In Sigray, Inc, v. Carl Zeis X-Ray [“Zeiss”], appeal 2023-2211 (Fed. Cir., May 23, 2025), the panel reviewed the Board’s decision in an IPR in which Claims 1-6 of Zeiss patent no. 7,400,704 were held not to be unpatentable over Jorgensen. Claim 1 of the ‘704 patent reads as follows:
As explained by the panel:
“Projection magnification…utilizes diverging rays that spread out as they travel. The distance between the rays increases after interacting with the sample but before being received by the detector. As a result, the generated image is larger than the sample itself, … A larger distance between the source and the sample or a smaller distance between the sample and the detector will result is less magnification.”
The panel described the Jorgensen paper as applying a similar x ray system that describes all of the elements of Claim 1 except for the “magnification of the projection phase is between 1-10 times”. Jorgensen discloses attempting to reduce the projection magnification by providing a large distance between the sample and the source and a short distance between the sample and the detector. Jorgensen additionally descried using collimation – passing the beam through a lead-wrapped brass tube to further reduce the divergence of the beam—some divergence beyond strictly parallel rays is necessary to magnification.
After a succinct discussion on the legal standards of inherent anticipation: viz. “A limitation is inherently disclosed ‘when the reference discloses prior art that must necessarily include the unstated limitation’”. The panel went on to agree with Sigray that the Board had improperly construed Clams 1-6 to exclude small amounts of divergence that would, in turn, cause some projection magnification “only slightly greater than one.”
The evidence relied upon by the Board was, in part, the “aspirational” language in the Jorgensen paper that it is not attempting to achieve magnification. The paper does not address whether magnification is inherently present. The panel also relied on experts’ scientific “waffle words” that regularly appear in the literature and during testimony when the scientist/expert does not want to appear absolutist – such words noted by the panel as evidencing reduced divergence include “nearly parallel X-ray beam”, “essentially parallel”, and “greatly reduce”. The panel pointed out that “Reduce does not mean eliminate.”
The panel went on to hold that “The only evidence supported conclusion is that Jorgensen contains a beam diverging at the sample, which necessarily produces projection magnification over 1. As such, Claim 1 is anticipated by Jorgensen.”
