NOTE: This disposition is nonprecedential.

United States Court of Appeals 

for the Federal Circuit ______________________ 

DAKO DENMARK A/S,

Appellant

v.

LEICA BIOSYSTEMS MELBOURNE PARTY LTD.,

Appellee

______________________ 

2015-1997

______________________ 

Appeal from the United States Patent and Trademark 

Office, Patent Trial and Appeal Board in Nos. 95/001,613, 

95/001,692.

-----------------------------------------------------------------------

DAKO DENMARK A/S,

Appellant

v.

LEICA BIOSYSTEMS MELBOURNE PARTY LTD.,

Appellee

______________________ 

2016-1000

______________________ 
2 DAKO DENMARK A/S v. LEICA BIOSYSTEMS MELBOURNE

Appeal from the United States Patent and Trademark 

Office, Patent Trial and Appeal Board in No. 95/001,671.

______________________ 

Decided: December 2, 2016

______________________ 

JOHN M. GRIEM, JR., Carter Ledyard & Milburn LLP, 

New York, NY, argued for appellant. Also represented by 

THEODORE YOUNG MCDONOUGH. 

DAVID G. MANGUM, Parsons Behle & Latimer, Salt 

Lake City, UT, argued for appellee. Also represented by 

C. KEVIN SPEIRS; DANA M. HERBERHOLZ, Boise, ID. 

______________________ 

Before PROST, Chief Judge, REYNA and HUGHES, Circuit 

Judges.

PROST, Chief Judge. 

These appeals arise from two inter partes reexaminations that invalidated the challenged claims of U.S. Patent No. 7,217,392 (“’392 patent”) and a continuation of 

that patent, U.S. Patent No. 7,553,672 (“’672 patent”). In 

those reexaminations, the United States Patent and 

Trademark Office, Patent Trial and Appeal Board 

(“Board”) determined that the claims of the ’392 patent 

are invalid as obvious under 35 U.S.C. § 103 and that the 

claims of the ’672 patent are invalid as anticipated under 

35 U.S.C. § 102 and obvious under 35 U.S.C. § 103. On 

appeal, Dako Denmark A/S (“Dako”) challenges the 

Board’s determinations with respect to claim 7 of the ’392 

patent and claim 2 of the ’672 patent. For the reasons 

discussed below, we affirm.
DAKO DENMARK A/S v. LEICA BIOSYSTEMS MELBOURNE 3

BACKGROUND

I 

Dako is the assignee of both the ʼ392 patent and the 

’672 patent. On May 3, 2011, Leica Biosystems Melbourne Party Ltd. (“Leica”) filed a request for inter partes 

reexamination of the ʼ392 patent. Shortly thereafter, Leica 

filed a second request regarding the ’392 patent. The 

Board granted both requests and subsequently merged

the reexaminations. Upon reexamination, the patent 

examiner rejected all the issued claims of the ’392 patent. 

Dako only appealed the examiner’s rejection of independent claim 7 to the Board. On appeal, the Board affirmed 

the examiner’s rejection, concluding that the claim was 

obvious based on the combination of two prior art references—U.S. Patent No. 5,439,649 (“Tseung”), and U.S. 

Patent No. 5,273,905 (“Muller”). 

On June 29, 2011, Leica requested inter partes reexamination of the ’672 patent. After reexamination, the 

examiner rejected four of the issued claims. Dako only 

appealed the rejection of dependent claim 2 to the Board. 

On appeal, the Board affirmed the examiner’s rejection, 

concluding that the claim was both anticipated by Tseung 

and obvious based on Tseung. 

Dako now appeals the Board’s decisions. We have jurisdiction under 28 U.S.C. § 1295(a)(4)(A).

We address each patent in turn.

II 

The ’392 patent relates to slide staining devices “for 

the application and removal of reagents to biologic tissue 

sections mounted on microscope slides.” ʼ392 patent col. 2 

ll. 7–9. Slide staining is a tool used to aid in the microscopic examination of tissue samples. Id. at col. 1 ll. 17–

19. In preparation for examination, tissue sections are 

thinly sliced before being placed on a microscope slide, 
4 DAKO DENMARK A/S v. LEICA BIOSYSTEMS MELBOURNE

and are “nearly transparent” if untreated. Id. at col. 1 ll. 

19–21. In order to visualize various features of the samples, different techniques are applied which have the 

effect of coloring, or staining, the sample. Id. at col. 1 ll. 

20–29. Because different staining techniques “require[] 

the addition and removal of reagents in a defined sequence for specific time periods, at defined temperatures[,] . . . a need arises for a slide stainer that can 

perform a diversity of stains simultaneously under computer control, as specified by the technologist.” Id. at col. 

1 ll. 29–35.

In addition to the need for a slide stainer that can apply different processes to a single slide, the specification 

identifies a further need for a slide stainer that is able to 

simultaneously process multiple slides in different ways. 

See id. at col. 2 ll. 7–16. As different staining techniques 

potentially require that slides be heated at different 

temperatures, and for different times, the ʼ392 patent

describes slide staining systems and methods that “allow[] for the heating of each slide to its own specified 

temperature.” Id. at col 2 ll. 13–18.

In order to facilitate this individualized control, the 

patent describes a system containing multiple “slide 

frames” in which each slide frame contains a separate 

heating element. Id. at col. 4 ll. 4–11. Figure 5, shown 

below, illustrates one embodiment of a slide frame and, “is 

a top view of the slide frame base with five microscope 

slides in their appropriate positions, showing the area to 

which heat is applied.” Id. at col. 3 ll. 17–20.
DAKO DENMARK A/S v. LEICA BIOSYSTEMS MELBOURNE 5

Id. at fig.5.

Claim 7 of the ’392 patent, which the Board found obvious, reads:

7. A microscope slide stainer, comprising:

a staining protocol program comprising instructions for applying reagents and heat to a plurality of microscope slides bearing biological 

samples;

a plurality of slide supports, each support being 

comprised of a heating element that underlies 

only one microscope slide and having a surface 

on which only one microscope slide rests so as 

to transfer heat to the one microscope slide; 
6 DAKO DENMARK A/S v. LEICA BIOSYSTEMS MELBOURNE

at least one reagent dispenser that can dispense a 

liquid reagent onto a microscope slide on one of 

the slide supports;

a movable carriage that causes the reagent dispenser to be aligned over a desired microscope 

slide on one of the slide supports, as specified 

in the slide staining program, so that reagent 

dispensed out of the reagent dispenser drops 

onto an underlying microscope slide on one of 

the slide supports; and

a control system that issues commands to cause 

relative motion between the reagent dispenser 

and the microscope slide on one of the slide 

supports so that the reagent dispenser is 

aligned over the microscope slide on one of the 

slide supports, as specified in the staining protocol program, and that issues commands to 

cause the heating elements to heat at the times 

specified in the staining protocol program, the 

control system controlling heating of one heating element to a different temperature as another. 

’392 patent col. 13 l. 14–col. 14 l. 3 (emphasis added). 

In its analysis, the Board first determined that 

Tseung, a prior art reference, disclosed every claim limitation except the requirement that each heating element 

underlies only one microscope slide. To supply this limitation, the Board looked to Muller, a second prior art 

reference, which disclosed individual heating elements for 

each slide. The Board also determined that there was a 

motivation to combine Tseung with Muller because Muller’s teachings were “directly pertinent to Tseung.” No. 

15-1997 J.A. 15. The Board explained that both references used heating in their automated staining devices 

and that this provided a reason to combine the references. 
DAKO DENMARK A/S v. LEICA BIOSYSTEMS MELBOURNE 7

In finding a motivation to combine, the Board addressed, and rejected, four arguments Dako made that

were supported only by testimony from Dr. Floyd, its 

expert, and Dr. Bogen, one of the named inventors of the 

’392 patent. 

First, Dako argued that Muller was used for in situ 

hybridization (“ISH”), whereas Tseung was designed for 

immunohistochemical (“IHC”) staining, which is a different technique. The Board rejected this argument based 

on the express disclosures of both Tseung and Muller. 

The Board explained that Tseung’s disclosure was not 

limited to IHC staining and contemplates other staining 

techniques. The Board also noted that, even if Tseung 

were limited to IHC staining, Dako’s argument would not 

be persuasive because Muller also expressly discusses 

IHC staining, in addition to ISH. 

Second, Dako argued that a skilled artisan would not 

be motivated to combine Tseung and Muller because 

modifying Tseung, which describes four heating blocks 

with ten slides, to have forty individual heating blocks 

would increase the complexity and reduce the overall 

reliability of the system. In further support of this argument, Dako asserted that for two years after the priority 

date of the patent, there were no systems on the market 

that provided individualized heating controls. According 

to Dako, this “support[ed] the contention that the increased cost and complexity associated with individual 

heating was a non-trivial barrier.” Id. at 2920.

The Board also found this argument unconvincing. It 

explained that the disclosures in both Muller and Tseung 

showed that having multiple heaters was within the 

knowledge of a person of ordinary skill. The Board also 

noted that Tseung was not limited to the preferred embodiment and could be modified to support only one slide 

on each heating block, which would result in a system 

identical to Tseung, only reduced in size. 
8 DAKO DENMARK A/S v. LEICA BIOSYSTEMS MELBOURNE

Third, Dako argued that the staining part of IHC is 

performed at room temperature and, consequently, a 

person of ordinary skill would not recognize the benefit of 

adding heating elements to Tseung. The Board found 

that this argument was directly rebutted by Tseung’s 

statement that “some staining techniques can be enhanced by providing heat so that either incubation or 

drying times are shortened, thereby increasing the speed 

of the overall operation.” Id. at 18 (quoting Tseung col. 

12, ll. 6–9). The Board then stated that this “not only 

provide[d] a reason[] to have utilized heating in [Tseung], 

but also to have ‘adapted’ Muller’s approach of individualized heaters for each slide.” Id.

Finally, Dako argued that, at the time of the invention, one of ordinary skill would not have attempted to 

create an automated staining system because experts in 

the field did not believe that special staining processes 

could be automated at all. The Board rejected this argument because it found that neither Tseung nor Muller 

was restricted to special staining protocols. 

The Board thus concluded that a person of ordinary 

skill would have been motivated to combine Tseung with 

Muller to arrive at the claimed invention. 

The Board next turned to Dako’s evidence of secondary considerations. For secondary considerations, Dako 

argued that the invention had been copied by Ventana, a 

competitor.1 In support, Dako relied on Dr. Bogen’s 

declaration, which stated that Ventana obtained a confidential business plan from CytoLogix, the original owner 

of the ’392 patent. According to Dako, this business plan 

described the invention of the ’392 patent. Dr. Bogen’s

declaration further stated that Ventana subsequently 

 

1 This was the same argument that Dako previously brought before the examiner. 
DAKO DENMARK A/S v. LEICA BIOSYSTEMS MELBOURNE 9

used the confidential business plan to create its own 

device. Dr. Bogen also attached a transcript of a speech 

by Ventana’s chairman, Mr. Schuler, who boasted that 

Ventana launched a competitive product six months after 

seeing the CytoLogix business plan. As additional evidence of copying, Dako pointed to a license agreement in 

which Ventana licensed two related patents from Dako, 

and a patent application Ventana filed that included 

individual heating of slide samples. 

The Board found Dako’s secondary consideration evidence unpersuasive. According to the Board, Dako did 

not provide evidence beyond the declaration that Ventana 

created a device with individual heating elements for each 

slide support. The Board also stated that neither Mr. 

Schuler’s statement nor Ventana’s patent application 

established the existence of such a device. The Board 

therefore found that, because it could not adequately 

confirm that Ventana had created a device with individual heating elements, no nexus had been established. The 

Board also noted that, even had a nexus been established, 

the evidence of copying would not be dispositive in this 

case in light of the other evidence of obviousness. 

Consequently, after reviewing all the evidence before 

it, the Board determined that a preponderance of the 

evidence supported the conclusion that claim 7 of the ’692 

patent would be obvious to a person of ordinary skill in 

the art. 

III 

Whether a claimed invention is obvious is a question 

of law based on underlying facts. Graham v. John Deere 

Co., 383 U.S. 1, 17–18 (1966). We review the Board’s 

ultimate conclusion of obviousness de novo and any 

underlying factual determinations for substantial evidence. In re Gartside, 203 F.3d 1305, 1316 (Fed. Cir. 

2000).
10 DAKO DENMARK A/S v. LEICA BIOSYSTEMS MELBOURNE

Dako does not contest the Board’s finding that, together, Tseung and Muller disclose every element of the 

patented claim. Dako makes three arguments challenging the Board’s conclusion that claim 7 of the ’392 patent 

is obvious: (1) the Board did not give proper consideration 

to the evidence of secondary considerations; (2) the Board 

inappropriately treated the ability to combine prior art 

references as a motivation to combine them; and (3) the 

Board did not give proper weight to Dako’s copying and 

long-felt need arguments. We address each of Dako’s 

arguments in turn.

A 

First, Dako argues that the Board failed to consider 

evidence of secondary considerations before it made its 

ultimate conclusion of obviousness. Dako bases this 

argument on the Board’s statement after finding a motivation to combine that “it would have been obvious to one 

of ordinary skill in the art to implement individual slide 

heating in Tseung for those staining procedures which are 

accomplished in an open system and for which heating to 

different temperatures is desired.” See No. 15-1997 J.A. 

16. According to Dako, because this statement appears

before the Board’s consideration of any evidence of secondary considerations, the Board made its ultimate 

conclusion of obviousness before considering all the evidence.

Reading the Board’s opinion in its entirety, it is clear 

that the Board properly considered all the evidence before 

coming to its ultimate legal conclusion. Indeed, in its 

opinion, the Board expressly evaluated Dako’s evidence of 

secondary considerations and appropriately considered it

before ultimately determining that the claim was obvious. 

Therefore, we reject Dako’s arguments in this regard.
DAKO DENMARK A/S v. LEICA BIOSYSTEMS MELBOURNE 11

B 

Dako next argues that the Board improperly determined that the ability to combine prior art references 

established a motivation to combine. In support, Dako 

points to portions of the Board’s decision in which it states 

that “providing a plurality of slide heaters would have 

been within the skill of the ordinary artisan” and relies on 

Tseung’s language that “[n]umerous techniques exist for 

heating microscope slides and can be adapted to the 

present apparatus.” No. 15-1997 J.A. 18–19. According 

to Dako, the Board never articulated a specific reason or 

motivation to combine the references and ignored the 

unrebutted testimony of its expert, Dr. Floyd, who testified at length that a person of ordinary skill would have 

been discouraged from combining Tseung and Muller. 

The existence of a motivation to combine is a factual 

determination. Star Sci., Inc. v. R.J. Reynolds Tobacco 

Co., 655 F.3d 1364, 1374–75 (Fed. Cir. 2011). Under a 

substantial evidence standard of review, we must draw all 

reasonable inferences in favor of the Board’s decision that

are supported by the record and should take care not to 

make credibility determinations or to weigh the evidence. 

Reeves v. Sanderson Plumbing Prods., Inc., 530 U.S. 133, 

150 (2000). “[A]lthough the court should review the 

record as a whole, it must disregard all evidence favorable 

to the [appellant] that the [factfinder] is not required to 

believe.” Id. at 151.

Here, in support of its position, Dako exclusively relies upon the testimony of its expert, Dr. Floyd. In his 

declaration, Dr. Floyd stated that a person of ordinary 

skill would not have been motivated to combine Tseung 

with Muller because a person of ordinary skill would not 

have appreciated a need to include individual heating to 

the system of Tseung. Dr. Floyd further stated that 

modifying Tseung to include individual heating elements 

would increase the complexity of the system and substan-
12 DAKO DENMARK A/S v. LEICA BIOSYSTEMS MELBOURNE

tially increase the cost. Finally, Dr. Floyd stated that a 

person of ordinary skill would not have combined Tseung 

with Muller because Tseung related to IHC staining, 

whereas Muller related to ISH staining. 

The question before us is whether, based on all of the 

evidence before the Board, a reasonable factfinder could 

find that there was a motivation to combine Tseung and 

Muller. The answer to this question is “yes.” A motivation to combine can be found in “any need or problem 

known in the field of endeavor at the time of the invention 

and addressed by the patent.” KSR Int’l Co. v. Teleflex 

Inc., 550 U.S. 398, 420 (2007). “[T]he 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.” Id. at 418.

In its analysis, the Board primarily relied on Tseung’s 

statement that “some staining techniques can be enhanced by providing heat so that either incubation or 

drying times are shortened, thereby increasing the speed 

of the overall operation.” No. 15-1997 J.A. 17 (quoting 

Tseung, col. 12 ll. 6–9). According to the Board, this both 

provided a reason to use heating in Tseung and adapt it to 

use Muller’s individual heaters. Given the disclosures of 

Tseung and Muller, this conclusion is supported by substantial evidence. Because Tseung teaches a system that 

is “readily programmable to allow automated staining of 

individual microscope slides with different techniques 

without operator intervention in a single operation,” its 

later discussion as to the benefits of heating slides would

reasonably motivate a person of ordinary skill to look for a 

way to adapt the system to heat individual slides to 

different temperatures. See Tseung col. 2 ll. 27–31. 

In this case, the Board evaluated Dr. Floyd’s testimony and found it lacking against the express disclosures of 

both Tseung and Muller. We will not disturb this deter-
DAKO DENMARK A/S v. LEICA BIOSYSTEMS MELBOURNE 13

mination. Therefore, the Board’s finding that a person of 

ordinary skill would have been motivated to combine 

Tseung and Muller is supported by substantial evidence.

C 

Finally, Dako asserts that the Board discounted its 

evidence of copying in finding that there was no nexus 

between its proffered evidence and claim 7 of the ’392 

patent. Dako also argues that the Board failed to consider whether the evidence established the existence of a 

long-felt need. 

According to Dako, unrebutted evidence shows that 

Ventana had access to CytoLogix’s business plan, that 

Ventana’s product was substantially similar to Dako’s 

product, and that a patent application subsequently filed 

by Ventana disclosed a system that provides for separate 

heating of individual microscope slides. Dako asserts that 

this evidence compels only one conclusion—Ventana 

copied the invention embodied by claim 7 of the ’392 

patent.

In its opinion, the Board credited Dako’s evidence that 

Ventana had access to CytoLogix’s business plan and that 

the business plan disclosed a system with individual 

heaters for each slide support. The Board found that this 

was insufficient to establish a nexus because, aside from a 

statement by Dr. Bogan which the Board deemed conclusory, there was no record evidence showing that Ventana 

produced, or attempted to produce, a device with individual heating elements after seeing the business plan. The 

Board also determined that neither Mr. Schuler’s statements nor Ventana’s subsequent patent application 

established that Ventana ever attempted to copy the 

patented feature. 

The Board’s analysis here is supported by substantial 

evidence. The Board considered Dr. Bogan’s testimony 

and concluded that it was insufficient to establish a 
14 DAKO DENMARK A/S v. LEICA BIOSYSTEMS MELBOURNE

nexus. The only other pieces of evidence Dako submitted 

to establish copying were Mr. Schuler’s speech and Ventana’s patent. The speech does not describe the features 

of the product Ventana ultimately released, and the mere 

existence of Ventana’s patent does not necessarily imply

that the patent is based on the specific product referred to 

in Mr. Schuler’s statement. Because a reasonable factfinder could interpret the evidence Dako presented as 

failing to provide a nexus, the Board’s conclusion is supported by substantial evidence.

Dako also argues that the evidence establishes the existence of a long-felt need. In support of this argument, 

Dako points to aspects of Dr. Bogdan’s declaration and an 

article attached as an exhibit thereto. But Dako never 

made this argument before the Board or the examiner. In 

its submissions to the Board, Dako only cited this evidence to “support[] the contention that the increased cost 

and complexity associated with individual heating was a 

non-trivial barrier.” No. 15-1997 J.A. 2920. Before the 

examiner, Dako only argued that copying was a secondary 

consideration that supported non-obviousness, not that 

there was a long-felt need. Id. at 3286–87.

Though Dako did present the evidence it now relies on 

to the Board, it did not do so in the context of long-felt 

need. It is hardly surprising, and not error, therefore, 

that the Board considered the evidence in the context in 

which it was presented, and not in the context of long-felt 

need. 

Thus, Tseung and Muller together disclose all the limitations of claim 7 of the ’392 patent, and a person of 

ordinary skill would have been motivated to combine 

them. There is also a lack of evidence of secondary considerations. Therefore, claim 7 of the ’392 patent is 

invalid as obvious under 35 U.S.C. § 103.
DAKO DENMARK A/S v. LEICA BIOSYSTEMS MELBOURNE 15

IV

We now turn to the ’672 patent. The ’672 patent is a 

continuation of the ’392 patent and shares a common 

specification with the ’392 patent. ’672 patent at [60]. 

Claim 2 of the ’672 patent, which the Board found anticipated by Tseung is at issue in this appeal. Claim 2

depends from claim 1. The claims read:

1. A method of processing samples mounted on 

microscope slides comprising:

providing a plurality of slide supports on a platform, each support being comprised of a heating 

element that underlies at least one microscope 

slide and having a surface on which the at least 

one microscope slide and having a surface on 

which the at least one microscope slide rests so 

as to transfer heat to the at least one microscope slide, said heating elements being capable of heating said microscope slides, under 

independent electronic control to heat some 

slides to a different temperature than other 

slides;

placing two or more microscope slides on the platform;

providing relative motion between the platform 

and a liquid dispenser;

dispensing liquid from the liquid dispenser onto 

the slides; and

on the platform, heating one slide to a different 

temperature than a second slide.

2. A method of processing samples mounted on 

microscope slides as claimed in claim 1, wherein each slide support accommodates only one 

microscope slide. 
16 DAKO DENMARK A/S v. LEICA BIOSYSTEMS MELBOURNE

Id. at col. 12 ll. 24–44 (emphases added).

In its decision, the Board first construed the term 

“slide support,” in claim 2, which appears in the claim, 

but not the specification. Before the Board, Dako argued 

that the term should be construed as “a heating element 

that underlies the only one microscope slide and has a 

surface on which the only one microscope slide rests so as 

to transfer heat to the at least one microscope slide.” No. 

16-1000 J.A. 22. In support of this construction, Dako 

argued that, because a slide support is “comprised of” a 

heating element, it necessarily follows that a one-to-one 

relationship must exist between a slide support and a 

heating element. The Board disagreed. It determined 

that the heating element described in claim 1 supports “at 

least one” microscope slide, which indicates that it may

support multiple slides. The Board further determined 

that there was no limitation in claim 2 which narrowed 

this capability. The Board found additional support for 

its interpretation from the ’392 patent, which expressly 

disclosed a system in which a heating element underlies 

only one slide. 

Based on this construction, the Board determined 

that a preponderance of the evidence supported the conclusion that Tseung met all the limitations of claim 2 and 

thus anticipated it. 

V 

Claim construction is an issue of law based on underlying factual considerations. Teva Pharm. USA, Inc. v. 

Sandoz, Inc., 135 S. Ct. 831, 838 (2015). We review the 

Board’s ultimate construction de novo, and any underlying factual determinations for substantial evidence. 

Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1297 

(Fed. Cir. 2015). In inter partes reexamination proceedings, claims are given their “broadest reasonable interpretation” consistent with the specification. In re Rambus, 

Inc., 753 F.3d 1253, 1255 (Fed. Cir. 2014).
DAKO DENMARK A/S v. LEICA BIOSYSTEMS MELBOURNE 17

Dako makes one argument challenging the Board’s 

conclusion that claim 2 of the ’672 patent is anticipated: 

that the Board incorrectly construed “slide support” as not 

requiring individual heating elements for each slide 

support and that, under the correct construction, Tseung 

does not anticipate. Dako does not argue that under the 

Board’s construction Tseung would not be an anticipatory 

reference. 

According to Dako, claim 1 of the ’672 patent, from 

which claim 2 depends, creates a “one-to-one correspondence between slide supports and heating elements.” No. 

16-1000 Appellant’s Br. 27. Dako asserts that this is “the 

only interpretation that permits each single slide supported by each slide support of [c]laim 2 to heat each slide 

to a different temperature.” Id.

Dako’s argument is premised on the conclusion that 

claim 2 requires individual slide supports to be capable of 

individual temperature control. But, as the Board noted, 

such a requirement is not apparent on the face of either 

claim 1 or claim 2. 

In claim 1, a slide support may support a plurality of

slides, and the limitation that “each support being comprised of a heating element that underlies at least one

microscope slide” does not preclude one heating element 

from underlying multiple slide supports. Indeed, figure 5 

of the specification discloses exactly such an embodiment. 

See ’672 patent fig.5; id. at col. 3 ll. 16–18 (stating that 

figure 5 “is a top view of the slide frame base with five 

microscope slides in their appropriate positions, showing 

the area to which heat is applied”).

Claim 2 only limits the slide support, not the heating 

element. Consequently, it does nothing to change the 

conclusion that, as in claim 1, a single heating element 

may underlie multiple slide supports.
18 DAKO DENMARK A/S v. LEICA BIOSYSTEMS MELBOURNE

In further support of its construction, Dako points to 

language in claim 1 that requires the ability to “heat[] one 

slide to a different temperature than a second slide.” Id.

at col. 12 ll. 40–41. This argument does not render the 

Board’s interpretation unreasonable in light of the specification. The quoted limitation refers to the capabilities of 

the platform and is met when two heating blocks are 

present in the system, regardless of how many slide 

supports are present.

We therefore agree with the Board’s construction. 

Though the construction is broader than Dako’s proposed 

construction, it is not unreasonable and is consistent with 

both the claims and the specification. See In re NTP, Inc., 

654 F.3d 1268, 1274 (Fed. Cir. 2011).

Because we agree with the Board’s construction of 

“slide support,” and, further, because Dako does not argue 

that Tseung fails to anticipate under this construction, 

claim 2 of the ’672 patent is invalid under 35 U.S.C. § 102.

CONCLUSION

For the foregoing reasons, we affirm the Board’s rejections of claim 7 of the ’392 patent and claim 2 of the ’672 

patent. 

AFFIRMED