Glatz et al.v.Hochgraeber

Patent Trial and Appeal Board

Mar 29, 2019

14454577 (P.T.A.B. Mar. 29, 2019)

-1-
BoxInterferences@uspto.gov Entered: March 29, 2019
Tel: 571-272-9797

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEALS BOARD

Agilent Technologies, Inc.,
Junior Party
(Patent 9,435,773,
Inventors: Bernd Glatz and Wolfgang Kretz),

v.

Dionex Softron GMBH,
Senior Party
(Application 14/454,577
Inventor: Hermann Hochgraeber).

Patent Interference 106,073 (SGL)
(Technology Center 2800)
_______________

Before: SALLY GARDNER LANE, JAMES T. MOORE, and DEBORAH KATZ,
Administrative Patent Judges.

LANE, Administrative Patent Judge.

JUDGMENT - Bd. R. 127(a)

-2-
A decision granting Motion 1 of Agilent Technologies, Inc. (Agilent) has 1
been entered. (Decision, Paper 198). As a result of this Decision, all the involved 2
claims of senior party Dionex Softron GMBH (Dionex) are unpatentable to Dionex 3
and Dionex lacks standing to continue in the interference. Bd. R. 201. 4
Accordingly, we enter judgment against Dionex. 5
Order 6
It is 7
ORDERED that judgment on priority is entered against senior party Dionex 8
as to Count 1, the sole Count of the interference (Declaration, Paper 1, 3); 9
FURTHER ORDERED that claims 21-26 and 28-39 of Dionex application 10
14/454,577, which correspond to Count 1, are FINALLY REFUSED. 11
(Declaration, Paper 1, 4); 35 U.S.C. § 135(a);1 12
FURTHER ORDERED that the parties are directed to 35 USC § 135(c) and 13
Bd. R. 205 regarding the filing of settlement agreements; 14
FURTHER ORDERED that a party seeking judicial review timely serve 15
notice on the Director of the United States Patent and Trademark Office; 16
37 C.F.R. §§ 90.1 and 104.2. See also Bd. R. 8(b). Attention is directed to Biogen 17
Idec MA, Inc., v. Japanese Foundation for Cancer Research, 785 F.3d 648, 18
654–57 (Fed. Cir. 2015) (determining that pre-AIA § 146 review was eliminated 19
for interference proceedings declared after September 15, 2012); and 20
FURTHER ORDERED that a copy of this judgment be entered into the 21
administrative records of the involved Agilent and Dionex applications. 22

1 Any reference to a statute in this Judgment is to the statute that was in effect
on March 15, 2013 unless otherwise indicated. See Pub. L. 112-29, § 3(n), 125
Stat. 284, 293 (2011).

-3-

cc (electronic):

Dionex
Jonathan Harris
David Ludwig
Jason Murata.
Axinn, Veltrop & Harkrider LLP
90 State House Square, 9th Floor
Hartford, CT 06103
jharris@axinn.com
dludwig@axinn.com
jmurata@axinn.com

Agilent
John B. Sganga, Jr.
Philip M. Nelson
Stephen W. Larson
Ted M. Cannon
David G. Jankowski
KNOBBE, MARTENS, OLSON
& BEAR, LLP
2040 Main St., 14th Floor
Irvine, CA 92614
BoxAGILENT@knobbe.com

BoxInterferences@uspto.gov Entered: March 29, 2019
Tel: 571-272-9797

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________

Agilent Technologies, Inc.,
Junior Party
(Patent 9,435,773,
Inventors: Bernd Glatz and Wolfgang Kretz),

v.

Dionex Softron GMBH,
Senior Party
(Application 14/454,577
Inventor: Hermann Hochgraeber).

Patent Interference 106,073 (SGL)
(Technology Center 2800)
_______________

Before: SALLY GARDNER LANE, JAMES T. MOORE, and DEBORAH KATZ,
Administrative Patent Judges.

LANE, Administrative Patent Judge.

Decision - Motions - 37 C.F.R. § 41.125

2

I. INTRODUCTION 1
Junior party Agilent Technologies, Inc. (Agilent) is involved in this 2
interference on the basis of its patent number 9,435,773 (’773), issued September 3
6, 2016 from application 13/375,884 filed February 15, 2012. Senior party Dionex 4
Softron GMBH (Dionex) is involved in the interference on the basis of its 5
application number 14/454,577 (’577), filed August 17, 2014. 6
We have before us, inter alia, Agilent Motion 1 for judgment against Dionex 7
on the basis that all the Dionex claims are unpatentable for failure to comply with 8
both the first and second paragraphs of 35 U.S.C. §112. 1 (Agilent Motion 1, Paper 9
68). Dionex opposed this motion. (Dionex Opposition 1, Paper 154). Agilent 10
replied. (Agilent Reply 1, Paper 163). Because Agilent Motion 1 raises a 11
threshold issue, we elect to consider this motion first. Bd. R. 125(a) (“The Board 12
may take up motions for decision in any order…”); Bd. R. 201 (“Threshold issue 13
means an issue that, if resolved in favor of the movant, would deprive the opponent 14
of standing in the interference [and] may include… [u]npatentability for lack of 15
written description…where the applicant suggested, or could have suggested, an 16
interference under §41.202(a)). 17
In addition Agilent filed a motion challenging the benefit accorded to 18
Dionex in the declaration of the interference, (Agilent Motion 2, Paper 103), a 19
motion that the Dionex claims are unpatentable as anticipated by Agilent’s earlier 20
filed PCT application (Agilent Motion 3, Paper 104), and a motion to exclude 21
certain Dionex evidence (Agilent Motion 4, Paper 171). 22
Dionex filed a single substantive motion to be accorded benefit of an earlier 23
filed application. (Dionex Motion 1, Paper 105). 24

1 The panel determined that no oral argument was needed and none was
ordered.
3

We GRANT Agilent Motion 1 and accordingly do not reach the remaining 1
substantive motions. We DISMISS as moot the Agilent motion to exclude 2
evidence. 3
II. DISCUSSION 4
The evidence supports any findings of fact in this Decision by a 5
preponderance of the evidence. As the moving party, Agilent has the burden of 6
proof and must support its motion with appropriate evidence such that, if 7
unrebutted, it would justify the relief sought. Bd. R. 208(b). 8
9
A. Agilent Motion 1 10
11
Summary of parties’ positions 12
Agilent asserts that the involved Dionex specification “discloses no 13
supporting structure or acts at all to perform the recited function” of the Dionex 14
claims and thus, the Dionex involved claims lack written description support. 15
Agilent argues that the Dionex involved claims recite means plus function 16
limitations surrounding the claimed function of controlling the valve to switch 17
valve positions to transfer the sample loop between a low pressure and a high 18
pressure and these limitations require the application of 35 U.S.C. 112(f).2 In 19
particular Agilent argues that “Dionex’s involved claims recite, either directly or 20
indirectly through other claims, a means-plus-function or step-plus-function 21
limitation directed to controlling a valve to switch among predetermined 22
positions”. Even if these limitations are not considered as means plus function 23
limitations, Agilent nonetheless urges that the Dionex claims lack written 24
description support. According to Agilent, the Dionex involved specification must, 25

2 In their briefing the parties cite the pre-AIA version, i.e., 112, ¶6.
4

and fails to, disclose the supporting structures and acts described in the Agilent 1
’773 specification for controlling the valve to meet the written description 2
requirement. Agilent also argues that Agilent’s claims are indefinite under the 3
second paragraph of 35 USC 112 since the Dionex involved specification does not 4
link any structure or acts to the claimed function. (Agilent Motion 1, Paper 68, 5
1:11-18, original emphasis; 15:7-16; 10:1-4). 6
Agilent further argues that “all of Dionex’s involved claims require 7
pressurization of a trapped fluid volume in a recited ‘sample loop’ [b]ut Dionex’s 8
specification discloses no such apparatus or method.” Agilent asserts that instead 9
Dionex discloses pressurizing a different trapped fluid volume than the sample 10
loop resulting in a device that “would lead to some of the very problems that 11
Agilent’s patent was intended to solve.” (Agilent Motion 1, Paper 68, 1:19-24.) 12
Dionex disagrees that its claims should be read as having means plus 13
function limitations. Dionex urges though that whether or not the limitations are 14
read as means plus function limitations, it discloses the structure required by the 15
Agilent involved specification such that it has written description support. Dionex 16
disagrees with the corresponding structure asserted by Agilent but argues that even 17
if the Board agrees with Agilent on this point, one of ordinary skill in the art would 18
recognize a “not-shown” feature as having the structure asserted by Agilent. 19
Dionex also asserts that it provides sufficient structure such that its claims are not 20
indefinite under the second paragraph of 35 USC §112. (Dionex Opposition 1, 21
Paper 154, 6:18-7:3; 10:7-11:18; 18:5-19). 22
Regarding the sample loop limitation, Dionex argues that it does provide 23
written description support when the claims are interpreted as required. Dionex 24
disagrees with the construction of the term asserted by Agilent, arguing that it is 25
contrary to the plain and ordinary meaning of the term and internally inconsistent 26
with Agilent’s own patent. (Dionex Opposition 1, Paper 154, 2:1-14). 27
5

Summary of Decision 1
We find that the Dionex claims lack written description support when we 2
construe those claims, as we must, in view of the Agilent specification. The 3
Dionex claims contain means or step plus function limitations for controlling the 4
valve to switch positions to transfer the sample loop between a low and a high 5
pressure without providing a structure or acts for performing the function either 6
within the claim or in the Dionex specification. Whether or not these are 7
considered to be means plus functions limitations we still look to the Agilent 8
specification to understand the claimed function of controlling. When we do so we 9
see specific structures or acts are provided by Agilent while no specific structures 10
or acts are provided by the Dionex specification. Because no corresponding 11
structure or acts are provided in the Dionex specification, we conclude that the 12
Dionex claims are indefinite under the second paragraph of 35 USC §112. 13
14
Legal Principles 15
We give claims their broadest reasonable interpretation by considering not 16
only the claim language but also how one skilled in the art would understand the 17
claim in view of the specification. Phillips v. AWH, 415 F.3d 1303, 1316, (Fed. 18
Cir. 2005). Under the sixth paragraph of 35 USC §112, claims expressing 19
elements as a means or step for performing a specified function without reciting 20
the structure, material, or act in support of the function are construed to cover the 21
corresponding structure, material, or act described in the specification, and 22
equivalents thereof. 35 USC §112(f). 23
Agilent notes that Dionex copied verbatim all of the claims of Agilent’s 24
involved patent 9,435,773 (’773 patent) (Ex. 2002) (Agilent Motion 1, Paper 68, 25
1:6-10; Dionex Clean Copy of Claims, Paper 12). As explained in Agilent Techs., 26
Inc. v. Affymetrix, Inc, as applied to the current situation, we must determine 27
6

whether Dionex has adequate basis to copy Agilent’s claims and thereby challenge 1
Agilent’s priority of invention. Because the Agilent ’773 specification is the 2
originating one, for purposes of evaluating written description, we construe 3
Dionex’s involved claims in view of the Agilent specification, as instructed by 4
Agilent. Agilent v. Affymetrix, Inc., 567 F.3d 1366, 1375 (Fed. Cir. 2009). 5
(“…where the PTO must assess whether both parties have a right to claim the same 6
subject matter, the claim construction analysis properly occurs in the context of the 7
specification from which the claims were copied.”) 8
In evaluating written description we consider whether the disclosure of the 9
application reasonably conveys to those skilled in the art that the inventor had 10
possession of the claimed subject matter as of the filing date. Vas–Cath Inc. v. 11
Mahurkar, 935 F.2d 1555, 1562–63 (Fed. Cir. 1991). Our evaluation “requires an 12
objective inquiry into the four corners of the specification from the perspective of a 13
person of ordinary skill in the art” with the understanding that “the level of detail 14
required ... varies depending on the nature and scope of the claims and on the 15
complexity and predictability of the relevant technology.” Ariad Pharms., Inc. v. 16
Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010). “[W]hile the description 17
requirement does not demand any particular form of disclosure…or that the 18
specification recite the claimed invention in haec verba, a description that merely 19
renders the invention obvious does not satisfy the requirement, Ariad 698 F.3d 20
1352, citing Carnegie Mellon Univ. v. Hoffmann–La Roche Inc., 541 F.3d 1115, 21
1122 (Fed. Cir. 2008) and Lockwood v. Am. Airlines, 107 F.3d 1565, 1571–72 22
(Fed. Cir. 1997). 23
Under the second paragraph of 35 USC §112, claims must particularly point 24
out and distinctly claim the subject matter which is regarded as the invention. 35 25
USC §112(b). “[I]f a person of ordinary skill in the art would be unable to 26
recognize the structure in the specification and associate it with the corresponding 27
7

function in the claims, a means-plus-function clause [under 35 USC §112(f)] is 1
indefinite.” Diebold Nixdorf, Inc. v. International Trade Commission, 899 F.3d 2
1291, 1303 (Fed. Cir. 2018). 3
The Dionex claims 4
The Dionex copied claims3 are directed to a sample injector to be used in 5
high performance liquid chromatography (HPLC). HPLC is used to separate, 6
identify and quantify individual chemical compounds that occur in complex 7
mixtures. HPLC systems use at least one high pressure pump to force a stream of 8
pressurized sample liquid through a column packed with a solid adsorbent 9
material. Because different components in the sample liquid will react differently 10
with the solid adsorbent material the components of the sample will exit the 11
column at different times thus providing information on what is included in the 12
sample liquid. (Schug Declaration4, Ex. 2008, ¶¶28, 29). HPLC systems must be 13
capable of withstanding high operational pressures. The injection valve used to 14
introduce the sample also must be capable of switching between low pressure 15
(used to load the sample) and high pressure (used for analysis and separation) to 16
avoid compromising the HPLC process and results. (Schug Declaration, Ex. 2008, 17
¶31). 18
Claim 21 of Dionex, reproduced below, is illustrative of the copied claims. 19
21. A sample injector for use in a fluid separation system for 20
separating compounds of a fluidic sample in a mobile phase, the 21
sample injector comprising: 22

3 All the Dionex claims, claims 21-26 and 28-39 correspond to the Count of
the interference and all are copied from Agilent. (Declaration, Paper 1, 4; ’773
patent (Ex. 2002); Agilent Motion 1, Paper 68, 1:6-10).
4 In its Motion 1, Agilent directs us to the testimony of Dr. Kevin A. Schug.
We have reviewed Dr. Schug’s credentials and find Dr. Schug qualified to testify
regarding the technical issues arising in this interference. (Schug Declaration, Ex.
2008, ¶¶ 4-13; Schug Curriculum vitae, Ex. 2009).
8

1
a switchable valve; 2
3
a sample loop in fluid communication with the valve and 4
configured for receiving the fluidic sample; 5
6
a metering device positioned so as to form a part of the sample 7
loop and configured for introducing a metered amount of the fluidic 8
sample into a portion of the sample loop; and 9
10
a control unit configured for controlling the valve to switch 11
among a first position, a second position and an intermediate position 12
in order to transfer the sample loop between a low pressure 13
corresponding to the first position of the valve and a high pressure 14
corresponding to the second position of the valve, 15
16
the control unit being further configured for controlling the 17
metering device to vary pressure in the sample loop, while the valve is 18
in the intermediate position, between the low pressure for loading the 19
fluidic sample and the high pressure for driving the mobile phase, 20
21
wherein the metering device and the sample loop are in fluid 22
communication in each of the first position and the second position of 23
the valve. 24
25
(Dionex Clean Copy of Claims, Paper 12, indentations and spacing added). 26
Claim 39, the only other independent claim, is directed to a method of 27
operating the sample injector which includes the step of controlling the valve to 28
switch among predetermined valve positions as in claim 21. (See id.) 29
30
1. “Control unit” limitations 31
Dionex claim 21 requires “a control unit configured for controlling the valve 32
to switch among a first position, a second position and an intermediate position in 33
order to transfer the sample loop between a low pressure corresponding to the first 34
position of the valve and a high pressure corresponding to the second position of 35
9

the valve” while Dionex claim 39 requires the step of “controlling the valve to 1
switch among predetermined valve positions to transfer the sample loop between a 2
low pressure and a high pressure.” Agilent argues that these limitations, which we 3
refer to as the “control unit limitations”, are not supported by the Dionex 4
specification because the Dionex specification provides no structure or acts for 5
performing the stated function of controlling the valve to switch positions as 6
required by the Dionex copied claims. (Agilent Motion 1, Paper 68, 1:11-18). 7
8
Means plus function limitations 9
Agilent contends that the copied “control unit limitations” are means plus 10
function limitations. Dionex does not agree. The parties’ briefs discuss the 11
application of 35 USC §112(f) to means plus function limitations that appear in 12
claims copied for purposes of provoking an interference. (Agilent Motion 1, Paper 13
68, 4:22-5:14; Dionex Opposition 1, Paper 154, 4:9-19). 35 USC §112(f) requires 14
that a “claim” having a means or step plus function limitation “shall be construed 15
to cover the corresponding structure, material, or acts described in the specification 16
and equivalents thereof” for that limitation. Ordinarily we are required to construe 17
a means or step plus function limitation within the Dionex claims as covering the 18
corresponding structure or acts found in the Dionex specification containing that 19
claim. 35 USC §112(f). Given the holding of Agilent though, for written 20
description purposes only, here we must construe any means or step plus function 21
limitation in view of the Agilent ’773 Patent specification. That is, because each 22
claim Dionex presented was copied from Agilent, i.e., from a claim that originated 23
from the Agilent specification, we are in essence construing an Agilent claim and 24
considering whether the Dionex specification provides written description support 25
for such a claim. Agilent, 567 F.3d at 1375. Regardless of whether the “control 26
unit limitations” are means or step plus function ones or not, we must consult the 27
10

Agilent specification when construing the Dionex claims as it is the originating one 1
of the copied claims. Agilent, 567 F.3d at 1375. 2
The parties dispute whether the “control unit limitations” should be read as 3
means plus function limitations so first we consider this issue. We have reviewed 4
the arguments and, for reasons discussed below, determine that the “control unit 5
limitations” are properly construed as means plus function limitations but that even 6
if not so construed, are not described by Dionex. 7
We recognize that, because the “control unit limitations” do not use the word 8
“means” or “step” there is a presumption that §112 (f) does not apply. However, 9
“[when] a claim term lacks the word ‘means,’ the presumption can be overcome 10
and § 112, para 6 will apply if the challenger demonstrates that the claim term fails 11
to ‘recite sufficiently definite structure’ or else recites ‘function without reciting 12
sufficient structure for performing that function.’” Diebold Nixdorf, Inc. v. 13
International Trade Commission, 899 F.3d 1291, 1298, citing Williamson v. Citrix 14
Online, LLC., 792 F.3d 1339. 1348-49 (Fed. Cir. 2015). Further §112 (f) applies in 15
method claims, such as Dionex claim 39, when steps plus function without acts are 16
present. O.I. Corp. v. Tekmar Co., Inc., 115 F.3d 1576, 1582-83 (Fed. Cir. 1997). 17
However, the use of functional language does not automatically convert the words 18
into means for performing these functions. Zeroclick , LLC v. Apple Inc., 891 F.3d 19
1003, 1008, citing Greenberg v. Ethicon Endo-Surgery, Inc., 91 F.3d 1580,1583 20
(Fed. Cir. 1996) (“Many devices take their names from the functions they perform. 21
The examples are innumerable, such as ‘filter,’ ‘brake,’ ‘clamp,’ ‘screwdriver,’ or 22
‘lock.’ ”). We consider, inter alia, whether one skilled in the art would have 23
understood the “control unit limitations” to connote structure and whether Agilent 24
has met its burden to rebut the presumption created by the lack of the use of 25
“means” or “step” language. 26
Dr. Schug testified to his opinion that the “control unit” limitation of Dionex 27
11

claim 21 would not have been considered by one skilled in the art to connote 1
structure. Dr. Schug also testified that the remainder of this element of claim 21 2
also contains no structure but instead identifies the function to be accomplished by 3
the “control unit.” Dr. Schug testified similarly as to the claim limitation 4
“controlling” used in both claims 21 and 39 which, according to Dr. Schug, 5
“describes a function—the goal or purpose of the claim, but not how to accomplish 6
it...”. Dr. Schug testified that a person skilled in the art would have considered 7
that, within the copied claims, “‘controlling’ is not itself an act, and even if could 8
be considered some kind of act, it is insufficient to accomplish the entire function 9
recited…”. (Schug Declaration, Ex. 2008, ¶¶53, 54 original emphasis). 10
Regarding the “control unit limitations”, i.e., the control unit and the 11
controlling function required by the copied Dionex claims, Dr. Schug testified that 12
“[o]ne of ordinary skill in the art at the time of filing would have found …that the 13
’577 [specification] does not identify any structures or acts for performing these 14
[claimed] functions.” (Schug Declaration, Ex. 2008, ¶50). Dr. Schug addressed 15
those portions of the ’577 specification referring to the “control unit limitations” 16
and testified that they provide no acts in support of the claimed function or 17
describe how this function is accomplished. (Schug Declaration, Ex. 2008 ¶¶ 49, 18
56-59). 19
We find convincing Dr. Schug’s testimony that the “control unit 20
limitations” of the claims, as understood by one of ordinary skill in the art, recite 21
function without reciting sufficient structure or acts for performing the function. 22
Instead, as in Diebold, the Dionex claims describe the “control unit limitations” 23
“solely in relation to [their] function…in the apparatus”. Further we find Dr. 24
Schug’s testimony to demonstrate that the “control unit limitations” of the claims 25
did not have structural meaning to those of skill in the art and that the Dionex 26
12

specification does not provide any structural examples or definitions for these 1
“control unit limitations”. Diebold v. ITC, 899 F.3d at 1298. 2
In its Opposition 1, Dionex argues that the “control unit” limitations should 3
not be considered as means plus function limitations. Dionex relies upon the 4
declaration testimony of Mr. Kerry Nugent.5 (Nugent Supplemental Declaration, 5
Ex. 1020). Mr. Nugent testifies that a “control unit” has a well understood definite 6
structure, i.e., a CPU or microprocessor that receives inputs and processes desired 7
outputs to actuate the operation of the HPLC system in the claims of the [Agilent] 8
’773 patent”. (Nugent Supplemental Declaration, Ex. 1020, ¶46). Mr. Nugent 9
testifies that this structure is disclosed where the Dionex specification “expressly 10
and repeatedly reference[s] ‘control unit 60’ as controlling the system….for 11
example, stat[ing] ‘The control unit 60 controls the change-over processes of the 12
injection valve 3 that features a not-shown controllable drive.’”. (Nugent 13
Supplemental Declaration, Ex. 1020, ¶48). 14
However, as Agilent points out, “the ’577 application itself admits the 15
structure for controlling the valve to accomplish the claimed function (which 16
requires, inter alia, precise rotation of the valve rotor between specific angular 17
positions) is “not shown”. (Agilent Motion 1, Paper 68, 7:8-13, original 18
emphasis). As to “the controllable drive”, Dr. Schug convincingly testified that 19
this term “is not (and was not) a term of art in the field of HPLC instrumentation 20
design, and a person of ordinary skill in the art at the time of filing, even after 21
reading the specification, could not reasonably have known what structures were 22
meant to be described by this term [and that] ‘drive’ is (and was) merely a generic 23

5 We have reviewed Mr. Nugent’s credentials and find Mr. Nugent qualified
to testify regarding the technical issues arising in this interference. Nugent
Supplemental Declaration, Ex. 1020, ¶¶ 5-14; Nugent Curriculum vitae, Ex. 1003,
Appendix A.
13

term that would not have had any structural significance to a person of ordinary 1
skill in the art at the time of filing.” (Schug Declaration, Ex. 2008, ¶59). We also 2
do not find convincing Dionex’s argument that “controlling the valve to switch” 3
provides sufficient acts within the claim. Instead this claim provides a step 4
(controlling the valve to switch positions) without providing an act to accomplish 5
the required control of the valve. 6
Dionex argues that the ’577 specification teaches corresponding structure 7
because it teaches a control unit programmed with algorithms. Dionex cites cases 8
involving computer-implemented inventions and urges that algorithms provide 9
sufficient structure for the claimed invention. (Dionex Opposition 1, Paper 154, 10
5:22–6:6, 12:8–15:11). We agree with Agilent that claims before us raise different 11
issues that those in the cases cited by Dionex. (Agilent Reply, Paper 163, 4:1-4; 12
“But the claims here are very different from those computer-implemented 13
invention cases, which involved, e.g., selecting an encryption algorithm (TecSec), 14
reconstructing data (In re Dossel), assigning numbers (WMS Gaming), and forming 15
link data (AllVoice)”.). The claims before us are directed to a mechanical “sample 16
injector” invention, unlike the computer implemented inventions discussed in the 17
cases cited by Dionex. Dionex must have provided adequate corresponding 18
structure to perform all of the claimed function. Williamson, 792 F.3d at 1351–52. 19
We agree that the “control unit limitations” require physical movement of the 20
valve that cannot be accomplished by a CPU without accompanying physical 21
structure. The evidence relied upon by Agilent is sufficient to show that the 22
Dionex specification does not provide such structure. Dionex does not direct us to 23
a portion of its specification, or other evidence, sufficient to show that such 24
physical structure is disclosed in the Dionex specification. (See Agilent Reply, 25
Paper 163, 4:6-12). 26
14

After considering the position of each party and the evidence cited to us in 1
the briefing, we determine that Agilent has rebutted the presumption created by the 2
lack of “means” or “step” language and that the “control unit limitations” are 3
means or step plus function limitations under 35 USC §112(f). When we consider 4
Dr. Schug’s and Mr. Nugent’s testimony on this point, we find Dr. Schug’s 5
testimony more convincing. In particular, we are convinced by Dr. Schug’s 6
testimony and underlying explanation that the “control unit limitations” are 7
functional and would not have connoted any structure or acts to one of ordinary 8
skill in the art and that the claims do not otherwise provide structure or acts to 9
perform the required functions. We are not convinced by Mr. Nugent’s testimony 10
that one skilled in the art would have known within the context of the claimed 11
invention that a control unit or controllable drive is a CPU or microprocessor or 12
otherwise has an understood definition to one skilled in the art that would provide 13
structure or acts to perform the requirements of the claims. We agree with Agilent 14
that there is no dispute the “control unit limitations” require physical movement of 15
the valve. Thus, we agree with Agilent that “any disclosed algorithms are not 16
enough to perform the switching function without accompanying physical 17
structure.” (Agilent Reply 1, Paper 163, 4:11-12). 18
19
Construction of copied claims 20
As we noted above, given the holding of Agilent, for written description 21
purposes only, here we must construe any means plus function limitation in view 22
of the Agilent ’773 Patent specification. Agilent, 567 F.3d at 1375. 23
Regarding the control unit and the controlling function required by the 24
copied Dionex claims, Dr. Schug testified that “[o]ne of ordinary skill in the art at 25
the time of filing would have found that the ’773 [Agilent involved] Patent 26
identifies specific structures and acts for performing the recited functions” while 27
15

the ’577 specification does not do so. (Schug Declaration, ¶¶ 49, 50, 56-59). 1
Dr. Schug points to the ’773 patent specification which is said to “clearly 2
link[] several structures and acts for performing the functions recited in [Dionex] 3
Claims 21 and 39”. Dr. Schug points to the following, for example: 4
Preferably, the second shear valve member is provided as a rotor or 5
slider moving on the first shear valve member, which is embodied as a 6
static member and not moving. A drive might be provided for moving 7
the shear valve member to be moved. Alternatively or in addition, the 8
shear valve member to be moved might also be moved manually. A 9
valve drive and control unit (e.g., gearbox+motor+encoder+central 10
processing unit, CPU), might be provided for controlling movement 11
of the shear valve member to be moved. 12
13
Schug Declaration, Ex. 2008, ¶64, citing ’773 Patent, Ex. 2002 at 8:58–67. 14
According to Dr. Schug, the gearbox, motor, encoder, and CPU disclosed by 15
the Agilent specification would have informed one of ordinary skill in the art at the 16
time of filing that the inventor contemplated a very specific set of structures for 17
controlling the valve to switch positions as required by the Dionex claims. Schug 18
Declaration, Ex. 2008, ¶64. Dr. Schug testifies that “one of ordinary skill in the 19
art at the time of filing would not have found adequate support in the ’577 20
[Dionex] Application for the claimed functions because the specification simply 21
restates those functions without explaining how they are accomplished... [and 22
that]…”as understood by a person of ordinary skill in the art at the time of filing, 23
the ’577 Application does not identify structures or acts sufficient to accomplish 24
the recited functions and therefore Dionex did not demonstrate possession of the 25
claimed subject matter.” (Schug Declaration, Ex. 2008, ¶77). 26
Dr. Schug also testified that it is his opinion that a person of ordinary skill in 27
the art at the time of filing would have found that the ’577 Application does not 28
identify the same structures and acts for accomplishing the recited functions that 29
are disclosed in the ’773 Patent, i.e., the “gearbox+motor+encoder+central 30
16

processing unit, CPU”. Dr. Schug testified that “the ’577 Application does not 1
contain any disclosure of structures, materials, or acts capable of ‘controlling the 2
valve’ to switch among the different positions or to accomplish the other aspects of 3
the claimed functions.” It is further Dr. Schug’s testimony that, because Dionex 4
does not describe any structures for performing the “control unit” limitations, one 5
skilled in the art would not find the Dionex involved specification to describe any 6
equivalents to the express structure found in the Agilent specification. (Schug 7
Declaration, Ex. 2008, ¶¶61, 63, 78-80). Dr. Schug notes that “the only discussion 8
in the ’577 Application that hints at structure arguably relating to valve control 9
comes from the following passage: ‘The control unit 60 also controls the change-10
over processes of the injection valve 3 that features a not-shown controllable drive’ 11
[without providing] additional information about the acts performed by this 12
‘controllable drive.’” Further, as noted above, Dr. Schug testified that 13
‘“controllable drive’ is not a term of art in the field of HPLC instrumentation 14
design, and the term ‘drive’ is merely a generic term that can encompass a wide 15
variety of possible structures.” (Schug Declaration, Ex. 2008, ¶¶59, 78) 16
Dionex, relying upon the testimony of Mr. Nugent, disagrees that one skilled 17
in the art would understand the control unit described by Agilent to contain all the 18
structures identified in Dr. Schug’s testimony. Mr. Nugent testifies that what Dr. 19
Schug identifies as the control unit is actually the valve drive and that HPLC 20
systems often contain multiple control units. (Dionex Opposition 1, Paper 154, 21
16:6-17:14, citing Nugent Declaration, Ex. 1020, ¶¶65-71). Here we agree with 22
Agilent though, for reasons stated above, that the terms “control unit” and “valve 23
drive” do not convey specific structure (Paper 68 at 8–10) and it is the 24
“gearbox+motor+encoder+central processing unit, CPU” that provide the structure 25
that actually switches the valve. Further we agree that regardless of how many 26
control units are purportedly involved, the structure corresponding to the claimed 27
17

function of controlling, according to the Agilent specification, is the 1
gearbox+motor+encoder+central processing unit. (Agilent Reply 1, 5:9-20; Ex. 2
2002, 8:62–67). 3
Dionex states that “if the Board determines that the claim term ‘control unit’ 4
corresponds to all of a motor, gearbox, encoder and valve CPU, as Agilent 5
contends, the ‘577 application still teaches these structures.” Dionex 6
acknowledges that its specification refers to a “not-shown controllable drive”. 7
(’577 Application, Ex. 2006, 7:6-7.) However, argues Dionex, “[o]ne of ordinary 8
skill reviewing this passage would recognize that the ‘not-shown controllable 9
drive’ necessarily includes the following component parts: (1) motor; (2) drive 10
shaft; (3) gearbox; (4) encoder (such as an optical sensor); and (5) circuit board, 11
i.e., CPU. (Nugent Supplemental Declaration, Ex. 1020, ¶ 81 (citing Ex. 1026, 12
5:65-6:6, 7:1-12, 8:22-25 (U.S. Pat. No. 7,377,291); Ex. 1027, 6, [0062]-[0067] 13
(U.S. Pat. Pub. No. 2008/0047611); and Ex. 1028 (Vici AG Valco Cheminert 14
Catalog)).) Dionex argues that “[t]his is especially true given the context of the 15
‘577 application and the high level of ordinary skill in this case, which Agilent’s 16
own expert acknowledges. (Ex. 2008, ¶ 47.)” Further, Dionex argues, according to 17
Dionex expert witness Dr. Nugent, “these structures have been known in the field 18
for over 30 years.” (Dionex Opposition 1, Paper 154, 18:5-17; Nugent 19
Supplemental Declaration, Ex. 1020, ¶ 81.) 20
Dionex is asserting essentially that one skilled in the art would have 21
considered the “not-shown controllable drive” to provide a corresponding structure 22
for performing the “control unit limitations” because such drives were known in 23
the art. Even if such controllable drives were known we are not convinced that 24
Dionex provided a sufficient detailed description of the invention such that one 25
skilled in the art could clearly conclude that Dionex had possession of the claimed 26
invention. “[W]hile it is true that the patentee need not disclose details of 27
18

structures well known in the art, the specification must nonetheless disclose some 1
structure.” Default Proof Credit Card System, Inc. v. Home Depot U.S.A., Inc., 412 2
F.3d 1291, 1302; (Fed. Cir. 2005). See also Biomedino, LLC v. Waters Techs. 3
Corp., 490 F.3d 946, 952 (Fed. Cir. 2007). (“Accordingly, a bare statement that 4
known techniques or methods can be used does not disclose structure. To conclude 5
otherwise would vitiate the language of the statute requiring ‘corresponding 6
structure, material, or acts described in the specification.’”). To the extent it is 7
Dionex’s argument that one skilled in the art would have found it obvious to 8
construct the claimed “control unit limitations” given the Dionex disclosure, we 9
also find this argument unpersuasive. Such a disclosure is insufficient for written 10
description. See Lockwood, 107 F.3d at1572. (“The question is not whether a 11
claimed invention is an obvious variant of that which is disclosed in the 12
specification. Rather, a prior application itself must describe an invention, and do 13
so in sufficient detail that one skilled in the art can clearly conclude that the 14
inventor invented the claimed invention as of the filing date sought.”); See also 15
Jepson v. Coleman, 314 F.2d 533, 536, 136 USPQ 647, 649–50 (CCPA 1963) (“It 16
is not a question of whether one skilled in the art might be able to construct the 17
patentee's device from the teachings of the disclosure.... Rather, it is a question 18
whether the application necessarily discloses that particular device.”) 19
Given the holding of Agilent, we look to see if Dionex “has adequate basis to 20
copy [Agilent’s] claim and thereby challenge [Agilent’s] priority of invention.” 21
Agilent, 567 Fd.3d at 1375. Dionex must show possession of the “control unit 22
limitations” as would have been understood by one skilled in the art in view of the 23
Agilent specification. Dr. Schug credibly testified that the Agilent specification 24
would have informed one skilled in the art that “[t]he gearbox, motor, encoder, and 25
CPU disclosed here [were] contemplated [as] a very specific set of structures for 26
controlling the valve to switch positions, as is recited in Claim 21.” Schug 27
19

Declaration, Ex. 2008, ¶64. We look to see if such structures are disclosed by the 1
Dionex involved specification. Regardless of whether the “control unit 2
limitations” are means plus function ones, Agilent requires us to construe a copied 3
claim limitation in view of the originating disclosure. 35 USC §112(f) requires 4
that a “claim” having a means plus function limitation “shall be construed to cover 5
the corresponding structure, material, or acts described in the specification and 6
equivalents thereof”. Thus to construe the copied claims, i.e., the Dionex claims, 7
we look to the corresponding structure, material, or acts described in the 8
originating, i.e., the Agilent involved, specification. Under such a construction, for 9
reasons stated above, the Dionex specification does not disclose the “control unit” 10
limitations within the copied claims as one skilled in the art would have understood 11
these claims in view of the Agilent specification. For reasons stated above we 12
agree with Agilent that one skilled in the art would not have considered the Dionex 13
specification o disclose any structure for the “control unit” limitation. 14
Accordingly, we find that the Dionex claims are not sufficiently described as 15
required by the first paragraph of 35 U.SC. 112 and thus are unpatentable to 16
Dionex. Further, Agilent has shown that the Dionex specification would not have 17
informed a person of ordinary skill in the art of the structure or acts associated with 18
the “control unit limitations” of the claims. Thus we conclude that the Dionex 19
claims also are unpatentable under the second paragraph of 35 U.SC. 112. Diebold 20
v. ITC, 899 F.3d at 1303; Biomedino, LLC v. Waters Technologies Corp., 490 F.3d 21
946, 950 (Fed. Cir. 2007). (“Once a court concludes that a claim limitation is a 22
means-plus-function limitation, two steps of claim construction remain: 1) the 23
court must first identify the function of the limitation; and 2) the court must then 24
look to the specification and identify the corresponding structure for that 25
function…If there is no structure in the specification corresponding to the means-26
20

plus-function limitation in the claims, the claim will be found invalid as 1
indefinite”) (citation omitted). 2
We agree with Agilent that even if the claims were not interpreted under 3
§112(f), the lack of structure and acts to describe how the quoted function is 4
accomplished would nevertheless render Dionex’s copied claims unpatentable 5
under both the first and second paragraphs of §112. (Agilent Motion 1, Paper 68, 6
15:7-16, citing Schug Declaration, Ex. 2008 ¶¶ 64-65, 81; Agilent Motion 1, Paper 7
68, 9:21-10:4, citing Schug Declaration, Ex. 2008, ¶ 69). 8
We have considered all arguments presented by Dionex in its briefing 9
opposing Agilent Motion 1, even if not specifically discussed, but do not find those 10
arguments convincing. 11
12
2. “Sample loop limitation” 13
Agilent also argues that the Dionex claims are unpatentable for failing to 14
provide description of the sample loop limitation. Because we determine that the 15
claims are unpatentable for failing to describe the “control unit” limitation, we 16
need not and do not reach this Agilent argument. 17
18
B. Agilent Motion 4 (to exclude evidence) 19
Agilent filed a motion to suppress certain exhibits relied upon by Dionex in 20
Dionex Opposition 1. (Agilent Motion 4, Paper 171). In particular Agilent asks 21
for suppression or a requirement for supplementation of Dionex Exhibit 1028 22
(selected VICI catalog excerpts regarding the “Control Unit” limitation) and 23
suppression of Dionex Exhibit 1035 (errata to Mr. Nugent’s “sample loop” 24
testimony). 25
21

We grant Agilent Motion 1 even when we consider Exhibit 1028. We did 1
not reach the issue raised in Agilent Motion 1 concerning the “sample loop” 2
limitation so we had no occasion to consider Exhibit 1035. 3
According we DISMISS Agilent Motion 4 as moot. 4
5
C. Conclusion 6
Because we grant Agilent Motion 1 and find the Dionex claims to lack 7
written description support, Dionex lacks standing to continue in this interference. 8
Bd.R. 201. Accordingly, we enter judgment against Dionex in a separate paper 9
and do not consider the remaining substantive motions filed by the parties. 10
11
III. ORDER 12
It is 13
ORDERED that Agilent Motion 1 is GRANTED; and 14
FURTHER ORDERED that Agilent Motions 2-4 and Dionex 15
Motion 1 are DISMISSED. 16
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cc (electronic):

Dionex
Jonathan Harris
David Ludwig
Jason Murata.
Axinn, Veltrop & Harkrider LLP
90 State House Square, 9th Floor
Hartford, CT 06103
jharris@axinn.com
dludwig@axinn.com
jmurata@axinn.com

Agilent
John B. Sganga, Jr.
Philip M. Nelson
Stephen W. Larson
Ted M. Cannon
David G. Jankowski
KNOBBE, MARTENS, OLSON
& BEAR, LLP
2040 Main St., 14th Floor
Irvine, CA 92614
BoxAGILENT@knobbe.com