This Federal Circuit Opinion[1] analyzes invalidity based on anticipation and obviousness, more specifically based on implicit claim construction of the claim limitation and inherent disclosures.

Background

Sigray, Inc. (“Sigray”) filed an Inter Partes Review (“IPR”) petition challenging claims 1–15 of Zeiss X-Ray Microscopy, Inc.’s (“Zeiss”) U.S. Patent No. 7,400,704 (the “‘704 Patent”) as invalid for anticipation and obviousness over various references. For claims 1, 3, and 4, Sigray alleged that S. Jorgensen et al., Three-Dimensional Imaging of Vasculature and Parenchyma in Intact Rodent Organs with X-ray Micro-CT, Am. J. Physiology (Sept. 1998) (“Jorgensen”), which describes using an X-ray beam to image rodent organs, anticipated these claims. Sigray further argued that claims 2, 5, and 6 were rendered obvious, in part, by Jorgensen.

The ‘704 Patent claims X-ray optics requiring that “magnification of the projection x-ray stage is between 1 and 10 times”—the only limitation in independent claim 1 not agreed to be disclosed in Jorgensen by both parties. Notably, neither party requested formal claim construction, and the USPTO stated it did not engage in claim construction. Instead, the USPTO analyzed the claim language based on the following facts regarding Jorgensen:

• Jorgensen describes a process called collimation, which, according to U.S. Patent No. 4,891,829, is used to “achieve [the required] degree of parallelism.” The USPTO found this confirms that collimation is a technique for “minimizing beam divergence” and producing “a nearly parallel” X-ray beam. Zeiss’s expert, Dr. Gonzalo Acre, testified that a “collimated X-ray beam is a beam where . . . no meaningful divergence is present,” and that “the X-rays that reach Jorgensen’s sample are essentially parallel (i.e., not diverging), and there is no projection stage magnification.”
• Jorgensen’s prefatory clause references an “X-ray focal spot that subtends ≤0.8 mrad at the [detector],” which Zeiss’s expert, Dr. Julie Bentley, testified is “a very small angle and small enough to be considered [a] parallel source at infinity.”
• Dr. Bentley further testified that Jorgensen explains that when magnification of the lens is set to 2x, the sample size doubles (a 12 μm square at the sample corresponds to a 24 μm square at the detector). This can only occur “only if” there is no additional magnification at the projection stage; if the projection stage magnification were even 1.1x, a 24 μm detector pixel would correspond to only a 10.9 μm sample pixel, not 12 μm, as Jorgensen states.
• Jorgensen explains that “[t]he geometry and intensity distribution of the X-ray focal spot are of concern if the X-ray beam geometry is used to achieve magnification, but in our system the long X-ray focal spot-to-[sample] distance and the close proximity of the [sample] to the [detector] greatly reduce this concern.”

Based on these facts, the USPTO concluded that Sigray “fail[ed] to show that the . . . X-ray beam in Jorgensen diverges enough to result in projection magnification ‘between 1 and 10 times’. . . ” The USPTO, therefore, found that Jorgensen does not teach X-ray optics with projection stage magnification in the claimed range.

Issue(s)

1. Did the USPTO engage in claim construction even though the parties did not request it and the USPTO stated it did not perform claim construction?
2. Is the USPTO’s finding—that the claims are not unpatentable because Jorgensen’s small amount of magnification does not describe a projection magnification “between 1 and 10 times”—a reversible error in claim construction?

Holding(s)

1. Yes, the USPTO engaged in claim construction.
2. Yes, the USPTO’s claim construction finding that the claims are not unpatentable is an error that can be reversed by the Federal Circuit because the facts support the opposite—that the disputed claim limitation is anticipated.

Reasoning

USPTO Engaged in Claim Construction by Implicitly Construing the Claim

The Federal Circuit held that the USPTO’s use of the word “enough” reflects that the USPTO considered a certain level of divergence as outside the claim, and that this narrowing of claim scope constitutes claim construction. Because the Federal Circuit was reviewing a claim construction opinion—which is ultimately a question of law—it could review the decision de novo.

USPTO’s Conclusion that the Claims are Not Unpatentable is a Reversible Error

The Federal Circuit disagreed with the USPTO’s conclusion that the “between 1 and 10” magnification requirement in the claim language excludes small amounts of magnification. The Federal Circuit relied on SmithKline Beecham Corp. v. Apotex Corp., which held that the district court erred in requiring a higher standard of proof because it was “sufficient to show that the natural result flowing from the operation as taught [in the prior art] would result in” the claimed invention. 403 F.3d 1331, 1343 (Fed. Cir. 2005).

In addressing point (a), the Federal Circuit held that phrases such as “minimizing beam divergence,” “nearly parallel X-ray beam,” “no meaningful divergence,” and “essentially parallel” X-rays all indicate that there is some resultant, and possibly undetectable, magnification, which falls “between 1 and 10” projection magnification.

Similarly, in response to points (b) and (d), even though the X-ray focal spot is “small enough to be considered [a] parallel source at infinity,” and the design in Jorgensen “greatly reduces” any concern for magnification, these terms do not eliminate the possibility of projection magnification.

Finally, in response to point (c), the Federal Circuit applied a 1.001x magnification and the same rounding principles as Dr. Bentley to arrive at 12 μm, indicating that a minor magnification can result in an undiscernible size difference and contradicting Dr. Bentley’s testimony that the 12 μm size can be obtained “only if” there is no magnification.

Relying on Owens Corning v. Fast Felt Corp., the Federal Circuit reversed the USPTO’s finding that claim 1 is not unpatentable, concluding it is unpatentable because “on the evidence and arguments presented to the Board, there is only one possible evidence-supported finding: [that] the Board’s [determination] . . . when the correct construction is employed, is not supported by substantial evidence.” 873 F.3d 896, 901-02 (Fed. Cir. 2017).

Because no distinction was argued for dependent claims 3 and 4, the Federal Circuit found these claims also unpatentable. For claims 2, 5, and 6, which were not asserted as anticipated by Jorgensen, the Federal Circuit remanded to the USPTO to consider whether these claims would have been obvious.

FOOTNOTES

[1] Sigray, Inc. v. Carl Zeiss X-Ray Microscopy, Inc. No. 2023-2211

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