Trials@uspto.gov
`571–272–7822
`
`
`
`
`Paper 9
`Entered: February 6, 2017
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CAREFUSION CORPORATION,
`Petitioner,
`
`v.
`
`BAXTER INTERNATIONAL, INC.,
`Patent Owner.
`____________
`
`Case IPR2016-01456
`Patent 5,782,805
`____________
`
`Before RICHARD E. RICE, ROBERT J. WEINSCHENK, and
`AMANDA F. WIEKER, Administrative Patent Judges.
`
`RICE, Administrative Patent Judge.
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
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`I. INTRODUCTION
`Petitioner, CareFusion Corporation, filed a Petition requesting an inter
`partes review of claims 1–5, 8–20, 23–26, 28–32, and 35 of U.S. Patent
`No. 5,782,805 (Ex. 1001, “the ’805 Patent”). Paper 2 (“Pet.”). In response,
`Patent Owner, Baxter International, Inc., filed a Preliminary Response.
`Paper 7 (“Prelim. Resp.”).
`Under 35 U.S.C. § 314(a), an inter partes review may not be instituted
`“unless . . . the information presented in the petition . . . and any response
`. . . shows that there is a reasonable likelihood that the petitioner would
`prevail with respect to at least 1 of the claims challenged in the petition.”
`Upon considering the Petition and the Preliminary Response, and for the
`reasons set forth below, we determine that Petitioner has not shown a
`reasonable likelihood that it would prevail with respect to at least one of the
`challenged claims.
`Accordingly, we do not institute an inter partes review.
`
`A. Related Matter
`According to the parties, the ’805 Patent is involved in Baxter Int’l,
`Inc. v. CareFusion Corp., No. 1:15-cv-09986 (N.D. Ill.). Pet. 2; Paper 4, 1.
`
`B. The ’805 Patent
`The ’805 Patent is directed to user interfaces for medical infusion
`pumps. Ex. 1001, 1:4–5. Figure 2 of the ’805 Patent is reproduced below.
`
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`Figure 2 is a perspective view of an embodiment having main body
`portion 14 and four pumping modules 16. Id. at 2:3–25, 2:55–59. Main
`body portion 14 includes liquid crystal display (“LCD”) area 23, data-entry
`keys 25, and a slave microprocessor (not depicted in Figure 2) that is a slave
`to a master microprocessor. Id. at 2:59–3:1.
`C. Illustrative Claim
`Of the challenged claims, claims 1, 11, and 24 are independent.
`Claim 1 is illustrative of the claimed subject matter and is reproduced below.
`
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`An infusion pump comprising:
`1.
`a main body portion;
`a display contained on the main body portion for
`displaying user interface information;
`at least one pump module removably secured to
`the main body portion and adapted to receive a tube, the
`pump module having means for applying pumping action
`to the tube;
`an auxiliary display contained on the pump module
`for displaying supplemental user interface information;
`microprocessor means contained in the main body
`portion for generating user interface information on the
`display areas; and
`means for generating a plurality of pictoral graphic
`representations as user interface information on the main
`display;
`wherein a plurality of sets of configuration
`parameters are included as user interface information
`such that a user can select which of the plurality of sets
`of configuration parameters to configure the infusion
`pump.
`Id. at 14:13–32.
`
`D. Asserted Grounds of Unpatentability
`Petitioner contends that the challenged claims are unpatentable based
`on the following specific grounds (Pet. 15):
`
`References
`Eggers1
`
`Basis
`§ 102(e)
`
`Claims Challenged
`1–4, 8–19, and 23
`
`Eggers
`
`§ 103(a)
`
`1–4, 8–19, and 23
`
`
`1 U.S. Patent No. 5,713,856 to Eggers et al., which issued Feb. 3, 1998 from
`an application filed Mar. 13, 1995 (Ex. 1004, “Eggers”).
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`References
`Eggers and Voss2
`
`Basis
`§ 103(a)
`
`Claims Challenged
`5, 20, 24–26, 28–32, and 35
`
`To support the Petition, Petitioner relies on the Declaration of Stephen
`J. Bollish (Ex. 1003).3 In its Preliminary Response, Patent Owner relies on
`the Declaration of Warren P. Heim (Ex. 2001).
`
`II. ANALYSIS
`A. Level of Skill in the Art
`Petitioner contends based on the testimony of its declarant,
`Dr. Bollish, that “[a] person of ordinary skill in the art [“POSA”] . . . would
`have been someone with at least a bachelor’s or graduate degree in
`pharmacy, medicine, biomedical engineering, or a related field, and at least 8
`years of combined clinical and infusion pump design experience.” Pet. 8
`(citing Ex. 1003 ¶ 10). Patent Owner disagrees. Patent Owner contends
`based on the testimony of its declarant, Mr. Heim, that a POSA would have
`been an individual having at least a bachelor’s degree in engineering who is
`familiar with mechanical, electronic, and software engineering as it was
`practiced for medical devices, and who had been involved actively for at
`least six years in the engineering and design of medical devices using
`electronics and electro-mechanical components, including infusion pumps.
`Prelim. Resp. 4 (citing Ex. 2001 ¶ 44).
`On the record before us, we determine that no express finding is
`necessary with regard to the level of ordinary skill in the art, and that the
`
`2 U.S. Patent No. 5,609,576 to Voss et al., which issued Mar. 11, 1997 from
`an application filed Sept. 13, 1994 (Ex. 1005, “Voss”).
`3 Dr. Bollish testifies that he is a “named inventor” on the Eggers reference.
`Ex. 1003 ¶ 4.
`
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`level of ordinary skill in the art is reflected by the prior art of record. See
`Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC
`Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91
`(CCPA 1978).
`
`B. Claim Interpretation
`Petitioner asserts that the ’805 Patent has expired and that the claims
`should be given their ordinary and customary meanings as understood by a
`POSA under the Phillips4 standard. Pet. 9. Petitioner also asserts, however,
`that: “For the purposes of this Petition, [Petitioner] relies on the
`constructions expressly and implicitly propounded by [Patent Owner] in the
`district court lawsuit.” Id. In addition, Petitioner states that “[Petitioner]
`does not agree that those constructions are in fact correct,” but
`“[r]egardless, [Patent Owner’s] contentions are informative for evaluating
`the validity of the claims.” Id. (emphasis added).
`Patent Owner agrees that the ’805 Patent has expired and that the
`Phillips standard applies. Prelim. Resp. 4–5. Patent Owner argues,
`however, that Petitioner has not provided a sufficient statement of how the
`challenged claims are to be construed as required under the Board’s trial
`rules. See id. at 6; 37 C.F.R. § 42.104(b)(3).
`As recognized by the parties, we apply the broadest reasonable
`construction standard only to unexpired patents. See 37 C.F.R. § 42.100(b).
`For expired patents, we apply the Phillips standard used in district court
`patent litigation. See, e.g., In re Rambus, Inc., 694 F.3d 42, 46 (Fed. Cir.
`2012) (holding that when an expired patent is subject to reexamination
`before the Office, the Phillips standard applies); Cisco Sys., Inc. v. AIP
`
`4 Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc).
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`Acquisition, LLC, Case IPR2014-00247, slip op. at 3 (PTAB July 10, 2014)
`(Paper 20).
`We agree with Patent Owner that Petitioner has failed to provide a
`sufficient statement of how the challenged claims are to be construed as
`required by 37 C.F.R. § 42.104(b)(3). Petitioner states that it relies on
`constructions advanced by Patent Owner in the related litigation;
`remarkably, however, Petitioner also states that it does not agree that those
`constructions are in fact correct. See Pet. 9. As such, Petitioner has failed
`to indicate that it agrees with, proposes, or adopts the constructions
`attributed to Patent Owner. See Toyota Motor Corp. v. Blitzsafe Texas, LLC,
`Case IPR2016-00422, slip op. at 26–27 (PTAB July 6, 2016) (Paper 12).
`We consider Petitioner’s proposed claim constructions below. For the
`reasons given, the constructions are erroneous.
`
`1. “microprocessor means contained in the main body portion for
`generating user interface information on the display areas”
`(claim 1) and “microprocessor means for generating user
`interface information on the display” (claims 11 and 24)
`Claim 1 recites “microprocessor means contained in the main body
`portion for generating user interface information on the display areas.”
`Claims 11 and 24 each recite “microprocessor means for generating user
`interface information on the display.”
`Petitioner asserts that the above-quoted recitations are “means-plus-
`function term[s] governed by pre-AIA 35 U.S.C. § 112 ¶ 6.” Pet. 10.5
`
`5 Paragraphs 1 through 6 of § 112 were renamed as paragraphs (a) through
`(f) when § 4(c) of the Leahy-Smith America Invents Act, Pub. L. No. 112–
`29, 125 Stat. 284, 329 (2011) (“AIA”) took effect on September 16, 2012.
`We understand that Petitioner refers to the pre-AIA version of § 112 because
`the patent application resulting in the ’805 Patent was filed before the
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`Petitioner further asserts that “[Patent Owner’s] infringement contentions in
`the district court lawsuit identify the corresponding structure disclosed in the
`specification as a generic microprocessor.” Id. (citing Ex. 1012, APP0638–
`40 (citing Ex. 1001, 2:67–3:10)).6 Petitioner argues that these computer-
`implemented means-plus-function terms are indefinite because the
`Specification does not disclose an algorithm for performing the specified
`functions:7
`
`The specification passages cited by [Patent Owner] do
`not contain any algorithm for “generating user interface
`information,” nor
`is any disclosed elsewhere
`in
`the
`specification. Accordingly, this claim element is indefinite
`under 35 U.S.C. § 112, and not amenable to claim construction.
`Id. at 11 (emphasis added). Petitioner alternatively contends that, “[t]o the
`extent that this element is not indefinite, [Petitioner] agrees with [Patent
`
`
`effective date of the AIA. We also will refer to the pre-AIA version of
`§ 112.
`6 A claim element expressed as a “means” for performing a specified
`function, without the recital of structure, material, or acts in support thereof,
`is construed to cover the corresponding structure, material, or acts described
`in the specification and equivalents thereof. 35 U.S.C. § 112 ¶ 6;
`Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015) (en
`banc).
`7 See WMS Gaming, Inc. v. Int’l Game Tech., 184 F.3d 1339, 1348–49 (Fed.
`Cir. 1999) (restricting computer-implemented means-plus-function terms to
`the algorithm disclosed in the specification); Blackboard, Inc. v.
`Desire2Learn, Inc., 574 F.3d 1371, 1382 (Fed. Cir. 2009) (“If the
`specification does not contain an adequate disclosure of the structure that
`corresponds to the claimed function, the patentee will have failed to
`particularly point out and distinctly claim the invention as required by the
`second paragraph of section 112, which renders the claim invalid for
`indefiniteness.”) (internal quotation marks and citation omitted).
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`Owner] that the only possible corresponding structure disclosed in the
`specification is a generic microprocessor.” Id.
`The Board’s trial rules require Petitioner to provide a statement as to
`how the claims are to be construed and, for a means-plus-function element
`under 35 U.S.C. § 112 ¶ 6, to identify the corresponding structure, material,
`or acts corresponding to each claimed function:
`Where the claim to be construed contains a means-plus-function
`or step-plus-function limitation as permitted under 35 U.S.C.
`§ [112 ¶ 6], the construction of the claim must identify the
`specific portions of the specification that describe the structure,
`material, or acts corresponding to each claimed function.
`37 C.F.R. § 42.104(b)(3). Here, Petitioner has failed to identify the
`structure, material, or acts corresponding to the claimed function of
`generating user interface information either on the display areas (claim 1) or
`on the display (claims 11 and 24). Petitioner’s assertion that the claim terms
`are indefinite does not excuse Petitioner’s failure to provide the required
`claim construction.
`Petitioner’s alternative argument that the corresponding structure is a
`generic microprocessor is also insufficient. Except for a narrow exception,
`the disclosure of a general purpose microprocessor as corresponding
`structure for a computer-implemented means-plus-function element is not
`sufficient―a corresponding algorithm must be disclosed. See Eon Corp. IP
`Holdings LLC v. AT&T Mobility LLC, 785 F.3d 616, 623 (Fed. Cir. 2015).
`Under the narrow exception, a corresponding algorithm is not required when
`the claimed function “can be achieved by any general purpose computer
`without special programming.” In re Katz Interactive Call Processing
`Patent Litigation, 639 F.3d 1303, 1316 (Fed.Cir.2011). Here, we are not
`persuaded that the claimed function of generating user interface information
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`on the display areas or display can be performed by a generic
`microprocessor.8 Accordingly, Petitioner’s alternative claim construction is
`insufficient for failure to identify a corresponding algorithm.
`Nor can we decide Petitioner’s contention that the claim terms are
`indefinite. The scope of an inter partes review is limited to grounds that
`could be raised under 35 U.S.C. §§ 102 and 103. 35 U.S.C. § 311(b).
`Indefiniteness is not one of those grounds.
`For these reasons, Petitioner’s proposed claim construction is
`erroneous.
`
`2. “the pump module having means for applying
`pumping action to the tube”
`Claim 1 recites “the pump module having means for applying
`pumping action to the tube” (emphasis added). Claims 11 and 24 also recite
`“means for applying pumping action to the tube.”
`Petitioner does not offer its own construction for this means-plus-
`function term by identifying corresponding structure, material, or acts
`described in the Specification, but instead relies on the structure allegedly
`identified in Patent Owner’s infringement contentions in the related
`litigation. Specifically, Petitioner asserts that “[Patent Owner’s]
`infringement contentions cite the disclosure of ‘peristaltic-type pumps and
`valve-type pumps’ in the specification.” Pet. 12 (citing Ex. 1012, APP0631
`(citing Ex. 1001, 1:21–37)). Petitioner then states that “[s]olely for the
`
`
`8 See Ergo Licensing, LLC v. CareFusion 303, Inc., 673 F.3d 1361, 1365
`(Fed. Cir. 2012) (“It is only in the rare circumstances where any general-
`purpose computer without any special programming can perform the
`function that an algorithm need not be disclosed.”).
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`purposes of this Petition, [Petitioner] agrees that this element refers to either
`a peristaltic-type or valve-type pumping mechanism.” Id.
`Petitioner’s statement that it agrees with Patent Owner’s alleged claim
`construction solely for the purposes of its Petition is insufficient in this case
`to show that Petitioner agrees with, proposes, or adopts that construction as
`required by 37 C.F.R. § 42.104(b)(3). That is, having stated that it does not
`agree that Patent Owner’s claim constructions are correct (see Pet. 9),
`Petitioner’s qualified agreement with this particular construction is
`insufficient to take ownership of that construction. Further, the proffered
`construction relies on pumping mechanisms disclosed in the background
`portion of the Specification without explaining their relevance to the
`“standard IV pump modules” and alternative “syringe pump modules”
`described elsewhere in the Specification for use with the preferred
`embodiment. See Ex. 1001, 4:53–59.
`For these reasons, Petitioner’s proposed claim construction is
`erroneous.
`
`3. “means for generating a plurality of pictoral graphic
`representations as user interface information on the main display”
`Claim 1 recites “means for generating a plurality of pictoral graphic
`representations as user interface information on the main display.” For this
`means-plus-function term, Petitioner again relies on corresponding structure
`allegedly identified in Patent Owner’s infringement contentions.
`Specifically, Petitioner asserts that “[Patent Owner’s] infringement
`contentions state that the corresponding structure ‘is an LCD screen.’”
`Pet. 12 (citing Ex. 1012, APP0644 (citing Ex. 1001, 2:59–63)). Petitioner
`
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`then states that “[s]olely for the purposes of this Petition, [Petitioner] agrees
`that this element refers to an LCD screen.” Id.
`Petitioner’s statement that it agrees with Patent Owner’s alleged claim
`construction solely for the purposes of its Petition is insufficient in this case
`to show that Petitioner agrees with, proposes, or adopts that construction as
`required by 37 C.F.R. § 42.104(b)(3). That is, having stated that it does not
`agree that Patent Owner’s claim constructions are correct (see Pet. 9),
`Petitioner’s qualified agreement with this particular construction is
`insufficient to take ownership of that construction.
`Further, the portion of the Specification cited by Petitioner describes
`the functions of LCD area 23 as conveying various information about
`pump 10 to the user and providing for user interface with the pump.
`Ex. 1001, 2:59–62. As so described, the LCD area does not perform the
`claimed function of “generating” (emphasis added) user interface
`information. Rather, the function of generating user interface information is
`described in the Specification as computer-implemented. See supra Section
`II.B.1. For example, the Specification describes a slave microprocessor and
`a master microprocessor, and states that “[a]ll microprocessors include
`software in read-only memory (ROM) which drives the user interaction and
`pump-monitoring functions.” Ex. 1001, 2:67–3:9 (emphasis added).
`Petitioner fails either (i) to acknowledge that “means for generating a
`plurality of pictoral graphic representations as user interface information on
`the main display” is a computer-implemented means-plus-function element
`or (ii) to identify a corresponding algorithm in the Specification. The
`Specification makes clear, moreover, that the claimed function cannot be
`performed by any general purpose computer. See Ex. 1001, 2:67–3:9
`
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`(indicating that special purpose software drives the user interaction
`function); Katz, 639 F.3d at 316. Thus, Petitioner has failed to comply with
`37 C.F.R. § 42.104(b)(3) for this additional reason.
`For these reasons, Petitioner’s proposed claim construction is
`erroneous.
`
`4. “means for entering values”
`Claims 3, 4, 11, 19, 31, and 32 each recite “means for entering
`values.” For this means-plus-function term, Petitioner again relies on
`corresponding structure allegedly identified in Patent Owner’s infringement
`contentions. Specifically, Petitioner asserts that “[Patent Owner’s]
`infringement contentions state that the corresponding structure is a ‘numeric
`key pad.’” Pet. 12 (citing Ex. 1012, APP0650–51 (citing Ex. 1001, 3:64–
`4:5)). Petitioner then states that “[s]olely for the purposes of this Petition,
`[Petitioner] agrees that this element refers to a numeric key pad.” Id. at 12–
`13.
`
`Petitioner’s statement that it agrees with Patent Owner’s alleged claim
`construction solely for the purposes of its Petition is insufficient to show that
`Petitioner agrees with, proposes, or adopts that construction as required by
`37 C.F.R. § 42.104(b)(3). That is, having stated that it does not agree that
`Patent Owner’s claim constructions are correct (see Pet. 9), Petitioner’s
`qualified agreement with this particular construction is insufficient to take
`ownership of that construction.
`For these reasons, Petitioner’s proposed claim construction is
`erroneous.
`
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`5. “means responsive to the entered values for calculating a dose”
`(claims 3, 19, and 31) and “means responsive to the entered values
`for calculating an infusion profile” (claims 4 and 32)
`Claims 3, 19, and 31 each recite “means responsive to the entered
`values for calculating a dose of the beneficial agent to be infused into the
`patient.” Claims 4 and 32 each recite “means responsive to the entered
`values for calculating an infusion profile of the beneficial agent.”
`Petitioner argues that each of these computer-implemented means-
`plus-function elements is indefinite because the Specification, where cited
`by Patent Owner in its infringement contentions, does not disclose an
`algorithm sufficient to perform the recited function. Pet. 13–14 (citing Ex.
`1012, APP0652 (citing Ex. 1001, 12:52–64)). Petitioner alternatively
`contends that, “[t]o the extent that this element is not indefinite, [Petitioner]
`agrees with [Patent Owner] that the only possible corresponding structure
`disclosed in the specification is a generic microprocessor.” Id. at 14.
`Petitioner has failed to identify the structure, material, or acts
`corresponding to the claimed functions of “calculating a dose of the
`beneficial agent to be infused into the patient” (claims 3, 19, and 31) and
`“calculating an infusion profile of the beneficial agent” (claims 4 and 32).
`Petitioner’s assertion that the claim terms are indefinite does not excuse
`Petitioner’s failure to provide the required claim construction. Petitioner’s
`alternative argument that the corresponding structure is a generic
`microprocessor is also insufficient. See Eon Corp. IP Holdings, 785 F.3d at
`623 (requiring disclosure of an algorithm). Moreover, to the extent
`Petitioner relies on the passage from the Specification cited by Patent Owner
`in its infringement contentions, Petitioner has failed to indicate that it agrees
`with, proposes, or adopts the passage as describing the required algorithm.
`
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`Accordingly, Petitioner has failed to comply with 37 C.F.R.
`§ 42.104(b)(3), and Petitioner’s proposed claim construction is erroneous.
`
`6. “means for sensing tube restrictions”
`Claims 5, 20, and 24 each recite “means for sensing tube restrictions.”
`Petitioner argues that “there is no structure disclosed in the specification for
`performing the recited function, and this element is indefinite.” Pet. 14
`(emphasis added). According to Petitioner, “[Patent Owner’s] infringement
`contentions argue that the corresponding structure is a ‘pressure sensor,’ yet
`the passages [Patent Owner] cites do not mention a sensor or any other
`structure that actually performs the restriction-sensing function.” Id. (citing
`Ex. 1012, APP0656-57 (citing Ex. 1001, 11:6–19, 19:16–30)). Petitioner
`alternatively argues that “[t]o the extent that this element is not indefinite,
`[Petitioner] agrees with [Patent Owner] that the only possible corresponding
`structure would be a generic pressure sensor.” Id.
`Petitioner has failed to identify the structure, material, or acts
`corresponding to the claimed function (sensing tube restrictions) as required
`by 37 C.F.R. § 42.104(b)(3). Petitioner’s assertion that the claim term is
`indefinite does not excuse Petitioner’s failure to provide the required claim
`construction. Petitioner’s alternative argument that the corresponding
`structure is a generic pressure sensor also is insufficient because Petitioner
`has failed to identify where in the Specification that structure is described.
`The portions of the Specification allegedly cited by Patent Owner in its
`infringement contentions do not identify a generic pressure sensor or any
`other structure for performing the claimed function.
`Nor can we decide Petitioner’s contention that the claim terms are
`indefinite. The scope of an inter partes review is limited to grounds that
`
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`could be raised under 35 U.S.C. §§ 102 and 103. 35 U.S.C. § 311(b).
`Indefiniteness is not one of those grounds.
`For these reasons, Petitioner’s proposed claim construction is
`erroneous.
`
`7. “means for storing user interface information”
`Claims 9, 12, and 25 each recite “means for storing user interface
`information related to a specific patient.” For this means-plus-function term,
`Petitioner asserts that “[Patent Owner’s] infringement contentions state that
`the corresponding structure is simply ‘computer memory.’” Pet. 15 (citing
`Ex. 1012, APP0661). Petitioner then states that “[s]olely for the purposes of
`this Petition, [Petitioner] agrees that this element refers to generic computer
`memory.” Id.
`Petitioner’s statement that it agrees with Patent Owner’s alleged claim
`construction solely for the purposes of its Petition is insufficient to show that
`Petitioner agrees with, proposes, or adopts that construction as required by
`37 C.F.R. § 42.104(b)(3). That is, having stated that it does not agree that
`Patent Owner’s claim constructions are correct (see Pet. 9), Petitioner’s
`qualified agreement with this particular construction is insufficient to take
`ownership of that construction.
`For these reasons, Petitioner’s proposed claim construction is
`erroneous.
`
`8. “means for clearing the stored user interface information for a
`specific patient”
`Claims 10, 13, and 26 each recite “means for clearing the stored user
`interface information for a specific patient.” For this means-plus-function
`term, Petitioner relies on corresponding structure allegedly identified in
`
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`Patent Owner’s infringement contentions. Specifically, Petitioner asserts
`that “[Patent Owner’s] infringement contentions state that the corresponding
`structure is a ‘clear settings’ key.” Pet. 15 (citing Ex. 1012, APP0662 (citing
`Ex. 1001, 13:14–17)). Petitioner then states that “[s]olely for the purposes
`of this Petition, [Petitioner] agrees that this element refers to a ‘clear’ key.”
`Id.
`
`Petitioner’s statement that it agrees with Patent Owner’s alleged claim
`construction solely for the purposes of its Petition is insufficient to show that
`Petitioner agrees with, proposes, or adopts that construction as required by
`37 C.F.R. § 42.104(b)(3). That is, having stated that it does not agree that
`Patent Owner’s claim constructions are correct (see Pet. 9), Petitioner’s
`qualified agreement with this particular construction is insufficient to take
`ownership of that construction. Further, the portion of the Specification
`cited by Petitioner describes a “clear settings” soft key that clears displayed
`parameters, but does not perform the claimed function of “clearing the
`stored user interface information for a specific patient.”
`For these reasons, Petitioner’s proposed claim construction is
`erroneous.
`
`C. Asserted Unpatentability
`To anticipate a patent claim under 35 U.S.C. § 102, “a single prior art
`reference must expressly or inherently disclose each claim limitation.”
`Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323, 1334 (Fed. Cir. 2008).
`The question of obviousness is resolved on the basis of underlying factual
`determinations, including: (1) the scope and content of the prior art; (2) any
`differences between the claimed subject matter and the prior art; (3) the level
`of skill in the art; and (4) objective evidence of nonobviousness, i.e.,
`
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`secondary considerations, if in evidence. See Graham v. John Deere Co.,
`383 U.S. 1, 17–18 (1966). One seeking to establish obviousness based on
`more than one reference also must articulate sufficient reasoning with
`rational underpinnings to combine teachings. See KSR Int’l Co. v. Teleflex
`Inc., 550 U.S. 398, 418 (2007).
`In arguing that Eggers anticipates or renders obvious claims 1–4, 8–
`19, and 23 (Pet. 16–38), Petitioner relies on its erroneous claim
`constructions. See supra Section II.B. For example, to show that Eggers
`discloses or teaches “microprocessor means contained in the main body
`portion for generating user interface information on the display areas,” as
`required by claim 1, Petitioner argues that “to the extent that this element is
`not indefinite, it merely recites a generic processor.” Pet. 19, 39.
`Petitioner’s claim construction is erroneous. See supra Section II.B.1.
`Relying on its erroneous claim construction, Petitioner identifies where
`Eggers discloses one or more processors. Pet. 19–20 (citing Ex. 1004,
`APP026, APP0299, Figs. 3, 6). Petitioner’s erroneous claim constructions
`infect the anticipation and obviousness analyses of all of the challenged
`claims. Accordingly, Petitioner has failed to persuade us that Eggers
`discloses or teaches each claim limitation of claims 1–4, 8–19, and 23.
`Similarly, Petitioner has failed to persuade us that claims 5, 20, 24–
`26, 28–32, and 35 would have been obvious over Eggers and Voss. For
`example, Petitioner relies on its anticipation analyses to show the
`obviousness of claims 5 and 20 (which depend directly from claims 1 and
`11, respectively), as well as independent claim 24. See, e.g., Pet. 43, 46, 47.
`Petitioner’s erroneous claim constructions infect all of its challenges to
`claims 5, 20, 24–26, 28–32, and 35 as obvious over Eggers and Voss.
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`Accordingly, Petitioner has failed to persuade us that Eggers and Voss
`render obvious claims 5, 20, 24–26, 28–32, and 35.
`
`III. CONCLUSION
` For the reasons given, Petitioner has not shown a reasonable
`
`likelihood that it would prevail in establishing unpatentability of claims 1–5,
`8–20, 23–26, 28–32, and 35.
`
`IV. ORDER
`In consideration of the foregoing, it is
`ORDERED that Petitioner’s Petition for an inter partes review of
`claims 1–5, 8–20, 23–26, 28–32, and 35 of U.S. Patent No. 5,782,805 is
`denied.
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`IPR2016-01456
`Patent 5,782,805
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`PETITIONER:
`
`Kurt J. Niederluecke
`Adam R. Steinert
`Nikola L. Datzov
`FREDRIKSON & BYRON, P.A.
`kniederluecke@fredlaw.com
`asteinert@fredlaw.com
`ndatzov@fredlaw.com
`
`
`
`PATENT OWNER:
`
`Denis J. Sullivan
`Thomas Hoehner
`BARCLAY DAMON, LLP
`dsullivan@barclaydamon.com
`thoehner@barclaydamon.com
`
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