University of Maryland Biotechnology Institute v. Presens Precision Sensing GmbH
711 F. App'x 1007
| Fed. Cir. | 2017Background
- The University of Maryland owns U.S. Patent No. 6,673,532, which claims an optical method for measuring multiple cell-culture parameters using a cultivation vessel containing at least two types of optical chemical sensors, excitation sources, and detectors.
- Presens filed and the PTO granted an inter partes reexamination petition challenging the patent; the examiner rejected several claims as obvious over Bambot (1995) and Weigl (1994).
- Bambot taught intra-vessel optical sensors, multiple sensor types, various excitation sources (e.g., LEDs, laser diodes), and detectors for measuring analytes (oxygen, pH, CO2, glucose) in bioreactors.
- Weigl taught a triple-sensor system measuring pH, O2, and CO2 using separate flow-through units, each with its own excitation source and detector (sensors located outside the cultivation vessel).
- The Board affirmed the examiner, finding the combination of Bambot and Weigl rendered the claimed method obvious; Maryland appealed.
Issues
| Issue | Plaintiff's Argument (Maryland) | Defendant's Argument (Presens/PTO) | Held |
|---|---|---|---|
| Whether the claims are obvious over Bambot+Weigl | Combination improperly requires modifying Weigl’s basic operation (moving extra-vessel sensors into vessel), so Ratti bars obviousness | Board relied on Weigl only for teaching multiple-parameter measurement and separate excitation/detection per sensor; Bambot supplies intra-vessel sensor configuration | Claims are obvious; combination is consistent with both references and yields predictable results |
| Whether modifying Weigl contradicts its principle of operation (Ratti) | Positioning Weigl’s sensors inside the vessel would change its basic principle, so not a proper reference for combination | A person of ordinary skill is not limited to literal Weigl configuration; Weigl teaches separate sources/detectors and multi-parameter sensing irrespective of sensor placement | Ratti inapplicable; substantial evidence supports Board’s findings from Weigl and Bambot |
| Whether Weigl teaches away from intra-vessel multi-sensor implementation | Weigl’s design choices (unstable CO2 sensor, flow-through units, outlets, extra-vessel invasiveness) discourage using intra-vessel multi-sensor setups | These are alternative designs; Bambot supplies stable intra-vessel sensor teachings and alternatives for CO2 sensing | No clear discouragement; mere alternative designs do not teach away; claims still obvious |
| Standard of review for Board’s factual findings | Not disputed materially; Maryland implicitly challenges sufficiency of evidence | Board’s factual findings supported by cited figures/texts in references | Court reviews legal issues de novo and factual findings for substantial evidence; substantial evidence supports Board |
Key Cases Cited
- Graham v. John Deere Co., 383 U.S. 1 (establishes Graham factors for obviousness)
- KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (obviousness can be found where combination of familiar elements yields predictable results)
- In re Ratti, 270 F.2d 810 (CCPA) (modifying a reference that changes its basic principle may not support obviousness)
- In re Mouttet, 686 F.3d 1322 (discusses limits on combining references that contradict a reference's teachings)
- In re Ethicon, Inc., 844 F.3d 1344 (teaching away requires clear discouragement)
- In re Gartside, 203 F.3d 1305 (establishes substantial-evidence review standard for Board factual findings)