Trials@uspto.gov
`571-272-7822
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`Paper 13
`Entered: September 26, 2016
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`NIPRO CORPORATION,
`Petitioner,
`
`v.
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`NXSTAGE MEDICAL, INC.,
`Patent Owner.
`____________
`
`Case IPR2016-00744
`Patent 8,092,414 B2
`____________
`
`
`Before SALLY C. MEDLEY, LYNNE E. PETTIGREW, and
`AMANDA F. WIEKER, Administrative Patent Judges.
`
`WIEKER, Administrative Patent Judge.
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`
`
`DECISION
`Request for Rehearing
`37 C.F.R. § 42.71
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`

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`Case IPR2016-00744
`Patent 8,092,414 B2
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`I.
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`INTRODUCTION
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`Nipro Corporation and Nipro Medical Corporation (collectively,
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`“Petitioner”) filed a Request for Rehearing (Paper 12, “Req. Reh’g”) of the
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`Decision (Paper 11, “Dec.”) denying institution of an inter partes review of
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`challenged claims 1–9, 12–16, 19–26, and 28 of U.S. Patent No. 8,092,414
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`B2 (Ex. 1001, “the ’414 patent”). Req. Reh’g 1. Petitioner argues that our
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`Decision overlooked arguments in the Petition establishing that Minami, the
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`applied prior art, necessarily discloses an integral attachment between its
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`pressure tubing and pod. Id. at 1–2.1 The Request for Rehearing is denied.
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`II. STANDARD OF REVIEW
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`When rehearing a decision on petition, the Board will review the
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`decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of
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`discretion occurs if the decision is based on an erroneous interpretation of
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`law, if a factual finding is not supported by substantial evidence, or if the
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`decision represents an unreasonable judgment in weighing relevant factors.
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`Arnold Partnership v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004).
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`Furthermore, a request for rehearing must identify specifically all matters the
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`party believes we misapprehended or overlooked, and the place where each
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`matter was addressed previously in a motion, an opposition, or a reply. 37
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`C.F.R. § 42.71(d).
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`1 Petitioner states, “[a]ccording to the Decision, the distinguishing feature of
`the ’414 claims over Minami is an ‘integral’ connection.” Req. Reh’g 1.
`This statement does not accurately reflect our Decision, which found that the
`Petition failed to demonstrate that Minami’s connection was integral, but did
`not reach the other limitations of the challenged claims. See Dec. 12–18.
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`2
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`Case IPR2016-00744
`Patent 8,092,414 B2
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`III. ANALYSIS
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`Independent claims 1, 13, and 23 each recite that pressure tubing is
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`“integrally attached to” or “integral with” the claimed pod or chamber. See
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`Ex. 1001, 14:67, 15:53, 16:33; Dec. 5. In light of the ’414 patent
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`Specification and the plain and ordinary meaning of “integral,” our Decision
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`concluded that the tubing and pod/chamber must be attached “as a sealed
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`unit.” Dec. 9–12.
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`Petitioner contends that we overlooked arguments establishing that
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`Minami necessarily discloses the claimed integral attachment, as that term
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`has been construed, because a person of ordinary skill in the art would “at
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`once envisage” that the attachment between Minami’s pressure tubing and
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`chamber is sealed. Req. Reh’g 1–2. Specifically, Petitioner argues that we
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`overlooked the Petition’s arguments that Minami’s system operates in
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`accordance with Boyle’s law, which requires a sealed air mass in order to
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`enable blood pressure measurement. Id. at 3–8. Petitioner also argues that
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`we overlooked the “tight slip-on connection by pressure fit,” depicted in
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`Minami’s Figure 1, which Petitioner asserts was “known to a person of
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`ordinary skill to be one way to establish a sealed connection.” Id. at 12–14.
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`We disagree with Petitioner that we overlooked arguments
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`establishing that Minami necessarily discloses integral attachment. First,
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`when analyzing his limitation of claim 1, the Petition states, in full, “[t]he
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`pressure tube 20 of Minami is directly attached to first connection port 16 of
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`the container 11.” Pet. 25 (citing Ex. 1002 ¶ 75).2 This statement concerns
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`only whether Minami’s attachment is “direct,” and does not address whether
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`2 The same statement is made with respect to independent claims 13 and 23.
`Pet. 47–48 (citing Ex. 1002 ¶ 128), 51–52 (citing Ex. 1002 ¶ 162).
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`Case IPR2016-00744
`Patent 8,092,414 B2
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`that attachment is, either expressly or inherently, “integral,” i.e., attached as
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`a sealed unit. Id. The cited Declaration testimony of Mr. Charles E.
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`Clemens provides no further analysis of Minami’s attachment. Ex. 1002
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`¶¶ 75, 128, 162.
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`The Request for Rehearing directs us to portions of the Petition that
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`discuss operation of Minami’s system. Req. Reh’g 3–8 (citing Pet. 4, 9, 11,
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`12, 21, 22, 26, 30, 48, 52). For example, the Request states:
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`in
`is
`that “the air chamber b
`[T]he Petition explains
`communication with a pressure gauge 22 via a pressure tube 20,
`so that the pressure pod 25 can be located remote from the
`pressure gauge 22.” . . . Minami states: “During the dialysis
`performed with blood pump 2 being rotated, blood is circulated
`in respective blood chambers a. Then, diaphragm 12 is dilated
`toward air chamber b by the pressure of blood. The capacity of
`air chamber b accordingly decreases and air pressure therein
`correspondingly increases, resulting in equilibrium.
` The
`pressure of blood can be known by measuring the air pressure
`at the time by pressure gauge 22.
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`Id. at 4 (citing Pet. 9; Ex. 1002 ¶ 31; Ex. 1013 ¶ 11) (emphasis omitted).
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`Although these portions of the Petition discuss Minami’s operation in a
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`manner that may involve a sealed connection between Minami’s pressure
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`tubing and chamber, the Petition does not establish that Minami’s system
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`necessarily only operates in this manner and does not establish that the
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`disputed connection is necessarily sealed. See Akamai Techs., Inc. v. Cable
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`& Wireless Internet Servs., Inc., 344 F.3d 1186, 1192 (Fed. Cir. 2003) (“A
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`claim limitation is inherent in the prior art if it is necessarily present in the
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`prior art, not merely probably or possibly present.”).
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`For example, Minami discloses injector 23, which introduces air into
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`Minami’s chamber. Ex. 1013 ¶ 11; Dec. 15. The Petition does not establish
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`that Minami’s pressure tubing necessarily is attached as a sealed unit to the
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`Case IPR2016-00744
`Patent 8,092,414 B2
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`chamber, especially in light of Minami’s explicit disclosure of a mechanism
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`through which air can be added to the chamber. See Dec. 15. Now, in its
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`Request for Rehearing, Petitioner argues that Minami’s injector does not add
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`air to Minami’s chamber to compensate for leaks in the connection between
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`the pressure tubing and the chamber. Req. Reh’g 9–10. Importantly,
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`however, this position was not presented or developed in the Petition.
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`Compare Pet. 24, 28 (identifying Minami’s injectors but not discussing
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`whether their presence impacts the attachment between the tubing and
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`chamber), with Req. Reh’g 9–10 (arguing that the presence of Minami’s
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`injectors demonstrates a sealed connection). While Minami’s injectors may
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`be used as argued by Petitioner, Petitioner has not established that they
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`necessarily are limited to such use.
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`Further, Petitioner argues that we overlooked the “tight slip-on
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`connection by pressure fit,” depicted in Minami’s Figure 1, which “was
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`known to a person of ordinary skill to be one way to establish a sealed
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`connection.” Req. Reh’g 12–14; Ex. 1013, Fig. 1 (purportedly showing a
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`visible expansion of pressure tube 20 over port 16). However, this position
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`was not developed cogently in the Petition. Neither the Petition nor the cited
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`paragraphs of Mr. Clemens’s Declaration discuss what Minami’s Figure 1
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`depicts in terms of the attachment between Minami’s pressure tubing and
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`chamber, or whether the depicted attachment is known to be sealed.
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`Compare Pet. 25, 47–48, 51–52 (discussing this connection and failing to
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`identify Figure 1) and Ex. 1002 ¶¶ 75, 128, 162 (same), with Req. Reh’g 12
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`(arguing that Figure 1 depicts a known sealed connection). Accordingly, we
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`could not have overlooked this argument, which was not presented earlier.
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`Case IPR2016-00744
`Patent 8,092,414 B2
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`Petitioner further argues that Minami’s disclosure of other “sealed”
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`and “integral” connections demonstrates that the claimed connection
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`necessarily is sealed as well, because it “would be a waste of effort [to seal
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`certain connections] if the other connections of the same air path are not
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`sealed.” Req. Reh’g 11. Again, this argument was not presented in the
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`Petition; therefore, we could not have overlooked it. Further, we disagree
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`with Petitioner’s newly presented argument. That Minami explicitly
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`describes some, but not all, connections as “sealed” or “integral” suggests
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`that these connections are in fact different. See Dec. 15.
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`Petitioner’s reliance on the Board’s Decision in Sensus USA, Inc. v.
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`Certified Measurement, LLC is misplaced. See Req. Reh’g 1–2 (citing
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`Sensus USA, Inc. v. Certified Measurement, LLC, Case IPR2015-01454
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`(PTAB Dec. 14, 2015) (Paper 15)). In Sensus USA, Inc., the Board found
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`that the applied prior art inherently disclosed a processor and memory
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`because a person of ordinary skill in the art would understand those
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`components to be present in the disclosed “cryptographic encipherment
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`unit.” Sensus USA, Inc., Case IPR2015-01454, slip op. at 10–11 (citing
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`Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381 (Fed.
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`Cir. 2015)). In Sensus USA, Inc., however, unlike in the present case, the
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`Petition contained express argument contending that a processor and
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`memory are inherent in the prior art device. Here, the Petition does not
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`contain any persuasive argument or reasoning to show that Minami’s
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`attachment is inherently sealed.
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`In sum, the identified portions of the Petition demonstrate only that
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`the attachment between Minami’s pressure tubing and chamber may well be
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`Case IPR2016-00744
`Patent 8,092,414 B2
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`integral, as that term has been construed, but do not demonstrate that the
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`attachment is necessarily, inherently integral.
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`Finally, in its Request for Rehearing, Petitioner argues that the
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`Petition presented an obviousness analysis for independent claims 13 and 23
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`and, therefore, the Board erred in denying institution on the grounds that
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`Minami’s attachment is not necessarily sealed. Req. Reh’g 14–15.
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`According to Petitioner, “the question is not whether the seal ‘necessarily’ is
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`present in Minami, but rather, whether the seal would have been obvious
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`from Minami.” Id. at 14.
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`In asserting its proposed ground of unpatentability for claims 13 and
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`23, the Petition states, “[t]he pressure tube 20 of Minami is directly attached
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`to first connection port 16 of the container 11,” and, therefore, “Minami
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`teaches this limitation.” Pet. 47–48, 51–52. The Petition does not present an
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`obviousness analysis, suggesting that it would have been obvious to employ
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`a sealed attachment in Minami’s system. Id. Accordingly, we could not
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`have overlooked or misapprehended this argument, which was not presented
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`in the Petition. Compare Pet. 47–48, 51–52 (arguing that Minami discloses
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`an integral connection), with Req. Reh’g 14–15 (arguing that an integral
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`connection would have been obvious).
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`For all of the above reasons, Petitioner’s Request for Rehearing is
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`7
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`denied.
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`8
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`Case IPR2016-00744
`Patent 8,092,414 B2
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`PETITIONER:
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`Stephen Maebius
`smaebius@foley.com
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`Michael Kaminski
`mkaminski@foley.com
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`PATENT OWNER:
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`Michael Fleming
`mfleming@irell.com
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`Benjamin Haber
`NiproIPR@irell.com