Paper 12
`Entered: March 13, 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 IPR2016-01718
`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
`
`
`
`
`
`
`
`
`Entered: March 13, 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 IPR2016-01718
`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
`
`
`
`
`
`
`
`
`
`IPR2016-01718
`Patent 8,479,741 B2
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`
`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 2–4, 6–10, 12–17, 19, 20, and 35 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 10, “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 7, 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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`Pet. 1–2; Paper 7, 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
`1, 21–25, 27–31, 33, and 34 of the ’741 patent in a separate petition
`(IPR2016-01714). 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. 10–17. 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). Prelim. Resp. 10–17. 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 never had 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. 38–39. 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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`5
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`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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`
`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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`
`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.”).
`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. In an alternative form, the mask base and the
`curved elongate member are integrally formed, such as by molding or the
`like. Id. at 8:3–6.
`Of the challenged claims in this Petition, claim 2 is the only
`independent claim and is reproduced below:
`2. A patient interface comprising:
`a mask body comprising a molded elastomeric material,
`the mask body comprising two extending nasal pillows and a lip,
`the nasal pillows, in use, resting in a substantially sealed manner
`against corresponding nares of a user;
`a ring engaged with the lip of the mask body;
`
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`
`a plane substantially bisecting the ring, each of the two
`nasal pillows positioned on opposite sides of the plane;
`an elbow rotatably engaged with the ring, the elbow
`comprising a wall, a vent being formed in the wall of the elbow,
`the vent comprising a plurality of holes;
`a tube or conduit extending from the elbow; and
`a headgear comprising side straps that pass down the
`cheeks of the user, a top strap connected to the side straps, a back
`strap extending from at least one of the side straps and the top
`strap, the headgear further comprising molded side arms
`extending away from the ring to connect with the side straps,
`wherein the molded side arms overlap the side straps and the side
`straps are made from a soft foam material, and wherein the side
`straps overlap the molded side arms on a portion of the molded
`side arms that is spaced from the ring, the side straps extending
`away from the ring along the molded side arms;
`the elbow being capable of swiveling in the ring such that
`the tubing can be attached to the top strap or can fall freely;
`in use, gases flow from the tube or conduit, through the
`elbow, through the ring, through the mask body and through the
`pillows;
`wherein the ring is configured to connect to only two
`molded side arms and wherein each of the two molded side arms
`is configured to connect with a single side strap.
`
`
`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. 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
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`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 2–4, 6–10, 12–17, 19, 20, and 35 under
`35 U.S.C. § 103(a)4 on the following grounds (Pet. 3–4):
`
`
`
`
`
`
`4 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
`Stat. 284, 296–07 (2011), took effect on September 16, 2012. Because the
`application for the patent at issue in this proceeding has an effective filing
`date before that date, we refer to the pre-AIA versions of the statute.
`
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`Reference(s)
`
`Claims Challenged
`2–4, 6–9, 12–17, 19, 20,
`and 35
`10
`2–4, 6–9, 12–17, 19, 20,
`and 35
`10
`
`Gunaratnam and Ging5
`Gunaratnam, Ging, and
`Kopala6
`Gunaratnam, Ging,
`McAuley7
`Gunaratnam, Ging,
`McAuley, Kopala
`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. 10–11 (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
`
`
`5 U.S. Patent Publication No. 2003/0196658 A1 (Ex. 1005, “Ging”).
`6 U.S. Patent No. 4,919,128 (Ex. 1025, “Kopala”).
`7 PCT Pub. WO 2005/079726 (Ex. 1034, McAuley).
`
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`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 term “ring”
`(Pet. 11) and the phrase “a plane substantially bisecting the ring, each of the
`two nasal pillows positioned on opposite sides of the plane” (id. at 15),
`which are recited in independent claim 2.
`Patent Owner does not propose any specific construction, but disputes
`Petitioner’s proposed construction of “ring.” Prelim. Resp. 31–36.
`We consider the construction of the term “ring” below.
`
`1. “ring”
`Claim 2 recites “a ring engaged with the lip of the mask body”
`(emphasis added). Petitioner asserts “[t]he claimed “ring” is a structure with
`a generally circular inner passage to enable the claimed rotatable
`engagement with an elbow that fits into the ring, and does not require a
`particular outside shape for the ring.” Pet. 11.
`According to Petitioner, the structure in the ’741 Specification
`corresponding to the “ring” is “mask base” 22. Id. at 12. As discussed
`above, the Specification discloses that mask base 22 is “a ring or sleeve type
`attachment.” Ex. 1002, 6:22–23 (referring to Figs. 4 and 5).
`Petitioner states that the term “ring” does not have a special meaning
`in the applicable field of the ’741 patent, and is not defined in the ’741
`Specification. Pet. 11–12 (citing Ex. 1008, ¶ 27–28). Petitioner argues that
`“nothing within the plain language of the term ‘ring’ or from the intrinsic
`record requires that the outer surface of the ring be of a particular shape.”
`Id. at 13.
`
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`
`Dr. Izuchukwu testifies that a person of ordinary skill would have
`understood that the term “ring” “does not require a particular outside shape.”
`Ex. 1008 ¶ 27. Dr. Izuchukwu also testifies that “although the term ‘ring’
`implies a structure having a circular inner passage, there is no requirement
`that its outer geometry also be circular.” Id. at ¶ 28.
`Patent Owner disagrees with Petitioner’s construction, and argues that
`“the term ring should be given its ordinary meaning, namely ‘a generally
`circular band of material.’” Prelim. Resp. 31. Patent Owner asserts that its
`proposed construction is consistent with the description in the Specification
`of mask base 22 as “a ring or sleeve like type attachment.” Id. at 31–32
`(citing Ex. 1001, 6:22–23). Patent Owner also asserts that its proposed
`construction is supported by standard dictionary definitions. Id. at 32–33
`(citing Ex. 2001, 3; Ex. 2003, 3). Patent Owner further argues that
`Petitioner’s construction is overly broad because it encompasses “[v]irtually
`any structure, regardless of its shape, that includes ‘a generally circular inner
`passage.’” Id. at 33.
`We agree with, and adopt, Patent Owner’s proposed claim
`construction. It is more consistent with the “ring” structure claimed,
`disclosed in the Specification, and supported by the dictionary definitions of
`record. We are aware that the Specification also discloses that mask base 22
`may include additional structures, such as a channel 45 on one side of base
`22 to receive lip 28 on mask body 23, and a semi-tubular projection 29 on
`the other side of base 22 to receive a ball joint connector end to
`accommodate connector 30. Ex. 1002, 6:27–30; 42–46. Various other
`structures also are disclosed for allowing mask body 23 and connector 30 to
`connect to base 22. Id. at 6:30–42. Neither channel 45, semi-tubular
`
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`projection 29, nor the other disclosed structures are recited in claim 2 as part
`of the “ring.” The structure recited in claim 2 is simply a ring.
`For the purposes of this Decision, we determine that the broadest
`reasonable interpretation consistent with the Specification of the term “ring”
`is a generally circular band of material.
`
`2. Other Claim Terms
`We determine that no other explicit claim interpretation is required for
`the purposes of this Decision. See Vivid Techs., Inc. v. Am. Sci. & Eng’g,
`Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).
`
`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
`Claims 2–4, 6–9, 12–17, 19, 20, and 35
`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
`
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`135 drawing figures, and 404 paragraphs of explanatory text. Figure 135 of
`Gunaratnam 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. Figure 6b from Ging is reproduced below.
`
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`Figure 6b from Ging is an exploded view
`of an elbow assembly, mask frame, cushion, and air delivery tube
`
`Ging discloses nasal mask assembly 10, having frame 20, cushion 40,
`and elbow assembly 60 (see Figure 1). A headgear assembly (see Figure 1)
`can be attached to frame 20. C-clip 23 is used to attach elbow 60 to mask
`frame 20.
`Throughout the 55 page Petition, Petitioner provides a detailed clause-
`by-clause analysis of each limitation in the challenged claims along with an
`analysis of why, in Petitioner’s view, it would have been obvious to a person
`of ordinary skill to glean selected features from the disclosures in the cited
`references 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
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`medical technologies, including CPAP machines, ventilators for respiratory
`support, and sleep masks. Id. at ¶¶ 3–4.
`
`a. A Ring Engaged With the Lip Of the Mask Body
`Claim 2 recites “a ring engaged with the lip of the mask body.”
`Patent Owner asserts, among other issues, that this asserted ground of
`unpatentability “fails because neither Gunaratnam nor Ging disclose or make
`obvious the claimed ‘ring.’” Prelim. Resp. 42. We agree and find this issue
`dispositive.
`Petitioner asserts that “Gunaratnam’s Figure 135 design includes ‘a
`ring engaged with the mask body’ inherently, or at a minimum obviously in
`view of Ging, which shows a similar or identical mask body to that in Figure
`135 of Gunaratnam in greater detail.” Pet. 28. According to Petitioner,
`Ging discloses a “ring” in the form of mask frame 20, in that mask frame 20
`is a structure that includes a circular inner passage that is configured to
`receive an elbow. Id. (citing Ex. 1005, Fig. 6b). Additionally, Petitioner
`asserts Ging discloses that the central portion of mask frame 20 is engaged
`with mask cushion 40. Id. Petitioner concludes that mask cushion 40 “is
`engaged with a mask body as claimed. Id. (citing Ex. 1005).
`Regarding the requirement in claim 2 that the “ring” is “engaged with
`the lip of the mask body,” Petitioner asserts this feature is disclosed by
`Gunaratnam alone or in combination with Ging. Id. at 29 (citing Pet. 24–27
`for the discussion of the lip structure in Gunaratnam and Ging).
`Petitioner’s argument is based on Petitioner’s proposed construction
`of “ring,” which we have rejected in our claim construction discussion
`above. As we have determined for purposes of this decision, the broadest
`reasonable interpretation consistent with the Specification of the term “ring”
`
`17
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`IPR2016-01718
`Patent 8,479,741 B2
`
`is a generally circular band of material. The claimed ring is not any
`structure that includes a circular inner passage.
`Patent Owner argues that the mask frames in Gunaratnam and Ging
`are not a generally circular band of material and thus are not a “ring.”
`Prelim. Resp. 42–45. We agree with, and adopt, Patent Owner’s argument.
`As Patent Owner argues, the mask frame in the Gunaratnam/Ging
`combination is “oblong” or “horseshoe-shaped”—i.e., it “includes upper and
`lower peripheral edges that form two surfaces that are generally parallel with
`each other across the length of the frame”—and thus is not a generally
`circular band of material as required under our claim interpretation of “ring.”
`Id.
`
`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.
`“Ring” is an ordinary, simple English word, the meaning of which is
`clear and unquestionable. It means exactly what it says. See Chef Am., Inc.
`v. Lamb-Weston, Inc., 358 F.3d 1371, 1373 (Fed. Cir. 2004). The claim
`construction inquiry begins and ends in all cases with the actual words of the
`claim. Renishaw PLC v. Marposs Societa' per Azioni, 158 F.3d 1243, 1248
`(Fed. Cir. 1998) (citations omitted). The intrinsic evidence, and, in some
`cases, the extrinsic evidence, can shed light on the meaning of the terms
`recited in a claim, either by confirming the ordinary meaning of the claim
`terms or by providing special meaning for claim terms. Id. (citations
`omitted). As Petitioner acknowledges, the term “ring” “does not have a
`special meaning in the applicable field of the ’741 patent, and is not defined
`in the ’741 Specification. Pet. 11. The resulting claim interpretation must,
`
`18
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`IPR2016-01718
`Patent 8,479,741 B2
`
`in the end, accord with the words chosen by the patentee to stake out the
`boundary of the claimed property. Renishaw, 158 F.3d at 1248. Ultimately,
`the interpretation to be given a term can be determined and confirmed only
`with a full understanding of what the inventors actually invented and
`intended to envelop with the claim. Id. at 1250. The construction that stays
`true to the claim language and most naturally aligns with the patent’s
`description of the invention will be, in the end, the correct construction. Id.
`Claim 2 simply recites a ring. Dependent claim 3 adds the limitation
`that the ring comprises a channel for receiving the lip of the mask body.
`Dependent claim 35 recites that the ring is configured to releasably connect
`to the two molded side arms. These additional limitations indicate that the
`structure recited in claim 2, a ring, is just that, a generally circular band of
`material. The structures relied on by Petitioner from Gunaratnam and Ging
`admittedly have a generally circular inner passage. That alone, however,
`does not establish that these structures are a generally circular band of
`material.
`Neither curved, rectangular frame 20 of Ging nor the horseshoe-
`shaped frame in Gunaratnam is a generally circular band of material.
`Moreover, Petitioner’s proposed ground of unpatentability under § 103 is
`based on a combination of Gunaratnam and Ging. Pet. 4, 20. Petitioner
`asserts that the “ring” element is “disclosed by Gunaratnam alone, or in
`combination with Ging.” Pet. 29. We determined that neither Gunaratnam
`nor Ging disclose a ring. In asserting the combination of Gunaratnam and
`Ging, however, Petitioner offers no rationale in the Petition in its Ground 1
`analysis as to why a person of ordinary skill would modify Gunaratnam’s
`frame with the frame in Ging. In determining whether there would have
`
`19
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`IPR2016-01718
`Patent 8,479,741 B2
`
`been a motivation to combine prior art references to arrive at the claimed
`invention, it is insufficient to simply conclude the combination would have
`been obvious without identifying any reason why a person of skill in the art
`would have made the combination. Metalcraft of Mayville, Inc. v. The Toro
`Co., No. 2016-2433, 2017 WL 631749, at *4 (Fed. Cir. Feb. 16, 2017).
`“[W]e cannot allow hindsight bias to be the thread that stitches together
`prior art patches into something that is the claimed invention.” Id. at *5
`In general, taken out of a specific context, modifying the shape or
`structure of an element to be a “ring” 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. See Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355, 1362 (Fed. Cir.
`2016) (“[R]eferences to ‘common sense’ . . . cannot be used as a wholesale
`substitute for reasoned analysis and evidentiary support . . . .”). The
`evidence on which Petitioner relies does not disclose or suggest the “ring”
`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
`
`20
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`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.
`For the reasons discussed above, we determine that Petitioner has not
`established a reasonable likelihood of prevailing on its challenge to
`independent claim 2 as obvious over Gunaratnam and Ging. Petitioner’s
`arguments and evidence with respect to dependent claims 3, 4, 6–9, 12–17,
`19, 20, and 35 do not remedy the deficiencies with respect to independent
`claim 2. Accordingly, we also determine that Petitioner has not established
`a reasonable likelihood of prevailing on its challenges to those dependent
`claims.
`
`2. Asserted Obviousness over Gunaratnam, Ging, and Kopala
`Petitioner asserts claim 10, dependent from claim 2, would have been
`obvious based on Gunaratnam, Ging and Kopala. Pet. 51–53. K
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