University of South Florida Board of Trustees

Patent Trials and Appeals Board

Sep 27, 2021

IPR2021-00656 (P.T.A.B. Sep. 27, 2021)

Trials@uspto.gov Paper 10
571-272-7822 Date: September 27, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

HOLOGIC, INC., VAREX IMAGING CORP., and
MEVIS MEDICAL SOLUTIONS AG.,
Petitioner,
v.
UNIVERSITY OF SOUTH FLORIDA BOARD OF TRUSTEES,
Patent Owner.

IPR2021-00656
Patent 6,630,937 B2

Before DEBRA K. STEPHENS, ROBERT J. WEINSCHENK, and
KRISTI L. R. SAWERT, Administrative Patent Judges.
STEPHENS, Administrative Patent Judge.
DECISION
Denying Institution of Inter Partes Review
35 U.S.C. § 314

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I. INTRODUCTION
A. Background and Summary
Hologic, Inc., Varex Imaging Corp., and MeVis Medical Solutions
AG (collectively, “Petitioner”) filed a petition for inter partes review
(Paper 4 (“Pet.” or “Petition”)) challenging claims 2–6, 9–11, 16, and 17 of
U.S. Patent 6,630,937 B2 (Ex. 1001 (“’937 Patent”)). University of South
Florida Board of Trustees (“Patent Owner”) elected to waive its Patent
Owner Preliminary Response to the Petition (Paper 9, 2).
The standard for instituting an inter partes review is set forth in
35 U.S.C. § 314(a), which provides as follows:
(a) THRESHOLD.—The Director may not authorize an inter partes
review to be instituted unless the Director determines that the
information presented in the petition filed under section 311 and
any response filed under section 313 shows that there is a
reasonable likelihood that the petitioner would prevail with
respect to at least 1 of the claims challenged in the petition
(35 U.S.C. § 314(a)).
Petitioner challenges claims 2–6, 9–11, 16, and 17 as unpatentable
under both 35 U.S.C. § 102 and 35 U.S.C. § 103 (Pet. 3). Based on our
review of the record, we conclude that Petitioner is not reasonably likely to
prevail in demonstrating that at least one of the challenged claims is not
patentable.
B. Real Parties in Interest
Petitioner states that Hologic, Inc., Varex Imaging Corp., and MeVis
Medical Solutions AG are the real-parties-in-interest (Pet. 73).
Patent Owner states that University of South Florida Board of
Trustees and University of South Florida Research Foundation are the real-
parties-in-interest (Paper 8, 2).
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C. Related Matters
Patent Owner and Petitioner indicate the ’937 Patent was asserted in
the following district court proceedings:
Univ. of South Florida Board of Trustees et al v. Hologic, Inc., No.
20-cv-352-CFC (D. Del.); and
Univ. of South Florida Board of Trustees et al v. FujiFilm Medical
Systems USA, Inc., No. 1:20-cv-4080 (S.D.N.Y.)
(Pet. 71; Paper 8, 2).
Further, Petitioner indicates the ’937 Patent was asserted in the
following district court proceedings:
Univ. of South Florida Board of Trustees et al v. FujiFilm Medical
Systems USA, Inc., No. 3:18-cv-215 (D. Conn);
Univ. of South Florida Board of Trustees et al v. FujiFilm Medical
Systems USA, Inc., No. 8:16-cv-1194 (M.D. Fla);
Univ. of South Florida Board of Trustees et al v. Brit Systems Inc.,
No. 3:18-cv-250 (N.D. Tex.);
Univ. of South Florida Board of Trustees et al v. Brit Systems Inc.,
No. 8:16-cv-3109 (M.D. Fla.);
Univ. of South Florida Board of Trustees et al v. AGFA Healthcare
Corp., No. 8:16-cv-3106 (M.D. Fla.);
Univ. of South Florida Board of Trustees et al v. Barco, Inc., No.
8:16-cv-3107 (M.D. Fla.);
Univ. of South Florida Board of Trustees et al v. Aycan Medical
Systems, LLC, No. 8:16-cv-3108 (M.D. Fla.); and
Univ. of South Florida Board of Trustees et al v. EIZO Inc., No. 8:16-
cv-3110 (M.D. Fla.)
(Pet. 73).
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Additionally, Patent Owner indicates the ’937 Patent is implicated in
the following Court of Appeals for the Federal Circuit proceeding: Univ. of
South Florida Research Foundation v. Fujifilm Medical Systems, No. 20-
1872 (Fed. Cir.) (Paper 8, 2).
D. The ’937 Patent
The ’937 Patent, titled “Workstation Interface For Use In Digital
Mammography And Associated Methods,” issued October 7, 2003
(Ex. 1001, codes (45), (54)). The ’937 Patent describes a computer
workstation user interface which assists in the evaluation of digital
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mammography images (id. at code (57), 3:10–15, 3:22–23). Such an
interface is shown in Figure 4, reproduced below (id. at 2:57, 5:16–25).

Figure 4 shows left and right cranio-caudal (“CC”) mammogram
images (id. at 5:4–5, 5:17–18). In particular, left CC view 41 and right CC
view 42 are “decimated views” of “original images” (id. at 5:17–23).
Original images are, e.g., 16 bit images digitized from an x-ray, whereas
decimated views are, e.g., 8 bit conversions of original 16 bit images (see id.
at 4:37–41, Fig. 3; see also id. at 7:6–8).
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As further shown in Figure 4, the interface also displays “selected
sections” of left and right decimated CC views 41, 42 in windows 43, 44 (id.
at 5:23–25). Those selected sections, i.e., the “squares in the decimated
views,” are shown in windows 43, 44 and are “high resolution” views of the
“original data,” i.e., the original left and right CC mammogram images (id.).
The interface allows “panning as well as jumping to certain locations
in the image” for “easy and fast reading” (id. at 5:29–30). “[P]anning can
occur in either the decimated or the high-resolution windows” (id. at 5:32–
34). The ’937 Patent notes that “a common practice is to scan through the
image in the decimated view but pan in the high-resolution view for a
thorough and slow examination of certain regions of interest” (id. at 5:34–
38). That is, the ’937 Patent explains that either version of the mammogram
image being displayed — e.g., for the left CC mammogram image,
decimated left CC view 41 and high resolution left CC view 43 — can be
interfaced with during examination of the mammogram image. And,
“panning or clicking in a certain region of interest” of an image “also alters
the views in the decimated and high resolution windows” of the image (id. at
6:10–12). Even further, the interface “can also bring up a full view of either
the right or left image and pan in the same way as in the images previously
described” (id. at 6:12–14).
In addition to the display, and navigation through, mammogram
images, another “feature[ ] of the interface is the real-time grayscale
adjustment” button 402 (id. at 5:39–40). The user can adjust “[t]hree
scales . . . to set, with controls shown on the top right corner of FIG. 4, for
example, the window width (button 404) and the level (button 405) and to
change the gamma value (button 406)” (id. at 5:40–43). Furthermore,
“[c]hanges can be made in one of the smaller windows, which is transmitted
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to its respective selected section window . . . and then applied to all four of
the smaller windows” (id. at 5:43–46; see id. Fig. 5).
E. Challenged Claims
Challenged claims 2, 3, and 17 are independent and are reproduced
below.
2. A system for interfacing a digitized mammogram to a user
comprising:
a. a monitor capable of displaying image data in a
predetermined format, and in varying grayscale colors, said
monitor having a predetermined illumination capability;
b. an electronic storage medium with digitized
mammogram image data, said digitized mammogram image data
corresponding to a film mammogram image and the digitized
mammogram image data having grayscale values corresponding
to the optical densities of the film mammogram image;
c. a processor in circuit communication with said monitor
and said electronic storage medium; and
d. an input device in circuit communication with said
processor;
said processor being adapted to receive input signals from
said input device, and being responsive to a signal from said
input device to transfer digitized image data from said electronic
storage medium to said monitor in a way that causes the monitor
to produce a display having a plurality of windows and to display
a mammogram image in a different form in each window with
grayscale values that, along with the illumination characteristics
of said monitor, appears to a user as a mammogram in each
window under a predetermined illumination state, thereby
interfacing said mammogram image in each window and in a
predetermined illumination state to an operator handling said
input device;
said processor being adapted to receive further input from
said input device related to the mammogram image in a selected
window, said further input from said input device including input
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that selectively controls the grayscale values of the mammogram
image in the selected window, thereby enabling an operator
handling said input device to selectively control the illumination
state with which the mammogram image in the selected window
is displayed to the operator
(Ex. 1001, 9:15–54).
3. A system for providing an interface between a medical image
and a user comprising:
means for establishing electronic communications with a
processor for receiving a stored digitized medical image
comprising data representative of a plurality of greyscale values;
means for communicating with a display means; and
software means loadable into the processor comprising:
means for receiving a signal from a user-operable device;
means controllable by a signal from the user-operable
device for transforming the image into a plurality of varying-
resolution forms, each form having a different set of greyscale
values; and
means for displaying the forms on the display means, each
form displayed within a different sector of the display means
(id. at 9:55–10:5).
17. A system for analyzing a set of digitized mammography
images, the set comprising a plurality of views from a unitary
patient, the system comprising:
a first and a second display monitor;
a processor having means for communicating with an
image storage device and software means resident thereon, the
software means comprising:
means for receiving a signal from a user-operable device;
means controllable by a signal from the user-operable
device for transforming the image into a plurality of varying-
resolution forms, each form having a different set of greyscale
values; and
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means for displaying a first form on the first monitor and
a second form on the second monitor
(id. at 10:50–65).
F. References Relied Upon
Petitioner relies upon the following prior art references:
Reference Exhibit
Brent K. Stewart et al., Clinical Utilization of Grayscale
Workstations, IEEE Engineering in Medicine and Biology
Magazine, Vol. 12, Issue 1, 86 (March 1993) (“Stewart”).
1005
Matthew T. Freedman, MDIS Compatibility: Computer
Assisted Quality Control and Telemammography (Breast
Cancer), Annual Report for Grant No. DAMD17-93-J-3015
(January 20, 1994) (“Freedman”).
1006
L.D. Cade et al., MDIS: The New Standard in Filmless
Imaging, Administrative Radiology, Vol. XII, No. XI, 59
(November 1993) (“Cade”).
1007
(Pet. 2–3).
Petitioner also relies on the Declaration of Dr. Bryan P. Bergeron,
M.D., for support of its contentions in the Petition (Ex. 1003).
G. Asserted Grounds
Petitioner asserts that claims 2–6, 9–11, 16, and 17 are unpatentable
on the following grounds:
Claim Challenged 35 U.S.C. § References/Basis
2–6, 9–11, 16, 17 102 Stewart
2–6, 9–11, 16, 17 103 Fredman, Cade
(Pet. 3).1

1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
Stat. 284, 287–88 (2011), amended 35 U.S.C. § 103, became effective on
March 16, 2013. Because the application from which the ’937 Patent issued
was filed before this date, the pre-AIA version of § 103 applies.
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II. ANALYSIS
A. Level of Ordinary Skill in the Art
The level of skill in the art is a factual determination that provides a
primary guarantee of objectivity in an obviousness analysis (Al-Site Corp. v.
VSI Int’l Inc., 174 F.3d 1308, 1324 (Fed. Cir. 1999) (citing Graham v. John
Deere Co., 383 U.S. 1, 17–18 (1966); Ryko Mfg. Co. v. Nu-Star, Inc., 950
F.2d 714, 718 (Fed. Cir. 1991))).
Petitioner asserts that a “person of ordinary skill in the art (‘POSITA’)
at the time of the alleged invention would have at least three years’
experience developing software for computer workstations, and at least one
year of this experience in a clinical environment” (Pet. 8 (citing
Ex. 1003 ¶ 27)).
The prior art itself demonstrates the level of ordinary skill in the art at
the time of the invention (see Okajima v. Bourdeau, 261 F.3d 1350, 1355
(Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill
level are not required “where the prior art itself reflects an appropriate level
and a need for testimony is not shown”) (quoting Litton Indus. Prods., Inc. v.
Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))).
Based on the present record and the disclosure in the ’937 Patent, we
apply Petitioner’s definition of the level of ordinary skill in the art. We
determine the definition offered by Petitioner—as interpreted by the panel—
comports with the qualifications a person would have needed to understand
and implement the teachings of the ’937 Patent and the prior art of record
(cf. Okajima v. Bourdeau, 261 F.3d at 1355 (the prior art itself may reflect
an appropriate level of skill in the art)).
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B. Claim Construction
1. Legal Standard
We construe claim terms according to the standard set forth in Phillips
v. AWH Corp., 415 F.3d 1303, 1312–17 (Fed. Cir. 2005) (en banc) (37
C.F.R. § 42.100(b) (2021)). Under Phillips, claim terms are afforded “their
ordinary and customary meaning” (Phillips, 415 F.3d at 1312). “[T]he
ordinary and customary meaning of a claim term is the meaning that the
term would have to a person of ordinary skill in the art in question at the
time of the invention” (id. at 1313). “Importantly, the person of ordinary
skill in the art is deemed to read the claim term not only in the context of the
particular claim in which the disputed term appears, but in the context of the
entire patent, including the specification” (id.). An inventor may rebut that
presumption by providing a definition of the term in the specification “with
reasonable clarity, deliberateness, and precision” (In re Paulsen, 30 F.3d
1475, 1480 (Fed. Cir. 1994)). In the absence of such a definition, limitations
are not to be read from the specification into the claims (In re Van Geuns,
988 F.2d 1181, 1184 (Fed. Cir. 1993)).
2. Analysis
Petitioner states that it does “not believe any terms in the ’937 patent
require construction in this proceeding” (Pet. 9). Petitioner does, however,
“address the construction of the means-plus-function limitations of claims 3,
9, 11, 16 and 17” (id. at 9–17).
Petitioner also notes “[s]everal terms of the ‘937 patent were
construed in Univ. of South Florida Research Foundation, Inc. v. Brit
Systems, Inc., Case No. 3:18-cv-250 (N.D. Tex.)” (id. at 17), but Petitioner
further states that it “do[es] not believe it necessary to construe any of the
terms construed in the Brit case, except applicable means-plus-function
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terms” (id. at 18–19 (citing Ex. 1014, 54–65)). Petitioner states that the
District Court’s remaining claim constructions “do not need to be construed
here to decide patentability” (id. at 19).
Based on the record before us, we determine that no means-plus-
function terms require construction. Instead, only the claim limitation
discussed below needs to be expressly construed for purposes of this
Decision.
a) “display a mammogram image in a different form in each window
with grayscale values that, along with the illumination characteristics of
said monitor, appears to a user as a mammogram in each window under
a predetermined illumination state”
Claim 2 recites “display[ing] a mammogram image in a different form
in each window with grayscale values that, along with the illumination
characteristics of said monitor, appears to a user as a mammogram in each
window under a predetermined illumination state” (Ex. 1001, 9:37–42).
Claim 3 recites “transforming the image into a plurality of varying-
resolution forms, each form having a different set of greyscale values; and
. . . displaying the forms on the display means, each form displayed within a
different sector of the display means” (id. at 9:67–10:3). Claim 17 recites
“transforming the image into a plurality of varying-resolution forms, each
form having a different set of greyscale values; and . . . displaying a first
form on the first monitor and a second form on the second monitor” (id. at
10:61–65).
In accordance with 37 C.F.R. § 42.100(b), we have considered the
District Court’s interpretation of this phrase as set forth in University of
South Florida Research Foundation, Inc. v. Brit Systems, Inc., Case No.
3:18-cv-250 (N.D. Tex.) (see Ex. 1014, 21–27, 54–55). We note, however,
that this District Court case did not include Petitioner as a party (see id. at 1).
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We look to the Specification in interpreting the limitation. None of
the terms in the above limitation is defined expressly in the ’937 Patent (see
generally Ex.1001). The Specification describes, however, “a case may
contain single-view or standard four-view mammograms (left and right
medio-lateral, ML, left and right cranio-caudal, CC)” (id. at 5:2–5). Thus,
the ’937 Patent distinguishes a “case” from a “mammogram” –– a
mammogram is one slice of the case, not all the slices of a breast
mammography (case). The ’937 Patent further describes an “analysis
window,” in which “decimated views 41, 42 of the original images are
provided in the upper section [and] . . . the lower part two windows 43, 44
display selected sections . . . at high resolution” (id. at 5:21–25). Thus, the
analysis window provides, on one side, a view of an original image (e.g., left
CC) in one form (e.g., decimated view 41), and a view of that original image
in another form (e.g., high-resolution view 43) (id.; see also id. at Fig. 3).
On the other side, the analysis window also provides a view of an original
image (e.g., right CC) in one form (e.g., decimated view 42), and a view of
that original image in another form (e.g., high-resolution view 44). Based
on the record before us, “a mammogram image” is an image that is
originally taken (“original image”), i.e., the left or right medio-lateral
images, etc.
The ’937 Patent further describes “[t]his arrangement enables the
physician to keep the overview . . . while looking at the high-resolution
sections” (id. at 5:25–28). “The overview images are lower-resolution,
reduced-sized images and are displayed in a short-time period” (id. at 7:6–
8). “[A] common practice is to scan through the image in the decimated
view but pan in the high-resolution view for a thorough and slow
examination of certain regions of interest” (id. at 5:34–38). Thus, the ’937
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Patent describes “display[ing] a mammogram image in a different form in
each window,” e.g., both a lower-resolution, reduced-size (decimated) view
of an original image and a higher-resolution view of that image in a window.
Additionally, the ’937 Patent describes real-time grayscale adjustment of the
window (id. at 5:39–40).
In light of the disclosure of the ’937 Patent, we determine that the
limitation “display a mammogram image in a different form in each window
with grayscale values, along with the illumination characteristics of said
monitor, appears to a user as a mammogram in each window under a
predetermined illumination state” means the original mammogram image is
displayed in a different form (i.e., different resolution) in each window “with
grayscale values that, along with the illumination characteristics of said
monitor, appears to a user as a mammogram in each window under a
predetermined illumination state.”
For similar reasons, we determine “transforming the image into a
plurality of varying-resolution forms, each form having a different set of
greyscale values; and . . . displaying the forms on the display means, each
form displayed within a different sector of the display means,” as recited in
claim 3 (Ex. 1001, 9:67–10:3) means the original mammogram image is
displayed in a different form within a different sector of the display means.
We further determine, “transforming the image into a plurality of varying-
resolution forms, each form having a different set of greyscale values; and . .
. displaying a first form on the first monitor and a second form on the second
monitor,” as recited in claim 17 (id. at 10:61–65) means the original image is
transformed into a plurality of varying-resolution forms, having different set
of greyscale values, and displaying a first and a second form on a first and a
second monitor, respectively.
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b) Other terms
We determine we do not need to expressly construe any other terms
for purposes of this Decision (see Nidec Motor Corp. v. Zhongshan Broad
Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs.,
Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly
those terms need be construed that are in controversy, and only to the extent
necessary to resolve the controversy.”))).
C. Asserted Anticipation over Stewart
Petitioner contends Stewart anticipates claims 2–6, 9–11, 16, and 17
(Pet. 20).
1. Stewart (Ex. 1005)
Stewart is an article titled “Clinical Utilization Of Grayscale
Workstations,” published March 1993 (Ex. 1005, 86). Stewart describes
“high-resolution grayscale display workstations to generate a consultative
report” in medical imaging, e.g., mammography (id.; see id. Table 3).
Stewart describes “[p]resentation functions [that] provide for the interactive
selection, positioning, and sequencing of image data on the display screen”
(id. at 95). Stewart describes an example in which a “tile mode allows side-
by-side presentation of images of an examination” (id.).
One of the “Major Categories of Workstation Operations” is “Case
Selection” (id. at 92). In the Case Selection operation, image sets are
selected by the user, e.g., a radiologist, for a study (id. at 95). In an “initial
survey phase, the radiologist simultaneously views all images acquired for
the study as well as corresponding comparison images from previous
examinations” (id.). Those images can be presented in a “tile presentation
mode [which] maximizes the number of simultaneous images displayed
without compromising image quality” or in a “split screen option [which]
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allows an image set to span either: (1) two display monitors. (2) one display
monitor, (3) one-half display monitor (two image sets per display monitor),
or (4) one-quarter display monitor (four image sets per display monitor)”
(id.). After that initial survey phase, “the radiologist concentrates on a few
select images that most clearly show the patient pathology” (id.). Relevant
“images may span more than one image set and may include pre- and post-
contrast studies, various window and level settings, different pulse sequence
and/or modality scans, and historical temporal comparisons” (id.).
Ultimately, “only the most relevant images for the study are displayed” (id.).
Additional features of Stewart’s workstations are “[i]nteractive
manipulation operations” which “enhance the visibility of anatomical and
pathological features” (id. at 96). “The basic tools required include intensity
transformation tables (automatic pre-set windows, manual independent
window and level control, and image reversal) and image enlargement and
translation (zoom and pan)” (id.). Further, “[i]n all probability, adjustment
will be performed on each displayed image” (id.).
2. Independent claim 2
Petitioner contends Stewart anticipates independent claim 2 (Pet. 23–
33).
a) “a monitor to produce a display having a plurality of windows and to
display a mammogram image in a different form in each window with
grayscale values that, along with the illumination characteristics of said
monitor, appears to a user as a mammogram in each window under a
predetermined illumination state”
Petitioner relies on Stewart to disclose “a display having a plurality of
windows and to display a mammogram image in a different form in each
window” (Pet. 27–31 (citing Ex. 1005, 91–95, Fig. 7; Ex. 1003 ¶¶ 55, 57)).
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We determine Petitioner has not shown reasonably that Stewart
discloses these features. More specifically, Petitioner asserts Stewart
“discloses that the images can be show[n] on the workstation in multiple
windows on a single monitor” (id. at 28) because Stewart describes a “split
screen option [which] allows an image set to span either . . . (2) one display
monitor, (3) one-half display monitor (two image sets per display monitor),
or (4) one-quarter display monitor (four image sets per display monitor)”
(Ex. 1005, 95). Petitioner contends “Stewart displays multiple windows of
patient images over two monitors” and “[e]ach of the windows displays the
image using a different greyscale value” (Pet. 29). Petitioner further
contends Stewart includes a “‘Case Selection’ operation where the
radiologist can, for example, select a ‘next case based on a radiologist’s
work list’” and, then, in a “tile presentation mode,” “maximize[ ] the number
of simultaneous images displayed without compromising image quality” (id.
(citing Ex. 1005, 92, 95, Fig. 7)). Petitioner highlights that Stewart
describes “once a case is selected, a radiologist may focus in on a ‘few select
images’” which “may span more than one image set and may include . . .
various window and level settings” (Pet. 30 (citing Ex. 1005, 95)). Thus,
Petitioner explains, “not only can the initial presentation of images appear in
various grayscale values, but also further displays of images can do the
same” (Pet. 30 (citing Ex. 1003 ¶ 55)). Additionally, Petitioner asserts
Stewart’s “images are stored with a greater bit depth (12-bits) than they may
be displayed (8-bits),” and, therefore, Stewart’s displayed “images are
transformed into different forms having varying resolutions” (Pet. 31 (citing
Ex. 1005, 95)).
Petitioner, however, has not shown reasonably where, or how, those
cited portions of Stewart disclose different forms of a mammogram image
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are displayed in multiple respective windows, i.e., “a plurality of
windows . . . display[ing] a mammogram image in a different form in each
window,” as recited in claim 2. In particular, Petitioner has not reasonably
shown, or explained how, either of Stewart’s split screen option or tile mode
displays different forms of the original image (see generally Pet.). Nor has
Petitioner shown Stewart’s split screen option or tile mode displays those
different forms of the original image in respective windows. Petitioner
points out (Pet. 29) that Stewart describes the “tile presentation mode
maximizes the number of simultaneous images displayed without
compromising image quality” (Ex. 1005, 95, Fig. 7). That description,
however, discloses displaying multiple (i.e., different) images in multiple
windows, rather than displaying different forms of an image in multiple
windows. Further, Petitioner contends that Stewart’s “split screen option
allows an image set to span either (1) two display monitors, (2) one display
monitor, (3) one-half display monitor (two image sets per display monitor),
or (4) one-quarter display monitor (four image sets per display monitor)”
((Pet. 28 (quoting Ex. 1005, 95)). That description, however, like the
description of tile mode, describes displaying multiple images in multiple
windows instead of different forms of an image in multiple windows. For
example, the split screen option displays one image split over more than one
monitor –– not one image in different forms over more than one monitor.
Additionally, although Petitioner contends Stewart describes “images
are transformed into different forms having varying resolutions” (Pet. 31
(citing Ex. 1005, 95 (“images are stored with a greater bit depth (12-bits)
than they may be displayed (8-bits)”)), that portion of Stewart does not
describe that different forms of a mammogram image are displayed in
multiple windows. Rather, the cited disclosure in Stewart describes a
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mammogram image stored in a different form. In particular, the cited
description of Stewart discloses an image is stored with “a greater bit depth”
than displayed (Ex. 1005, 95). That portion of Stewart does not describe
that images are displayed in a plurality of different bit depths, i.e., “a
plurality of windows” having “a different form” of a mammogram image “in
each window.”
Furthermore, Petitioner’s expert declaration of Dr. Bryan P. Bergeron
does not explain reasonably how, or show where, the cited portions of
Stewart describe displaying different forms of an image in multiple
windows. Dr. Bergeron states that, in Stewart, “not only can the initial
presentation of images appear in various grayscale values, but also further
displays of images can do the same” (Ex. 1003 ¶ 55). Dr. Bergeron further
states that “pursuant to the monitor characteristics and the window and level
settings for display, images are transformed into forms, which may be shown
in various windows, and each having a predetermined illumination state” (id.
¶ 56). Dr. Bergeron’s declaration describes different images being displayed
in some particular form, i.e., at some display setting. None of
Dr. Bergeron’s statements establish or explain how different forms of an
image are displayed in multiple windows on the same monitor.
Accordingly, based on the record before us, Petitioner has not
reasonably shown that Stewart discloses “a monitor to produce a display
having a plurality of windows and to display a mammogram image in a
different form in each window,” as recited in independent claim 2.
b) Conclusion
Based on the record before us, Petitioner has not reasonably shown
that Stewart discloses one of the limitations recited in independent claim 2,
i.e., “a monitor to produce a display having a plurality of windows and to
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display a mammogram image in a different form in each window.”
Accordingly, we determine that Petitioner has not shown a reasonable
likelihood of prevailing on its assertion that Stewart anticipates independent
claim 2.
3. Independent claim 3
Petitioner contends Stewart anticipates independent claim 3 (Pet. 33–
38).
a) transforming the image into a plurality of varying-resolution forms . . .
displaying the forms on the display means, each form displayed within a
different sector of the display means
Petitioner, referencing its analysis of claim 2, relies on Stewart to
disclose “transforming the image into a plurality of varying-resolution
forms” (Pet. 36 (citing Ex. 1005, 92, 95)). Petitioner further relies on
Stewart to disclose “displaying the forms on the display means, each form
displayed within a different sector of the display means” (id. at 37–38 (citing
Ex. 1003 ¶ 83)). In particular, Petitioner references “the analysis of claim 2
that Stewart discloses a processor with software for displaying forms in
separate windows across multiple monitors” (id. at 37–38).
As similarly discussed above in regards to claim 2, however,
Petitioner does not reasonably show that Stewart describes displaying
different forms of an image in different portions of a display screen. The
limitation recites “transforming the image into a plurality of varying-
resolution forms,” and so, requires that the image is transformed into
different forms. The claim further recites “displaying the forms on the
display means, each form displayed within a different sector of the display
means,” and so requires that those different forms, transformed from the
image, are displayed on different sectors of the display. As discussed above,
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Petitioner discusses portions of Stewart which describe displaying various
images in respective windows, but has not reasonably shown, or explained
how, Stewart describes an image which is transformed into different forms,
and those different forms of the image are displayed in respective windows.
Accordingly, Petitioner has not reasonably shown that Stewart
discloses “transforming the image into a plurality of varying-resolution
forms . . . displaying the forms on the display means, each form displayed
within a different sector of the display means,” as recited in independent
claim 3.
b) Conclusion
Based on the record before us, Petitioner has not reasonably shown
that Stewart discloses one of the limitations –– “transforming the image into
a plurality of varying-resolution forms . . . displaying the forms on the
display means, each form displayed within a different sector of the display
means” –– recited in independent claim 3. Accordingly, we determine that
Petitioner has not shown a reasonable likelihood of prevailing on its
assertion that Stewart anticipates independent claim 3.
4. Independent claim 17
Petitioner contends Stewart anticipates independent claim 17 (Pet. 38–
40).
a) transforming the image into a plurality of varying-resolution forms . . .
displaying a first form on the first monitor and a second form on the
second monitor
Petitioner, referencing its analysis of claim 3, which in-turn references
Petitioner’s analysis of 2, relies on Stewart to disclose “transforming the
image into a plurality of varying-resolution forms” (Pet. 39–40). Further,
Petitioner, referencing its analysis of claim 2, relies on Stewart to disclose
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“displaying a first form on the first monitor and a second form on the second
monitor” (id. at 40). We determine Petitioner has not reasonably shown that
Stewart discloses these features.
As similarly discussed above, these limitations require that an image
is transformed into multiple different resolutions (i.e., forms), and that those
different resolution images are displayed on different displays, i.e.,
“displaying a first form on the first monitor and a second form on the second
monitor.” Although Petitioner asserts that “Stewart disclose[s] a processor
with software for displaying various forms across multiple monitors,
including according to a default display protocol” (Pet. 40), Petitioner has
not shown where, or explained how, different resolution versions of the
original image, are displayed on different monitors. Instead, Petitioner has
only shown that Stewart displays different images on different monitors.
Accordingly, based on the record before us, Petitioner has not
established that it is reasonably likely to prevail in showing that Stewart
discloses “transforming the image into a plurality of varying-resolution
forms . . . displaying a first form on the first monitor and a second form on
the second monitor,” as recited in independent claim 17.
b) Conclusion
Based on the record before us, we determine that Petitioner has not
shown a reasonable likelihood of prevailing on its assertion that Stewart
anticipates independent claim 17 because Petitioner has not sufficiently
shown Stewart discloses “transforming the image into a plurality of varying-
resolution forms . . . displaying a first form on the first monitor and a second
form on the second monitor,” as recited in claim 17.
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5. Dependent Claims 4–6, 9–11, and 16
Petitioner asserts Stewart discloses the limitations as recited in claims
4–6, 9–11, and 16 (Pet. 41–45 (citing Ex. 1005, 91, 92, 94, 96, 101;
Ex. 1001, 4:18–24; Ex. 1003 ¶¶ 90, 95, 101)2). These claims depend, either
directly or indirectly, on independent claim 3. Because Petitioner has not
shown a reasonable likelihood of prevailing on its assertion that Stewart
anticipates independent claim 3, Petitioner has also not shown a reasonable
likelihood of prevailing on its assertion that Stewart anticipates these
dependent claims.
D. Asserted Obviousness over Freedman and Cade
Petitioner contends the combination of Freedman and Cade renders
claims 2–6, 9–11, 16, and 17 obvious (Pet. 45).
1. Freedman (Ex. 1006)
Freedman is a report titled “MDIS Compatibility: Computer Assisted
Quality Control and Telemammography (Breast Cancer)” (Ex. 1006, 1).
Freedman describes a “digital mammography system” which includes
“methods for image display” on a computer workstation monitor (id. at 5;
see id. at 6–7). Freedman’s workstation, generally, “provide[s] multiple
image manipulation and enhancement functions through use of a graphical
user interface (GUI)” (id. at 11). Functions include “[a] mouse driven cursor
selection/ deselection tool will allow individual images to be
selected/ deselected for image manipulation,” e.g., “all images in an exam
[can be selected] for image manipulation” (id. at 12). Another function
displays “multiple images on a single monitor with a rearrangement

2 We note in setting forth that Stewart discloses the limitations of claim 4
and claim 6, Petitioner refers generically to “the analysis of claim 2” without
any specific cites (Pet. 41–42).
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capability” (id.). Yet another function is a “Multiformat Image Tool” which
“display[s] multiple images across multiple monitors in a 1:1, 2:1,4:1 and
6:1 option as a minimum” (id.). For example, the “4:1 image option will
allow all the exams [to] be viewed across four monitors in a minified view,
four images of one exam seen on each monitor” (id.). A “Next Exam”
function “close[s] the exam that was just read and diagnosed” and goes on to
display the next exam” using “default display protocols” (id. at 13).
Freedman also provides “multiple user-selectable image enhancement
defaults for gray scale windowing and leveling” (id.). In one instance, the
“images of an exam displayed will automatically be window and leveled at a
user’s and/or departmental default” (id.). In another instance, windowing
and leveling can be “dynamic” and applied “for images on all monitors, a
single monitor, or a specified region of interest on a single monitor” (id. at
14). Windowing and leveling can “be applied only to the images
selected . . . which may be all images or only a selected subset of an exam”
(id.).
2. Cade
Cade is an article titled “MDIS: The New Standard in Filmless
Imaging” (Ex. 1007, 59). Cade describes a Medical Diagnostic Imaging
Support (MDIS) System which provides diagnostic medical imaging
functions (id. at 59–60). Those functions:
1. Acquire diagnostic images in a digital format and gate them
into the system.
2. Communicate patient demographics and study information
into a Radiology Information System (RIS).
3. Archive and manage images and data in a database.
4. Rapidly display images and patient data on workstations.
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(id. at 60). Cade’s system allows a “physician [using] a viewing workstation
to access patient images and exam reports via a high-speed fiber optic
network through a centralized Work Storage Unit (WSU)” (id.).
Cade states that the “basic platform for the workstation is the
Macintosh IIfx computer with 8 MB RAM and 80 MB internal disk drive
with special image processing boards inserted by Loral and Siemens” (id.).
Furthermore, Cade’s “image display subsystem uses high resolution
computer video terminals to display diagnostic-quality, soft-copy medical
images and data” (id.).
3. Independent claim 2
Petitioner contends independent claim 2 is obvious over the
combination of Freedman and Cade (Pet. 49–59).
a) “display a mammogram image in a different form in each window with
grayscale values that, along with the illumination characteristics of said
monitor, appears to a user as a mammogram in each window under a
predetermined illumination state”
Petitioner asserts Freedman teaches “a display having a plurality of
windows and to display a mammogram image in a different form in each
window” (Pet. 55–57). Based on the record before us, we determine
Petitioner has not reasonably shown that Freedman teaches these features.
As discussed above, claim 2 requires “a plurality of windows . . .
display[ing] a mammogram image in a different form in each window,” i.e.,
different forms of a mammogram image are displayed in multiple windows.
Petitioner highlights portions of Freedman that describe displaying various
mammogram images on a display; however, those cited teachings do not
describe different forms of an image are displayed. In particular, Petitioner
contends Freedman “allow[s] display of multiple images on a single
monitor,” “multiple images across multiple monitors,” and a display option
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in which “four images of one exam [are] seen on each monitor” (Pet. 56
(quoting Ex. 1006, 11)).
Petitioner also asserts that Freedman describes “the images of an
exam displayed will automatically be window and [gray scale] leveled”
(Pet. 56–57 (quoting Ex. 1006, 11, 13)). Although Freedman describes that
multiple images are displayed in different windows on a display, and that
those images can be adjusted for gray scale, we determine that, based on the
record before us, Petitioner has not shown where, or explained how,
Freedman describes that different forms of the original image are displayed
in multiple windows of a display.
Additionally, Petitioner asserts Freedman “discloses that images are
stored with a greater bit depth (16-bits) than they may be displayed (8-bits)”
and, therefore, “images are transformed into different forms having varying
resolutions” (Pet. 57). Based on the record before us, Petitioner’s assertion,
however, is not supported by Freedman. More specifically, Petitioner relies
on § 4.1 of Freedman that describes “Display Monitors” to describe the bit
depth (Ex. 1006, 8). Freedman teaches
Data Sets Available to the Monitors. The workstation shall
accommodate individual images with a 4k x 5x by 16 bit deep
images. (40 Mb of data/ image)
(id. at 8);
Gray Scale Display. No fewer than 256 shades of gray (8 bits
deep) displayed on each monitor shall be provided
(id. at 9);
Frame Buffer. Shall be no less than 16 bits deep
(id.); and
Local Storage . . . Each image without compression represents
4k x 6k by 12 bits deep
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(id. at 10). None of these descriptions teaches that images are stored with a
greater bit depth than is displayed, and particularly, not that a 16-bit deep
image is displayed in 8-bits. Rather, Freedman’s discussion regards what
the bit depth of images may be, or the bit depth display capability of the
monitor — but not that an image is transformed from a 16-bit deep image to
an 8-bit deep image. Thus, Petitioner has not reasonably shown where
Freedman describes displaying, in different windows different forms of the
original image. As such, Petitioner has not reasonably shown, or explained
how, these portions of Freedman teach “display a mammogram image in a
different form in each window with grayscale values that, along with the
illumination characteristics of said monitor, appears to a user as a
mammogram in each window under a predetermined illumination state,” as
recited in independent claim 2.
b) Conclusion
Based on the record before us, Petitioner has not reasonably shown
that the combination of Freedman and Cade teaches all the limitations
recited in independent claim 2. Accordingly, Petitioner does not establish a
reasonable likelihood of prevailing on its assertion that independent claim 2
is obvious over the combination of Freedman and Cade.
4. Independent claim 3
Petitioner contends independent claim 3 is obvious over the
combination of Freedman and Cade (Pet. 59–63).
a) transforming the image into a plurality of varying-resolution forms . . .
[and] displaying the forms on the display means, each form displayed
within a different sector of the display means
Petitioner contends Freedman teaches “transforming the image into a
plurality of varying-resolution forms . . . displaying the forms on the display
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means, each form displayed within a different sector of the display means”
(Pet. 61–63). We determine, based on the record before us, Petitioner has
not reasonably shown Freedman teaches these limitations.
More specifically, these limitations require transforming an image
into multiple different resolutions, i.e., “transforming the image into a
plurality of varying-resolution forms.” The limitations further require that
those different resolution images are each displayed on a display, i.e., “each
form displayed within a different sector of the display means.” Petitioner
relies on its analysis of claim 2 to support its assertion that Freedman teaches
those limitations (Pet. 61–63). However, as discussed above, Petitioner fails
to show reasonably that those portions describe instances in which an image
is displayed in different forms on the display or that the image is
transformed into multiple different resolutions and displayed in respective
different sectors.
Petitioner also points out “Freedman also describes that a user may
control performance of such transformation by selecting the ‘next exam’
option,” the “next exam displayed will follow the default display protocols,”
and “the images of an exam displayed will automatically be window and
leveled at a user's and/or departmental default” (Pet. 62 (citing Ex. 1006 at
13)). Although those portions of Freedman describe displaying images at a
“default” window and level, Petitioner fails to show reasonably that those
portions describe an image displayed at different resolutions in respective
different sectors, i.e., displaying different forms of varying-resolution of the
original image.
As such, Petitioner has not reasonably shown, or explained how,
Freedman teaches “transforming the image into a plurality of varying-
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resolution forms . . . displaying the forms on the display means, each form
displayed within a different sector of the display means.”
b) Conclusion
Upon review of the record, Petitioner has not reasonably shown that
the combination of Freedman and Cade teaches all the limitations recited in
independent claim 3. Accordingly, based on the record before us, Petitioner
does not establish a reasonable likelihood that independent claim 3 is
obvious over the combination of Freedman and Cade.

5. Independent claim 17
Petitioner contends independent claim 17 is obvious over the
combination of Freedman and Cade (Pet. 63–66).
a) transforming the image into a plurality of varying-resolution forms,
each form having a different set of greyscale values; and . . . displaying
a first form on the first monitor and a second form on the second
monitor
Petitioner relies on Freedman to teach “transforming the image into a
plurality of varying-resolution forms, each form having a different set of
greyscale values; and . . . displaying a first form on the first monitor and a
second form on the second monitor” (Pet. 65–66). We determine Petitioner
has not reasonably shown that Freedman teaches these features.
As similarly discussed above, these limitations require that an image
is transformed into multiple different resolutions, i.e., “transforming the
image into a plurality of varying-resolution forms.” The limitations further
require that those different resolution images are displayed on different
displays, i.e., “displaying a first form on the first monitor and a second form
on the second monitor.” Petitioner relies its analysis of claims 2 and 3 to
support its assertion that Freedman teaches those limitations (Pet. 65–66
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(citing id. at 55–57, 61–63)). However, as discussed above, Petitioner fails
to show reasonably that those portions describe that the same image is
transformed into multiple different resolutions.
Nor does Petitioner reasonably show that those portions describe that
different resolution images, transformed from the same image, are displayed
on different displays. Although Petitioner contends that Freedman provides
an “interactive option to display multiple images across multiple monitors in
a 1:1, 2:1, 4:1 and 6:1 option as a minimum” (Pet. 56 (quoting Ex. 1006 at
123)), Petitioner has not explained how those multiple images across
multiple monitors are different resolution forms of the same image. Indeed,
Freeman explains that the “4:1 image option will allow all the exams [to] be
viewed across four monitors in a minified view, four images of one exam
seen on each monitor,” suggesting that each monitor respectively displays
the images of respective, different exams.
As such, Petitioner has not reasonably shown, or explained how,
Freedman teaches “transforming the image into a plurality of varying-
resolution forms, each form having a different set of greyscale values;
and . . . displaying a first form on the first monitor and a second form on the
second monitor.”
b) Conclusion
On this record, Petitioner has not reasonably shown that the
combination of Freedman and Cade teaches all the limitations recited in
independent claim 17. Accordingly, based on the record before us,
Petitioner has not shown a reasonable likelihood of prevailing on its

3 We note that Petitioner cites to Exhibit 1006, page 11 for this assertion as
well as several following assertions (Pet. 56). However, these quotes are not
from page 11 of Exhibit 1006.
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assertion that independent claim 17 is obvious over the combination of
Freedman and Cade.
6. Dependent claims 4–6, 9–11, and 16
Petitioner asserts the combination of Freedman and Cade teaches the
limitations as recited in claims 4–6, 9–11, and 16 (Pet. 66–69 (citing Ex.
1003 ¶¶ 125–126, 166; Ex. 1006, 8, 11, 22; Ex. 1016, 23–34); Ex. 1006, 11,
22; Ex. 1001, 4:15–24; Ex. 1003 ¶¶ 172, 178, 182)). Petitioner has not
proffered any additional evidence showing Freedman, Cade, or the
combination thereof teaches “transforming the image into a plurality of
varying-resolution forms, each form having a different set of greyscale
values; and . . . displaying the forms on the display means,” as recited in
claim 3, however. Accordingly, based on the record before us, Petitioner
has not shown a reasonable likelihood of prevailing on its assertion that any
of claims 4–6, 9–11, or 16 is obvious over the combination of Freedman and
Cade.
III. CONCLUSION
For the foregoing reasons, on the record before us, we are not
persuaded that the Petition establishes a reasonable likelihood that Petitioner
would prevail in showing that any of claims 2–6, 9–11, 16, and 17 of the
’937 Patent are unpatentable.
IV. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that the Petition is denied, and no trial is instituted.
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For PETITIONER:
Brent Ray
Dara Kurlancheek
KING & SPALDING LLP
bray@kslaw.com
dkurlancheek@kslaw.com

For PATENT OWNER:
John Artz
DICKINSON WRIGHT LLP
jsartz@dickinsonwright.com