- Fisher & Paykel Healthcare Limited v. Resmed LimitedInstitution deniedPTAB · Jul 25, 2017 · IPR2017-00635 · APJ Richard E Rice · IPR · Institution
Inter partes review of claims 51–80 was denied because Petitioner did not show a reasonable likelihood of prevailing on its § 103 obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“unless . . . 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). Upon considering the Petition, including the evidence filed therewith, and the Preliminary Response, we determine that Petitioner has not shown a reasonable likelihood that it would prevail with respect to any of the challenged claims. Accordingly, we do not institute an inter partes review. slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“5. Obviousness Analysis a. “frame members” Petitioner has not persuaded us that the combination of Lovell, Gunaratnam, and Gelinas teaches the “frame members” requirement, i.e., a second/skeleton frame having two frame members that interconnect the upper member and a lower portion/member. In particular, we are not persuaded by Petitioner’s argument that “Gelinas describes a second/skeleton frame 24 with frame members 52 interconnecting the upper member and lower portion.” See id. at 40 (emphasis added, citing Ex. 1204 ¶¶ 26, 32; 1205 ¶ 86). Nowhere does Petitioner identify the structure in Gelinas that allegedly corresponds to the upper member, much less explain how frame members 52 interconnect the alleged upper member and the alleged lower portion/member. Further, in arguing that Gelinas teaches the “frame members” requirement (see id. at 39–41), Petitioner entirely ignores its reliance on Gunaratnam and Lovell for an upper support member configured to support the user’s forehead (see id. at 38–39 (citing Ex. 1202, 10:1–12), Fig. 9; Ex. 1203, 4:47–52, Fig. 5c; Ex. 1205 ¶ 81)). As the “frame members” requirement specifies a relationship between two frame members (allegedly taught by Gelinas) and an upper support member (allegedly taught by Gunaratnam and Lovell), Petitioner’s failure to provide some articulated reasoning with some rational underpinning to support combining the teachings of Gelinas with those of Lovell and Gunaratnam is fatal to Petitioner’s obviousness analysis. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[T]here must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”). Petitioner’s mere conclusory statements are insufficient to show that a POSITA would have combined the teachings of Lovell, Gunaratnam, and Gelinas to achieve the “frame members” requirement.” slip op. at 18
- Obviousness (§103) › KSR rationalesNot shown unpatentable
“Gunaratnam, and Gelinas teaches the “open space” requirement, i.e., an open space bounded at least in part by two frame members and the lower portion/member. As a threshold matter, Petitioner has not persuaded us that adding a gas washout vent to Lovell’s first frame (shell 204) would have required “access to the vent through the second/skeleton frame” (retainer 212). Pet 45 (quoting Ex. 1205 ¶ 96)). Patent Owner provides an annotated version of Lovell’s Figure 9, reproduced below, that persuasively rebuts Petitioner’s contention. Prelim. Resp. 38.” slip op. at 19
§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,944,061 - Fisher & Paykel Healthcare Limited v. Resmed LimitedInstitution deniedPTAB · Jul 25, 2017 · IPR2017-00634 · APJ Richard E Rice · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood that claims 17, 18, 20–23, 26–30, 32, 33, 35–38, 41–46, 48–50, and 81–91 were obvious over Lovell, Gunaratnam, and Gelinas.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“unless . . . 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). Upon considering the Petition, including the evidence filed therewith, and the Preliminary Response, we determine that Petitioner has not shown a reasonable likelihood that it would prevail with respect to any of the challenged claims. Accordingly, we do not institute an inter partes review. slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“the teachings of Lovell, Gunaratnam, and Gelinas to achieve an opening in Lovell’s second frame that provides access to the first frame. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[T]here must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”). For example, Petitioner has not persuaded us that, in Lovell’s two-frame mask system, adding a vent to the nasal bridge region of the first frame would have required forming an opening in the second frame for access to the vent through the second frame. Rather, we are persuaded that Lovell’s second frame does not cover the nose bridge region of Lovell’s first frame, and that an opening in the second frame would not have been required for access to a vent in the nasal bridge region of the first frame. Compare Pet. 48 (“A person of skill in the art would have recognized that providing a vent on the first frame of a two-frame mask system would require access to the vent through the second frame.” (citing Ex. 1105 ¶ 98)), with Prelim. Resp. 40 (“The Petition provides no reason why the proposed vent would be ‘required’ at a position obscured by Lovell’s retainer 212 rather than unobstructed locations.”).” slip op. at 16
- Skill levelSkill level petitioner adoptedOther
“the invention (“POSITA”) “would have at least a bachelor’s degree in mechanical engineering, biomedical engineering, or other similar type of engineering degree, combined with at least two years of experience in the field of masks, respiratory therapy, patient interfaces or relevant product design experience.” Pet. 21 (citing Ex. 1105 ¶¶ 24–26). Patent Owner does not dispute the level of skill in the art asserted by Petitioner. Based on the Petition and Preliminary Response, we are persuaded that the level of skill in the art asserted by Petitioner is reasonable, and we adopt it for purposes of this Decision.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“The parties advance competing claim constructions for “engage” as used in the phrases “an annular connection adapted to engage an elbow of an inlet conduit” (claim 17), “the elbow engages the second frame” (claim 50), and “the inlet elbow engages the second frame” (claim 91). See Pet. 12–14; Prelim. Resp. 14–19. Petitioner also proposes an explicit construction for the term “sealingly connected” as used in the phrase “the annular opening and the elbow are sealingly connected” (claims 46 and 48). Pet. 14–16. We determine, however, that no explicit interpretation of any claim term is required for the purposes of this Decision. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).” slip op. at 7
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,944,061 - Fisher & Paykel Healthcare Limited v. Resmed LimitedInstitution deniedPTAB · May 3, 2017 · IPR2017-00218 · APJ James J Mayberry · IPR · Institution
The Board denied institution because the Petition did not show a reasonable likelihood that any challenged claim was unpatentable over the asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“To institute an inter partes review, we must determine that the information presented in the Petition shows “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). For the reasons set forth below, upon considering the Petition, Patent Owner Preliminary Response, and supporting evidence, we conclude that the information presented in the Petition fails to establish a reasonable likelihood that Fisher will prevail with respect to at least 1 of the Challenged Claims, and we do not institute inter partes review on any of the Challenged Claims.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“’316 patent pertains is “a bachelor’s degree in mechanical engineering, biomedical engineering, or other similar type of engineering degree, combined with at least two years of experience in the field of masks, respiratory therapy, patient interfaces, or relevant product design experience.” Pet. 13 (citing Ex. 1107 (Decl. of Jason Eaton) ¶ 27). ResMed does not dispute this characterization of the level of ordinary skill at this time. Factual indicators of the level of ordinary skill in the art include “the various prior art approaches employed, the types of problems encountered in the art, the rapidity with which innovations are made, the sophistication of the technology involved, and the educational background of those actively working in the field.” Jacobson Bros., Inc. v. United States, 512 F.2d 1065, 1071 (Ct. Cl. 1975); see also Orthopedic Equip. Co. v. United States, 702 F.2d 1005, 1011 (Fed. Cir. 1983) (quoting with approval Jacobson Bros.). We find, based on our review of the record before us, that Fisher’s asserted level of ordinary skill in the art is reasonable and, for the purposes of this Decision, we adopt Fisher’s definition.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“As discussed above in our brief summary of the prosecution history, each of the independent claims challenged in the Petition (claims 33, 38, 41, 46, 75, and 78) includes a variation of the “fixed, non-adjustable position” limitation. This amendment distinguished Matula’s mask system, which includes an adjustment mechanism that adjusts the position of its cushion component relative to its frame. We agree with ResMed that the plain and customary meaning of the “fixed, non-adjustable position” limitations, in view of the Specification and prosecution history, limits the claimed structure to a structure where the engagement between the cushion component and common frame prevents relative movement and adjustment between the cushion component and common frame. We adopt this claim interpretation for this Decision.” slip op. at 10
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“We do not read the “fixed, non-adjustable position” limitations of claims 33, 38, 41, 46, 75, and 78 so broadly. As ResMed correctly argues, at all times, Berthon-Jones’s adjustment wheel 530 is available to adjust mask 510, causing relative motion between cushion/secondary frame 514 and chassis 512. See Prelim. Resp. 28–29. As such, the disclosed structure is not in a “non-adjustable” configuration as required by claims 33, 38, 41, 46, 75, and 78. Finally, ResMed argues that the structure of Berthon-Jones, including an adjustment mechanism, was disclaimed during the prosecution of the application that matured into the ’316 patent. Prelim. Resp. 29–30. As ResMed illustrates in its Preliminary Response, the claims of the ’316 patent were amended to distinguish the Matula reference, with its adjustment mechanism. See id. at 30–31. We agree that ResMed disclaimed a mask system with an adjustment mechanism that adjusts the relative position of a cushion component and a frame. Accordingly, for the reasons above, we find that the Petition fails to establish a reasonable likelihood that Berthon-Jones discloses the subject matter of the “fixed, non-adjustable position” limitations of claims 33, 38, 41, 46, 75, and 78.” slip op. at 20
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,381,316 - Fisher & Paykel Healthcare Limited v. Resmed LimitedInstitution deniedPTAB · May 3, 2017 · IPR2017-00215 · APJ James J Mayberry · IPR · Institution
The Board denied institution for claims 1–32 and 59–74 because the petition did not show a reasonable likelihood of prevailing on any challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“To institute an inter partes review, we must determine that the information presented in the Petition shows “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). For the reasons set forth below, upon considering the Petition, Patent Owner Preliminary Response, and supporting evidence, we conclude that the information presented in the Petition fails to establish a reasonable likelihood that Fisher will prevail with respect to at least 1 of the Challenged Claims, and we do not institute inter partes review on any of the Challenged Claims.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer foundDecided for patent owner
“Finally, ResMed argues that the structure of Berthon-Jones, including an adjustment mechanism, was disclaimed during the prosecution of the application that matured into the ’316 patent. Prelim. Resp. 28. As ResMed illustrates in its Preliminary Response, the claims of the ’316 patent were amended to distinguish the Matula reference, with its adjustment mechanism. See id. at 28–30. We agree that ResMed disclaimed a mask system with an adjustment mechanism that adjusts the relative position of a cushion component and a frame. Accordingly, for the reasons above, we find that the Petition fails to establish a reasonable likelihood that Berthon-Jones discloses the subject matter of the “fixed, non-adjustable position” limitations of claims 1, 59, and 65. Further, with respect to claim 59, Fisher fails to assert that Gunaratnam cures the deficiency discussed above.” slip op. at 25
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“We agree with ResMed and determine that Fisher’s alternative position with respect to the “fixed, non-adjustable position” limitations of claims 1, 59, and 65 fails to establish a reasonable likelihood that these claims are rendered obvious by the prior art of record. Fisher fails to adequately explain its obviousness positions based on Barnett disclosing the “fixed, non-adjustable position” limitations of claims 1, 59, and 65. Specifically, Fisher does not explain if its obviousness position is that, based on the teachings of Barnett of a fixed, non-adjustable relationship between a cushion component and common frame, that a person having ordinary skill in the art would modify Berthon-Jones’s mask 510 to remove adjustment wheel 530. See Prelim. Resp. 32 (“Petitioner never proposes that Berthon- Jones’s adjustment feature or the adjustment wheels [5]30 be removed.”). Fisher also fails to explain if its alternative position is that an artisan of ordinary skill would have replaced Berthon-Jones’s cushion/secondary frame 514 and chassis 512 with Barnett’s seal 32 and collar 34, yet retain other features of Berthon-Jones’s mask relied on for other claim elements. See id. at 31. Finally, although Fisher provides reasons for its proposed modifications, none of the reasons address this alternative teaching of a fixed, non-adjustable structure by Barnett. See Pet. 36–39. Fisher does not argue or adequately explain why one of ordinary skill in the art would have modified the Berthon-Jones mask with the non-adjustable features disclosed in Barnett. Accordingly, for the reasons above, we find that the Petition fails to establish a reasonable likelihood that, to the extent Barnett discloses the subject matter of the “fixed, non-adjustable position” limitations of claims 1, 59, and 65, these claims are rendered obvious by the prior art of record. 2. Grounds 3–6” slip op. at 26
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,381,316 - Fisher & Paykel Healthcare Limited v. Resmed LimitedInstitution deniedPTAB · Apr 11, 2017 · IPR2017-00064 · APJ Richard E Rice · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of prevailing on any challenged claim, principally for lack of a reasoned basis to combine Barnett and Ogden.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“d. Analysis of Claims 57, 58, 61, 69, and 77–79 Petitioner has not persuaded us that a PHOSITA would have substituted Barnett’s unitary seal member with Ogden’s separate cushion/frame construction. See Pet 32 (citing Ex. 1202, 3:62–4:19; Ex. 1211 ¶¶ 71–72). Ogden’s rigid shell 3 is made of hard plastic and encloses the patient’s nose and nares, and Ogden’s separate seal 5 is made of a soft and pliable material such as urethane foam, attaches to the rear perimeter portion of shell 3, and seals against the patient’s face. Ex. 1203, 2:50–57. In contrast, Barnett teaches that the seal member, including its nose receiving cavity, is “defined from a unitary piece of elastomeric material.” Ex. 1202, 1:58–60 (emphasis added); see also id. at 2:24-27 (“The nasal mask assembly includes a seal member defined from a unitary piece of elastomeric material. The seal member includes a nose receiving cavity.” (emphasis added)); id. at 3:62–66 (“[S]eal member 32 is preferably defined from a unitary piece of elastomeric material that is relatively flexible when a deformation force is applied thereto, yet returns to its original shape when the deformation force is removed.” (emphases added); id. at 3:67–4:3 (“Seal member 32 has a first end portion 38 and a second end portion 40 generally opposite first end portion 38 with a nose receiving cavity 42 defined therebetween.”).” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not found
“recognized the need for additional structure in the cushion module to hold the cushion in place” (Ex. 1211 ¶ 72) is conclusory and unpersuasive.8 Neither Petitioner nor Mr. Eaton explains why a PHOSITA would have concluded that the side-wall support mechanisms described in Barnett do not provide adequate structure to hold the cushion in place. More specifically, Mr. Eaton asserts that “a cushion module of a unitary soft material [would] deform under pressure, thus leading to undesired displacement of the mask assembly and its seal” (Ex. 1211 ¶ 72), but fails to explain why the side-wall support mechanisms described in Barnett would not prevent such distortion and displacement. As such, Mr. Eaton’s testimony does not appear to take into account Barnett’s disclosure with respect to ribs 56, for example, that 8 Petitioner’s similar assertion—that “a person of ordinary skill in the art would have been motivated to provide a cup-shaped rigid frame, as taught by Ogden, that is formed from a material more rigid than the cushion to provide a solid mounting base for the cushion module and prevent movement of the cushion module” (Pet. 32 (emphasis added))—is also conclusory and unpersuasive. “ribs 56 . . . provide structural support for the sides of the seal member so that the seal member does not collapse when a strapping force9 sufficient to minimize[] leaks at the mask-patient interface is applied on second end portion 40.” Ex. 1202, 5:12–18; see also id. at 5:20–21, 27–29 (stating that the ribs are approximately twice as thick as the remaining side wall portions of seal member 32, but can have other thicknesses so long as they provide sufficient support for the side walls of the seal member).10 Nor does Mr. Eaton explain why or how a PHOSITA would have known that Ogden’s cushion/frame construction would resist displacement more effectively than Barnett’s unitary seal member with ribs. See Ex. 1211 ¶ 72. Petitioner’s assertion that incorporating Ogden’s rigid frame in Barnett’s seal member would have provided a solid mounting base for the cushion module (see Pet. 32) is similarly conclusory and unpersuasive. “[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (quoted in 9 Barnett defines “strapping force” as the force by which the nasal mask assembly is pressed against the patient’s face. Ex. 1202, 5:4–7. 10 Mr. Eaton states that the problem of internal positive air pressure caused by a flow generator designed to provide more than a single level of pressure would be particularly problematic, because the displacement of the mask would be dynamic based on breathing and delivered pressure over time. Ex. 1211 ¶ 72. However, Mr. Eaton does not explain whether that problem would be more severe, or require a different solution, than the problem of a “strapping force sufficient to minimize[] leaks at the mask-patient interface,” as described in Barnett. See Ex. 1202, 5:12–18. KSR, 550 U.S. at 418). Petitioner does not explain with sufficient specificity why a PHOSITA would have substituted Barnett’s neck portion 46 with Ogden’s rigid cup-shaped frame to provide a solid mounting base for the seal member. The general goal of providing a solid mounting base for the cushion module is not enough. Indeed, Barnett expressly discloses that “neck portion 46 is relatively thick as compared to a remainder of the seal member to provide a solid mounting base for the seal member.” Ex. 1202, 4:17–19 (emphasis added).” slip op. at 20
- Expert testimonyPetitioner expert discountedDecided for patent owner
“We do not agree, therefore, with Mr. Eaton’s opinion that Barnett’s disclosure “that neck portion 46 and plurality of ribs 56 may be formed of a different substance than the rest of the seal member . . . indicates that the cushion module of Barnett could take on a well-known cushion/frame construction.” See Ex. 1211 ¶11 (citing 1202, 7:28–36, Fig. A). Mr. Eaton’s reading of Barnett does not account sufficiently for the description of the invention as “a one-piece, light-weight seal member defining a nose receiving cavity.” Ex. 1202, 1:9– 11; see id. at 2:24–27; see also id. at 3:62–4:3 (describing an exemplary embodiment in similar terms). Moreover, Mr. Eaton’s testimony that “a skilled artisan would have recognized the need for additional structure in the cushion module to hold the cushion in place” (Ex. 1211 ¶ 72) is conclusory and unpersuasive.8 Neither Petitioner nor Mr. Eaton explains why a PHOSITA would have concluded that the side-wall support mechanisms described in Barnett do not provide adequate structure to hold the cushion in place. More specifically, Mr. Eaton asserts that “a cushion module of a unitary soft material [would] deform under pressure, thus leading to undesired displacement of the mask assembly and its seal” (Ex. 1211 ¶ 72), but fails to explain why the side-wall support mechanisms described in Barnett would not prevent such distortion and displacement. As such, Mr. Eaton’s testimony does not appear to take into account Barnett’s disclosure with respect to ribs 56, for example, that” slip op. at 19
- Skill levelSkill level petitioner adoptedOther
“II. ANALYSIS A. Level of Skill in the Art Petitioner asserts that a person having ordinary skill in the art (“PHOSITA”) “would have at least a bachelor’s degree in mechanical engineering, biomedical engineering or other similar type of engineering degree combined with at least two years of experience in the field of masks, respiratory therapy, patient interfaces or relevant product design experience.” Pet. 16 (citing Ex. 1211 ¶ 27). Based on our review of the Petition and evidence, including Mr. Eaton’s testimony, we find that Petitioner’s asserted level of skill in the art is reasonable and, for the purposes of this Decision, we adopt that definition.” slip op. at 9
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,119,931 - Fisher & Paykel Healthcare Limited v. Resmed LimitedInstitution deniedPTAB · Apr 11, 2017 · IPR2017-00065 · APJ Richard E Rice · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1, 4–8, 10–22, 25, 26, 28–32, 46, 51, 53–56, and 65 were unpatentable over the asserted §103 grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Under 35 U.S.C. § 314, an inter partes review may not be instituted “unless . . . 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). Upon considering the Petition and the evidence filed therewith, we determine that Petitioner has not shown a reasonable likelihood that it would prevail with respect to any of challenged claims 1, 4–8, 10–22, 25, 26, 28– 32, 46, 51, 53–56, and 65. Accordingly, we do not institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“(“PHOSITA”) “would have at least a bachelor’s degree in mechanical engineering, biomedical engineering or other similar type of engineering degree combined with at least two years of experience in the field of masks, respiratory therapy, patient interfaces or relevant product design experience.” Pet. 16–17 (citing Ex. 1312 ¶ 27). Based on our review of the Petition and evidence, including Mr. Eaton’s testimony, we find that 6 US 6,631,718 B1, iss. Oct. 14, 2003 (Ex. 1311, “Lovell”). 7 WO 2007/045008 A1, pub. Apr. 26, 2007 (Ex. 1306, “Worboys”). 8 US 6,412,488 B1, iss. July 2, 2002 (Ex. 1309, “Barnett”). 9 US 2004/0226566 A1, pub. Nov. 18, 2004 (Ex. 1304, “Gunaratnam-II”). Petitioner’s asserted level of skill in the art is reasonable and, for the purposes of this Decision, we adopt that definition.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“protruding vent arrangement” claim term would be satisfied by adding a vent to a portion of Matula-I’s cushion frame 1260 that extends through opening 1250 of body portion 1240. Id. at 27–28, 33–34, 69–71; see Ex. 1312 ¶¶ 63–67. As such, Petitioner contends, implicitly, that the “protruding vent arrangement” claim term broadly encompasses a vent in a portion of the frame that extends through an opening in the shroud module. We disagree with Petitioner’s implicit claim construction. Petitioner’s construction is contrary to the plain language of the claim term, which requires the frame to have a “vent arrangement” that is “protruding” (rather than reciting that the frame has a protruding portion that includes a vent arrangement having a plurality of holes). Petitioner’s construction also is inconsistent with the Specification. As described in the Specification and depicted in Figure 3 (reproduced above on page 3), protruding vent arrangement 1076 is a discrete vent structure that extends above the surrounding surface of frame 1040 and contains a plurality of vent holes. Ex. 1301, 7:18–23 (“The top end of the shroud 1020 . . . includes an opening or vent receiving hole 1021 to accommodate the vent arrangement 1076 that protrudes from the frame 1040.” (emphasis added)), Fig. 3. Contrary to Petitioner’s implicit claim construction, protruding vent arrangement 1076 is described in the Specification as extending from the surface of the frame, and not merely as extending through an opening in shroud 1020. See id. slip op. at 8
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentable
“Matula-I’s mask, so as to include the protruding vent arrangement limitation, by adding a vent to a portion of Matula-I’s cushion frame 1260 that protrudes through opening 1250 of body portion 1240. Petitioner’s analysis, however, is based on an improper claim construction, as discussed above. See supra Section II.B.1. Under a proper claim interpretation, the limitation requires a discrete vent structure that extends above the surrounding surface of the frame and contains a plurality of vent holes or gas washout holes. See id. Petitioner does not contend that either Matula-I or Gunaratnam-I specifically teaches or suggests a protruding vent arrangement having a plurality of vent holes or gas washout holes. Rather, Petitioner contends that both references teach positioning a vent in the nasal bridge region of a mask. Merely positioning a vent in a portion of Matula-I’s mask that protrudes through opening 1250 of body portion 1240, such as the nasal bridge region, would not result in a discrete vent structure that extends above the surrounding surface of the frame and contains a plurality of vent holes or gas washout holes, as required under our claim interpretation. The vent would be flush with the surrounding surface of the frame, for example, in the nasal bridge region of the frame. We are unpersuaded, therefore, that the combination of Matula-I and Gunaratnam-I teaches or suggests the protruding vent arrangement limitation. For the reasons given, we determine that Petitioner has not established a reasonable likelihood of prevailing on its challenges to claims 1, 4–8, 10– 22, 25, 26, 28–32, 46, 51, 53–56, and 65, each of which requires the protruding vent arrangement limitation.” slip op. at 13
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,119,931 - The Toro Company v. MTD Products Inc.Rehearing deniedPTAB · Apr 11, 2017 · IPR2016-01352 · APJ William V Saindon · IPR · Rehearing
The Board denied Toro’s rehearing request and left institution denied because the Petition did not persuasively explain why a skilled artisan would combine Irikura’s steering assembly with Hauser.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Decision” or “Dec.”) denying institution of an inter partes review of U.S. Patent No. 9,254,865 (Ex. 1001, “the ’865 patent”). Paper 10 (“Req. Reh’g”). When rehearing a decision by the Board on whether to institute a trial, the Board reviews the decision for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion has occurred if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. See Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). The burden of showing that our Institution Decision should be modified lies with Petitioner, the party challenging the decision. See 37 C.F.R. § 42.71(d). In addition, “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed.” Id. This latter requirement is critical; requests for rehearing are not an opportunity to raise new arguments but rather an opportunity to point us to arguments we overlooked or misapprehended.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Hauser’s instruction to employ “sound engineering judgment” in the selection of a front steering assembly. Req. Reh’g 9–11. Regardless of any instruction in Hauser, what was missing in the Petition was an explicit and persuasive explanation of why a person of ordinary skill in the art would have looked to Irikura’s front wheel steering assembly. Irikura does not describe itself as a zero-degree turning vehicle, and as we found in our Decision, Petitioner has not explained why a person of ordinary skill in the art would have looked to it for modifying a zero-degree turning vehicle such as Hauser. Dec. 9. Petitioner points us to no passage in the Petition that we overlooked or misapprehended on this point, and instead merely offers additional arguments.” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Hauser’s instruction to employ “sound engineering judgment” in the selection of a front steering assembly. Req. Reh’g 9–11. Regardless of any instruction in Hauser, what was missing in the Petition was an explicit and persuasive explanation of why a person of ordinary skill in the art would have looked to Irikura’s front wheel steering assembly. Irikura does not describe itself as a zero-degree turning vehicle, and as we found in our Decision, Petitioner has not explained why a person of ordinary skill in the art would have looked to it for modifying a zero-degree turning vehicle such as Hauser. Dec. 9. Petitioner points us to no passage in the Petition that we overlooked or misapprehended on this point, and instead merely offers additional arguments.” slip op. at 4
- Expert testimonyPetitioner expert discountedDecided for patent owner
“ZTR turns. Req. Reh’g 3–6. In our Decision, we found that “Petitioner does not direct us to evidence that Irikura itself is a ZTR vehicle or describes a steering assembly for zero-degree turns.” Dec. 7. In other words, we found that Irikura does not hold itself out as a ZTR-capable vehicle. Petitioner’s Request fails to identify any disclosure in Irikura that we misapprehended on this point. Instead, Petitioner’s Request points us to the testimony of its declarant, Mr. Smith. Regarding his testimony, we found in our Decision that “Petitioner’s evidence that Irikura’s steering assembly nonetheless is capable of zero-degree turns is unpersuasive.” Id. at 7–9. We considered Mr. Smith’s testimony that Irikura must provide a zero-degree turn in order not to scuff when providing a zero-degree turn to involve circular reasoning. Id. at 8. We also found that Mr. Smith’s testimony regarding the operation of Irikura’s front wheel gear assembly based on modified versions of the drawings to be improper. Id. at 8–9. Specifically, the analysis of Petitioner and Mr. Smith was based on projections of the behavior of components in Irikura that impermissibly relied on the precision of drawings, rather than on actual disclosure of Irikura (which was silent on the matter). As we stated in our Decision, absent indication in the specification (or other indications of dependability), extrapolations based on the precision and accuracy of the drawings are improper. Id. Petitioner now directs us to Mr. Smith’s testimony that allegedly stands for the premise Irikura provides a zero-degree turn because it has drive wheels capable of rotating in opposite directions. Req. Reh’g 3–4 (citing Ex. 1007 ¶¶ 75–76). Petitioner does not point to where this argument was developed in the Petition. See 37 C.F.R. § 42.71(d).” slip op. at 3
§ 103 obviousnessPatents in suitUS 9,254,865 - Fisher & Paykel Healthcare Limited v. Resmed LimitedInstitution deniedPTAB · Mar 16, 2017 · IPR2017-00057 · APJ James J Mayberry · IPR · Institution
The Board denied institution because Fisher did not show a reasonable likelihood of prevailing on any challenged claim, primarily for lack of a reasoned motivation to modify Gunaratnam using Lovell.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“To institute an inter partes review, we must determine that the information presented in the Petition shows “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). For the reasons set forth below, upon considering the Petition and evidence, we conclude that the information presented in the Petition fails to establish a reasonable likelihood that Fisher will prevail with respect to at least 1 of the Challenged Claims, and we do not institute inter partes review on any of the Challenged Claims.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Factual indicators of the level of ordinary skill in the art include “the various prior art approaches employed, the types of problems encountered in the art, the rapidity with which innovations are made, the sophistication of the technology involved, and the educational background of those actively working in the field.” Jacobson Bros. v. United States, 512 F.2d 1065, 1071 (Ct. Cl. 1975); see also Orthopedic Equip. Co. v. United States, 702 F.2d 1005, 1011 (Fed. Cir. 1983) (quoting with approval Jacobson Bros.). We find, based on our review of the limited record before us, that Fisher’s 2 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125 Stat. 284, 296–307 (2011), took effect on September 16, 2012. Because the application for the patent at issue in this proceeding has an effective filing date before that date, we refer to the pre-AIA versions of the statute. asserted level of ordinary skill in the art is reasonable and, for the purposes of this Decision only, we adopt Fisher’s definition.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Fisher contends that the terms of the Challenged Claims “should be accorded their ‘broadest reasonable construction’ in light of the specification of the ’196 [p]atent” and does not offer any express constructions for any term in the Challenged Claims. See Pet. 11. Because the parties do not dispute the construction of any terms, we need not expressly construe any term to resolve a controversy between the parties. Accordingly, we do not offer any express constructions here.3 See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (construing explicitly only those claim terms in controversy and only to the extent necessary to resolve the controversy).” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“having a bore and an interfacing structure associated with the bore. As Fisher contends, the terms of claim 23 are entitled to the broadest reasonable construction in light of the Specification of the’196 patent. We determine, for the purposes of this Decision, however, that the term “bore” is not broad enough to encompass the opening in clip 800—that is, Fisher’s implicit construction of the term “bore” to encompass the opening in clip 800 is unreasonably broad. As seen in annotated Figure 7a from Gunaratnam, reproduced above, clip 800 forms a frame corresponding to the outline shape of frame 160. Clip 800 includes an interior of the frame that is open. In contrast, the term “bore” would be understood to be a hole or opening, typically cylindrical, formed in a structure by or as if by boring. See, e.g., MERRIAM-WEBSTER ONLINE DICTIONARY, available at https://www.merriam-webster.com/dictionary/bore, last visited Mar. 9, 2017 (defining “bore” as “a usually cylindrical hole made by or as if by the turning or twisting movement of a tool: a hole made by or as if by boring”). This understanding of the term “bore” is consistent with the Specification of the ’196 patent, which identifies cylindrical openings as bores. See, e.g., Ex. 1001, Fig. 2A, 6:21–38 (identifying central bore 224). Fisher points us to nothing in the Specification or prosecution history, or in any extrinsic evidence, to support its broader interpretation.” slip op. at 18
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,960,196 - Resmed Limited / Resmed Inc., And Resmed Corp v. Fisher & Paykel Healthcare LimitedInstitution deniedPTAB · Mar 13, 2017 · IPR2016-01718 · APJ Barry L Grossman · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 2–4, 6–10, 12–17, 19, 20, and 35 obvious over the asserted reference combinations.
RulingsInstitution decision- PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner
“§ 315(a)(1) because Petitioner filed a declaratory judgment action for invalidity of the ’741 Patent on August 16, 2016, and before filing the instant Petition. Prelim. Resp. 10–17. That action, however, was voluntarily dismissed without prejudice on August 18, 2016, well before the instant Petition was filed. Pet. 1–2 (citing Ex. 1046). As such, Patent Owner’s argument fails because prior Board decisions have consistently interpreted 35 U.S.C. § 315(a)(1) as not barring inter partes review if the previously filed civil action was dismissed without prejudice, which is the case here. See, e.g., Microsoft Corp. v. Parallel Networks Licensing, LLC, Case IPR2015-00486, slip op. at 6–7 (PTAB Jul. 15, 2015) (Paper 10); Oracle Corp. v. Click-to-Call Techs. LP, Case IPR2013-00312, slip op. at 12–13 (PTAB Oct. 28, 2014) (Paper 52).” slip op. at 3
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“D. Prior Consideration of Arguments under § 325(d) Under 35 U.S.C. § 325(d), the Board, acting on behalf of the Director, may take into account whether, and reject a petition because, the same or substantially the same prior art or arguments previously were presented to the Office. Patent Owner argues that the Board should exercise its discretion under § 325(d) and deny institution of a trial because Gunaratnam was expressly considered by the PTO during prosecution of the ’741 patent. Prelim. Resp. 38–39. We recognize that Gunaratnam was considered and applied by the Examiner during the PTO proceedings leading to issuance of the ’741 patent. The specific combination of references asserted in the Petition, the evidence provided by the Declaration testimony of Dr. Izuchukwu, and the specific factual issues raised by the Petition and newly cited references, however, were not previously considered. Accordingly, we do not reject or deny the Petition under § 325(d).” slip op. at 5
- Skill levelSkill level petitioner adoptedDecided for petitioner
“II. ANALYSIS A. Level of Skill in the Art Petitioner asserts that a person of ordinary skill in the art “would have had a bachelor’s degree in mechanical engineering, biomedical engineering, or a related discipline, and at least five years of relevant product design experience in the field of medical devices or respiratory therapy, or an equivalent advanced education.” Pet. 10–11 (citing Ex. 1008 ¶ 17). Patent Owner does not propose a level of skill. We adopt Petitioner’s proposed level of skill for the purposes of our Decision.” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“We agree with, and adopt, Patent Owner’s proposed claim construction. It is more consistent with the “ring” structure claimed, disclosed in the Specification, and supported by the dictionary definitions of record. We are aware that the Specification also discloses that mask base 22 may include additional structures, such as a channel 45 on one side of base 22 to receive lip 28 on mask body 23, and a semi-tubular projection 29 on the other side of base 22 to receive a ball joint connector end to accommodate connector 30. Ex. 1002, 6:27–30; 42–46. Various other structures also are disclosed for allowing mask body 23 and connector 30 to connect to base 22. Id. at 6:30–42. Neither channel 45, semi-tubular projection 29, nor the other disclosed structures are recited in claim 2 as part of the “ring.” The structure recited in claim 2 is simply a ring. For the purposes of this Decision, we determine that the broadest reasonable interpretation consistent with the Specification of the term “ring” is a generally circular band of material.” slip op. at 13
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 8,479,741 - The Toro Company v. MTD Products Inc.Institution deniedPTAB · Jan 4, 2017 · IPR2016-01352 · APJ William V Saindon · IPR · Institution
The Board denied institution on all challenged claims because Petitioner did not show a reasonable likelihood of prevailing on any asserted obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Petitioner does not offer a threshold amount of evidence explaining why a person of ordinary skill in the art, looking to improve the ZTR vehicle of Hauser by adding steered wheels, would choose the front wheel steering assembly of Irikura. First, Petitioner does not direct us to evidence that Irikura itself is a ZTR vehicle or describes a steering assembly for zero-degree turns. Indeed, Patent Owner points out that Irikura is likely incapable of zero-degree turns, because Irikura describes a six-wheeled vehicle, and the back four fixed driving wheels would scuff in a zero-degree turn attempt. Prelim. Resp. 11–13 (citing Ex. 2002 ¶¶ 49, 50, 54, 209); see also Ex. 2002 ¶¶ 48–50 (stating the well-understood principle that the rotation axis of the wheel must intersect the turn radius in order not to scuff or slide), ¶¶ 207– 211 (explaining why the four fixed wheels indicate that the vehicle does not make zero-degree turns). On this record, Petitioner has not shown that the vehicle in Irikura is a ZTR vehicle or is designed purposefully for zero-degree turns because there is no discussion of such a feature, and the six-wheel nature of the vehicle indicates otherwise.” slip op. at 7
- BurdenDenied
“issue.”). Petitioner directs us to its declarant, Mr. Smith, who uses modified versions of Irikura’s drawings to depict various steering angles. Pet. 16 (citing Ex. 1007 ¶¶ 76–83). Mr. Smith’s analysis allegedly “show[s] the wheels and gears of Irikura’s front steering assembly able to turn the wheels to effect small and zero radius turns.” Ex. 1007 ¶ 76. His drawings then show several modified versions of Irikura’s assembly. Id. ¶¶ 77–81. Mr. Smith never explains, however, the factual basis for his belief that Irikura would be capable of zero-degree turns in the first instance. Instead, he simply modifies the drawings to show them performing zero-degree turns; there is insufficient technical explanation or evidence explaining why the steering assembly is capable of the movements shown in the modified drawings. In summary, we are not persuaded that a person of ordinary skill in the art would have considered modifying the front caster wheels of Hauser with the front steerable wheels of Irikura because Hauser is a ZTR vehicle and Petitioner has not established sufficiently that Irikura’s front steerable wheels are capable of providing zero-degree turns. For this reason, Petitioner has not shown a reasonable likelihood of prevailing on the ground of obviousness in view of Hauser and Irikura. This deficiency also applies to the Hauser-Irikura-Hoch ground, which makes use of the same combination of Hauser and Irikura. See Pet. 42 (stating that “the combination of Hauser and Irikura disclose[s] each and every element of claims 1-20,” but providing Hoch for limitations in claim 11 and 16, to the extent they are not disclosed).” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“established a reason to modify the front wheels of Hauser’s ZTR vehicle with the front wheel steering assembly of Irikura because Petitioner has not established that Irikura’s steering assembly is capable of a zero-radius turn. Prelim. Resp. 27–29 (arguing Irikura does not disclose zero-radius turns), 10–16 (same), 55–63 (arguing no reason to combine). In other words, Patent Owner argues that a person of ordinary skill in the art would not look to Irikura’s non-ZTR steering assembly for use in the ZTR steering assembly in Hauser. For the reasons that follow, this argument is persuasive. Petitioner does not offer a threshold amount of evidence explaining why a person of ordinary skill in the art, looking to improve the ZTR vehicle of Hauser by adding steered wheels, would choose the front wheel steering assembly of Irikura. First, Petitioner does not direct us to evidence that Irikura itself is a ZTR vehicle or describes a steering assembly for zero-degree turns. Indeed, Patent Owner points out that Irikura is likely incapable of zero-degree turns, because Irikura describes a six-wheeled vehicle, and the back four fixed driving wheels would scuff in a zero-degree turn attempt. Prelim. Resp. 11–13 (citing Ex. 2002 ¶¶ 49, 50, 54, 209); see also Ex. 2002 ¶¶ 48–50 (stating the well-understood principle that the rotation axis of the wheel must intersect the turn radius in order not to scuff or slide), ¶¶ 207– 211 (explaining why the four fixed wheels indicate that the vehicle does not make zero-degree turns). On this record, Petitioner has not shown that the vehicle in Irikura is a ZTR vehicle or is designed purposefully for zero-degree turns because there is no discussion of such a feature, and the six-wheel nature of the vehicle indicates otherwise.” slip op. at 7
- Expert testimonyPetitioner expert discountedDecided for patent owner
“a six-wheel vehicle. See Pet. 16–18 (depicting Irikura as a four-wheel vehicle); Ex. 1007 ¶¶ 76–81 (Petitioner’s declarant, Mr. Smith, depicting Irikura as a four-wheel vehicle).5 Patent Owner points out that a six-wheel vehicle having four fixed wheels would not generally be considered capable of performing zero-degree turns because the back wheels would slide or scuff. Prelim. Resp. 11–13, 58 (citing Ex. 2002 ¶¶ 208–211). This makes Petitioner’s next faulty presumption more apparent. Petitioner’s second faulty presumption is that the drawings in Irikura can be used to measure particular, precise gearing relationships when the specification is silent as to the matter. Hockerson-Halberstadt, Inc. v. Avia Group Int’l, Inc., 222 F.3d 951, 956 (Fed. Cir. 2000) (“[P]atent drawings do not define the precise proportions of the elements and may not be relied on to show particular sizes if the specification is completely silent on the 5 To the extent these figures are intended to depict the Hauser vehicle, modified to have Irikura’s front steering assembly, Petitioner’s analysis still would not have considered the four rear wheels of Irikura. issue.”). Petitioner directs us to its declarant, Mr. Smith, who uses modified versions of Irikura’s drawings to depict various steering angles. Pet. 16 (citing Ex. 1007 ¶¶ 76–83). Mr. Smith’s analysis allegedly “show[s] the wheels and gears of Irikura’s front steering assembly able to turn the wheels to effect small and zero radius turns.” Ex. 1007 ¶ 76. His drawings then show several modified versions of Irikura’s assembly. Id. ¶¶ 77–81. Mr. Smith never explains, however, the factual basis for his belief that Irikura would be capable of zero-degree turns in the first instance. Instead, he simply modifies the drawings to show them performing zero-degree turns; there is insufficient technical explanation or evidence explaining why the steering assembly is capable of the movements shown in the modified drawings.” slip op. at 8
§ 103 obviousnessPatents in suitUS 9,254,865
Holdings, summaries, rulings, issues, outcomes, winners and claim constructions shown for a decision were generated by a large language model reading the opinion. They are a guide to the decision, not the decision. Confirm every one against the court's own text before relying on it. Outcomes read from the patent owner’s side. Party names are extracted from the decision and are missing on about 900 short Director denials and scans, which carry the trial number instead.