- Resmed Limited / Resmed Inc. et al. v. Fisher & Paykel Healthcare LimitedSome claims unpatentablePTAB · Mar 8, 2018 · IPR2016-01716 · APJ Carl M Defranco · IPR · Final written decision
Claim 7 is unpatentable as obvious over Netzer and Levine; ResMed did not prove claim 11 unpatentable over Netzer and Bahr.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“We disagree with FPH that the term “urges” requires a pressing force that results from an angled slide-on direction for the water chamber. Rather, we understand FPH’s reference to the angled slide-on direction as applying only to “other configurations of the present invention,” and not to “preferred embodiments” where the slide-on direction for the water chamber is clearly horizontal, as shown in Figure 1 and required by “slot 17” in “chamber receiving bay 47.” Compare Ex. 1002, 8:10–13 (“other configurations” having angled slide-on motion for water chamber), with id. at 4:19–46 (“preferred embodiments” having horizontal slide-on motion for water chamber). Nowhere does the specification of the ’072 patent suggest that the horizontal slide-on motion for the preferred embodiments applies an additional bias or other pressing force to the water chamber. As such, we do not find that the specification supports a definition of “urges” that differs from its plain and ordinary meaning, which Merriam-Webster’s Dictionary defines as “to force or impel in an indicated direction or into motion.” Ex. 1031, 4.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“Based on our interpretation of the claim 7 limitation “urges . . . in contact with,” we find that Netzer, when combined with Levine, satisfies this limitation. Specifically, we find that Netzer discloses the claimed “single motion” limitation by describing that the water chamber has “lateral guide profiles” and moves in “insertion direction (arrow E)” to engage with “corresponding guide grooves” in a chamber heater (Ex. 1008, 8, 10, Fig. 1), and Levine teaches the claimed “urges . . . in contact with” limitation by disclosing a conductive base of a water chamber that is “operationally engaged with” and “in operational alignment upon the heating surface” of a conventional heating unit for a humidifier (Ex. 1009, 2:48–51, 4:33–37). We further find that a skilled artisan would have combined these teachings in a manner that would result in Netzer’s horizontal slide-on chamber moving in a direction that “urges” a base of the water chamber “in contact with” a heater unit, as taught by Levine, in order “to implement the well-known and conventional means of applying heat to the base of a water container.” Ex. 1012 ¶¶ 78–80. Indeed, this combination “‘simply arranges old elements with each performing the same function it had been known to perform’ and yields no more than one would expect from such an arrangement.” KSR Int’l v. Teleflex Inc., 550 U.S. 398, 417 (2007). Based on those findings, we conclude that claim 7 would have been obvious over the combination of Netzer and Levine. The record evidence fully supports that the combination of Netzer and Levine teaches all the limitations of claim 7 and that a skilled artisan would have combined those teachings in a manner resulting in the claimed invention. As such, we are persuaded that ResMed has demonstrated by a preponderance of the evidence that claim 7 is unpatentable as obvious over Netzer and Levine. C.” slip op. at 16
Patent outcomesUS 8,550,072 mixedClaim construction§ 103 obviousnesscites KSRPatents in suitUS 8,550,072 - Resmed Limited / Resmed Inc., And Resmed Corp. v. Fisher & Paykel Healthcare LimitedSome claims unpatentablePTAB · Mar 7, 2018 · IPR2016-01727 · APJ Michael L Woods · IPR · Final written decision
Claim 3 is unpatentable over HC200 and Netzer; claim 7 was not shown unpatentable over HC200, Netzer, and Bahr because the combination lacked a supported motivation to add electrical connections.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“We agree with Mr. Virr’s testimony that “pressing is not . . . mentioned in the specification” (Ex. 1035 ¶ 7) and agree with Petitioner’s construction that “pressing is not required by the claims” (Pet. Reply 2). We do not agree with Patent Owner’s proposed construction for the following reasons.” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Nevertheless, based on our review of the ’624 patent, the types of problems and solutions described in the ’624 patent and applied prior art, and the testimony of Mr. Virr and Dr. Schneider, we adopt Petitioner’s asserted level of ordinary skill and find that a: person of ordinary skill in the art (“POSITA”) as of any of the claimed priority dates as early as March 2000 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. 14 (citing Ex. 1012 ¶¶ 22–23). We also agree with Patent Owner that any differences in the parties’ proposed level of ordinary skill does not impact our analysis. See PO Resp. 14–15; see also Transcript at 47:11–14.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentableUnpatentable
“Further, Petitioner articulately reasons with rational underpinnings that a person of ordinary skill in the art would have modified “HC200 to move the patient outlet tube from the humidifier chamber to the housing, as taught by Netzer, so that the humidifier chamber could slide in and out of the housing without requiring the patient to disconnect the outlet tube and masked every time he needed to fill or clean the humidifier.” Pet. 25 (citing Ex. 1012 ¶ 74); In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with approval in KSR, 550 U.S. at 418 (“rejections 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.”). For the foregoing reasons, and as set forth in the Petition supported by the underlying evidence cited therein, we find that the combination of HC200 and Netzer satisfies the limitations of claim 3 and are persuaded that a preponderance of the evidence supports the conclusion that claim 3 is unpatentable over HC200 and Netzer.” slip op. at 24
- Expert testimonyPatent owner expert creditedDecided for patent owner
“CPAP machine would use “electrical components of the hose” (Ex. 1012 ¶ 86) or “a heater wire in the hose” (id. at ¶ 87), neither Petitioner nor Mr. Virr cites to any portion of HC200 or Netzer to support this assertion. See Pet. 16–19 (asserted teachings of HC200), 19–24 (asserted teachings of Netzer), 48–49; see also Ex. 1012 ¶¶ 49–57 (Mr. Virr’s testimony describing Netzer); see also id. at ¶¶ 58–62 (Mr. Virr’s testimony describing HC200). Petitioner also does not explain adequately how its proposed combination results in “any electrical components of the hose” (Pet. 48) or “a heater wire in the hose” (id. at 49) so that an electrical connection would be needed. Upon weighing Dr. Schneider’s testimony (Ex. 2004 ¶¶ 104–105) and Mr. Virr’s testimony (Ex. 1012 ¶¶ 86–87; Ex. 1035 ¶ 21), we are not persuaded that one of ordinary skill in the art would have added an “electrical component of the hose” or “heater wire in the hose” to the HC200/Netzer combination, much less Bahr’s electrical connections, as proposed by Petitioner. Bahr teaches contacts for “sensor 28, such as a solid state pressure transducer or a flow meter” (Ex. 1011 ¶ 20) “to provide a visible indication on a display 54 of monitored properties of the gas” (id. ¶ 24), or “detector 56 . . . in order to detect whether a sensor is connected” (id. ¶ 25). See also Ex. 2004 ¶ 104 (“Bahr teaches a detector attached to its electrical contacts to detect whether a sensor is connected”); PO Resp. 37 (stating the same in an argument why references would not be combined). Unlike Bahr, however, neither HC200 nor Netzer discloses a display for providing “monitored properties of the gas,” let alone a similar pressure transducer or flow meter for measuring such properties. Because HC200 indicates that the patient monitors if air is leaking around the mask visually (see Ex. 1017, 14), we are not persuaded that a POSITA would have added a separate electrical sensor to monitor air leakage, either. Turning to Netzer, although Netzer discloses a “spring-loaded electric switch” to turn off Netzer’s humidifier upon removal of its liquid chamber (Ex. 1008, 6), Netzer does not describe this switch as requiring any “electrical components of the hose” or “a heater wire in the hose.” Accordingly, we are not persuaded that one of ordinary skill in the art would have further modified Netzer and HC200 to include Bahr’s electrical connections, as Petitioner proposes, when doing so would needlessly add cost and complexity to the combined device. See Ex. 2004 ¶ 105. As such, Petitioner’s reasoning has insufficient rational underpinnings (KSR, 550 U.S. at 418), and Petitioner has failed to establish by a preponderance of the evidence that claim 7 is unpatentable over HC200, Netzer, and Bahr.” slip op. at 27
Patent outcomesUS 7,111,624 mixedClaim construction§ 103 obviousnesscites GrahamPatents in suitUS 7,111,624 - Resmed Limited / Resmed Inc. et al. v. Fisher & Paykel Healthcare LimitedSome claims unpatentablePTAB · Mar 7, 2018 · IPR2016-01725 · APJ Michael L Woods · IPR · Final written decision
Claim 3 is unpatentable as obvious over Netzer and Levine; Petitioner did not show claim 7 unpatentable over Netzer, Levine, and Bahr.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“Upon reviewing the claim language, the Specification, the prosecution history, the testimony of Dr. Schneider (e.g., Ex. 2004 ¶¶ 54–60), the testimony of Mr. Virr (e.g., Ex. 1028 ¶ 7), and Petitioner’s definition of “urge” (Ex. 1031), giving the claimed terms their ordinary and customary meaning under the broadest reasonable construction standard, we construe the claimed phrase “said single motion of engagement urges the base of said water chamber adjacent and in contact with said chamber heater,” as requiring a single motion of engagement that moves the chamber base in a direction so that the chamber base is adjacent and in contact with the chamber heater. We do not agree with Patent Owner’s proposed construction that the claim limitation requires the “single motion . . . to . . . also press the chamber base against the chamber heater,” which requires application of some pressing force not claimed or otherwise described in the Specification. See PO Resp. 16 (emphasis added).” slip op. at 11
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Nevertheless, based on our review of the ’624 patent, the types of problems and solutions described in the ’624 patent and applied prior art, and the testimony of Mr. Virr and Dr. Schneider, we adopt Petitioner’s asserted level of ordinary skill and find that a: person of ordinary skill in the art (“POSITA”) as of any of the claimed priority dates as early as March 2000 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.” slip op. at 13
- Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner
“or Levine’s humidifier would use “electrical components” or “a heater wire” in their hoses (see Ex. 1012 ¶¶ 99–100), neither Petitioner nor Mr. Virr cites to any portion of Netzer or Levine to support this assertion. See Pet. 15–19 (asserted teachings of Netzer), 27 (asserted teachings of Levine), 28–31; see also Ex. 1012 ¶¶ 49–57 (Mr. Virr’s testimony describing Netzer), ¶¶ 69–70 (Mr. Virr’s testimony describing Levine). Petitioner also does not explain adequately how its proposed combination results in “any electrical components of the hose” (Pet. 39) or “a heater wire in the hose” (id. at 43) so that an electrical connection would be needed. Upon weighing Dr. Schneider’s testimony (Ex. 2004 ¶¶ 104–105) and Mr. Virr’s testimony (Ex. 1012 ¶¶ 99–100; Ex. 1028 ¶ 21), we are not persuaded that one of ordinary skill in the art would have added an “electrical component of the hose” or “heater wire in the hose” to the Netzer/Levine combination, let alone Bahr’s electrical connections, as proposed by Petitioner. Bahr teaches contacts for “sensor 28, such as a solid state pressure transducer or a flow meter” (Ex. 1011 ¶ 20) “to provide a visible indication on a display 54 of monitored properties of the gas” (id. ¶ 24), or “detector 56 . . . in order to detect whether a sensor is connected” (id. ¶ 25). See also Ex. 2004 ¶ 104 (“Bahr teaches a detector attached to its electrical contacts to detect whether a sensor is connected”); PO Resp. 37 (stating the same in an argument why references would not be combined). Levine, on the other hand, discloses “temperature sensor inputs 91 and 92” and “various temperature warning lights and alarm indicators” to “provide water to a patient at a temperature which is as comfortable as possible” (see Ex. 1009, 4:14–23), and that “[i]t has been found that the temperature of humidified gas measured at the outlet 24 [of the humidifier 10] is approximately 99° F” (id. at 5:3–4; see also id. at Figs. 1, 2, 5). Petitioner does not direct us to any disclosure within Levine (Pet. 27; Ex. 1012 ¶¶ 69–70) that describes the wires or sensors that connect to temperature sensor inputs 91 and 92 as residing within Levine’s humidifier hose, or that temperature is measured anywhere other than at Levine’s outlet 24 of humidifier 10 (see Ex. 1009, 5:3–4). Turning to Netzer, while Netzer discloses a “spring-loaded electric switch” to turn off Netzer’s humidifier upon removal of its liquid chamber (Ex. 1008, 6), Netzer does not describe this switch as requiring any “electrical components of the hose” or “a heater wire in the hose.” Accordingly, we are not persuaded that one of ordinary skill in the art would have further modified Netzer and Levine to include Bahr’s electrical connections, as Petitioner proposes, when doing so would needlessly add cost and complexity to the combined device. See Ex. 2004 ¶ 105. As such, Petitioner’s reasoning has insufficient rational underpinnings (KSR, 550 U.S. at 418), and Petitioner has failed to establish by a preponderance of the evidence that claim 7 is unpatentable over Netzer, Levine, and Bahr.” slip op. at 27
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“or Levine’s humidifier would use “electrical components” or “a heater wire” in their hoses (see Ex. 1012 ¶¶ 99–100), neither Petitioner nor Mr. Virr cites to any portion of Netzer or Levine to support this assertion. See Pet. 15–19 (asserted teachings of Netzer), 27 (asserted teachings of Levine), 28–31; see also Ex. 1012 ¶¶ 49–57 (Mr. Virr’s testimony describing Netzer), ¶¶ 69–70 (Mr. Virr’s testimony describing Levine). Petitioner also does not explain adequately how its proposed combination results in “any electrical components of the hose” (Pet. 39) or “a heater wire in the hose” (id. at 43) so that an electrical connection would be needed. Upon weighing Dr. Schneider’s testimony (Ex. 2004 ¶¶ 104–105) and Mr. Virr’s testimony (Ex. 1012 ¶¶ 99–100; Ex. 1028 ¶ 21), we are not persuaded that one of ordinary skill in the art would have added an “electrical component of the hose” or “heater wire in the hose” to the Netzer/Levine combination, let alone Bahr’s electrical connections, as proposed by Petitioner. Bahr teaches contacts for “sensor 28, such as a solid state pressure transducer or a flow meter” (Ex. 1011 ¶ 20) “to provide a visible indication on a display 54 of monitored properties of the gas” (id. ¶ 24), or “detector 56 . . . in order to detect whether a sensor is connected” (id. ¶ 25). See also Ex. 2004 ¶ 104 (“Bahr teaches a detector attached to its electrical contacts to detect whether a sensor is connected”); PO Resp. 37 (stating the same in an argument why references would not be combined). Levine, on the other hand, discloses “temperature sensor inputs 91 and 92” and “various temperature warning lights and alarm indicators” to “provide water to a patient at a temperature which is as comfortable as possible” (see Ex. 1009, 4:14–23), and that “[i]t has been found that the temperature of humidified gas measured at the outlet 24 [of the humidifier 10] is approximately 99° F” (id. at 5:3–4; see also id. at Figs. 1, 2, 5). Petitioner does not direct us to any disclosure within Levine (Pet. 27; Ex. 1012 ¶¶ 69–70) that describes the wires or sensors that connect to temperature sensor inputs 91 and 92 as residing within Levine’s humidifier hose, or that temperature is measured anywhere other than at Levine’s outlet 24 of humidifier 10 (see Ex. 1009, 5:3–4). Turning to Netzer, while Netzer discloses a “spring-loaded electric switch” to turn off Netzer’s humidifier upon removal of its liquid chamber (Ex. 1008, 6), Netzer does not describe this switch as requiring any “electrical components of the hose” or “a heater wire in the hose.” Accordingly, we are not persuaded that one of ordinary skill in the art would have further modified Netzer and Levine to include Bahr’s electrical connections, as Petitioner proposes, when doing so would needlessly add cost and complexity to the combined device. See Ex. 2004 ¶ 105. As such, Petitioner’s reasoning has insufficient rational underpinnings (KSR, 550 U.S. at 418), and Petitioner has failed to establish by a preponderance of the evidence that claim 7 is unpatentable over Netzer, Levine, and Bahr.” slip op. at 27
Patent outcomesUS 7,111,624 mixedClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,111,624 - Resmed Limited / Resmed Inc. et al. v. Fisher & Paykel Healthcare LimitedSome claims unpatentablePTAB · Mar 7, 2018 · IPR2016-01731 · APJ Hyun J Jung · IPR · Final written decision
Claims 6, 9, 22, and 23 are unpatentable as obvious over the HC200 Manual, Netzer, and Dickinson; claim 5 was not shown unpatentable over the HC200 Manual, Netzer, and Bahr.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedOther
“Virr Decl. ¶¶ 22–23). Patent Owner also provides a level of ordinary skill in the art. PO Resp. 18–19 (citing Schneider Decl. ¶ 30). Patent Owner also states that “[w]hile the level of skill in the art proposed by [Patent Owner] differs from that proposed by Petitioners, [Patent Owner] believes the difference is immaterial to deciding the issues raised by the Petition.” Id. at 19. We adopt Petitioners’ asserted level of ordinary skill and find that a: person of ordinary skill in the art (“POSITA”) as of any of the claimed priority dates as early as March 2000 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. 14 (citing Virr Decl. ¶¶ 22–23). We also agree with Patent Owner that any differences in the parties’ proposed level of ordinary skill does not impact our analysis. See PO Resp. 19.” slip op. at 10
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“modifying the HC200 Manual in view of Netzer “so that the humidifier chamber could slide in and out of the housing without requiring the patient to disconnect the outlet tube and mask every time he needed to fill or clean the humidifier” and so as to “allow the patient to remove the water chamber without having to disconnect their breathing tube and respiratory mask.” Id. at 26, 32. The record persuades us that modifying the HC200 Manual with Netzer “would improve the usability of the CPAP device,” would “lead to greater treatment results and greater rates of CPAP-prescribed compliance,” and would be “using known techniques to improve similar devices.” Id. at 32–34. We credit the testimony of Mr. Virr regarding these contentions. Virr Decl. ¶¶ 72–74, 79, 81–83. We, therefore, determine that one of ordinary skill in the art would have had a reason to combine the teachings of the HC200 Manual and Netzer. We also credit Mr. Virr’s testimony that the proposed combination “could be readily achieved by repositioning the outlet of the HC200’s chamber, and adding a humidified gases return and connecting patient outlet to the HC200’s housing” and would be “using known techniques to improve similar devices.” Virr Decl. ¶ 83. Thus, we determine that one of ordinary skill in the art would have had a reasonable expectation of success in combining the teachings of the HC200 Manual and Netzer. As for further combining the HC200 Manual and Netzer with the teachings of Dickinson, the record persuades us that one of ordinary skill in the art would have added the extension tube of Dickinson to prevent water flow out of an inlet and outlet when the humidification chamber is tilted, to reduce noise, to prevent damage to the flow generator of the HC200 Manual, and to prevent harm to a user due to water flowing through the outlet. Pet. 36–38. We credit the testimony of Mr. Virr regarding these contentions. Virr. Decl. ¶¶ 90–92. We also determine that one of ordinary skill in the art would have had a reasonable expectation of success in combining the teachings of the HC200 Manual, Netzer, and Dickinson. Virr Decl. ¶ 90; Ex. 1016, 1:6–8, 1:10–13, 1:17–20, 1:24–29, 2:12–15.” slip op. at 21
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“modifying the HC200 Manual in view of Netzer “so that the humidifier chamber could slide in and out of the housing without requiring the patient to disconnect the outlet tube and mask every time he needed to fill or clean the humidifier” and so as to “allow the patient to remove the water chamber without having to disconnect their breathing tube and respiratory mask.” Id. at 26, 32. The record persuades us that modifying the HC200 Manual with Netzer “would improve the usability of the CPAP device,” would “lead to greater treatment results and greater rates of CPAP-prescribed compliance,” and would be “using known techniques to improve similar devices.” Id. at 32–34. We credit the testimony of Mr. Virr regarding these contentions. Virr Decl. ¶¶ 72–74, 79, 81–83. We, therefore, determine that one of ordinary skill in the art would have had a reason to combine the teachings of the HC200 Manual and Netzer. We also credit Mr. Virr’s testimony that the proposed combination “could be readily achieved by repositioning the outlet of the HC200’s chamber, and adding a humidified gases return and connecting patient outlet to the HC200’s housing” and would be “using known techniques to improve similar devices.” Virr Decl. ¶ 83. Thus, we determine that one of ordinary skill in the art would have had a reasonable expectation of success in combining the teachings of the HC200 Manual and Netzer. As for further combining the HC200 Manual and Netzer with the teachings of Dickinson, the record persuades us that one of ordinary skill in the art would have added the extension tube of Dickinson to prevent water flow out of an inlet and outlet when the humidification chamber is tilted, to reduce noise, to prevent damage to the flow generator of the HC200 Manual, and to prevent harm to a user due to water flowing through the outlet. Pet. 36–38. We credit the testimony of Mr. Virr regarding these contentions. Virr. Decl. ¶¶ 90–92. We also determine that one of ordinary skill in the art would have had a reasonable expectation of success in combining the teachings of the HC200 Manual, Netzer, and Dickinson. Virr Decl. ¶ 90; Ex. 1016, 1:6–8, 1:10–13, 1:17–20, 1:24–29, 2:12–15.” slip op. at 21
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightNot reached
Patent outcomesUS 8,091,547 mixed§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,091,547 - Resmed Limited / Resmed Inc. et al. v. Fisher & Paykel Healthcare LimitedAll claims unpatentablePTAB · Mar 7, 2018 · IPR2016-01730 · APJ Hyun J Jung · IPR · Final written decision
Claims 1 and 11–14 are unpatentable under § 103 over the HC200 Manual and Netzer; claims 24 and 25 were statutorily disclaimed.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“expressly that the single motion moves the chamber base so as to press the chamber base against the chamber heater, as proposed by Patent Owner. Claim 1 recites, in relevant part, “urging the base of said humidification chamber adjacent and in contact with said chamber heater.” Ex. 1003, 10:8– 10. Claim 6 recites “wherein said single motion disposes said heat conductive base adjacent a heater,” and claim 24 recites “wherein said single motion of engagement disposes the base of said humidification chamber adjacent said heater,” whereas claim 1 recites “said single motion of engagement urging the base of said humidification chamber adjacent and in contact with said chamber heater.” Ex. 1003, 10:8–10, 11:1–3, 12:47–49. Taken together, these claims indicate that “urging the base” results in a base being “adjacent and in contact” with a heater but “disposes the base” results in a base being “adjacent” a heater.” slip op. at 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A. Level of Ordinary Skill Petitioners provide a level of ordinary skill in the art. Pet. 12 (citing Virr Decl. ¶¶ 22–23). Patent Owner also provides a level of ordinary skill in the art. PO Resp. 8–9 (citing Schneider Decl. ¶ 30). Patent Owner also states that “[w]hile the level of skill in the art proposed by [Patent Owner] differs from that proposed by Petitioners, [Patent Owner] believes the difference is immaterial to deciding the issues raised by the Petition.” Id. at 9. We adopt Petitioners’ asserted level of ordinary skill and find that a: person of ordinary skill in the art (“POSITA”) as of any of the claimed priority dates as early as March 2000 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. 12 (citing Virr Decl. ¶¶ 22–23). We also agree with Patent Owner that any differences in the parties’ proposed level of ordinary skill does not impact our analysis. See PO Resp. 9.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“The full record supports Petitioners’ position that a “well-known solution . . . was to move the patient gases outlet from the humidifier water chamber to the housing,” as taught by Netzer based on the findings discussed above. Pet. 27–29. The full record also supports that modifying the HC200 Manual in view of Netzer “so that the humidifier chamber could slide in and out of the housing without requiring the patient to disconnect the outlet tube and mask every time he needed to fill or clean the humidifier” and so as to “allow the patient to remove the water chamber without having to disconnect their breathing tube and respiratory mask.” Id. at 23, 29. The full record persuades us that modifying the HC200 Manual with Netzer “would improve the usability of the CPAP device,” would “lead to greater treatment results and greater rates of CPAP-prescribed compliance,” and would be “using known techniques to improve similar devices.” Id. at 29– 31. We credit the testimony of Mr. Virr regarding these contentions. Virr Decl. ¶¶ 72–74, 79, 81–83. We, therefore, determine that one of ordinary skill in the art would have had a reason to combine the teachings of the HC200 Manual and Netzer. We also credit Mr. Virr’s testimony that the proposed combination “could be readily achieved by repositioning the outlet of the HC200’s chamber, and adding a humidified gases return and connecting patient outlet to the HC200’s housing” and would be “using known techniques to improve similar devices.” Virr Decl. ¶ 83. Thus, we determine that one of ordinary skill in the art would have had a reasonable expectation of success in combining the teachings of the HC200 Manual and Netzer.” slip op. at 21
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“3. “said single motion of engagement urging the base of said humidification chamber adjacent and in contact with said chamber heater” Petitioners persuade us that the HC200 Manual teaches the recitation “said single motion of engagement urging the base of said humidification chamber adjacent and in contact with said chamber heater.” Pet. 40–41 (citing Ex. 1017, 1, 7, 8; Virr Decl. ¶¶ 58–62). In particular, we find that the HC200 Manual teaches a “humidification chamber” with a “chamber base” that is adjacent and in contact with a “heater plate.” Ex. 1017, 1 (figure showing humidification chamber atop the heater plate), 7 (figure showing “humidification chamber,” “chamber base,” and “heater plate”), 8 (“slide the Humidification Chamber onto the Heater Plate”). Patent Owner responds that the HC200 Manual fails to teach, and that Petitioners do not argue sufficiently that the HC200 Manual teaches or suggests, a “single motion of engagement urging the base of said humidification chamber adjacent and in contact with said chamber heater,” as recited by claim 1 because Patent Owner contends that the phrase should be construed to require the “claimed single motion of engagement moves the chamber base in a direction so as to both move the chamber base adjacent the chamber heater and also press the chamber base against the chamber heater.” PO Resp. 17–20 (citing Pet. 40–41; Virr Decl. ¶¶ 58–62; Ex. 1017, 1, 7, 8) (emphasis added). For the reasons discussed above in Section II, the full record does not persuade us that the broadest reasonable interpretation in view of the specification of the ’547 patent of “single motion of engagement urging the base of said humidification chamber adjacent and in contact with said chamber heater” requires pressing the chamber base against the chamber. Therefore, we determine that a preponderance of the evidence shows that the HC200 Manual teaches this recitation of claim 1 and thus, for the reasons here and in Sections III.D.1 and III.D.2, we determine that Petitioners have shown by a preponderance of the evidence that claim 1 is unpatentable over the HC200 Manual and Netzer.” slip op. at 22
Patent outcomesUS 8,091,547 unpatentableClaim construction§ 103 obviousnesscites KSRPatents in suitUS 8,091,547 - Resmed Limited / Resmed Inc. et al. v. Fisher & Paykel Healthcare LimitedSome claims unpatentablePTAB · Mar 7, 2018 · IPR2016-01729 · APJ Hyun J Jung · IPR · Final written decision
Claims 1, 6, 9, 11–14, 22, and 23 are unpatentable over the stated combinations; claim 5 was not shown unpatentable over Netzer, Levine, and Bahr.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“expressly that the single motion moves the chamber base so as to press the chamber base against the chamber heater, as proposed by Patent Owner. Claim 1 recites, in relevant part, “urging the base of said humidification chamber adjacent and in contact with said chamber heater . . . .” Ex. 1003, 10:8–10.” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Virr Decl. ¶¶ 22–23). Patent Owner also provides a level of ordinary skill in the art. PO Resp. 18–19 (citing Schneider Decl. ¶ 30). Patent Owner also states that “[w]hile the level of skill in the art proposed by [Patent Owner] differs from that proposed by Petitioners, [Patent Owner] believes the difference is immaterial to deciding the issues raised by the Petition.” Id. at 19. We adopt Petitioners’ asserted level of ordinary skill and find that a: person of ordinary skill in the art (“POSITA”) as of any of the claimed priority dates as early as March 2000 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. 15 (citing Virr Decl. ¶¶ 22–23). We also agree with Patent Owner that any differences in the parties’ proposed level of ordinary skill does not impact our analysis. See PO Resp. 19.” slip op. at 13
- Expert testimonyPetitioner expert creditedDecided for petitioner
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“The full record supports Petitioners’ position that one of ordinary skill in the art would have combined Netzer and Levine to implement the “well-known and conventional means of applying heat to the base of a water container,” as taught by Netzer and Levine based on the findings discussed above. Pet. 22–23. The full record also supports that modifying Netzer in view of Levine to heat more efficiently the water in liquid container 9 of Netzer. We credit the testimony of Mr. Virr regarding these contentions. Virr Decl. ¶¶ 95, 96. We, therefore, determine that one of ordinary skill in the art would have had a reason to combine the teachings of Netzer and Levine. We also credit Mr. Virr’s testimony that the proposed combination of Netzer and Levine would be “implement[ing] the well-known and conventional means of applying heat to the base of a water container.” Virr Decl. ¶ 94. Thus, we determine that one of ordinary skill in the art would have had a reasonable expectation of success in combining the teachings of Netzer and Levine.” slip op. at 23
Patent outcomesUS 8,091,547 mixedClaim construction§ 103 obviousnesscites KSRPatents in suitUS 8,091,547 - Vista Outdoor Operations LLC v. Liberty Ammunition, LLCRehearing deniedPTAB · Oct 31, 2016 · IPR2016-00539 · APJ Michael L Woods · IPR · Rehearing
The Board denied rehearing and left in place the denial of institution for claims 1–42 on all six grounds, finding no overlooked or misapprehended matter.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“ANALYSIS The applicable standard for a request for rehearing is set forth in 37 C.F.R. § 42.71(d), which provides in relevant part: A party dissatisfied with a decision may file a single request for rehearing without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, opposition, or a reply. Furthermore, when rehearing a decision on a motion, the Board will review the decision for an abuse of discretion. Id. at § 42.71(c).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“The Board found that these embodiments were distinct, and determined that Petitioner failed to establish a reasonable likelihood of success on its challenges when combining features from these distinct embodiments. See Decision 13–16, 19, 20. With respect to the anticipation ground (Ground 1), the Board explained that “it is not enough that the prior art reference discloses multiple, distinct teachings that the artisan might somehow combine to achieve the claimed invention.” Id. at 13 (citing Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371–72 (Fed. Cir. 2008)). With respect to Grounds 2 and 3, the Board determined that Petitioner failed to explain adequately how Woodring’s distinct embodiments are being combined with one another and the cited art to arrive at the claimed invention. Id. at 18, 20.” slip op. at 4
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“The Board found that these embodiments were distinct, and determined that Petitioner failed to establish a reasonable likelihood of success on its challenges when combining features from these distinct embodiments. See Decision 13–16, 19, 20. With respect to the anticipation ground (Ground 1), the Board explained that “it is not enough that the prior art reference discloses multiple, distinct teachings that the artisan might somehow combine to achieve the claimed invention.” Id. at 13 (citing Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371–72 (Fed. Cir. 2008)). With respect to Grounds 2 and 3, the Board determined that Petitioner failed to explain adequately how Woodring’s distinct embodiments are being combined with one another and the cited art to arrive at the claimed invention. Id. at 18, 20.” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“determined that Petitioner failed to establish a reasonable likelihood of success on its challenges when combining features from these distinct embodiments. See Decision 13–16, 19, 20. With respect to the anticipation ground (Ground 1), the Board explained that “it is not enough that the prior art reference discloses multiple, distinct teachings that the artisan might somehow combine to achieve the claimed invention.” Id. at 13 (citing Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371–72 (Fed. Cir. 2008)). With respect to Grounds 2 and 3, the Board determined that Petitioner failed to explain adequately how Woodring’s distinct embodiments are being combined with one another and the cited art to arrive at the claimed invention. Id. at 18, 20.” slip op. at 4
§ 102 anticipation§ 103 obviousnessPatents in suitUS 7,748,325 - Milwaukee Electric Tool Corporation / Techtronic Industries Co. Ltd. et al. v. Irwin Industrial Tool CompanyNo claims unpatentablePTAB · Sep 29, 2016 · IPR2015-01461 · APJ Michael L Woods · IPR · Final written decision
Claims 1–37 were not shown unpatentable: Redford did not anticipate or render the claims obvious, and Redford combined with Starbuck did not render them obvious.
RulingsFinal written decision- ExcludeMotion to exclude, deniedDenied
“The party moving to exclude evidence bears the burden of proving that it is entitled to the relief requested—namely, that the material sought to be excluded is inadmissible under the Federal Rules of Evidence. See 37 C.F.R. §§ 42.20(c), 42.62(a).” slip op. at 23
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (upholding the use of the broadest reasonable interpretation standard). A presumption exists that a claim term should be construed in light of its ordinary and customary meaning. CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002). Under the broadest reasonable construction standard, claim terms are generally given their ordinary and customary meaning, as would be understood by one of ordinary skill in the art in the context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“not enough to find that a prior art device is merely capable of being adapted or modified to operate in a manner that would anticipate the claims. See Typhoon Touch Techs., Inc. v. Dell, Inc., 659 F.3d 1376, 1380 (Fed. Cir. 2011) (discussing Fantasy Sports Props., Inc. v. Sportsline.com, Inc., 287 F.3d 1108, 1117–18 (Fed. Cir. 2002)); see also Dell Inc. v. Acceleron, LLC, 818 F.3d 1293, 1299 (Fed. Cir. 2016) (“For anticipation purposes, the absence of such a teaching makes it immaterial whether . . . a user . . . could modify the system to activate such remote booting”). Thus, even if “no claim in the ’554 patent requires an arbor or any other particular drive structure,” as Petitioner asserts (Pet. Reply 18), that Redford’s cleaning flange 60 must be modified in order for it to be “use[d] as a conventional hole saw,” as suggested in the Petition (see Pet. 19), means that Redford is not an anticipatory disclosure. Here, we find Mr. Vallee’s testimony that “there is no portion of the cleaning flange 60 that can be easily connected to a rotating device” persuasive. Ex. 2004 ¶ 53. We do not see how “a hole saw arbor could have been threaded or otherwise attached to the stem extending upward from the cleaning flange,” as argued by Petitioner (Pet. 19), without modifying Redford’s structure. Nothing in Redford discloses that “the stem extending upward from the cleaning flange” is either threaded or otherwise attachable to a different drive structure without modification. See also Ex. 2004 ¶ 53 (“No such standard means of attaching a hole saw arbor to the cleaning flange 60 is described in Redford.”) Furthermore, although Redford discloses that “the cleaning flange could be remov[ed]” from nut driver 40 (Ex. 1003, 6:6–10), this is not a disclosure that the cleaning flange includes structure that allows it to be “connectable to a different drive structure for use as a conventional hole saw,” as Petitioner suggests (Pet. 19). In particular,” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightNot shown unpatentableMotivation not foundNot shown unpatentable
“Patent Owner’s argument is persuasive. Petitioner provides insufficient reasoning as to why a person of ordinary skill in the art would have added a second, alternate drive structure to Redford’s cleaning flange 60, when Redford already discloses a drive structure that utilizes pin 54 for attaching body 20 to cleaning flange 60. Petitioner’s proposed modification of Redford’s cleaning flange 60 appears to be premised on an impermissible use of hindsight after review of the ’554 Patent, rather than on a supported reason to modify Redford’s cleaning flange 60. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) (stating that the fact finder must be aware “of the distortion caused by hindsight bias and must be cautious of arguments reliant upon ex post reasoning”). We also find unpersuasive Petitioner’s argument that Patent Owner’s own “expert testified that by the ’554 patent’s priority date, it would have been obvious to incorporate such structures into a hole saw” (Pet. Reply 18 (citing Ex. 1008, 36:5–17)). Here, Patent Owner’s expert (Mr. Vallee) simply answered “Yes” in response to the question, “[y]ou would agree that at the time of the [’554 patent] it was obvious that you would have a mandrel and use a power drill to operate a hole saw, correct?” Ex. 1008, 36:5–17. The issue is not whether it would have been obvious to add a mandrel to any hole saw so that it can be driven by a power drill, as posed by the question; rather, the issue is whether it would have been obvious to modify Redford’s cleaning flange 60—which already uses a pin-type attachment mechanism—to include a second attachment mechanism that would avoid the use of the pin.” slip op. at 16
Patent outcomesUS 8,579,554 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 8,579,554 - Runway Safe LLC v. Engineered Arresting SystemsInstitution deniedPTAB · Feb 29, 2016 · IPR2015-01921 · APJ Michael L Woods · IPR · Institution
The Board denied institution on claims 1–3 because neither obviousness ground showed a reasonable likelihood of success, for lack of adequate motivation to combine.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Upon reviewing the record, we conclude that Petitioner has not demonstrated that the proposed modification of Gwynne—which replaces Gwynne’s urea formaldehyde foam with Brubaker ’917’s ceramic foam—is supported by adequate reasoning based on rational underpinnings. KSR, 550 U.S. at 418 (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). In particular, Petitioner’s proposed rationale, “improvement in the water absorption resistance,” ignores the fact that Gwynne’s arrester already has a weatherproofing seal, which addresses the problem of water intrusion. Ex. 1005, 18. Additionally, Petitioner’s modification does not propose to remove Gwynne’s weatherproofing seal, but instead relies on its presence in meeting the claimed “frangible material.” Pet. 26 (citing Ex. 1004 ¶ 58). In that respect, Petitioner does not explain adequately why a skilled artisan would maintain Gwynne’s weatherproofing seal as a part of a structure while also incorporating Brubaker ’917’s water insoluble ceramic foam. Because we are not persuaded that water intrusion is a problem in Gwynne’s arrester system, we are not persuaded by Petitioner’s proffered rationale that a person of ordinary skill in the art would replace Gwynne’s urea formaldehyde foam with ceramic foam. Accordingly, Petitioner has failed to establish a reasonable likelihood of success at trial on these challenges, and we, therefore, do not institute an inter partes review of claims 1–3 on these grounds.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“Upon reviewing the record, we conclude that Petitioner has not demonstrated that the proposed modification of Gwynne—which replaces Gwynne’s urea formaldehyde foam with Brubaker ’917’s ceramic foam—is supported by adequate reasoning based on rational underpinnings. KSR, 550 U.S. at 418 (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). In particular, Petitioner’s proposed rationale, “improvement in the water absorption resistance,” ignores the fact that Gwynne’s arrester already has a weatherproofing seal, which addresses the problem of water intrusion. Ex. 1005, 18. Additionally, Petitioner’s modification does not propose to remove Gwynne’s weatherproofing seal, but instead relies on its presence in meeting the claimed “frangible material.” Pet. 26 (citing Ex. 1004 ¶ 58). In that respect, Petitioner does not explain adequately why a skilled artisan would maintain Gwynne’s weatherproofing seal as a part of a structure while also incorporating Brubaker ’917’s water insoluble ceramic foam. Because we are not persuaded that water intrusion is a problem in Gwynne’s arrester system, we are not persuaded by Petitioner’s proffered rationale that a person of ordinary skill in the art would replace Gwynne’s urea formaldehyde foam with ceramic foam. Accordingly, Petitioner has failed to establish a reasonable likelihood of success at trial on these challenges, and we, therefore, do not institute an inter partes review of claims 1–3 on these grounds.” slip op. at 7
§ 103 obviousnessPatents in suitUS 7,597,502 - Stellar Energy Americas, Inc. v. Tas Energy, Inc.Rehearing deniedPTAB · Jan 29, 2016 · IPR2015-01212 · APJ Barry L Grossman · IPR · Rehearing
The Board denied rehearing and left in place its decision not to institute review of claims 2, 7, 10, and 11 because the cited art did not address the claims’ temperature limitations.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“an abuse of discretion. 37 C.F.R. § 42.71(c). The burdens and requirements of a request for rehearing are stated in 37 C.F.R. § 42.71(d): (d) Rehearing. . . . The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“ASHRAE Thermal Storage also discloses that “[w]ater become less dense as its temperature is lowered from 39°F [the approximate temperature of maximum water density for pure water under normal atmospheric conditions] to freezing (Table I). Therefore, stratification would not work in this range . . . .” Id. (emphasis added). ASHRAE Thermal Storage suggests, at best, that lowering the temperature more than 1.2º F below the temperature of maximum water density for pure water at normal atmospheric conditions will not work. We considered this complete disclosure of the reference in determining whether it was reasonably likely that claim 2 would have been obvious based on Andrepont, Mornhed, and ASHRAE Thermal Storage.” slip op. at 4
NonePatents in suitUS 6,318,065
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.