Primera Technology, Inc.v.Accuplace

Patent Trial and Appeal Board

Jul 17, 2014

12147407 (P.T.A.B. Jul. 17, 2014)

Trials@uspto.gov Paper 50
571-272-7822 Entered: July 17, 2014
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

PRIMERA TECHNOLOGY, INC.,
Petitioner,

v.

AUTOMATIC MANUFACTURING SYSTEMS, INC.,
D/B/A ACCUPLACE,
Patent Owner.
____________

Case IPR2013-00196
Patent 8,013,884 B2

Before JOSIAH C. COCKS, JUSTIN T. ARBES, and MIRIAM L. QUINN,
Administrative Patent Judges.

QUINN, Administrative Patent Judge.

FINAL WRITTEN DECISION
35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
IPR2013-00196
Patent 8,013,884 B2

2

I. BACKGROUND
Primera Technology, Inc. (“Petitioner”) requested inter partes review
of claims 1-20 of U.S. Patent No. 8,013,884 B2 (“the ’884 patent”) pursuant
to 35 U.S.C. §§ 311-319. Paper 6 (“Pet.”). We granted the Petition and
instituted trial for all asserted claims. Paper 19 (“Dec. on Inst.”). Although
Petitioner proposed six grounds of unpatentability, we instituted trial on
three grounds:
a) obviousness of claims 1-5, 7, 8, 10-15, 17, 18, and 20 over Hodai1 and
Levine;
2

b) obviousness of claims 6 and 16 over Hodai, Levine, and Geddes;3 and
c) obviousness of claims 9 and 19 over Hodai, Levine, and Bouchard.4
During trial, Automatic Manufacturing Systems, Inc., d/b/a Accuplace
(“Patent Owner”), filed a Patent Owner Response (“PO Resp.”) addressing
the three obviousness grounds and relying on the declaration of Dr. Charles
DeBoer (Exhibit 2001). Paper 27. Petitioner filed a Reply to Patent
Owner’s Response (“Pet. Reply”) relying primarily on additional prior art
references and on Petitioner’s cross-examination of Dr. DeBoer (Exhibit
1018). Paper 30.

1
JP Patent Pub. No. 2003-312063 (“Hodai”) (Ex. 1003). Here we refer to
the English translation (Ex. 1003) of the original reference (Ex. 1002).
Petitioner has provided an affidavit attesting to the accuracy of the
translation. See Ex. 1003; 37 C.F.R. § 42.63(b).
2
U.S. Patent No. 5,676,910 (“Levine”) (Ex. 1004).
3
U.S. Patent No. 6,629,792 B2 (“Geddes”) (Ex. 1005).
4
U.S. Patent App. Pub. No. 2005/0219344 A1 (“Bouchard”) (Ex. 1006).
IPR2013-00196
Patent 8,013,884 B2

3

Both parties filed Motions to Exclude. In particular, Petitioner filed a
motion seeking exclusion of Dr. DeBoer’s testimony. Paper 36. Patent
Owner’s motion seeks to exclude the additional prior art references on which
Petitioner relies in its Reply. Paper 43.
An oral hearing was held on April 28, 2014, and a transcript of the
hearing is included in the record (Paper 49) (“Tr.”).
We have jurisdiction under 35 U.S.C. § 6(c). This final written
decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
For the reasons that follow, we determine that Petitioner has met its
burden to prove by a preponderance of the evidence that claims 1-20 of the
’884 patent are unpatentable.
A. THE ’884 PATENT (EXHIBIT 1001)
The ’884 patent
5
relates to “the attachment of information to objects,”
and more specifically to “attaching medical information to glass surfaces
such [as] glass slides during the processing of these slides.” Ex. 1001,
col. 1, ll. 15-20. The patent describes the problem in the prior art of the
potential error in matching patient information to a specimen slide. Id. at
col. 1, ll. 21-48. One solution for preventing the error is to attach the patient

5
The ’884 patent, titled “Device and Method for Printing Information on
Glass Surfaces,” issued on September 6, 2011, based on Application
12/147,407, filed on June 26, 2008, which claims priority to Provisional
Application 61/035,016, filed on March 9, 2008. On September 6, 2013,
Patent Owner filed Application 14/020,322 for reissue of the ’884 patent,
seeking to add an additional claim 21 to the patent. The reissue application
is pending.

IPR2013-00196
Patent 8,013,884 B2

4

information at the time the specimen is placed on the slide. Id. at col. 1,
ll. 49-51. The patent describes that at the time of the invention there were
various known ways of marking specimen slides: printing labels and
attaching them by hand or machine, printing on the slide with ink jet
printers, and marking the slide with laser beams or diamond scribing. Id. at
col. 1, ll. 60-65. According to the patent, however, these machines were
large, complex, expensive, and costly to operate (id. at col. 1, l. 65 – col. 2,
l. 3), provided no ability to verify the correctness of the information marked
on the slide (id. at col. 2, ll. 9-15), were hazardous to operate (id. at col. 2,
ll. 22-23), or produced dust byproduct (id. at col. 2, ll. 21-22). The
’884 patent identifies a need for an “economical method that very accurately
matches and places patient information on patient specimen slides, which
provides these features with a maximum of flexibility for use in a diagnostic
laboratory.” Id. at col. 2, ll. 24-27.
In the summary of the invention, the patent describes the printing
device as a device that prints medical information onto slides that are stored
in a slide storage section, where the printing is performed with ink media
tape and a print head to transfer the medical information onto the surface of
the slide. Id. at col. 2, ll. 34-44. Reproduced below is an annotated Figure 2
of the ’884 patent showing a front side perspective view of a printing device
of a preferred embodiment of the invention and highlighting ink tape roll
170 and tape 180. See Ex. 1001, col. 3, ll. 39-41.
IPR2013-00196
Patent 8,013,884 B2

5

As shown in Figure 2, the printing device includes slide storage
section 102 for loading a plurality of slides and a printing section that
includes print head assembly 166 with print head 162, take-up reel 168, ink
tape roll 170, tension roller 172, driven roller 174, and support roller 176.
Id. at col. 6, ll. 55-60. During printing, a slide carrier is “moved to the left
incrementally, per print row, while in contact with the tape 180.” Id. at
col. 6, ll. 63-65. “This action draws the tape from the print rol[l] 170, such
that an unprinted section of the tape 180 is interposed between the next print
row beneath the print head 162.” Id. at col. 6, ll. 65-67.
After printing the last row on the slide, “the print head and slide move
to a non-contact position, and the slide transport moves the carrier with the
completed slide to an output section.” Id. at col. 2, ll. 51-54; see also id. at
col. 6, ll. 16-18 (describing that a slide shuttles moves to the right to eject
IPR2013-00196
Patent 8,013,884 B2

6

the slide into an output tray). “The motion then is reversed . . . to acquire
another slide and repeat the printing process.” Id. at col. 6, ll. 48-52.
The patent further describes that the printing device provides the
“ability to print any specific information onto a slide 140 upon request.”
Ex. 1001, col. 7, ll. 24-25. “The information can be manually entered for
each slide or series of slides, downloaded from a database, scanned in via a
bar code scanner, and the like.” Id. at col. 7, ll. 25-28. “Alternately, the
information can be obtained directly from the microtome.” Id. at col. 7,
ll. 28-29. The patent adds that “[t]he ability to print upon demand helps
ensure the printed information matches the desired information respective to
the material deposited upon the slide.” Id. at col. 7, ll. 29-32.
B. ILLUSTRATIVE CLAIMS
Challenged claims 1 and 11 of the ’884 patent are the only
independent claims at issue:
1. A method of transferring information onto
surfaces of objects comprising:
inputting information into an input device, the input
device transforming the information into an image for
storage in a printing memory as a stored image;
positioning one or more glass objects in an object
storage section by a printing device;
removing one glass object from the storage location
in a glass object carrier of the printing device;
indexing the glass object in the carrier to initialize
the printing;
transporting the object to a first position under a
print head of a printing means for transferring such
information to the object;
IPR2013-00196
Patent 8,013,884 B2

7

positioning an ink media tape from a driven feeder
between the print head and the glass object;
moving the print head and glass object together to
cause the tape to contact the glass object in the carrier;
heating, as required, at least one pixel element in a
predetermined manner in the print head to print a row
from the stored image by a thermal process to cause an
inked media to transfer onto the object as determined by
the stored image;
advancing the tape and indexing the object to a next
print row and repeating the steps from positioning the tape
to transfer the desired information to the object;
after printing the last row of data, separating the
print head and object to an non-contact position;
transporting the glass object by the carrier to an
output section;
removing the glass object wherein the object is
mechanically removed into the output section; and
repeating said method as many times as necessary
as determined by the operator.

11. A printing device for attaching information to a
glass like object, the printing device comprising:
an input/interface means for transferring
information to the printing device;
a processing means for receiving the information
from the input/interface means and transforming the
information into an image for printing, the image being
stored in a memory of the processing means;
a control means for the input/interface means and
the processing means;
a storage section for the object, the storage section
being an integral part of the printing device;
a shuttle having a carrier for removing one of the
objects from the storage section in a controlled manner
IPR2013-00196
Patent 8,013,884 B2

8

and indexing the object for printing, the shuttle moving
the object so indexed to a first print position;
a printing section, the printing section comprising:
a tape feeder, the taper feeder being driven by a
processing means, a tape from the tape feeder being
positioned for printing in close proximity to the glass like
object in the first print position;
a print head, the print head having a plurality of
heating pixel elements in a row for printing the stored
image by a thermal process to cause an inked media to
transfer onto the object as determined by the stored image,
after printing data in the first print position, the print head
and tape are advanced to the next printing position, this is
repeated until the stored image is printed on the glass like
object, after printing the stored image, the print head and
glass like object separate to a non-contact position, and
the carrier moves the glass like object therefrom; and
an output section, the object with a printed image
thereon is moved to the output section, after which
another glass like object is removed from the storage
section by the carrier if so required and the process
repeated as necessary.

II. ANALYSIS
A. CLAIM INTERPRETATION
In an inter partes review, claim terms in an unexpired patent are
interpreted according to their broadest reasonable construction in light of the
specification of the patent in which they appear. 37 C.F.R. § 42.100(b);
Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14,
2012). Claim terms are also given their ordinary and customary meaning as
would be understood by one of ordinary skill in the art in the context of the
entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed.
IPR2013-00196
Patent 8,013,884 B2

9

Cir. 2007). Also, we must be careful not to read a particular embodiment
appearing in the written description into the claim if the claim language is
broader than the embodiment. See In re Van Geuns, 988 F.2d 1181, 1184
(Fed. Cir. 1993) (“limitations are not to be read into the claims from the
specification”).
In the Decision on Institution, we interpreted various claim terms of
the ’884 patent as follows:
Term Interpretation
“carrier” (claims 1 and 11) a structure, which may be fixed
or may move, that carries an
object
“shuttle” (claim 11) a structure that moves back and
forth to move an object
“printing means” (claim 1) a structure for printing
“input/interface means” (claim
11)
Function: transferring
information to the printing
device
Corresponding structures
include: (1) an Ethernet
network interface; (2) user
interface, including a control
panel for manually inputting
information; (3) a bar code
scanner; and (4) interface to a
microtome
IPR2013-00196
Patent 8,013,884 B2

10

Term Interpretation
“processing means” (claim 11) Function: receiving the
information from the
input/interface means and
transforming the information
into an image for printing.

Corresponding structure
includes a processor
“control means” (claim 11) Function: control
Corresponding structures
include: (1) user interface
section; and (2) a control panel
Dec. on Inst. 10-16. Petitioner does not dispute these constructions. Patent
Owner challenges the Board’s construction of all the above-listed terms,
except “printing means” and “input/interface means,” and proposes
constructions for terms that the Board did not construe. PO Resp. 8-23. We
note that Patent Owner’s proposed challenge of the construction of “shuttle”
and “carrier” does not appear to be dispositive of any issue at trial, because
Patent Owner does not dispute that the “shuttle” and “carrier” limitations are
disclosed in the asserted references based on either Patent Owner’s or the
Board’s construction of these terms. We have reviewed Patent Owner’s
arguments regarding “shuttle” and “carrier,” but see no reason to change our
original constructions.
Regarding the remaining terms that Patent Owner disputes, the
construction for “processing means” is revised per the analysis that follows,
and the construction for “control means” is not changed, as discussed below.
IPR2013-00196
Patent 8,013,884 B2

11

The analysis below further addresses the claim terms not addressed in the
Decision on Institution, terms which Patent Owner argues provide alleged
distinctions over the asserted prior art.
1. “printing means” (Claim 1)
Patent Owner agrees with the Board’s construction of this term. PO
Resp. 22-23. Accordingly, we adopt here the analysis and construction for
the term “printing means” as set forth above, and in accordance with our
Decision on Institution. Dec. on Inst. 13-14.
2. “operator” (Claims 1, 10, and 20)
The Decision on Institution did not provide a construction for the term
“operator.” This term appears as part of the “repeating” step recited in claim
1. Claims 10 and 20 further recite that the “printing device is transportable
by the operator.” Patent Owner contends that “the operator” is “the operator
that determined the quantity of slides to be created by the printing device for
each cassette and that placed specimens on the slides.” PO Resp. 9. We are
not persuaded by Patent Owner’s arguments because they do not reflect the
broadest reasonable interpretation of the claim language in light of the
specification. Independent claims 1 and 11 (from which claims 10 and 20
depend, respectively) are silent concerning the action of determining the
quantity of slides to be created by the printing device for each cassette. The
claims are silent also concerning the action of specimen placement on the
slides by an operator of the printing device. Thus, neither action is anchored
in the claim language or called for by the specification, which does not
IPR2013-00196
Patent 8,013,884 B2

12

define in any way the term “operator.” At best, the specification describes
that an “operator can determine the quantity of slides to be
created/identified.” Ex. 1001, col. 4, ll. 11-13 (emphasis added). This
description provides that the operator “can” determine the quantity of slides,
but does not limit the operator to performing such a task, which, again, the
claims do not recite. Furthermore, the specification does not link the
specimen placement with the actions of the operator because it describes that
a “laboratory technician”—not an operator of the printing device—places
the specimen on the slides (id. at col. 5, ll. 15-18). See PO Resp. 10 (arguing
that this passage of the specification supports the contention that the operator
places specimens on the slides).
The broadest reasonable interpretation of “operator” is one who
operates the printing device. This interpretation is supported by the
specification. For example, the specification states that the
“operator/technician of the machine is either in the room or in an adjacent
room.” Ex. 1001, col. 1, ll. 33-34 (emphasis added). The specification
further provides that “[t]he operations of the printing device should be as
simple as possible and minimize operator intervention, such as, for example,
that required during single slide loading methods.” Id. at col. 4, ll. 21-24.
“[T]he operator scans the cassette.” Id. at col. 4, ll. 46-55. And the
“printing device should have . . . a user interface that is adjustable in
direction to accommodate different operating locations and different
operator heights.” Id. at col. 4, ll. 41-44. These passages confirm that the
IPR2013-00196
Patent 8,013,884 B2

13

term “operator” is used in accordance with the plain and ordinary meaning
of the word: one who operates the printing device.
6

Based on the foregoing and applying the broadest reasonable
interpretation consistent with the specification, we construe “operator” to
mean “one who operates the printing device.”
3. “repeating” Step (Claim 1)
The Decision on Institution did not provide a construction for the step
of “repeating said method as many times as necessary as determined by the
operator.” According to Patent Owner, this claim limitation should be
clarified in two aspects. First, Patent Owner contends that the plain and
ordinary meaning of this limitation is “repeating each and every step of the
method as many times as necessary.” PO Resp. 10 (emphasis in original).
Second, Patent Owner contends that the phrase “as determined by the
operator” means “as determined by the operator that determined the quantity
of slides to be created by the printing device for each cassette and that
placed specimens on the slides.” PO. Resp. 11. We agree with Patent
Owner’s first contention, but we do not agree with the second contention for
the reasons described with regard to the term “operator,” above.
Inspection of the claim language itself—“repeating the method”—
yields the conclusion that the phrase refers to each and every step of the

6
See Definition of operator, THE AMERICAN HERITAGE ® DICTIONARY
OF THE ENGLISH LANGUAGE (2011), available at
http://search.credoreference.com/content/entry/hmdictenglang/operator/0
(Exhibit 3001).
IPR2013-00196
Patent 8,013,884 B2

14

method (other than the “repeating” step of the method itself), as recited.
And although the specification is unclear regarding whether all the expressly
recited steps are repeated, the plain language of the claim leaves no room for
interpreting otherwise. See Ex. 1001, col. 4, l 58 – col. 5, l. 10 (stating that
“this process is repeated,” but not describing whether the described
“process” refers to all the steps from “inputting information” to “removing
the glass object”).
Based on the foregoing and the evidence in the record before us, we
conclude that the “repeating” step, construed broadly, but reasonably in light
of the specification, means “repeating each and every step as many times as
necessary as determined by the operator.”
4. “input device” (Claim 1)
The Decision on Institution did not provide a construction for this
term. In its response, Patent Owner proffers that the construction of “input
device” is “a processor that transforms information into an image to be
printed.” PO Resp. 14. We do not agree with Patent Owner because the
proposed construction (1) is inconsistent with the plain and ordinary
meaning of the term, (2) imports extraneous limitations, and (3) improperly
reads an embodiment into the claims.
First, the term “input device” is used in the specification and recited in
the claims in accordance with the plain and ordinary meaning of the term.
For example, claim 1 recites “inputting information into an input device”
and “the input device transforming the information into an image.” These
functional limitations of “input device” reveal that, according to the
IPR2013-00196
Patent 8,013,884 B2

15

broadest, but reasonable interpretation, the term refers to a structure for
handling input of information: accepting and transforming the information
as recited. The specification confirms that “input device” is a structure for
handling input of information by stating that, in one exemplary embodiment,
“[a] person or input device inputs the medical information into a processor
that prepares a rasterized image to be printed and stores this image in a
memory of the processor.” Ex. 1001, col. 2, ll. 36-39 (emphasis added);
col. 4, ll. 58-61. Therefore, under the broadest reasonable interpretation,
“input device” is not limited to a “processor that transforms information into
an image to be printed,” as Patent Owner urges us to conclude.
Second, the specification uses “input device” distinctly and separately
from the processor. In the passages cited above, the “input device” is used
to input the medical information into a processor. Id. The specification
further describes the processor as rasterizing an image to be printed. Id.
Patent Owner’s proposed construction attempts to narrow the claims to an
unrecited structure of a processor, which is not called for expressly by the
claim language. Lastly, Patent Owner’s proposed construction limits the
“input device” to an embodiment of a processor, and ignores the function of
inputting information into the processor that is described and recited.
Accordingly, we conclude that the plain and ordinary meaning of
“input device” is a structure for handling input of information.
5. “processing means” (Claim 11)
We construed “processing means” as a means-plus-function term, in
accordance with section 112, ¶ 6. Dec. on Inst. 15. We identified the
IPR2013-00196
Patent 8,013,884 B2

16

function as “receiving the information from the input/interface means and
transforming the information into an image for printing.” Id. We identified
the structure linked to the function as a processor. Id.
Patent Owner disagrees with the identified function, but does not
disagree with the identified structure. In particular, Patent Owner argues
that the above-identified functions of receiving and transforming are not the
only functions attributed to the “processing means.” PO Resp. 12. Claim 11
recites an unidentified function in the following limitation: “a tape feeder,
the tape feeder being driven by a processing means, a tape from the tape
feeder being positioned for printing in close proximity to the glass like
object in the first print position” (emphasis added). According to Patent
Owner, the specification describes a processor as the “structure
corresponding to the function of driving the tape feeder.” PO Resp. 12
(citing Ex. 1001, col. 2, ll. 41-43, col. 4, ll. 64-65).
We are persuaded by the argument that claim 11 recites an additional
function of driving the tape feeder. The claim language expressly attributes,
albeit in passive voice, to the processing means, the function of driving a
tape feeder. We do not agree, however, that the structure corresponding to
that driving function is a processor. First, the passages Patent Owner cites
do not support its contention, because they do not describe a processor in
any discernible manner. For example, the first cited passage states that “[a]n
ink media tape roll acting through a driven feeder provides, in a controlled
manner, a coated tape between a print head and the slide.” Ex. 1001, col. 2,
ll. 42-44 (emphasis added). The claims recite a “tape feeder” being
IPR2013-00196
Patent 8,013,884 B2

17

“driven,” and the specification refers to a “driven feeder”—the structure
driving the feeder, however, is unknown from this passage. The second
citation relied on by Patent Owner is virtually identical to the first citation
and fares no better: “An ink media tape roll acting through a driven feeder
provides a coated tape between the print head and the slide.” Id. at col. 4, ll.
64-66 (emphasis added). These passive-voice sentences give us no clue as
to the structure that drives the feeder.
Furthermore, the asserted testimony of Charles DeBoer does not
support the proposed construction. Dr. DeBoer declares that the ’884 patent
discloses a printing section that includes a tape driven by the processor.
Ex. 2001 ¶¶ 56, 60. Dr. DeBoer supports that statement by pointing to the
passive-voice sentences discussed above. Id. at n.37. Dr. DeBoer also relies
on a passage in column 6 that describes the printing section of the device
having various components, including ink tape roll 170, tension roller 172,
driven roller 174, and support roller 176. Id.; Ex. 1001, col. 6, ll. 55-62. In
that passage, however, the only structure linked in any way to the function of
“driving” is driven roller 174—no processor is described.
Additional testimony of Dr. DeBoer regarding whether a processor
drives the tape feeder is unpersuasive because that additional testimony is
conclusory. For example, Dr. DeBoer states that “a person of ordinary skill
in the art understands that the processor performs the function of driving the
tape feeder.” Ex. 2001 ¶ 63. Although the law does not require that a
structure be identified explicitly, the specification must identify some
structure that a person of ordinary skill in the art would understand as
IPR2013-00196
Patent 8,013,884 B2

18

corresponding to the means-plus-function limitation. See Atmel Corp. v.
Info. Storage Devices, Inc., 198 F.3d 1374, 1380 (Fed. Cir. 1999). Where
our reviewing court has found that the structure is a computer, without an
express disclosure of that computer, the specification has shown clearly the
intent to attribute to a computer the recited functions. See In re Dossel, 115
F.3d 942, 946-47 (Fed. Cir. 1997). Although the ’884 patent describes a
processor, Dr. DeBoer does not show how the description of that processor
would be understood by a person of ordinary skill in the art to include the
function of driving the tape feeder. Nor does he explain how the ’884 patent
specification shows that the processor is intended to drive the tape feeder.
Therefore, because of the conclusory nature of, and the lack of support in,
the written description for Dr. DeBoer’s testimony in this regard, we do not
find his testimony on that issue persuasive.
We now turn to identifying the structure linked to the function of
driving the tape feeder. “Application of § 112, ¶ 6 requires identification of
the structure in the specification which performs the recited function.”
Micro Chemical, Inc., v. Great Plains Chemical Co., Inc., 194 F.3d 1250,
1257 (Fed. Cir. 1999) (emphasis added). Further, the statute does not permit
“incorporation of structure from the written description beyond that
necessary to perform the claimed function.” Id. at 1258. The patent
describes that a drive system is located in the rear of the machine, shown
below in Figure 1B of the ’884 patent. Ex. 1001, col. 6, ll. 24-26.
IPR2013-00196
Patent 8,013,884 B2

19

Figure 1B depicts stepper motor 152 that moves certain parts in the
device, such as translating back and forth slide supports that are slideably
mounted on guide shafts 148. Id. at col. 6, ll. 1-6. Inspection of Figure 1B
also shows that belt 190 is coupled to motor 152 and engages what Figure 2
depicts as take-up reel 168 and driven feeder 174, and that the motor thereby
causes the rotation of the take-up reel and the driven feeder. Further, there is
a direct relationship between the back and forth motion of the slide and
feeding the ink media tape during printing. The ’884 patent confirms this
relationship stating that “[t]he ink media moves in tandem with the motion
of the slide, presenting a continuously fresh section of ink between the print
head and the slide throughout the printing process.” Id. at Abstract
(emphasis added). Indeed, the patent describes that during printing, the
IPR2013-00196
Patent 8,013,884 B2

20

action of the slide carrier moving to the left, per print row, “draws the tape
from the print rol[l] 170, such that an unprinted section of the tape 180 is
interposed between the next print row beneath the print head 162.” Id. at
col. 6, ll. 65-67. The ’884 patent further describes driven roller 174 in
connection with the printing section of the device shown in Figure 2. Id. at
col. 6, ll. 55-60. Because Figures 1B and 2 support the conclusion that only
the take-up reel and driven feeder are rotated by the motor during printing,
those devices, when “driven,” feed the ink media tape in the printing device.
Therefore, we conclude that the structure that drives the recited “tape
feeder” is a motor.
Accordingly, we conclude that the structures of the “processing
means” linked to the three recited functions (receiving the information from
the input/interface means, transforming the information into an image for
printing, and driving the tape feeder) are a processor and a motor.
6. “input/interface means” (Claim 11)
Patent Owner provides its proposed construction for the term in
accordance with section 112, ¶ 6, and argues that the corresponding
structures for the limitation include “(1) an interface to an Ethernet network,
(2) a user interface for manually obtaining information, (3) an interface to a
bar code scanner, (4) an interface to a microtome, and (5) an interface to a
database.” PO Resp. 23. We find that Patent Owner’s proposed
construction does not differ materially from our construction. Further, we
do not discern any argument by Patent Owner that our construction should
be revisited. Id. Accordingly, the construction for the term “input/interface
IPR2013-00196
Patent 8,013,884 B2

21

means” is as set forth above and according to the analysis in our Decision on
Institution. Dec. on Inst. 14-15.
7. “control means” (Claim 11)
Patent Owner requests a modification to the construction of “control
means” provided in the Decision on Institution. PO Resp. 13. In particular,
Patent Owner urges that under § 112, ¶ 6, the function of the “control
means” is not control generally, as we initially determined, but “controlling
the input/interface means and the processing means.” Id. We deny Patent
Owner’s request because the proffered function is not supported by the claim
language.
Claim 11 recites the limitation as follows: “control means for the
input/interface means and the processing means.” After the word for, there
is no functional language tying the function of control specifically to the
“input/interface means” and “processing means.” We interpret the general
recitation of the function of “control” as broadly, but reasonably, being
untethered to those specific means. The specification confirms this
interpretation as it states that “a control panel and display 182 are used to
initiate and control the operation of the printing device 110.” Ex. 1001,
col. 7, ll. 16-18 (emphasis added). Patent Owner cites this very passage as
disclosing the function of control. This passage, however, does not support
the contention that the “control” is specifically of the “input/interface
means” and “processing means,” to the exclusion of the control of other
components. Instead, the control that the specification describes is,
generally, the operation of the printing device. Id. Indeed, Patent Owner
IPR2013-00196
Patent 8,013,884 B2

22

does not point to any disclosure in the specification of a device controlling
both an “input/interface means” and a “processing means.”
Furthermore, we are not persuaded by Patent Owner’s argument that
the described, but unclaimed, capability of the printing device to print “upon
request” or “upon demand” weighs in favor of redefining the function of
“control” in the manner argued by Patent Owner. See PO Resp. 13-14.
Patent Owner relies on the statements in paragraph 2 of the Notice of
Allowability of the application corresponding to the ’884 patent.
7
See
Ex. 2002. Notably, the statement of reasons for allowance is stated as

7
Paragraph 2 of the Notice states that:
2. The following is an examiner's statement of
reasons for allowance: Prior art of record do not
teach or suggest the claimed method and device for
transferring information onto surfaces of glass
objects comprising the steps/means as recited in the
claims.

The claimed method and device provides the
ability to print any specific information onto a glass
object upon request. The information can be
manually entered for each object or series of
objects, downloaded from a database, scanned in
via a bar code scanner, and the like. Alternately, the
information can be obtained directly from the
microtome. The ability to print upon demand helps
ensure the printed information matches the desired
information respective to the material deposited
upon the object.
Ex. 2002 ¶2.
IPR2013-00196
Patent 8,013,884 B2

23

follows: “[p]rior art of record does not teach or suggest the claimed method
and device . . . as recited in the claims.” Id. at ¶ 2. The language in the
Notice that Patent Owner relies on as a “statement of reasons for allowance”
merely paraphrases language found in the specification. Compare Ex. 2002
¶ 2 with Ex. 1001, col. 7, ll. 24-32. This paraphrased language is untethered
to the “control means.” Nevertheless, it is unclear how the specific
embodiment of ways to enter information for the printing device alluded to
by the Examiner confines the “control” function to features not expressly
recited in the claim. See Generation II Orthotics, Inc. v. Med. Tech., Inc.,
263 F.3d 1356, 1364-65 (Fed. Cir. 2001) (“When construing the functional
statement in a means-plus-function limitation, we must take great care not to
impermissibly limit the function by adopting a function different from that
explicitly recited in the claim.”). Accordingly, for purposes of construing
the “control means” term, we give little to no weight to the Examiner’s
statement in the Notice of Allowability.
Based on the foregoing analysis, we confirm our determination in the
Decision on Institution that the recited function is “control” and that the
structures corresponding to the function include (1) user interface section
(Ex. 1001, col. 7, ll. 14-15; Fig. 1A (item 110)), or (2) a control panel (id. at
col. 7, ll. 16-17).
8. “transforming” (Claims 1 and 11)
The Decision on Institution did not provide a construction for this
term. In its response, Patent Owner proffers that the ordinary and customary
meaning of “transforming” is “converting non-rasterized information into a
IPR2013-00196
Patent 8,013,884 B2

24

rasterized image to be printed.” PO Resp. 9. Patent Owner argues that the
specification and the opinion of its declarant, Dr. DeBoer, support the
proffered construction. Id. (citing Ex. 2001 ¶ 35; Ex. 1001, col. 2, ll. 35-38,
col. 4, ll. 58-61). We are not persuaded by Patent Owner’s argument
because the claim language and the specification do not support the
proposed construction of “transforming.”
The specification describes that the processor “transforms the
information into a format that is used to drive the heating pixels
appropriately.” Ex. 1001, col. 7, ll. 18-21. Such a description of
transforming is broader than “converting non-rasterized information into a
rasterized image.” Although the specification may describe that the
processor rasterizes, it describes an exemplary embodiment, and neither the
claim language nor the specification limits the scope of the word
“transforming” to rasterizing.
As Patent Owner notes, the claim recites the word in accordance with
its ordinary and customary meaning. The testimony of Dr. DeBoer, on
which Patent Owner relies to support that meaning, uses the words
“transforming,” “rasterizing,” and “converting” interchangeably. Ex. 2001
¶ 35. That testimony, however, fails to support the interchangeability of
these words with any facts or other evidence. Furthermore, the cited
testimony attempts to describe transforming techniques known to a person of
ordinary skill in the art—the testimony, however, is not directed to what the
proper claim construction would be for the term using the broadest
reasonable interpretation in the context of the specification. Accordingly,
IPR2013-00196
Patent 8,013,884 B2

25

we are not persuaded by the cited testimony of Dr. DeBoer as to the proper
scope of the term “transforming.”
As evidence of the proper meaning, we consider that the claims are
directed to a printing device that transforms information into an image.
Because one embodiment of that transformation includes the use of a
processor, the appropriate field of science with which one of ordinary skill in
the art would be involved includes computer science. See e.g., Ex. 2001
¶ 15 (setting forth the level of skill in the art as someone with an
undergraduate degree in mechanical engineering or computer science plus
four years of industry experience in printer design). Evidence of the
meaning of the word “transforming” in that field is exemplified by a
dictionary definition: to change the form of digital computer information
without significantly altering its meaning.
8
This definition is consistent with
the claimed step of “transforming the information into an image for storage”
and consistent with the specification, which describes transforming the
information into a format that is used to drive the heating pixels
appropriately. See Ex. 1001, col. 7, ll. 18-21, 45-46. The transformation
must not alter the meaning of the information because the specification and
the claims provide that the image that is printed must convey the
information, such as the patient’s name, patient identifier, bar-coding, etc.

8
Definition of transform (computer science), DICTIONARY OF
SCIENTIFIC AND TECHNICAL TERMS 1953 (McGraw-Hill 4
th
ed. 1989)
(attached as Ex. 3002).
IPR2013-00196
Patent 8,013,884 B2

26

Id. at col. 4, ll. 7-9, col. 7, ll. 54-55, 66-67 (transferring the desired
information to the object).
Accordingly, applying the broadest reasonable interpretation
consistent with the specification, we determine that the term “transforming
the information into an image” means “changing into an image the form of
the information without significantly altering its meaning.”
B. CREDIBILITY OF DR. DEBOER AND PETITIONER’S MOTION TO
EXCLUDE DR. DEBOER’S DECLARATION
As an initial matter, Petitioner, in its Reply, challenges the credibility
of Patent Owner’s declarant, Dr. DeBoer. Reply 14-15. Dr. DeBoer
testified regarding the ’884 patent and the prior art in a declaration submitted
by Patent Owner in support of its Response. Ex. 2001. Petitioner argues
that during his deposition Dr. DeBoer admitted to having no familiarity with
the general state of the art, contrary to statements in his declaration.
Reply 15. Given these circumstances, Petitioner requests that we give little
to no weight to Dr. DeBoer’s opinions in general. Id.
In addition to challenging Dr. DeBoer’s credibility in the Reply,
Petitioner filed a Motion to Exclude Dr. DeBoer’s declaration, arguing that
Dr. DeBoer’s testimony is inadmissible under Fed. R. Evid. 702.
9
Paper 26
(“Pet. Mot.”). Patent Owner opposes Petitioner’s Motion. Paper 44 (“PO
Opp.”). Before turning to the parties’ substantive arguments, and given the
issues overlapping Petitioner’s Motion to Exclude and Petitioner’s

9
Petitioner also filed a Reply in Support of Motion to Exclude
Evidence. Paper 47.
IPR2013-00196
Patent 8,013,884 B2

27

arguments regarding Dr. DeBoer’s credibility, we now resolve the raised
challenges concerning Dr. DeBoer’s testimony.
1. Petitioner’s Motion to Exclude Pursuant to 37 C.F.R. § 42.64
Citing Fed. R. Evid. 702 and 37 C.F.R. § 42.64(c), Petitioner argues
that Dr. DeBoer is not qualified as an expert in the pertinent art, and cites to
Dr. DeBoer’s deposition testimony reflecting a lack of expertise in the
medical diagnostic field. See, e.g., Ex. 1018, 129:25 – 131:9, 50:13-15,
41:6-10, 157:16-19, 113:1-7. Petitioner concludes that “[b]ecause Dr.
DeBoer is by his own admission not qualified in what he considers to be the
relevant art, his declaration is properly excluded from this proceeding.” Pet.
Mot. 6. In addition, Petitioner maintains that Dr. DeBoer is not qualified to
opine as to the state of the art at the time of the invention because (i) he
admitted he has no knowledge or expertise regarding the relevant state of the
art (id. at 7); and (ii) an unqualified expert may not testify to “the nature of
the claimed invention, the scope and content of prior art, [or] the differences
between the claimed invention and the prior art” (id. at 6 (citing Sundance,
Inc. v. Demonte Fabricating Ltd., 550 F.3d 1356, 1360 (Fed. Cir. 2008))).
Further, Petitioner maintains that certain material Petitioner filed with its
Reply
10
refutes Dr. DeBoer’s assertions that the patent-at-issue disclosed “on
demand” features that were not found in the prior art, and Dr. DeBoer did
not review this material before submitting his declaration. For the reasons
discussed below, Petitioner’s Motion to Exclude is denied.

10
Exs. 1021–1025 and 1027–1029.
IPR2013-00196
Patent 8,013,884 B2

28

Fed. R. Evid. 702, as made applicable to inter partes reviews pursuant
to 37 C.F.R. § 42.62, provides:
A witness who is qualified as an expert by knowledge,
skill, experience, training, or education may testify in the form
of an opinion or otherwise if:

(a) the expert’s scientific, technical, or other specialized
knowledge will help the trier of fact to understand the evidence
or to determine a fact in issue;
(b) the testimony is based on sufficient facts or data;
(c) the testimony is the product of reliable principles and
methods; and
(d) the expert has reliably applied the principles and
methods to the facts of the case.

Dr. DeBoer worked for 21 years for Eastman Kodak Company’s
printer technology division, where he gained knowledge of, and experience
with, laser and inkjet marking engine technologies, and specifically, worked
on comparisons of thermal print head and laser thermal color printing.
Ex. 2003, 3. In developing laser thermal color printing products, he was
involved in writing software code for rasterizing, combining, modifying, and
half toning color images. Id. at 1. He is a named inventor on more than 100
patents in printer and/or imaging technology. Id. Based on the foregoing,
we are not persuaded by Petitioner’s argument that Dr. DeBoer is not
qualified to testify as an expert in this case.
Furthermore, we are not persuaded by Petitioner’s argument at pages
5-6 of its Motion that Dr. DeBoer should be disqualified because he does not
have specific expertise with microscope slide printers. First, the objection
IPR2013-00196
Patent 8,013,884 B2

29

goes to the weight and sufficiency of his testimony, rather than its
admissibility. See Liquid Dynamics Corp. v. Vaughan Co., 449 F.3d 1209,
1221 (Fed. Cir. 2006) (“Vaughan’s challenge goes to the weight of the
evidence rather than the admissibility of Lueptow’s testimony and
analysis.”) (citing Quiet Tech. DC-8, Inc. v. Hurel-Dubois UK Ltd., 326 F.3d
1333, 1344-45 (11th Cir. 2003)); In re TMI Litig., 193 F.3d 613, 692 (3d
Cir. 1999) (“So long as the expert’s testimony rests upon ‘good grounds,’ it
should be tested by the adversary process—competing expert testimony and
active cross-examination.” (quoting Ruiz-Troche v. Pepsi Cola of P. R.
Bottling Co., 161 F.3d 77, 85 (1st Cir.1998)); Wilmington v. J.I. Case Co.,
793 F.2d 909, 920 (8th Cir.1986) (“Virtually all the inadequacies in the
expert’s testimony urged here by [defendant] were brought out forcefully at
trial. . . . These matters go to the weight of the expert’s testimony rather than
to its admissibility.”). Second, Dr. DeBoer testified that his experience with
printers adequately prepared him to address the asserted prior art and the
issues involved in the ’884 patent. See Ex. 1018, 209:22 –211:6. In sum,
we find that the lack of specific expertise with microscopic slide printers is
insufficient reason to exclude Dr. DeBoer’s testimony.
11

Moreover, Petitioner points to other testimony elicited from Dr.
DeBoer regarding his lack of knowledge of the state of the art at the time of
the invention, and maintains that, because of this testimony, Dr. DeBoer may

11
There is no requirement of a perfect match between the expert’s
experience and the field of the patent. See SEB S.A. v. Montgomery Ward &
Co., 594 F.3d 1360, 1373 (Fed. Cir. 2010).
IPR2013-00196
Patent 8,013,884 B2

30

not testify regarding the relevant state of the art at the time of the invention.
Pet. Mot. 11-13. Petitioner also argued that its rebuttal evidence refutes Dr.
DeBoer’s opinions and that he did not review this evidence in providing his
testimony. Id. We are not persuaded by Petitioner’s arguments. To the
extent that Dr. DeBoer has made statements about his lack of knowledge
regarding the state of the art, and to the extent that he did not consider
certain evidence in providing his opinions, these considerations affect the
weight to be accorded to his testimony; these are not sufficient to exclude his
testimony.
Thus, we deny Petitioner’s motion seeking to exclude Dr. DeBoer’s
testimony in this proceeding.
2. Credibility of Dr. DeBoer
The challenge to Dr. DeBoer’s credibility is based on the same
arguments made in support of Petitioner’s Motion to Exclude. Reply 14-15.
We are capable of discerning from the testimony, and the evidence
presented, whether the witness’ testimony should be entitled to any weight,
either as a whole or with regard to specific issues. Here, Petitioner
advocates that Dr. DeBoer’s entire testimony (Ex. 2001) is entitled to little,
if any, probative value. We decline to take the advocated wholesale
approach to evaluating the credibility of Dr. DeBoer’s testimony. We will
weigh the testimony on an issue-by-issue basis, as appropriate. Moreover, to
the extent Petitioner has pointed out the inadequacies of Dr. DeBoer’s
testimony, we are capable of taking note of those inadequacies and weighing
that testimony accordingly.
IPR2013-00196
Patent 8,013,884 B2

31

C. PRINCIPLES OF LAW
To prevail in its challenges to the patentability of claims, the
petitioner must establish facts supporting its challenges by a preponderance
of the evidence. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d). A claim is
unpatentable under 35 U.S.C. § 103(a) if the differences between the
claimed subject matter and the prior art are such that the subject matter, as a
whole, would have been obvious at the time the invention was made to a
person having ordinary skill in the art to which said subject matter pertains.
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of
obviousness is resolved on the basis of underlying factual determinations
including: (1) the scope and content of the prior art; (2) any differences
between the claimed subject matter and the prior art; (3) the level of skill in
the art; and (4) where in evidence, so-called secondary considerations.
Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966) (“the Graham
factors”). The level of ordinary skill in the art usually is evidenced by the
references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355
(Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In
re Oelrich, 579 F.2d 86, 91 (CCPA 1978).
For an obviousness analysis, prior art references must be “considered
together with the knowledge of one of ordinary skill in the pertinent art.” In
re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (quoting In re Samour, 571
F.2d 559, 562 (CCPA 1978)). Moreover, “it is proper to take into account
not only specific teachings of the reference but also the inferences which one
skilled in the art would reasonably be expected to draw therefrom.” In re
IPR2013-00196
Patent 8,013,884 B2

32

Preda, 401 F.2d 825, 826 (CCPA 1968). That is because an obviousness
analysis “need not seek out precise teachings directed to the specific subject
matter of the challenged claim, for a court can take account of the inferences
and creative steps that a person of ordinary skill in the art would employ.”
KSR, 550 U.S. at 418; see also In re Translogic Tech., Inc., 504 F.3d at
1259.
We analyze the instituted grounds of unpatentability in accordance
with the above-stated principles. But first, we determine the level of
ordinary skill in the art.
D. LEVEL OF ORDINARY SKILL IN THE ART
The Petition does not set forth Petitioner’s contention on the level of
ordinary skill in the art. Patent Owner proffers Dr. DeBoer’s testimony on
the determination of the level of skill in the art appropriate for the
’884 patent. Ex. 2001 ¶ 15-16. That testimony concludes that a person of
ordinary skill in the art relevant to the ’884 patent would have had an
undergraduate degree in mechanical engineering and/or computer science
plus four years of industry experience in printer design.” Id. ¶ 15. Although
Petitioner disputes that Dr. DeBoer would have been one of ordinary skill in
the art, Petitioner does not challenge Dr. DeBoer’s opinion regarding the
training and experience that one of ordinary skill in the art relevant to the
’884 patent would have had. Based on our review of the technology claimed
in the ’884 patent and the description of the printing device set forth in the
specification, we agree with Patent Owner that the level of ordinary skill in
the art would include an undergraduate degree in mechanical engineering
IPR2013-00196
Patent 8,013,884 B2

33

and/or computer science plus four years of industry experience in printer
design. We further agree that this level would include the “ability to analyze
both mechanical and electronic operations of thermal dye transfer printers.”
Id.
E. OBVIOUSNESS GROUNDS BASED ON HODAI AND LEVINE
With respect to the alleged grounds of unpatentability based on the
combination of Hodai and Levine, we have reviewed the Petition, the Patent
Owner Response, and Petitioner’s Reply, as well as the relevant evidence
discussed in each of those papers. We are persuaded, by a preponderance of
the evidence, that claims 1-5, 7, 8, 10-15, 17, 18, and 20 are rendered
obvious by Hodai and Levine under 35 U.S.C. § 103.
We first summarize the teachings in the Hodai and Levine references.
1. Overview of Hodai (Exhibit 1003)
Hodai teaches a thermal printer having a storage part for storing glass
plates prior to printing, a printing part for printing on the plates, and a
conveyor that transports plates. Ex. 1003, claim 1. More specifically, Hodai
teaches using a printer with a thermal head and a conveying path to place the
glass plate at a print position. Id. ¶ 6. The process begins by activating a
feeder hook to engage the back edge of a glass plate at the bottom of a glass
plate storage cassette to propel the glass plate onto the conveying path. Id.
¶¶ 16, 34-36. That conveying path is equipped with conveyor rollers that
transport the glass plates from the supply part to the printing part. Id. ¶ 8.
Petitioner provides an annotated version of Figure 5 of Hodai.
Pet. 14. The top view portion of the annotated figure is shown below:
IPR2013-00196
Patent 8,013,884 B2

34

The above excerpt of Figure 5 illustrates that the conveying rollers
(items 33) grip the sides of the glass plate (item 13) and rotate around their
center, thus guiding the glass plate to the center of the conveyor path and to
the platen roller (26). Id. ¶ 22-26. When the glass slide reaches this
position, the thermal head lowers and presses the ink ribbon to the glass
plate. Id. ¶ 45. The thermal elements on the thermal head transfer ink from
the ink ribbon onto the surface of the glass plate. Id. When the printing
process is complete, the glass plate is dropped onto a stacker cassette and
stored there. Id. ¶ 46.
2. Overview of Levine (Ex. 1004)
Levine teaches an automatic device that prepares microscope slides
with blood films and prints information on the slides according to coded
information obtained by scanning a bar code on the specimen tube.
Ex.1004, Abstract. Levine teaches that the device includes “electronics
module 18 [that] contains power supplies and computer elements, and may
also contain an interface and connection to a laboratory computer.” Id. at
IPR2013-00196
Patent 8,013,884 B2

35

col. 4, ll. 56-59. Patient information to print on the slide may be obtained
from an interfaced hospital or laboratory computer. Id. at col. 9, l. 64 – col.
10, l. 2.
Below are Figures 9 and 9A of Levine:

Figure 9 above illustrates carriage 6 in its home position. Id. at col. 6,
ll. 42-46. The carriage holds slide 1 and moves back and forth along a
frame. Id. at Abstract. The slide is dispensed from a magazine into the
carriage, which then moves to the position for printing the information on
the slide. Id. “The bar code on the test tube is transformed into a numerical
value by the computer, and the printing head 31 of printer 3 records the
numerical value and/or other information onto the forward portion of the
slide[,] where, as described above, the frosting or coating is located.” Id. at
col. 6, ll. 56-60. Figure 9A, shown above, illustrates an enlarged view of the
forward portion of the slide including the data printed onto the slide. Id. at
col. 6, ll. 60-62.
After the blood sample is placed on the slide, the carriage moves to
the right, driving the slide up a ramp (shown in fig. 13) and placing the slide
on a platform. Id. at col. 8, ll. 40-46, 64-67. The carriage then moves back
IPR2013-00196
Patent 8,013,884 B2

36

to the home position to dispense the next slide from the magazine. Id. at
col. 9, ll. 5-16.
3. Claim 1 is Unpatentable in View of Hodai and Levine
There is no dispute that Hodai and Levine teach many of the
limitations of claim 1. In particular, Hodai discloses: positioning a glass
object in an object storage section (printer with a hopper cassette 10);
removing a glass object into a “carrier” (central conveyor 6 having rotating
rollers 33); indexing (engaging and transporting the slide to printing part 7);
transporting the object under the print head (rollers 33 transport the slide to a
printing position under thermal print head 29); positioning ink media tape
(positioning thermal transfer ink ribbon 31); moving the print head (pressure
applied to print head 29 to press ink ribbon 31 onto glass slide); heating a
pixel element to print (print head 29 includes a row of heating elements for
printing); advancing the tape and indexing to a next print row (conveying
path and moving slide and ink ribbon 31 along the path); separating the print
head and object (printed slide is removed from printing part 7); transporting
the glass object by the carrier (slide moved to stacker cassette 42 via
conveyor 7); and removing the glass object into an output section (slide is
dropped into stacker cassette 42). See Pet. 34-36. With regard to Levine,
Petitioner has shown, and Patent Owner does not dispute, that Levine
discloses a “carrier” in which glass slides are removed from a magazine for
indexing, and transporting to a printing unit and to an exit ramp. See id.
Patent Owner does dispute that, with regard to claim 1, Petitioner has
shown that Hodai and/or Levine teach two limitations: “inputting
IPR2013-00196
Patent 8,013,884 B2

37

information into an input device, the input device transforming the
information into an image for storage in a printing memory as a stored
image” [hereinafter “the inputting step”]; and “repeating said method as
many times as necessary as determined by the operator” [hereinafter “the
repeating step”]. PO Resp. 24-31. We do not agree with Patent Owner’s
contentions that either Hodai or Levine fails to teach the inputting step and
the repeating step. As explained below, we are persuaded that Levine
teaches the inputting step and that both Hodai and Levine teach the repeating
step. Furthermore, we conclude that the repeating step is a matter of
common sense for the reasons explained below.
a. The Repeating Step of Claim 1
Many of Patent Owner’s arguments rest on the distinctions drawn
between the repeating step, as recited, and the capability disclosed in Levine
and Hodai of printing subsequent slides. PO Resp. 30-33, 34-36.
Furthermore, according to Patent Owner, if Hodai discloses the repeating
step—involving repetition of the entire method—it necessarily is required
that Hodai also teach repetition of the inputting step, as recited. PO Resp.
28-30. Patent Owner also contends that Levine’s next-slide positioning
invites speculation as to whether the repeating step is met. PO Resp. 31-33.
We have reviewed all the arguments presented by Patent Owner and are not
persuaded that the repeating step, alone or in combination with the inputting
step, imparts a patentable distinction over the prior art of record as argued by
Patent Owner.
IPR2013-00196
Patent 8,013,884 B2

38

As stated in the Decision on Institution, both Hodai and Levine teach
that the disclosed printing devices are capable of repeatedly printing slides.
Dec. on Inst. 27-28. In Hodai, the repetition occurs from the point of
separation of the glass plates. Ex. 1003 ¶ 48. In Levine, the printing device
is put in position to dispense the “next slide” right after completion of
printing. Ex. 1004, col. 9, ll. 6-19. That is, Hodai and Levine disclose
devices capable of printing multiple slides, repeatedly.
Nevertheless, because Hodai does not teach the inputting step, Patent
Owner argues that Hodai cannot be found to teach the repeating step. See
PO Resp. 34 (arguing that Hodai does not teach “transforming,” which is
part of the inputting step). The premise for this argument is in
characterizing Hodai as rendering “ready-to-print images” such that the
repeated printing occurs without processing the ready-to-print images. PO
Resp. 29, 34 (citing Ex. 2001 ¶¶ 82-85, 140-141). Dr. DeBoer opines that
printing the same “ready-to-print image” leads one of ordinary skill in the art
to the conclusion that Hodai does not process or transform the image with
each repeated printing operation. Ex. 2001 ¶ 82-83, 141-142. Dr. DeBoer,
therefore, refers to Hodai’s printer as a “batch-type printer” that does not
“render[] a unique image on each slide, such as to identify specific slide
number[s].” Id. ¶ 84. In cross-examination, however, Dr. DeBoer testified
that Hodai’s printing device is likely to receive an input and print the
different things that are inputted. Ex. 1018, 94:14-17. We also note that Dr.
DeBoer admitted that the claim language does not require printing of a
unique image, and that the claim language would be met if multiple slides
IPR2013-00196
Patent 8,013,884 B2

39

were printed each with the same information, i.e., without rendering a
“unique image.” Ex. 1018, 92:13 – 93:19. There is an inconsistency in Dr.
DeBoer’s opinions and testimony. On the one hand, Hodai is distinguished
because it allegedly does not render a unique image on each slide each time
a slide is printed, and on the other hand, the claims are alleged to not require
rendering a unique image with each repetition.
Given the inconsistency in Dr. DeBoer’s testimony, we do not credit
Dr. DeBoer’s opinion characterizing Hodai as a “batch-type printer” or that
such characterization, even if it were applied to Hodai, distinguishes over the
claim language. Furthermore, Patent Owner’s argument focuses on the
teachings of Hodai in isolation. The asserted ground of unpatentability,
however, is directed to the combined teachings of Hodai and Levine. That
is, our analysis of whether claim 1 is unpatentable focuses on the printing
device in Hodai (with the disclosed capability of repeated printing) in
combination with the known method of inputting information into a printing
device for printing bar coded information on glass slides, as evidenced by
Levine. Therefore, an argument that Hodai, alone, does not teach expressly
both inputting and repeating is unpersuasive. See KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 420 (2007) (“[I]n many cases a person of ordinary skill
will be able to fit the teachings of multiple patents together like pieces of a
puzzle.”).
We also find unpersuasive Patent Owner’s additional argument that
Hodai’s repeating is not the recited repeating step because there is no
“operator” disclosed in Hodai. See PO Resp. 30-31. This argument rests on
IPR2013-00196
Patent 8,013,884 B2

40

Patent Owner’s proposed construction of “operator” (one who determines a
quantity of slides to be created and places specimens on the slides). PO
Resp. 31. But see Ex. 1018, 110:21 – 111-1 (Dr. DeBoer testifying that with
regard to claim 1, the person who put the specimen on the slide did not have
to be the same operator). The argument is that, because Hodai is silent as to
whether one who determines a quantity of slides also places specimens on
plates, Hodai does not teach an “operator.” Id. We have concluded,
however, that Patent Owner’s proposed construction is inconsistent with the
broadest reasonable interpretation in the context of the specification. See
Section II(A)(2), above. Applying our construction of “operator”—one who
operates the printing device—we find that Hodai, in combination with
Levine, teaches repeated printing by performing the claimed method for a
second slide, and subsequent slides, as determined by an operator. See Ex.
1003 ¶ 48 (“the embodiment . . . realizes user friendly operation in a small
area of placement.”).
As for whether it is speculation that Levine’s next-slide-dispensing
disclosure meets the repeating step, we are not persuaded by Patent Owner’s
argument. See PO Resp. 31-33. By way of background, Levine describes a
shortcoming of prior art automated machines, where identification of the
specimen and cleaning of the slides between preparations of those specimens
were not available. Ex. 1004, col. 1, ll. 30-36. Levine solves those
problems by printing indicia read from a bar code on the test tube onto a
slide during the process of smearing the blood specimen on the slide. Id. at
col. 1, ll. 55-67. A cleaning pad ensures that the mechanism for spreading
IPR2013-00196
Patent 8,013,884 B2

41

the blood is cleaned before the next use. Id. at col. 2, ll. 10-13. After
printing a slide with a blood specimen and cleaning the spreader, Levine
positions the slide carriage to dispense the next slide. Id. at col. 9, ll. 15-16.
These disclosures in Levine lead us to conclude that Levine’s printing device
is used repeatedly, for different specimens. For example, Levine’s device
prepares a specimen and prints the slide after scanning a given test tube, and
performs the specimen preparation and printing of a slide after scanning a
subsequent test tube. Therefore, we find that Levine teaches the repeating
step, as recited.
Patent Owner’s argument to the contrary—that Levine’s operator is
not given choices from which to determine the manner of repetition—is
unpersuasive. See Tr. 38:11-23. The claimed method is silent as to
providing choices regarding the number of slides or whether a unique or
same image is desired for multiple slides. Accordingly, distinctions
regarding whether an operator is able to make a determination to repeat the
method by selecting various alternatives of printing images or the number of
slides to be printed are not reflected in the claim language.
In any event, regardless of whether Hodai or Levine teach the
repeating step, as recited, we conclude that including such a step would have
been the result of common sense. The repeating step merely recites
repeating earlier steps, as an operator determines, and as necessary. The
earlier recited steps, including the inputting step as discussed below, are
disclosed by either Hodai or Levine. Therefore, the recited steps are for
known techniques for affixing information onto glass slides by a printing
IPR2013-00196
Patent 8,013,884 B2

42

device. Thus, if an operator determines that additional glass slides are
needed, it is common sense to perform the method again until the desired
slides are printed. Neither Hodai nor Levine teach single-use devices or
limit the information that can be printed on the slides. That is, one of
ordinary skill in the art would have had available the Hodai and Levine
printing devices to prepare as many slides as needed, for a single specimen
or for multiple specimens. Indeed, the determination of how many slides are
to be printed, and with what specific information, is not defined by the claim
language. As stated earlier, one of ordinary skill in the art has knowledge of
computer science and mechanical printing devices. Such a person is creative
and need only consider that a combination of Hodai’s thermal printer and
Levine’s bar code reader is capable of performing their known functions
again and again, until the desired number of slides is achieved—it makes
common sense to use the device as many times as one needs. See Perfect
Web Techs., Inc. v. Infousa, Inc., 587 F.3d 1324 (Fed. Cir. 2009) (“No expert
opinion is required to appreciate the potential value to persons of such skill
in this art of repeating steps. . . .”).
Based on the foregoing, we find that Hodai and Levine teach the
repeating step of claim 1, and that the step is a result of the application of
common sense.
b. The Inputting Step of Claim 1
Patent Owner argues that neither Hodai nor Levine discloses the
inputting step. PO Resp. 23-27. In our Decision on Institution, we stated
that Levine teaches inputting information in various ways to the computer
IPR2013-00196
Patent 8,013,884 B2

43

and the electronic module for printing data onto a slide. Dec. on Inst. 20.
One of those ways is set forth by Petitioner as follows:
A test tube 91 containing the specimen sample to be
applied to the slide 1 will have a bar code label
providing identification adhered to the tube. A bar code
reader 4 (i.e., an input device) reads the specimen
identification from the bar code on the test tube, and that
information is transformed by the computer.
Pet. 33-34. Notwithstanding Levine’s bar code example as one way of
inputting, Patent Owner argues that Levine is deficient because it does not
teach inputting “in combination with the ‘repeating’ step as recited in claim
1.” PO Resp. 25. As for Levine’s bar code example, Patent Owner disputes
that such an example teaches transforming information, as recited, because
Levine fails to “describe any examples of scanning one bar code to obtain
multiple images.” PO Resp. 35.
We are not persuaded by Patent Owner’s contentions that Levine fails
to teach the inputting step because Patent Owner argues limitations that are
not commensurate with the scope of the claim. Patent Owner attempts to
read into the inputting step (in combination with the repeating step) that the
image must be different for each subsequently printed slide or that, at a
minimum, two slides must be created, each with a different image, for the
method to be performed. PO Resp. 35.
Patent Owner’s argument is that Levine and Hodai each must disclose
both the inputting step and the repeating step for these references to render
the claims unpatentable. We are not persuaded by this argument. Such an
argument would conflate the analysis of anticipation and obviousness.
IPR2013-00196
Patent 8,013,884 B2

44

Reciting “repeating” in a claim does not automatically shackle known
elements combined in a known manner such that they cannot be found
separately in the art to establish obviousness.
Here we have Levine teaching the inputting step and Hodai and
Levine teaching that a printing device may be used again to repeat printing.
Not only does Levine suggest repeating the printing of slides for each test
tube as necessary, but such a repetition is common sense as stated above.
Therefore, we find that Levine teaches the inputting step, whether performed
with a single-test tube or with multiple test tubes, such that the inputting step
of reading the bar code and creating the image is repeated as many times as
the operator wishes to process test tubes with Levine’s printing device.
4. Claim 11 is Unpatentable in View of Hodai and Levine
With regard to claim 11, Patent Owner disputes that Hodai or Levine
teach or suggest five limitations: (1) a processing means/the tape feeder
being driven by a processing means; (2) a control means; (3) the process
repeated as necessary; and (4) an input/interface means. PO Resp. 36-43.
We are not persuaded by Patent Owner’s arguments because, under the
broadest reasonable interpretation of the claim language and application of
section 112 ¶ 6, the narrow distinctions drawn by Patent Owner are not
supported by the claim language. We discuss each of the argued limitations
in turn.
IPR2013-00196
Patent 8,013,884 B2

45

a. Processing Means
In accordance with our construction of processing means, which
includes a processor, we find that Levine discloses a microprocessor and
computer elements housed in module 18, which interfaces with the computer
to receive the patient information. Ex. 1004, col. 4, ll. 57-59, col. 9, ll. 64-
66. The computer stores information to be printed on the slides, such as
dates and other indicia. Id. at col. 10, ll. 10-13, 49-52. Patent Owner does
not dispute that Levine discloses this aspect of the processing means.
The dispute regarding this limitation pertains to whether Levine also
teaches that the processing means drives a tape feeder. PO Resp. 38, 43.
Because Levine is not relied upon as teaching a tape feeder, and the
processor is found in Levine, Patent Owner contends that no teaching in
Levine is relied upon to teach a processor that drives the tape feeder. Id.
at 43. Similarly, Patent Owner argues that Hodai fails to teach the recited
“processing means” because Hodai is not relied upon to teach the processor,
but it is relied upon to teach the “tape feeder.” Id. The argument is
unpersuasive.
We have construed the term to include a processor and a motor, which
drives the tape feeder. See Section II(A)(5), supra. Hodai discloses ink
ribbon roller 31a that is driven by motor D to wind the ink ribbon during
printing. Ex. 1003 ¶ 19. Accordingly, we find that Hodai teaches the
structure of the “processing means” that drives the tape feeder as recited in
claim 11.
IPR2013-00196
Patent 8,013,884 B2

46

That Hodai teaches one aspect of the processing means—namely, the
motor that drives the tape feeder—and Levine teaches another—the
processor—does not negate that these references of record disclose all of the
structures of the “processing means.” The fault is not with the prior art of
record. Instead, the means-plus-function claim term conflates into a single
“means” two different structures that perform two different functions. It is
clear from Hodai that the mechanics of driving a tape feeder were known to
include a motor and associated hardware, and it was known from Levine that
a processor is used to “transform” the bar code into a numerical value that is
printed on the slide (Ex. 1004, col. 6, ll. 56-59). Accordingly, the structures
corresponding to the recited “processing means” were known in the art to
perform the recited functions. Therefore, we find that Levine and Hodai
teach the “processing means” recited in claim 11.
b. Control Means
Although Patent Owner admits that Levine discloses interfaces to a
laboratory computer and a bar code reader, it disputes that such interfaces
provide a selection of which interface to choose data from, either the bar
code reader or the laboratory computer. PO Resp. 38-39. Moreover,
according to Patent Owner, the keyboard and actuator buttons do not control
the bar code reader. Id. at 39. We are not persuaded by Patent Owner’s
arguments. These arguments rely on a narrow interpretation of “control
means” advanced by Patent Owner, which we reject. See Section II(A)(7),
supra. Consistent with our construction of control means—where the
structure is a user interface section or control panel—we find that Levine
IPR2013-00196
Patent 8,013,884 B2

47

discloses a keypad for entering data and instructions into the apparatus. Ex.
1004, col. 3, ll. 6-9. Levine further discloses a keyboard with actuation
buttons 15, 16, and 17 that control the speed at which the carriage moves.
Id. at col. 4, ll. 52-54, col. 8, ll. 9-10. The keyboard may be used also to
input values, which the computer interprets. Id. at col. 8, ll. 11-15. From
these disclosures, we find that the keypad, keyboard, and actuation buttons
disclosed in Levine allow input into the printing device for controlling that
device. Indeed, the Levine device is a programmable device. Id. at col. 2,
ll. 24-25, col. 10, ll. 10-13. As such, programming codes that are entered by
a user change the operation of the printing device. Id. at col. 8, ll. 12-13.
But, contrary to Patent Owner’s assertions, Levine teaches more than
just adjusting the speed of the carriage; Levine teaches using programming
to change what is printed on the slides. Id. at col. 10, ll. 11-13 (“the
apparatus can be programmed to print the date onto the slide, in addition to
other indicia”). It stands to reason that the keyboard, keypad, and buttons
operate the device by, at a minimum, changing the speed of the carriage and
adding a date and other indicia as information to be printed on the slide.
Based on the foregoing, we find that Levine teaches “control means,”
as recited in claim 11.
c. Input/Interface Means
Regarding the “input/interface means,” although Patent Owner’s
Response alludes to a contention that neither Hodai nor Levine teaches the
limitation (PO Resp. 36), we find no argument in the Response regarding
how the evidence presented supports that argument. During the oral hearing,
IPR2013-00196
Patent 8,013,884 B2

48

Patent Owner confirmed that the argument presented regarding the
“input/interface means” is with regard to how it affects the scope of the
“control means”—no contention was advanced that Levine fails to teach
“input/interface means.” Tr. 42:1-16. We find that Levine teaches the
limitation because it discloses an interface to a laboratory computer and a
bar code reader. Ex. 1004, col. 6, ll. 49-62, col. 9, l. 64 – col. 10, l. 13.
Either the bar code reader or the computer are input/interface means, as each
may be used to input information into the printing device for printing indicia
onto the slide.
d. Repeating
The last limitation recited in claim 11 recites “the process [is]
repeated as necessary.” Ex. 1001, col. 9, ll. 21-22. This “repeating” differs
from the “repeating” step recited in claim 1 in that it does not recite a
determination by an operator. Accordingly, arguments made regarding the
lack of disclosure of an operator in Hodai are inapplicable to this claim.
Patent Owner made no other argument that Hodai fails to teach this
limitation. With regard to Levine, Patent Owner argues that the disclosure
of dispensing the next slide invites speculation as to whether the process is
“repeated as necessary.” PO Resp. 42. We addressed this argument in the
analysis of the “repeating” step recited in claim 1. See Section II(E)(3)(a)
(pages 40-41). For the same reasons stated in that analysis, we find
unpersuasive Patent Owner’s arguments that Levine fails to teach that the
“process is repeated as necessary,” as recited in claim 11.
IPR2013-00196
Patent 8,013,884 B2

49

5. Rational Underpinning for the Conclusion of Obviousness.
Relying on the following passage of its Response, Patent Owner
argued during oral hearing that Petitioner failed to show evidence of a
motivation to combine: “Levine suffers a fate similar to Hodai and therefore
a combination of Levine and Hodai remains deficient.” PO Resp. 35; Tr.
40:11-15, 41:15-20, 49:7-11. We are not persuaded by Patent Owner’s
belated argument. Upon review of the Response at pages 34-36, we find no
argument directed at challenging Petitioner’s arguments and evidence that a
person of ordinary skill in the art would have been motivated to combine the
references to achieve the printing device recited in claim 1. See e.g., Pet. 32
(“a person would have recognized that the information inputting step of the
Levine patent would provide the information needed by the thermal printer
shown in [Hodai] in order to print the text and bar codes.”). Even assuming
that a challenge to the evidence was presented properly, we note that
Petitioner posited that a person of ordinary skill in the art would have found
that the features of the printer taught by Levine could be incorporated into
the printer of Hodai and vice versa. Pet. 39-40. We also stated in our
Decision on Institution that the record presented sufficient evidence that the
claims merely combine known elements for their known purpose to achieve
a predictable result. Dec. on Inst. 28. Nothing in the record before us either
disputes these rationales or presents reasons why that rationale is not
applicable to the facts before us.
IPR2013-00196
Patent 8,013,884 B2

50

6. Conclusion Regarding Unpatentability
We have applied the Graham factors and our guiding legal principles.
Patent Owner has shown no secondary factors to dislodge the determination
that claims 1 and 11 are obvious. See KSR, 550 U.S. at 426. Therefore,
based on the evidence of record and the arguments presented, we conclude
that Petitioner has shown, by a preponderance of the evidence, that claims 1
and 11 are unpatentable over the combination of Hodai and Levine.
Patent Owner did not challenge Petitioner’s assertion of
unpatentability with regard to the additional limitations found in dependent
claims 2-5, 7, 8, 10, 12-15, 17, 18, and 20. See PO Resp. 44. Having
reviewed Petitioner’s evidence of unpatentability for those dependent
claims, we conclude that Petitioner also has proven by a preponderance of
the evidence that claims 2-5, 7, 8, 10, 12-15, 17, 18, and 20 are unpatentable
over Hodai and Levine.
F. OBVIOUSNESS GROUNDS BASED ON HODAI, LEVINE, AND GEDDES
Patent Owner does not challenge Petitioner’s assertions regarding the
unpatentability of claims 6 and 16 as being obvious over Hodai, Levine, and
Geddes, other than to address the patentability of the claims from which
claims 6 and 16 depend. PO Resp. 44 (relying on the arguments presented
for the independent claims, nos. 1 and 11). We have reviewed the evidence
presented by Petitioner regarding the unpatentability of these dependent
claims (Pet. 44-46), and we conclude that Petitioner has proven by a
preponderance of the evidence that claims 6 and 16 are unpatentable over
Hodai, Levine, and Geddes.
IPR2013-00196
Patent 8,013,884 B2

51

G. OBVIOUSNESS GROUND BASED ON HODAI, LEVINE, AND BOUCHARD
Patent Owner does not challenge Petitioner’s assertions regarding the
unpatentability of claims 9 and 19 as being obvious over Hodai, Levine, and
Bouchard, other than to address the patentability of the claims from which
claims 9 and 19 depend. PO Resp. 44. We have reviewed the evidence
presented by Petitioner regarding the unpatentability of these dependent
claims (Pet. 46-48), and we conclude that Petitioner has proven by a
preponderance of the evidence that claims 9 and 19 are unpatentable over
Hodai, Levine, and Bouchard.
H. PATENT OWNER’S MOTION TO EXCLUDE
In its Motion, Patent Owner seeks to exclude the following evidence
submitted by Petitioner:
a) U.S. Patent No. 5,423,619 to Kohno (Ex. 1009), submitted with the
Petition;
b) Petitioner’s Exs. 1019-1030 submitted with Petitioner’s Reply;
c) Petitioner’s Exs. 1, 5-7, and 11-14, introduced as exhibits in the
testimonial deposition of Dr. Charles DeBoer, Patent Owner’s
expert witness; and
d) Dr. DeBoer’s testimony regarding Exs. 1, 5-7, and 11-14.

All of Patent Owner’s objections to the above-identified exhibits and
testimony are moot because we have not relied on any of these exhibits in
IPR2013-00196
Patent 8,013,884 B2

52

rendering our decision.
12
Therefore, Patent Owner’s motion is denied as
moot.

III. CONCLUSION
Petitioner has demonstrated, by a preponderance of the evidence, that:
(1) claims 1-5, 7, 8, 10-15, 17, 18, and 20 are unpatentable over
Hodai and Levine under 35 U.S.C. § 103(a);
(2) claims 6 and 16 are unpatentable over Hodai, Levine, and
Geddes under 35 U.S.C. § 103(a); and
(4) claims 9 and 19 are unpatentable over Hodai, Levine, and
Bouchard under 35 U.S.C. § 103(a).

IV. ORDERS
In consideration of the foregoing, it is hereby:
ORDERED that claims 1-20 of the ’884 patent are unpatentable;
FURTHER ORDERED that Petitioner’s Motion to Exclude is denied;
and
FURTHER ORDERED that Patent Owner’s Motion to Exclude is
denied.

12
To be clear, this includes the objections identified as “Additional
Points” set forth on pages 6-12 of Patent Owner’s motion, as well as Patent
Owner’s specific objections to Exs. 1027 and 1028 and Exs. 1, 12, and 13 on
pages 12-15 of the motion.
IPR2013-00196
Patent 8,013,884 B2

53

This is a final decision. Parties to the proceeding seeking judicial
review of the decision must comply with the notice and service requirements
of 37 C.F.R. § 90.2.

IPR2013-00196
Patent 8,013,884 B2

54

PETITIONER:

Walter C. Linder
Faegre Baker Daniels LLP
2200 Wells Fargo Center
90 S. Seventh Street
Minneapolis, MN 55402-3901
Telephone: (612) 766-7000
Fax: (612) 766-1600
patentdocketing@faegrebd.com

PATENT OWNER:

Sean L. Ingram (Lead Counsel)
NOVAK DRUCE CONNOLYY BOVE + QUIGG LLP
1000 Louisiana, 53
rd
Floor
Houston, TX 77002
Telephone: (561) 847-7800
Fax: (713) 456-2836
sean.ingram@novakdruce.com

Henry A. Petri, Jr. (Back-up counsel)
henry.petri@novakdruce.com