at the same mass-to-charge ratio to minimize the formation of new interfering ions within the cell.

3. Grounds for Unpatentability

Ground 1: Anticipation over King - Claims 13, 16-17, 28, 41, and 46-50 are anticipated by King under 35 U.S.C. §102(b).

• Prior Art Relied Upon: King (a 1989 journal article titled “Collision-Induced Dissociation of Polyatomic Ions in Glow Discharge Mass Spectrometry”).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that King, which describes a glow-discharge triple-quadrupole mass spectrometer, anticipates the challenged claims. Specifically, an experiment in King analyzing the daughter spectrum of a parent ion from a brass sample was alleged to disclose every step of method claim 13, including generating ions from a plasma, mass selecting at a specific m/z ratio (81 m/z), transmitting ions through a pressurized collision cell, and analyzing the resulting ions. For apparatus claim 28, Petitioner contended that although King uses a glow-discharge source, it discusses the same interference problems found in Inductively Coupled Plasma (ICP) mass spectrometry, and a person of ordinary skill in the art (POSA) would have at once envisaged using a well-known ICP source with King's described apparatus.
  • Key Aspects: The core of this ground is that the operational method claimed in the ’386 patent was a normal, documented function of a prior art triple-quadrupole instrument described by King.

Ground 2: Obviousness over King and Douglas-1989 - Claims 13, 15-17, 28-32, 34, 37-38, 40-41, 44, and 47-49 are obvious over King in view of Douglas-1989.

• Prior Art Relied Upon: King (a 1989 journal article) and Douglas-1989 (a 1989 journal article titled "Some current perspectives on ICP-MS").
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that to the extent King is not found to teach an ICP-based system, Douglas-1989 explicitly supplies this element. Douglas-1989 is a review article on ICP-MS development that discloses a triple-quadrupole instrument using an ICP ion source. Petitioner argued that Douglas-1989 teaches synchronous scanning modes and methods for interference reduction that, when combined with King’s apparatus, render the claims obvious. For instance, Douglas-1989’s disclosure of synchronous scanning with a fixed mass offset could be readily adapted by a POSA to perform the zero-offset scanning described by King to achieve the claimed method.
  • Motivation to Combine: A POSA would combine these references because both addressed the common problem of removing spectroscopic interferences in plasma-based mass spectrometry. King explicitly referenced the challenges in ICP-MS, and Douglas-1989 provided an extended discussion on solving them. A POSA would have been motivated to apply the advanced interference-reduction techniques detailed in Douglas-1989 to the triple-quadrupole setup described in King.
  • Expectation of Success: Success was expected because the combination merely involved applying a known analytical technique (the ICP-MS source from Douglas-1989) to a known instrument configuration (the triple-quadrupole from King) for the known purpose of improving elemental analysis.

Ground 3: Obviousness over King, Douglas-1989, and Speakman - Claims 1-3, 6-8, 10, 12, 18-20, 22-23, 33, 35-36, 39, 42-43, and 45-46 are obvious over the combination.

• Prior Art Relied Upon: King (a 1989 journal article), Douglas-1989 (a 1989 journal article), and Speakman (Patent 6,222,185).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground targets apparatus claim 1, which recites specific structural elements like three differentially pumped evacuated chambers, pumps, and apertures. Petitioner argued that while King and Douglas-1989 teach the core operational principles (pre- and post-collision mass filtering), Speakman teaches the necessary structural arrangement. Speakman discloses a modern ICP-MS instrument with multiple vacuum pumping stages, specific apertures, and an offset-axis configuration designed to reduce background gas load, directly mapping onto the structural limitations of claim 1.
  • Motivation to Combine: A POSA would combine Speakman with King and Douglas-1989 because Speakman explicitly referenced their work and sought to improve upon it. Speakman described its use of multiple vacuum stages and inert collision gases as a direct improvement on the techniques of King and Douglas-1989 for removing polyatomic ion interferences. Therefore, a POSA would have been motivated to integrate Speakman’s advanced hardware configuration with the operational modes taught by King and Douglas-1989.
  • Expectation of Success: A POSA would have had a high expectation of success because the combination involved integrating known, compatible components (vacuum stages, pumps, quadrupoles) to achieve the predictable benefit of reduced background noise and improved detection, a well-understood goal in the art.

• Additional Grounds: Petitioner asserted additional obviousness challenges, including combinations adding Eiden (a 1997 journal article) to teach using hydrogen or helium as a collision gas, and Yost (a 1983 review paper) to teach specific instrument dimensions and component layouts common in commercial triple-quadrupole systems.

4. Key Claim Construction Positions

• "at the same mass-to-charge ratio" (Claims 1, 13, 28): Petitioner proposed this term should be construed as "at one or more mass-to-charge ratios, one of which is the mass-to-charge ratio of an analyte ion." This construction was argued to be supported by the open-ended "comprising" preamble of the claims, allowing the claim to cover prior art methods that scan a range of masses, so long as the target analyte mass is included in the scan.
• "configured to" (Claim 28): Petitioner argued this term means "enabled for use by the user to" perform a function, and does not require that the function be the sole or default mode of operation. This construction allows prior art instruments capable of performing the claimed operation to be considered, even if it was not their primary or default setting.

5. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1-8, 10, 12-20, 22-23, and 25-50 of the ’386 patent as unpatentable.