Paper 12
`Entered: March 10, 2017
`
`
`Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`RESMED LIMITED, RESMED INC., AND RESMED CORP,
`Petitioner,
`v.
`FISHER & PAYKEL HEALTHCARE LIMITED,
`Patent Owner.
`_______________
`
`Case IPR2016-01714
`Patent 8,479,741 B2
`_______________
`
`
`
`Before RICHARD E. RICE, BARRY L. GROSSMAN, and
`JAMES J. MAYBERRY, Administrative Patent Judges.
`
`GROSSMAN, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`

`

`IPR2016-01714
`Patent 8,479,741 B2
`
`
`I. INTRODUCTION
`A. Background
`ResMed Limited, ResMed Inc., and ResMed Corp (collectively,
`“Petitioner”) filed a Petition (Paper 4, “Pet.”) requesting an inter partes
`review of claims 1, 21–25, 27–31, 33, and 34 of U.S. Patent No.
`8,479,741 B2 (Ex. 1001, “the ’741 patent”). Petitioner supported the
`Petition with a 142 page declaration from John Izuchukwu, Ph.D., P.E.
`(Ex. 1008). Fisher & Paykel Healthcare Limited (“Patent Owner”) filed a
`Preliminary Response (Paper 8, “Prelim. Resp.”).
`Under 35 U.S.C. § 314, an inter partes review may not be instituted
`“unless . . . there is a reasonable likelihood that the petitioner would prevail
`with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C.
`§ 314(a). The Board acts on behalf of the Director. 37 C.F.R. § 42.4(a).
`Upon considering the Petition and the Preliminary Response, 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.
`
`B. Related Proceedings
`The parties identify a related federal district court case involving the
`’741 Patent: Fisher & Paykel Healthcare Ltd. v. ResMed Corp., Case No.
`3:16-cv-02068-GPC-WVG (S.D. Cal.). Pet. 1; Paper 8, 1–2.
`The parties also inform us that Petitioner filed and then voluntarily
`dismissed, without prejudice, a declaratory judgment action challenging the
`validity of the ’741 Patent (ResMed Inc. v. Fisher & Paykel Healthcare
`Corporation Limited, Case No. 3:16-cv-02072-JAH-MDD (S.D. Cal.).
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`IPR2016-01714
`Patent 8,479,741 B2
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`Pet. 1–2; Paper 8, 1; see Ex. 1046 (Petitioner’s Notice of Voluntary
`Dismissal Without Prejudice).
`There are several pending inter partes reviews between the parties
`related to the ’741 patent. Petitioner is seeking inter partes review of claims
`2–4, 6–10, 12–17, 19–20, and 35 of the ’741 patent in a separate petition
`(IPR2016-01718). The ’741 patent is a continuation of the application that
`matured into Patent No. 8,443,807 (“the ’807 patent”). Petitioner also is
`seeking inter partes review of the claims in the ’807 patent (IPR2016-01726;
`01734).
`Petitioner also seeks inter partes review of several patents related to
`the general subject matter of the ’741 patent, including IPR2016-01716;
`01717; 01719; 01723; 01724; 01725; 01727; 01729; 01730; 01731; and
`01735.
`
`C. Statutory Bar Under 35 U.S.C. § 315(a)(1)
`Patent Owner argues that the Petition is barred under 35 U.S.C.
`§ 315(a)(1) because Petitioner filed a declaratory judgment action for
`invalidity of the ’741 patent on August 16, 2016, and before filing the instant
`Petition. Prelim. Resp. 8–16. That action, however, was voluntarily
`dismissed without prejudice on August 18, 2016, well before the instant
`Petition was filed. Pet. 1–2 (citing Ex. 1046). As such, Patent Owner’s
`argument fails because prior Board decisions have consistently interpreted
`35 U.S.C. § 315(a)(1) as not barring inter partes review if the previously
`filed civil action was dismissed without prejudice, which is the case here.
`See, e.g., Microsoft Corp. v. Parallel Networks Licensing, LLC, Case
`IPR2015-00486, slip op. at 6–7 (PTAB Jul. 15, 2015) (Paper 10); Oracle
`
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`
`Corp. v. Click-to-Call Techs. LP, Case IPR2013-00312, slip op. at 12–13
`(PTAB Oct. 28, 2014) (Paper 52).
`Patent Owner now challenges the Board’s consistent interpretation of
`35 U.S.C. § 315(a)(1). But Patent’s Owner’s arguments are in direct
`contrast to a decision in the related district court action, which relied upon
`the Board’s consistent interpretation of 35 U.S.C. § 315(a)(1) in deciding
`whether to impose a stay pending our resolution of this proceeding.
`Ex. 3001. There, Patent Owner argued the statutory bar as a reason the court
`should not impose a stay. Id. at 3. Noting that Petitioner’s declaratory
`judgment action was voluntarily dismissed “without prejudice” prior to the
`instant Petition being filed, the district court held that “the effect of a
`voluntary dismissal w/out prejudice is to render the prior action a nullity”
`such that it is “treated as if it was not ‘filed’ at all” and thus “cannot give rise
`to a statutory bar under 35 U.S.C. § 315(a)(1).” Id. at 4. In doing so, the
`district court relied upon, and expressly adopted, the reasoning of prior
`Board decisions that came to a similar conclusion.1 Id. Moreover, the
`district court in the related action noted that “at least eight Circuits had
`likewise determined that a dismissal without prejudice makes the situation as
`if the action as had never been filed.”2 Id.
`
`
`1 The district court may have recognized that “an agency’s interpretation of
`the statute under which it operates is entitled to some
`deference.” Southeastern Community College v. Davis, 442 U.S. 397, 411
`(1979).
`2 See, e.g., Holloway v. U.S., 60 Fed. Cl. 254, 261 (2004), aff’d 143 F. App’x
`313 (Fed. Cir. 2005) (treating civil action dismissed without prejudice “as if
`it never existed.”); Bonneville Assoc., Ltd. P’ship v. Barram, 165 F.3d 1360,
`1364 (Fed. Cir. 1999) (“The rule in the federal courts is that ‘[t]he effect of a
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`
`We see no reason to deviate from our prior decisions interpreting 35
`U.S.C. § 315(a)(1) or the district court’s concurring analysis of this issue,
`and Patent Owner’s arguments to the contrary do not persuade us
`otherwise. As such, we hold that the Petition is not barred by 35 U.S.C.
`§ 315(a)(1).
`
`D. Prior Consideration of Arguments under § 325(d)
`Under 35 U.S.C. § 325(d), the Board, acting on behalf of the Director,
`may take into account whether, and reject a petition because, the same or
`substantially the same prior art or arguments previously were presented to
`the Office. Patent Owner argues that the Board should exercise its discretion
`under § 325(d) and deny institution of a trial because Gunaratnam was
`expressly considered by the PTO during prosecution of the ’741 patent.
`Prelim. Resp. 30. We recognize that Gunaratnam was considered and
`applied by the Examiner during the PTO proceedings leading to issuance of
`the ’741 patent. The specific combination of references asserted in the
`Petition, the evidence provided by the Declaration testimony of Dr.
`Izuchukwu, and the specific factual issues raised by the Petition and newly
`cited references, however, were not previously considered. Accordingly, we
`do not reject or deny the Petition under § 325(d).
`
`E. The ’741 Patent
`In an effort to treat obstructive sleep apnea, a technique known as
`Continuous Positive Airway Pressure (CPAP) was devised to supply
`
`
`voluntary dismissal without prejudice pursuant to Rule 41(a) is to render the
`proceedings a nullity and leave the parties as if the action had never been
`brought.’”) (citations and some internal quotations omitted).
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`Patent 8,479,741 B2
`
`pressurized air to a patient, usually through a nasal mask. Ex. 1002, 1:39–
`43. The pressurized air supplied to the patient “acts as a pneumatic splint”
`(id. at 1:48) and thus assists the muscles to keep the patient’s airway open
`(id. at 1:43–45). The ’741 patent discloses that prior art devices provide the
`pressurized air to “a nose, full face, nose and mouth, or oral mask” that is
`sealingly engaged to a patient’s face by a harness or other headgear.
`Id. at 1:50–54.
`The ’741 patent relates to a headgear and respiratory mask that
`provides a nasal interface for the supply of air from a CPAP machine. Id. at
`1:16–18.
`Figures 2 and 3 of the ’741 patent, as annotated by Petitioner (Pet. 6),
`are reproduced below.
`
`Figures 2 and 3 of the ’741 patent as annotated by Petitioner.
`Figure 2 is a perspective view of a nasal mask and headgear.
`Figure 3 is an exploded view of the nasal mask and headgear of Figure 2.
`
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`Patent 8,479,741 B2
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`
`The annotated figures above depict a patient interface embodiment
`including mask 2 and headgear 21. Mask 2 includes mask base 22 (see Fig.
`5 below) and mask body 23 (see Fig. 7 below).
`
`
`
`
`
` Mask body 23
`
`
`
` Mask base 22
`
`As shown in Figure 7, mask body 23 includes nasal pillows 24, 25.
`Ex. 1001, 5:28–36. Nasal pillows 24, 25 are frustoconical in shape and in
`use rest against a patient’s nares,3 to substantially seal the patient’s nares.
`Ex. 1001, 5:32–34; Figs. 6, 7. As shown in Figure 5, mask base 22 is a ring
`or sleeve type attachment. Id. at 6:22–23. One end of swivel elbow
`connector 30 is connected to one side of mask base 22 (id. at 6:42–46), and
`mask body 23 is connected to the other side of mask base 22 (id. at 5:34–
`36). The other end of connector 30 is attached to tube 31, which connects to
`a source of pressurized air. Id. at 6:47–50; see Figs. 1 and 2. In use, air
`flows through tube 31, connector 30, mask base 22 and mask body 23, and
`exits from nasal pillows 24, 25 through outlets 26, 27 into the patient’s
`nostrils.
`
`
`3 Nares also are referred to as nostrils. See Ex. 1002, 6:12–13 (“This allows
`easier insertion of the pillow 24 into a user’s nostrils . . . .”).
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`Patent 8,479,741 B2
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`
`Mask 2 and its related components, as described above, are held in
`place on the patient by headgear 21. As shown in Figures 2 and 3, headgear
`21 includes headgear straps 35, 36, 37, 38 and substantially curved, rigid,
`elongate member 34. Id. at 6:61–65. Elongate member 34 of headgear 21
`includes central section 42 and contoured side arms 41, 54. Id. at 7:8–10.
`Preferably the side arms of curved member 34 are integrally molded with
`central section 42. Id. at 21–22; see also 7:53–54 (“The central section 42 is
`a half circle that is integrally moulded with the side arms 41, 54.”).
`Alternatively, left and right side arms 41, 54 may be “attached,”
`respectively, to each side of base 22. Id. at 8:29–30.
`A substantial length of each of side arms 41 and 54 overlaps and is
`attached to respective side straps 37, 38. Side straps 37, 38 are made from a
`soft foam type material to make the headgear more comfortable, whereas
`curved member 34 and side arms 41, 54 are made from a more rigid material
`to provide stability to headgear 21 and nasal mask 2. See generally
`id. at 7:8–18.
`When everything is assembled, elongate member 34 supports mask
`base 22 and mask body 23 such that pillows 24, 25 are positioned properly
`against the patient’s nares.
`Of the challenged claims in this Petition, claim 1 is the only
`independent claim and is reproduced below:
`1. A patient interface comprising:
`a mask body comprising a substantially flexible plastics
`material, the mask body comprising a first nasal pillow and a
`second nasal pillow, the first nasal pillow and the second nasal
`pillow being angled toward one another, the first nasal pillow
`comprising a first generally conical portion and a first generally
`cylindrical portion, the second nasal pillow comprising a second
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`IPR2016-01714
`Patent 8,479,741 B2
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`
`generally conical portion and a second generally cylindrical
`portion, the first nasal pillow comprising a first outlet opening
`and the second nasal pillow comprising a second outlet opening;
`the mask body also comprising a mask body inlet opening,
`the mask body inlet opening being spaced apart form the first
`outlet opening and the second outlet opening, the mask body inlet
`opening defined within a generally tubular portion of the mask
`body;
`
`a mask base comprising a plastics material that is less
`flexible than the substantially flexible plastics material of the
`mask body, the mask base comprising a housing that defines a
`through passage, a proximal portion of the through passage being
`surrounded by a recess, the recess of the mask base receiving the
`generally tubular portion of the mask body that defines the mask
`body inlet opening;
`a first side arm removably connected to the mask base and
`a second side arm removably connected to the mask base, the
`first side arm being three dimensionally molded and having a
`varying cross-sectional thickness and the second side arm being
`three dimensionally molded and having a varying cross-sectional
`thickness; and
`headgear comprising a first side strap and a second side
`strap, the first side strap and the second side strap comprising a
`composite foam material, the first side arm overlapping with and
`secured to the first side strap, the second side arm overlapping
`with and secured to the second side strap, the first side strap
`extending only partially along the first side arm, the second side
`strap extending only partially along the second side arm.
`F. Prosecution History
`During prosecution, the Examiner rejected independent application
`claim 31, which became patent claim 2, under 35 U.S.C. §103 as
`unpatentable over U.S. Patent No. 7,210,481 (Ex. 2006, “Lovell”) and U.S.
`Patent Publication No. 2004/0226566 A1 (Ex. 1004, “Gunaratnam”).
`Ex. 1010, 466–471. We note that independent patent claim 2 is not involved
`in this proceeding. It is, however, involved in the related proceeding,
`
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`IPR2016-01714
`Patent 8,479,741 B2
`
`IPR2016-01718. Concerning Gunaratnam, the Examiner stated that
`Gunaratnam “discloses another nasal mask that incorporates a pair of arms
`in numerous embodiments (see elements 608 and the unnumbered arms in
`Figure 135) so as to enhance the fit between the mask and face of a user by
`adding rigidity between the straps and mask.” Id. at 468. Independent
`application claim 30, which became patent claim 1, was rejected only on the
`non-statutory ground of obviousness-type double patenting based on
`pending claims in its parent application, which matured into the ’807 patent.
`Id. at 470.
`Following a substantive amendment to application claim 31 (patent
`claim 2) (id. at 493–501), the application was allowed by the Examiner
`(id. at 513–515). The Examiner’s reason for allowance was:
`none of the prior art of record including the device defined by the
`patented claims of Application 12/307,993 [now the parent ’807
`patent], alone or in combination, teach a patient interface
`including the feature of a [sic] first and second side arms that are
`three dimensionally molded and having a varying cross-sectional
`thickness that overlap with a first and second side strap of
`headgear, as claimed.
`Ex. 1010, 514.
`
`G. The Asserted Grounds
`Petitioner challenges claims 1, 21–25, 27–31, 33, and 34 on the
`following grounds (Pet. 3–4):
`
`Reference(s)
`
`Gunaratnam and Ging4
`
`Basis
`
`§ 103(a)
`
`Claims Challenged
`1, 21–24, 27–31, 33, and
`34
`
`
`4 U.S. Patent Publication No. 2003/0196658 A1 (Ex. 1005, “Ging”).
`
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`IPR2016-01714
`Patent 8,479,741 B2
`
`
`Reference(s)
`Gunaratnam, Ging, and
`Kopala5
`
`Basis
`
`Claims Challenged
`
`§ 103(a)
`
`25
`
`II. ANALYSIS
`A. Level of Skill in the Art
`Petitioner asserts that a person of ordinary skill in the art “would have
`had a bachelor’s degree in mechanical engineering, biomedical engineering,
`or a related discipline, and at least five years of relevant product design
`experience in the field of medical devices or respiratory therapy, or an
`equivalent advanced education.” Pet. 10 (citing Ex. 1008 ¶ 17). Patent
`Owner does not propose a level of skill. We adopt Petitioner’s proposed
`level of skill for the purposes of our Decision.
`
`B. Claim Construction
`In an inter partes review, the Board gives claim terms in an unexpired
`patent their broadest reasonable interpretation in light of the specification of
`the patent in which they appear. 37 C.F.R. § 42.100(b); see Cuozzo Speed
`Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016). Under that standard, a
`claim term generally is given its ordinary and customary meaning, as would
`be understood by one of ordinary skill in the art in the context of the entire
`disclosure. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
`2007).
`Petitioner proposes a specific construction for the phrase “the mask
`base comprising a housing that defines a through passage,” which is in
`independent claim 1. Patent Owner does not propose any specific
`construction of the claim terms.
`
`
`5 U.S. Patent No. 4,919,128 (Ex. 1025, “Kopala”).
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`
`We determine that a specific construction of the challenged claims is
`unnecessary for purposes of this Decision.
`
`C. Asserted Obviousness
`A claim is unpatentable for obviousness under 35 U.S.C. § 103(a) if
`the differences between the subject matter sought to be patented and the
`prior art are such that the subject matter as a whole would have been obvious
`at the time the invention was made to a person having ordinary skill in the
`art to which the subject matter pertains. See KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398, 406 (2007). 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., secondary considerations. See Graham v.
`John Deere Co., 383 U.S. 1, 17–18 (1966).
`
`1. Asserted Obviousness over
`Gunaratnam and Ging
`Gunaratnam is a published patent application relating to a nasal
`assembly patient interface for a mask used in treating sleep apnea. Ex. 1004,
`¶ 2. It is a comprehensive disclosure, including 109 pages of drawings, with
`135 drawing figures, and 404 paragraphs of explanatory text.
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`Patent 8,479,741 B2
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`
`Figure 135 of Gunaratnam, as annotated by Petitioner (Pet. 16), is
`reproduced below.
`
`
`Figure 135 of Gunaratnam depicts a headgear and respiratory mask
`that provides a nasal interface for the supply of air from a CPAP machine.
`Id. ¶ 403.
`Ging also is a published patent application that relates to a headgear
`and respiratory mask that provides a nasal interface for the supply of air
`from a CPAP machine. Petitioner provides the following annotated figures
`from Ging.
`
`
`
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`Patent 8,479,741 B2
`
`Pet. 18.
`Throughout the 53 page Petition, Petitioner provides a detailed clause-
`by-clause analysis of each limitation in the challenged claims along with an
`analysis of why it would have been obvious to a person of ordinary skill to
`glean selected features from the disclosures in Gunaratnam and Ging and
`combine them. Throughout its analysis, Petitioner relies on the Declaration
`testimony of Dr. John Izuchukwu. Dr. Izuchukwu earned a Ph.D. in
`Industrial and Mechanical Engineering and an MBA degree. Ex. 1008 ¶ 2.
`He has extensive experience in the development of various medical
`technologies, including CPAP machines, ventilators for respiratory support,
`and sleep masks. Id. at ¶¶ 3–4.
`
`a. Side Arms Removably Connected To the Mask Base
`Patent Owner asserts, among other issues, that Gunaratnam and Ging
`do not teach or make obvious “a first side arm removably connected to the
`mask base and a second side arm removably connected to the mask base” as
`required by claim 1. Prelim. Resp. 44. We agree and find this issue
`dispositive.
`As discussed above, and as shown in the annotated Figures 2 and 3
`reproduced above, elongate member 34 of headgear 21 includes central
`section 42 and contoured side arms 41, 54. Ex. 1002, 7:8–10. In a preferred
`embodiment, the side arms of curved member 34 are integrally molded with
`central section 42. Id. at 7:21–22; see also id. at 7:53–54 (“The central
`section 42 is a half circle that is integrally moulded with the side arms 41,
`54.”). Elongate member 34 is not part of mask base 22; it is part of headgear
`21. Thus, in this preferred embodiment, the side arms are connected
`indirectly to mask base 22. The ’741 patent also discloses an alternate
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`embodiment wherein left and right side arms 41, 54 may be “attached,”
`respectively, to each side of base 22. Id. at 8:29–30.
`Petitioner asserts that “Gunaratnam’s Figure 135 embodiment
`includes side arms described as yoke members (e.g., yokes 608 illustrated in
`Figures 109 through 135) that are removably connected to the base (‘frame’)
`to which the cushion attaches.” Pet. 33. Figure 135 from Gunaratnam, as
`annotated by Petitioner, is reproduced below.
`
`
`Figure 135 from Gunaratnam, as annotated by Petitioner,
`showing a mask and headgear assembly, with a yoke/side arm
`
`Gunaratnam discloses that the headgear assembly in Figure 135 shows
`a frame that includes an elbow connector on the front of the mask frame and
`opposite apertures or first connector portions on the sides, each of which is
`provided with seal ring 500. Seal ring 500 includes a separate or integral
`plug to close unused apertures or connector portions of the frame, for
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`example, when the elbow connector is positioned on the front of the mask
`frame as shown in Figure 135. Ex. 1004 ¶ 403.
`According to Petitioner, the removable nature of the side arms in
`Gunaratnam’s Figure 135 is described in connection with Gunaratnam’s
`“Seventh Illustrated Embodiment.” Pet. 33 (citing Ex. 1004 ¶ 375). The
`seventh embodiment is illustrated in Figures 108–113, and described in the
`associated text. Ex. 1004 ¶¶ 376–381. Petitioner asserts this embodiment
`discloses that frame 616 is sealed with a plug 622. Pet. 34 (citing Ex. 1004,
`Figs. 108, 110, ¶¶ 376–381). Petitioner states that “[y]oke structures 608
`may be removed from the frame by first removing either the plug 622 or the
`swivel elbow 612 (depending on which side the yoke 608 is being removed
`from), then removing seal ring 614 to access yoke ring 610, which secures
`the yoke to the frame.” Id. Petitioner concludes that because the swivel
`elbow in Figure 135 is on the front of the frame, the seal rings can be
`removed and the yokes disconnected from the mask while the elbow remains
`engaged with the frame, and while the frame remains engaged with the mask
`body (e.g., with nozzle assembly 18). Id. (citing Ex. 1008 ¶ 77).
`Dr. Izuchukwu testifies that in his opinion a skilled artisan “would
`have understood that the yokes in Figure 135 were similarly removably
`attachable, or at least that the Figure 135 embodiment could have been
`designed as shown with respect to Figure 108–113.” Ex. 1008 ¶ 77
`(emphasis added). The reason “why” a skilled artisan would make this
`modification, according to Dr. Izuchukwu, is “so that a user could replace or
`clean a portion of the patient interface.” Id. Dr. Izuchukwu does not
`provide any persuasive facts or analysis as to why a patient interface cannot
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`be removed for cleaning without also removing the side arms of the
`headgear, or how removing the side arms facilitates cleaning.
`Patent Owner takes a different view of the evidence on which
`Petitioner relies. According to Patent Owner, “Gunaratnam does not
`describe that the yokes of Figure 135 are removable from the frame.”
`Prelim. Resp. 44. It is Patent Owner’s position that Gunaratnam’s Figure
`135 shows that the side yokes are formed as a single piece with the frame.
`Id.
`
`We agree with Patent Owner’s analysis. Petitioner bears the burden
`of establishing a reasonable likelihood of unpatentability of one or more
`claims. 37 C.F.R. § 42.108(c). Here, the evidence on which Petitioner relies
`does not meet this burden.
`The evidence on which Petitioner relies allows a connector and air
`delivery tube to be repositioned into different openings, with the unused
`openings sealed (plugged). Petitioner has not directed us to persuasive
`evidence that the seal rings and associated plugs can be removed and the
`yokes disconnected from the mask while the elbow remains engaged with the
`frame, and while the frame remains engaged with the mask body (e.g., with
`nozzle assembly 18), as argued (Pet. 34). Rather, as Patent Owner argues,
`the side arms or yokes in Figure 135 are formed as a single piece with the
`frame. Prelim. Resp. 44.
`Nor are we persuaded by Dr. Izuchukwu’s testimony that a skilled
`person would have understood that the yoke in Figure 135 of Gunaratnam
`could have been designed as shown with respect to Figure 108–113. See
`Ex. 1008 ¶ 77. This testimony is insufficient to show that a person of
`ordinary skill would have been motivated to do so. See also InTouch Techs.,
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`Inc. v. VGO Comms., Inc., 751 F.3d 1327, 1352 (Fed. Cir. 2014)
`(determining that an expert witness had “succumbed to hindsight bias in her
`obviousness analysis” in testimony that “primarily consisted of conclusory
`references to her belief that one of ordinary skill in the art could combine
`[the] references, not that [the person skilled in the art] would have been
`motivated to do so.”).
`Moreover, Dr. Izuchukwu’s testimony that Figures 108–113 provide
`the details of how the side arms or yoke in Figure 135 could be configured to
`connect and disconnect from the frame is conclusory and unpersuasive. See
`Ex. 1008 ¶ 77. In particular, Dr. Izuchukwu fails to reconcile the differences
`between the embodiments depicted in the figures. As shown in Figure 108,
`one end of cushion assembly 604 is provided with plug 622 and the other
`end is provided with swivel elbow 612. Ex. 1004 ¶ 377, Fig. 108. Figure
`109 shows that yokes 608 include yoke rings 610. Id. ¶ 379. As depicted in
`Figure 109, yoke rings 610 connect yokes 608 to the tubular shaped ends of
`cushion assembly 604. In the Figure 135 embodiment, however, the side
`arms are formed as a single piece with the mask frame, the elbow connects
`in front of the mask frame, and the mask frame lacks a tubular shape that
`would accommodate attachment of the side arms in the manner depicted in
`Figures 108–113. See Prelim. Resp. 44–45.
`Figure 111 of Gunaratnam, reproduced below, is included in the
`seventh embodiment (Figures 108–113) in Gunaratnam, on which Petitioner
`(Pet. 33–34) and Dr. Izuchukwu (Ex. 1008 ¶ 77) rely.
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`FIG. 111 is an exploded perspective view
`showing the interface between the seal ring and elbow swivel
`As shown in Figure 111, the seal ring is removed, allowing the elbow
`swivel to be repositioned while yoke 608 remains connected to nasal cushion
`assembly 604. Petitioner has not directed us to persuasive evidence that,
`based on the disclosure of Gunaratnam’s seventh embodiment, it would have
`been obvious to make the side arms or yoke in Gunaratnam’s Figure 135
`removably connected to the mask base, as recited in claim 1.
`Based on the evidence and arguments presented, we are not persuaded
`that the yoke connections depicted in Figures 108–113 teach or suggest a
`manner of connecting and disconnecting the side arms in Figure 135.
`Accordingly, it is not reasonably likely, based on the record before us, that
`Petitioner will prevail in its assertion that independent claim 1, and claims
`21–24, 27– 31, 33, and 34, which depend from claim 1, are unpatentable
`over Gunaratnam and Ging.
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`In general, taken out of a specific context, making an element
`“removably connected” to another element may seem like a simple, common
`sense modification that would have been obvious to a person of ordinary
`skill and creativity. We do not abandon our common sense in considering
`obviousness of claimed inventions. KSR Int’l v. Teleflex Inc., 550 U.S. 398,
`421 (2007) (“Rigid preventative rules that deny factfinders recourse to
`common sense, however, are neither necessary under our case law nor
`consistent with it.”). Our decision is based on the evidence and arguments
`before us. The evidence on which Petitioner relies does not disclose or
`suggest the “removably connected” side arms as recited in the challenged
`claims. In the highly developed field of patient interfaces and nasal masks
`for the supply of air to a patient, small differences may produce a
`nonobvious advance. See Outside the Box Innovations, LLC v. Travel
`Caddy, Inc., 695 F.3d 1285, 1298 (Fed. Cir. 2012). See also Unigene Labs.,
`Inc. v. Apotex, Inc., 655 F.3d 1352, 1360–61 (Fed.Cir.2011) (providing that
`the inquiry under § 103 is not whether the claimed invention is “sufficiently
`simple to appear obvious to judges after the discovery is finally made”).
`“The emphasis on nonobviousness is one of inquiry, not quality” of the
`advance. Graham v. John Deere Co., 383 U.S. 1, 17 (1966). While “the
`common sense of those skilled in the art demonstrates why some
`combinations would have been obvious where others would not,” (Leapfrog
`Enters., Inc. v. Fisher–Price, Inc., 485 F.3d 1157, 1161 (Fed.Cir.2007)), the
`determination is made not after observing what the inventor actually did, but
`in light of the state of the art before the invention was made. Outside the
`Box Innovations, 695 F.3d at 1298.
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`2. Asserted Obviousness over Gunaratnam, Ging, and Kopala
`Petitioner asserts claim 25, dependent from claim 1, would have been
`obvious based on Gunaratnam, Ging and Kopala. Pet. 51–53. Kopala is
`cited for the asserted disclosure of a nasal pillow patient interface with an
`inner profile offset inwardly relative to its outer profile. Id. at 51. Kopala is
`not cited for, and does not cure, the deficiencies discussed above in the
`Gunaratnam reference concerning side arms removably connected to the
`mask base. Accordingly, it is not reasonably likely, based on the record
`before us, that Petitioner will prevail with respect to claim 25
`
`III. CONCLUSION
`For the reasons give, Petitioner has not shown a reasonable likelihood
`that it would prevail in establishing unpatentability of at least one of claims
`1, 21–25, 27–31, 33, and 34 of the ’741 patent.
`
`IV. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that Petitioner’s Petition for an inter partes review of
`claims 1, 21–25, 27–31, 33, and 34 of U.S. Patent No. 8,479,741 B2 is
`denied.
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`PETITIONER:
`Michael Hawkins
`hawkins@fr.com
`Michael Kane
`kane@fr.com
`Stephen Schaefer
`schaefer@fr.com
`Christopher Hoff
`hoff@fr.com
`Andrew Dommer
`dommer@fr.com
`
`PATENT OWNER:
`Brenton Babcock
`2brb@knobble.com
`Joseph Jennings
`2jfj@knobble.com
`
`
`
`