- Respironics, Inc. v. Zoll Medical CorporationSome claims unpatentablePTAB · Sep 17, 2014 · IPR2013-00322 · APJ Scott E Kamholz · IPR · Final written decision
Claim 1 is unpatentable as anticipated by Owen; claims 2, 4, 5, 8, 9, 16, 19, and 20 were not shown unpatentable. The contingent motion to amend was denied.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“A limitation using the term “means for” creates a rebuttable presumption that the drafter intended to invoke 35 U.S.C. § 112 ¶ 6.1 Personalized Media Commc’ns. LLC v. Int’l Trade Comm’n, 161 F.3d 696, 703-04 (Fed. Cir. 1998). When construing a means-plus-function limitation under 35 U.S.C. § 112 ¶ 6, we first must identify the claimed function, and then we look to the specification to identify the corresponding structure that performs the claimed function. Medical Instrumentation & Diagnostics Corp. v. Elekta AB, 344 F.3d 1205, 1210 (Fed. Cir. 2003); Cardiac Pacemakers, Inc. v. St. Jude Med., Inc., 296 F.3d 1106, 1119 (Fed. Cir. 2002). With respect to the second step, “structure disclosed in the specification is ‘corresponding’ structure only if the specification or prosecution history clearly links or associates that structure to the function recited in the claim.” Golight, Inc. v. Wal-Mart Stores Inc., 355 F.3d 1327, 1334 (Fed. Cir. 2004) (citations and quotation marks omitted).” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“cite numerous passages in the ’003 patent, none of these passages serves to define “patient compliance [and use] data” in a manner that justifies disregarding that term. Although the ’003 patent does describe patient compliance data as relating to whether the patient is using the device improperly, or at all (Ex. 1001, 5:49-52), it is used within the context of assessing whether the patient is following (i.e., complying with) instructions. To construe the terms as encompassing any data related to patient use is, therefore, unreasonably broad.” slip op. at 7
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner
“A limitation using the term “means for” creates a rebuttable presumption that the drafter intended to invoke 35 U.S.C. § 112 ¶ 6.1 Personalized Media Commc’ns. LLC v. Int’l Trade Comm’n, 161 F.3d 696, 703-04 (Fed. Cir. 1998). When construing a means-plus-function limitation under 35 U.S.C. § 112 ¶ 6, we first must identify the claimed function, and then we look to the specification to identify the corresponding structure that performs the claimed function. Medical Instrumentation & Diagnostics Corp. v. Elekta AB, 344 F.3d 1205, 1210 (Fed. Cir. 2003); Cardiac Pacemakers, Inc. v. St. Jude Med., Inc., 296 F.3d 1106, 1119 (Fed. Cir. 2002). With respect to the second step, “structure disclosed in the specification is ‘corresponding’ structure only if the specification or prosecution history clearly links or associates that structure to the function recited in the claim.” Golight, Inc. v. Wal-Mart Stores Inc., 355 F.3d 1327, 1334 (Fed. Cir. 2004) (citations and quotation marks omitted).” slip op. at 6
- Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Decided for petitioner
“We focus our analysis on the “means for monitoring and storing” limitation in claims 4 and 19. Claim 4 recites: “means for monitoring and storing operations information of the medical device and patient compliance and use data.” Claim 19 recites: “means for monitoring and storing patient medical parameters, device performance data and patient compliance data.” Respironics argues that the structures disclosed in the ’003 patent as performing the “monitoring” and “storing” functions are a medical device and a memory. Pet. 8. Zoll does not contest this structural correspondence. We maintain our determination that these limitations invoke 35 U.S.C. § 112 ¶ 6, and that the structures corresponding to each of these limitations are a medical device and a memory. We have considered the parties’ arguments and evidence concerning” slip op. at 8
Patent outcomesUS 6,681,003 mixedClaim construction§ 102 anticipationPatents in suitUS 6,681,003 - Microsoft Corporation v. Proxyconn, Inc.Some claims unpatentablePTAB · Feb 19, 2014 · IPR2013-00109 · APJ Mitchell G Weatherly · IPR · Final written decision
Claims 1, 3, 6, 7, 9–12, 14, 22, and 23 were canceled as anticipated; claim 24 was not shown unpatentable, and the motion to amend was denied.
RulingsFinal written decision- BurdenOther
“petitioner must establish facts supporting its challenges by a preponderance of the evidence. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d). 1. Anticipation The Court of Appeals for the Federal Circuit summarized the analytical framework for determining whether prior art anticipates a claim as follows: If the claimed invention was “described in a printed publication” either before the date of invention, 35 U.S.C. § 102(a), or more than one year before the U.S. patent application was filed, 35 U.S.C. § 102(b), then that prior art anticipates the patent. Although § 102 refers to “the invention” generally, the anticipation inquiry proceeds on a claim-by-claim basis. See Hakim v. Cannon Avent Group, PLC, 479 F.3d 1313, 1319 (Fed. Cir. 2007). To anticipate a claim, a single prior art reference must expressly or inherently disclose each claim limitation. Celeritas Techs., Ltd. v. Rockwell Int’l Corp., 150 F.3d 1354, 1361 (Fed. Cir. 1998). But disclosure of each element is not quite enough—this court has long held that “[a]nticipation requires the presence in a single prior art disclosure of all elements of a claimed invention arranged as in the claim.” Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983) (citing Soundscriber Corp. v. United States, 175 Ct.Cl. 644, 360 F.2d 954, 960 (1966) (emphasis added)). Finisar Corp. v. DirecTV Grp., Inc., 523 F.3d 1323, 1334–35 (Fed. Cir. 2008). We must analyze prior art references as a skilled artisan would. See Scripps Clinic & Res. Found. v. Genentech, Inc., 927 F.2d 1565, 1576 (Fed. Cir. 1991) (to anticipate, “[t]here must be no difference between the claimed invention and the reference disclosure, as viewed by a person of ordinary skill in the field of the invention”).” slip op. at 32
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“Both parties’ interpretations of “data access” are too narrow. Neither the challenged claims nor the Specification expressly limits “data access” to require a “request from the client” as proposed by Proxyconn. The claims merely recite “data access.” Even though the Specification describes examples in which the client requests data from a server, the Specification does not require that the client request data in all described embodiments of the claimed systems and methods. For example, the Specification expressly describes an embodiment in which “a sender/computer required to send data to a receiver/computer . . . initially sends a digital digest of the data.” Ex. 1002, col. 2, ll. 26–28. “[L]imitations are not to be read into the claims from the specification.” In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993) (citing In re Zletz, 893 F.2d 319, 321(Fed. Cir. 1989)). We decline to do so here. Microsoft’s position is similarly unsupported by the claims themselves or the Specification. None of the challenged independent claims affirmatively recites that the receiver/computer acquires data from the sender/computer. Microsoft cites no portion of the Specification, and we find no support for the proposition that the Specification equates “data access” with “data acquisition.” We determine that the plain meaning of “data access” is clear. Independent challenged claims 1, 6, 10, 11, and 22 recite “access” as a noun modified by “data.” Ex. 1002, col. 10, l. 31 (claims 1, 3), col. 10, l. 64 (claims 6, 7, and 9), col. 11, l. 20 (claim 10), col. 11, l. 35 (claims 11, 12, and 14), col. 12, l. 30 (claims 22–24). “Access” plainly means the “freedom or ability to obtain or make use of.” MERRIAM WEBSTER’S COLLEGIATE DICTIONARY 6 (10th ed. 1999). We conclude, therefore, that the claimed systems and methods recite “data access” to refer to the freedom or ability to obtain or use data. Although obtaining or acquiring data requires access to that data, access to the data need not involve acquisition of that data.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for petitioner
“Resolution of the parties’ arguments relating to whether Yohe anticipates claims 1, 3, and 10 requires that we interpret “digital digests” as recited in the comparison means. We interpret “digital digests” by reading claim 1 in its entirety. Claim 1 recites that both the sender and receiver include “means for creating digital digests on data.” We conclude that the “digital digests” recited in the means for comparison refers to the “digital digests on data” that are recited earlier in claim 1 in the “means for creating.” b. Claim 10 Claim 10, like claim 1, recites that the receiver includes “means for comparison between digital digests.” Also like claim 1, claim 10 recites that the sender includes a “means for creating digital digests on data.” By contrast to claim 1, claim 10 does not recite a “means for creating” in the receiver. Ex. 1002, col. 11, ll. 20–33. Instead, the receiver includes a “means for storing a digital digest received from said network.” Id. at col. 11, ll. 31–32 (emphasis added). The reference to “a digital digest” rather than “the digital digest on data” in the storing means implies that the receiver can store any type of digital digest received from the network. Therefore, the “digests” that are compared in the “means for comparison” recited in claim 10 need not be the two digests on data created by the sender and receiver. Instead, the “means for comparison between digital digests” recited in claim 10 refers to structure that can compare any digital digest received from the network with any other digital digest.” slip op. at 18
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureInherency not foundNot shown unpatentableNot shown unpatentable
“A finding of anticipation by inherency requires more than probabilities or possibilities. Motorola Mobility LLC v. Int’l Trade Comm’n, 737 F.3d 1345, 1350 (Fed. Cir. 2013). Based on the evidence discussed above, it is possible to infer that Perlman describes such permanent storage memory. However, Microsoft has not presented evidence that the computers or routers described by Perlman necessarily use permanent storage memory as recited in claims 1 and 3. Therefore, Microsoft has failed to establish by a preponderance of evidence that Perlman describes a receiver/computer or sender/computer necessarily having “permanent storage memory.” Without such evidence, we cannot conclude that Perlman anticipates claims 1 and 3.” slip op. at 34
Patent outcomesUS 6,757,717 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites PhillipsPatents in suitUS 6,757,717
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.