Leica Microsystems, Inc. v. Regents of the University of Michigan

N OTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
LEICA MICROSYSTEMS, INC.,
Appellant
v.
REGENTS OF THE UNIVERSITY OF MICHIGAN,
Appellee
______________________
2022-1445
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2020-
01165.
______________________
Decided: April 24, 2023
______________________
ANDREW RYAN SOMMER, Greenberg Traurig LLP,
McLean, VA, argued for appellant. Also represented by
VIVIAN K UO, Washington, DC.
RUSSELL T ONKOVICH , Kramer Alberti Lim & Tonkovich
LLP, Burlingame, CA, argued for appellee. Also repre-
sented by AIDAN BREWSTER , ROBERT K RAMER .
______________________
Before L OURIE, D YK, and STARK, Circuit Judges.
Case: 22-1445 Document: 42 Page: 1 Filed: 04/24/2023

-- 1 of 5 --

LEICA MICROSYSTEMS, INC. v.
REGENTS OF THE UNIVERSITY OF MICHIGAN
2
L OURIE, Circuit Judge.
Leica Microsystems, Inc. (“Leica”) appeals from a final
written decision of the United States Patent and Trade-
mark Office Patent Trial and Appeal Board (“the Board”)
holding that Leica failed to show that claims 1–26 of U.S.
Patent 7,277,169 (the “’169 patent”) were unpatentable as
obvious. See Leica Microsys. Inc. v. Regents of the Univ. of
Mich., No. IPR2020-01165, Paper No. 26 (P.T.A.B. Jan. 7,
2022), J.A. 1–27 (“Decision”). For the reasons provided be-
low, we affirm.
BACKGROUND
Regents of the University of Michigan (“Regents”) own
the ’169 patent, which describes a fluorescence detection
system that detects light that is emitted from a sample af-
ter it is struck with an excitation light. The system uses
ultrafast white light optical pulses to excite fluorophores
and a detector to detect the emitted light. Claims 1, 10,
and 19 are the three independent claims, each reciting a
fluorescence detection system for testing a sample, com-
prising a single-source white light generation system and
a time-resolving detector for receiving fluorescence. Rep-
resentative claim 1 is presented below:
1. A fluorescence detection system for testing
a sample, said sample having a plurality of
fluorophores, said fluorescence detection sys-
tem comprising:
a single-source white light generation system
outputting a supercontinuum white light
pulse comprising an entire spectrum of white
light, said supercontinuum white light pulse
exciting the plurality of fluorophores of the
sample to emit fluorescence; and
a time-resolving detector receiving said fluo-
rescence and at least a portion of said super-
continuum white light pulse, said time-
Case: 22-1445 Document: 42 Page: 2 Filed: 04/24/2023

-- 2 of 5 --

LEICA MICROSYSTEMS, INC. v.
REGENTS OF THE UNIVERSITY OF MICHIGAN
3
resolving detector separating said fluores-
cence from said portion of said supercontin-
uum white light pulse.
’169 patent, col. 7 ll. 43–55.
Relevant to this appeal, Leica petitioned for inter
partes review (“IPR”) of claims 1–26, asserting that the
claims would have been obvious over PCT application WO
01/022063 (“Folestad”) in view of various secondary refer-
ences, including Wittmershaus.1 Folestad discloses a
method of analyzing a turbid pharmaceutical sample (e.g.,
a tablet) using white light from a laser excitation source.
Wittmershaus describes a method for analyzing fluoro-
phores in chlorophyll from spinach leaves using a fluores-
cence detection system.
The Board concluded that Leica had not shown an ad-
equate rationale for combining Folestad with other second-
ary references, including Wittmershaus. The Board
rejected Leica’s expert testimony as conclusory and lacking
evidentiary support, also holding that there was no evi-
dence that Folestad would have provided any improvement
or benefit over Wittmershaus. The Board also rejected
Leica’s showing that substituting one sample for another
in the same system was routine. Finally, the Board held
that the record lacked evidence regarding whether a skilled
artisan would have configured the system in Folestad to
measure fluorescence as required by the claims in the ’169
patent.
Leica appealed the Board’s decision. We have jurisdic-
tion under 28 U.S.C. § 1295(a)(4)(A).
1 Bruce Wittmershaus et al., Picosecond studies at
77 K of energy transfer in chloroplasts at low and high ex-
citation intensities, 806 BIOCHIMICA ET BIOPHYSICA ACTA 93
(1985).
Case: 22-1445 Document: 42 Page: 3 Filed: 04/24/2023

-- 3 of 5 --

LEICA MICROSYSTEMS, INC. v.
REGENTS OF THE UNIVERSITY OF MICHIGAN
4
D ISCUSSION
We review the Board’s legal determinations de novo, In
re Elsner, 381 F.3d 1125, 1127 (Fed. Cir. 2004), and the
Board’s factual findings for substantial evidence, In re
Gartside, 203 F.3d 1305, 1316 (Fed. Cir. 2000). A finding
is supported by substantial evidence if a reasonable mind
might accept the evidence as adequate to support the find-
ing. Consol. Edison Co. v. NLRB, 305 U.S. 197, 229 (1938).
Leica argues that the Board applied too rigid an obvi-
ousness analysis, focusing too heavily on the references
themselves and not considering the background knowledge
of a skilled artisan, in violation of KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398 (2007). Leica also contends that the
Board’s finding that sample substitution was not simple
was unsupported by substantial evidence. Leica asserts
that the Board improperly focused on unclaimed sample
preparation techniques, which, even if relevant, fell within
the routine abilities of the skilled artisan. Leica further
argues that the claimed invention is nothing more than a
new use of Folestad’s old system, and that a new use of an
old system would not be patentable.
Regents respond that the Board’s finding that there
was no motivation to combine Folestad and Wittmershaus
was supported by substantial evidence, that the Board did
not misapply the law of obviousness, and that the Board
did not err in finding that Wittmershaus disclosed highly
specialized sample preparation for use in highly specialized
fluorescence detection systems. Regents also assert that
the Board did not err in crediting Regents’ expert and re-
jecting Leica’s expert’s testimony as conclusory. Regents
further contend that the claimed invention and the Foles-
tad reference describe different systems for different pur-
poses, and so the claimed invention is not merely a new use
of Folestad’s old system.
We agree with Regents that the Board’s finding that
there was no motivation to combine Folestad with
Case: 22-1445 Document: 42 Page: 4 Filed: 04/24/2023

-- 4 of 5 --

LEICA MICROSYSTEMS, INC. v.
REGENTS OF THE UNIVERSITY OF MICHIGAN
5
Wittmershaus was supported by substantial evidence. In
arriving at its conclusion, the Board found that Leica’s pro-
posed combination of Folestad with Wittmershaus required
replacing Folestad’s teachings of detection of transmitted
or reflected radiation with Wittmershaus’s detection of flu-
orescence. Decision at 16–17, J.A. 16–17. The Board fur-
ther found that the record lacks evidence regarding
whether and how a skilled artisan would have configured
Folestad to measure fluorescence. Decision at 18, J.A. 18.
In other words, one would have needed to modify Folestad
to arrive at the claimed invention.
The Board also credited expert testimony from both
parties in determining whether a skilled artisan would
have been motivated to make the modifications necessary
to combine Folestad and Wittmershaus. It is within the
discretion of the Board to weigh the evidence of record.
Tiger Lily Ventures Ltd. v. Barclays Cap. Inc., 35 F.4th
1352, 1365–66 (Fed. Cir. 2022); see also Shoes by Firebug
LLC v. Stride Rite Child.’s Grp., LLC, 962 F.3d 1362, 1371
(Fed. Cir. 2020) (“[I]t is not for us to second-guess the
Board’s assessment of the evidence.”). Here, the Board did
just that. We therefore hold that the Board’s finding that
a skilled artisan would not have been motivated to combine
Folestad with Wittmershaus was supported by substantial
evidence.
CONCLUSION
We have considered Leica’s remaining arguments but
find them unpersuasive. For the foregoing reasons, we af-
firm the Board’s final written decision.
AFFIRMED
Case: 22-1445 Document: 42 Page: 5 Filed: 04/24/2023

-- 5 of 5 --