UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`RESMED LIMITED, RESMED, INC., and RESMED CORP.,
`Petitioners,
`
`v.
`
`FISHER & PAYKEL HEALTHCARE LIMITED,
`Patent Owner.
`__________
`
`Case IPR2016-01716 (Patent 8,550,072)
`Case IPR2016-01717 (Patent 8,550,072)
`Case IPR2016-01719 (Patent 6,398,197)
`Case IPR2016-01725 (Patent 7,111,624)
`Case IPR2016-01727 (Patent 7,111,624)
`Case IPR2016-01729 (Patent 8,091,547)
`Case IPR2016-01730 (Patent 8,091,547)
`Case IPR2016-01731 (Patent 8,091,547)
`
`____________
`
`Record of Oral Hearing
`Held: December 6, 2017
`____________
`
`
`
`
`
`Before HYUN J. JUNG, CARL M. DEFRANCO, and MICHAEL L.
`WOODS, Administrative Patent Judges.
`
`
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`RESMED LIMITED, RESMED, INC., and RESMED CORP.,
`Petitioners,
`
`v.
`
`FISHER & PAYKEL HEALTHCARE LIMITED,
`Patent Owner.
`__________
`
`Case IPR2016-01716 (Patent 8,550,072)
`Case IPR2016-01717 (Patent 8,550,072)
`Case IPR2016-01719 (Patent 6,398,197)
`Case IPR2016-01725 (Patent 7,111,624)
`Case IPR2016-01727 (Patent 7,111,624)
`Case IPR2016-01729 (Patent 8,091,547)
`Case IPR2016-01730 (Patent 8,091,547)
`Case IPR2016-01731 (Patent 8,091,547)
`
`____________
`
`Record of Oral Hearing
`Held: December 6, 2017
`____________
`
`
`
`
`
`Before HYUN J. JUNG, CARL M. DEFRANCO, and MICHAEL L.
`WOODS, Administrative Patent Judges.
`
`
`
`
`IPR2016-01716, 01717 (Patent 8,550,072)
`IPR2016-01719 (Patent 6,398,197)
`IPR2016-01725, 01727 (Patent 7,111,624)
`IPR2016-01729, 01730, 01731 (Patent 8,091,547)
`
`
`
`
`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER:
`
`
`FRANK SCHERKENBACH, ESQUIRE
`Fish & Richardson P.C.
`One Marina Park Drive
`Boston, MA 02210
`
`
`
`ON BEHALF OF THE PATENT OWNER:
`
`
`JOSEPH F. JENNINGS, ESQUIRE
`Knobbe Martens
`2040 Main Street
`14th Floor
`Irvine, CA 92614
`
`
`
`
`
`The above-entitled matters came on for hearing on Wednesday,
`December 6, 2017 at 10 a.m., at the U.S. Patent and Trademark Office,
`Madison Building East, 600 Dulany Street, Alexandria, Virginia, before
`Walter Murphy, Notary Public.
`
`
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`2
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`IPR2016-01716, 01717 (Patent 8,550,072)
`IPR2016-01719 (Patent 6,398,197)
`IPR2016-01725, 01727 (Patent 7,111,624)
`IPR2016-01729, 01730, 01731 (Patent 8,091,547)
`
`
`P R O C EE D I N G S
`- - - - -
`JUDGE JUNG: Good morning. Please be seated. This is the oral
`hearing for cases IPR’s 2016-1716, 1717, 1719, 1725, 1727, and 1729
`through 1731 between Petitioners ResMed Limited, ResMed, Incorporated,
`ResMed Corporation and Patent Owner Fisher & Paykel Healthcare Limited.
`To specify for the record in the 1716 and 1717 cases, Petitioners
`challenge claims in U.S. Patent No. 8,550,072. In the 1719 case Petitioners
`challenge claims in U.S. Patent No. 6,398,197. In the 1725 and the 1727
`cases, Petitioner challenges claims in U.S. Patent No. 7,111,624, and in the
`final 1729, 1730 and 1731 cases Petitioners challenge claims in U.S. Patent
`No. 8,091,547.
`Starting with counsel for Petitioners followed by counsel for Patent
`Owner, please stand at the podium and state your names for the record.
`MR. SCHERKENBACH: Good morning, Your Honors. Frank
`Scherkenbach of Fish & Richardson for the Petitioner, ResMed. I’d like to
`introduce the people who will be helping me today. Andrew Dommer sitting
`with me at counsel table, Mike Hawkins is here, he’s the lead counsel on
`these proceedings -- thank for letting me up here pro hac -- and then from
`the client, ResMed, we have Mike Rider, General Counsel, Americas, and
`Paul Green, Special Counsel for Intellectual Property.
`JUDGE JUNG: Welcome.
`MR. JENNINGS: Good morning, Your Honors. Joe Jennings of
`Knobbe Martens for the Patent Owner, Fisher & Paykel Healthcare. I’ll be
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`IPR2016-01716, 01717 (Patent 8,550,072)
`IPR2016-01719 (Patent 6,398,197)
`IPR2016-01725, 01727 (Patent 7,111,624)
`IPR2016-01729, 01730, 01731 (Patent 8,091,547)
`
`presenting today together with my colleague also from Knobbe Martens,
`Matt Bellinger and also joining me today are my colleagues from Knobbe
`Martens Rob Roby, Jarom Kesler, and from Fisher & Paykel, Jon Harwood.
`JUDGE JUNG: Welcome to you as well. As stated in the Trial
`Hearing Order, each party has 75 minutes of total time to present positions
`in all these cases. Petitioners will proceed first followed by Patent Owner
`and Petitioners may reserve rebuttal time, and as requested in our Trial
`Hearing Order we asked the parties to confer and agree on an order of
`presentation of these cases. Mr. Scherkenbach, have the parties conferred
`and agreed to an order of the presentation of these cases?
`MR. SCHERKENBACH: We haven’t explicitly done that except to
`say that we each have a set of slides, but we’re the treating the three slide-on
`cases together --
`JUDGE JUNG: Okay.
`MR. SCHERKENBACH: -- and we’re treating the ’197 separately.
`JUDGE JUNG: All right.
`MR. SCHERKENBACH: But we’ve exchanged the slides and we
`understand the order they’re presenting. We’re going to take it in reverse
`here and address the last patent they address first in our presentation to rebut
`those and then deal with the slide-on patents.
`JUDGE JUNG: Okay. Thank you, gentlemen. And just to be clear
`all the cases will be presented at once --
`MR.SCHERKENBACH: Yes.
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`IPR2016-01716, 01717 (Patent 8,550,072)
`IPR2016-01719 (Patent 6,398,197)
`IPR2016-01725, 01727 (Patent 7,111,624)
`IPR2016-01729, 01730, 01731 (Patent 8,091,547)
`
`
`JUDGE JUNG: -- (indiscernible) order. Thank you. And one more
`housekeeping item, Mr. Jennings. In the 1729 case, Exhibit 2007 is
`supposed to be a statutory disclaimer. It’s actually a notice and the statutory
`disclaimer isn’t filed in the case. I need you to file the actual statutory
`disclaimer for the 1729 case.
`MR. JENNINGS: We will do that, Your Honor.
`JUDGE JUNG: All right. Thank you, Mr. Jennings. All that said,
`Mr. Scherkenbach you may proceed when you’re ready.
`MR. SCHERKENBACH: Thank you, Your Honor. I understand the
`Board has our slides. I will endeavor for the benefit of Judge Woods to
`identify the slide numbers as I go through them. As I indicated, we’d like to
`start with the three --
`JUDGE JUNG: Oh, Mr. Scherkenbach, before you continue, how
`much time would you like?
`MR. SCHERKENBACH: Oh, rebuttal. I’m sorry. Fifteen minutes,
`please, for rebuttal.
`JUDGE JUNG: So I’m going to be addressing what we call the three
`slide-on patents first, the ’624, the ’547, the ’072, and turning to my slide 2 I
`wanted to start up front with two sort of basic principles. Obviously this is
`an obviousness challenge at least now, and there are two principles I think
`we’re going to hear a lot throughout the proceedings. One is what’s the
`person of ordinary skill in the art and how skilled is this person?
`There’s substantial agreement really between the parties on what that
`level of skill is, as shown here on slide 2. This is Mr. Virr’s articulation of
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`IPR2016-01716, 01717 (Patent 8,550,072)
`IPR2016-01719 (Patent 6,398,197)
`IPR2016-01725, 01727 (Patent 7,111,624)
`IPR2016-01729, 01730, 01731 (Patent 8,091,547)
`
`level skill in the art and Dr. Schneider for Patent Owner has not
`substantively disagreed with it and says in fact that his analysis would be the
`same using this definition as using Mr. Virr’s and this is a skilled person,
`okay. It’s a person with a technical degree and at least five years of relevant
`product design experience in the field of medical devices or respiratory
`theory. So we have a very skilled person with what are pretty basic
`mechanical inventions.
`A second principle that struck me as particularly important in these
`proceedings is the legal principle that the test, when you’re analyzing
`obviousness it’s not bodily incorporation, and I know the Board knows this
`because you’ve noted it in your Institution decisions and it’s a really
`important principle I think because if you look in general at the arguments of
`Patent Owner and at the arguments of their expert, Dr. Schneider, they really
`do for the most part all reduce to saying well you couldn’t take that exact
`example from prior art reference A and put it into prior art reference B, and
`I’m going to cover some of the more important examples of that but I think
`that approach by Fisher & Paykel explains why we think they err in their
`positions.
`Okay. So let’s move then to the substance of the three slide-on
`patents and the slide 4 now I’m on, we tried to identify the issues that seem
`to us to be the most pertinent after all the briefing has been in, and I’m not
`going to try obviously to repeat everything that’s in the record here, it’s not
`possible.
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`IPR2016-01716, 01717 (Patent 8,550,072)
`IPR2016-01719 (Patent 6,398,197)
`IPR2016-01725, 01727 (Patent 7,111,624)
`IPR2016-01729, 01730, 01731 (Patent 8,091,547)
`
`
`The first stake I’d like to put in the ground here is the point that what
`is the purported point of novelty or what was it at the time these patents were
`filed, and it’s a very simple thing. Slide 5. Moving the patient outlet from
`the top of the humidifier chamber to the housing of a CPAP. That’s it. You
`know, I won’t endeavor to read all the material on slide 5 here but we have
`example claim from the ’547, claim 1. Gases line outlet in said housing.
`That’s the key. It’s in the housing, not in the top of the humidifier chamber.
`The admitted prior art had slide-on humidifier chambers that were capable of
`being inserted and removed with a single sliding movement but the
`breathing conduit was in the top of the chamber, not the housing. So pretty
`much everything in these claims was known in the prior art except this one
`feature.
`So the example, or a probably most important example of what the
`prior art was is this HC200 product. In this case of course it’s the manuals
`that are prior art that we rely on and it is a slide-on humidifier that has, as we
`will see and I think it’s basically undisputed, has all the limitations of the
`claims with the exception of the moving the tube to the housing, the outlet
`tube to the housing, and so that raises the question then is this feature of the
`outlet on the housing in the prior art a), and b) if it is would there have been
`a motivation to use it in combination with the references that we rely on.
`So now I’m on slide 7 and it is undisputed that that feature is in the
`prior art. It’s in Netzer. It’s item 4 in Netzer is the outlet and housing. This
`figure we’re looking at here, well actually we’re looking 2, figure 2 and
`figure 1. They’re both top views of a CPAP device and the patient outlet 4
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`IPR2016-01716, 01717 (Patent 8,550,072)
`IPR2016-01719 (Patent 6,398,197)
`IPR2016-01725, 01727 (Patent 7,111,624)
`IPR2016-01729, 01730, 01731 (Patent 8,091,547)
`
`is on the housing of the device, not on the humidifier chamber which would
`be the item 9 shown there at the lower right in figure 1. That’s a slide in,
`slide out humidifier chamber. It goes in and out of the housing and it
`enables, you know, easy cleaning, easy access for that purpose and you don’t
`have to disconnect and reconnect the breathing hose in order to do that. I
`mean that is exactly what was alleged to be the invention of the slide-on
`patents by Fisher & Paykel.
`There’s another example in the prior art showing something similar,
`and that’s Kenyon. Here the patient outlet is item 14, we’re looking at
`figure 1 from Kenyon on slide 8, and we’ve just color coded the housing
`here in green so it’s a little bit clearer where the housing is and what’s on
`one side of it versus the other side, and no dispute that the patient outlet is on
`the housing in Kenyon. Now I’m going to come back to Kenyon later in the
`context of whether it discloses a single slide-on motion. There’s a dispute
`about that but for present purposes it’s safe to say it’s undisputed that
`Kenyon has the patient outlet on the housing also, and so it’s largely as a
`result of this that you have a somewhat unusual situation here where the
`Patent Owner has affirmatively disclaimed really the broadest claims of
`these three slide-on patents and in fact in the ’072, an affirmative disclaimer
`of claim 6, in the ’624 an affirmative disclaimer of claims 1 and 2, ’547 they
`have not filed a disclaimer but they have not argued the patentability in their
`response of claims 24 and 25. So at the end of the day we end up in the
`same place which is to say that the broad invention as originally conceived
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`IPR2016-01716, 01717 (Patent 8,550,072)
`IPR2016-01719 (Patent 6,398,197)
`IPR2016-01725, 01727 (Patent 7,111,624)
`IPR2016-01729, 01730, 01731 (Patent 8,091,547)
`
`and claimed is concededly no longer in play here, and we’re talking about
`more specific aspects of the invention.
`I won’t repeat -- I have here on slide 9 really just for reference for
`Your Honors which grounds are now moot. I’m not going to read them into
`the record. There they are for you and hopefully that’s helpful.
`Okay. So that brings us to the two claim construction issues which
`Patent Owner has sort of latched on to as a way to salvage something here
`and these have both come up after the initial briefing and we’ve got two of
`them. I’m going to deal with them. First the urging, the so-called urging
`limitation you see here on slide 10, and then later this auxiliary electrical
`connection limitation, and the punchline for both is really the same from our
`perspective and that is this language on its face has a much broader meaning
`than the meaning that Patent Owner is trying to impose on it, if I can put it
`that way, and so let’s take a look at the evidence on that.
`Slide 11. The sample claim I’ll use here is the ’547 claim 1, but this
`issue for urging arises in one claim of each of the three patents which we’ve
`identified there at the lower left. So also 072, claim 7; the ’624, claim 3, and
`the first point I want to make is actually a legal point and that is we’re
`talking about apparatus claims and this language is clearly functional
`language. You know, it’s talking about a motion and then furthermore that
`motion has involved some sort of urging, okay? Now the case law on this as
`we pointed out in our reply briefs is pretty clear that that sort of functional
`recitation in an apparatus claim is not entitled to patentable weight. Except
`in unusual circumstances, it might be if there were something in the intrinsic
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`IPR2016-01716, 01717 (Patent 8,550,072)
`IPR2016-01719 (Patent 6,398,197)
`IPR2016-01725, 01727 (Patent 7,111,624)
`IPR2016-01729, 01730, 01731 (Patent 8,091,547)
`
`record that indicated that it was important at the Patent Office in issuing the
`claim. We don’t have that here and so we submit that one way the Board
`can sort of crack this nut on the whole urging dispute is to say it’s really not
`even material because it’s not entitled to patentable weight and so we don’t
`have to decide whether it meets the broader meaning that Petitioner says, or
`the narrower meaning that Fisher & Paykel --
`JUDGE DEFRANCO: May I interrupt, Mr. Scherkenbach?
`MR. SCHERKENBACH: Yes, of course.
`JUDGE DEFRANCO: So you’re saying we should disregard the
`urging language as functional? Now the urging language is a definition for
`the term single motion; is it not?
`MR. SCHERKENBACH: I don’t think it’s a definition of single
`motion.
`JUDGE DEFRANCO: Well, let’s look at claim 6.
`MR. SCHERKENBACH: Okay.
`JUDGE DEFRANCO: The second clause or I guess it’s the third
`clause of humidifying gases return clause, and at the end of that clause it
`says separable connections are made by a single motion, and then claim 7
`goes on to say single motion also urges a base of the chamber in contact with
`the heater. So what defines what that single emotion is?
`MR. SCHERKENBACH: Well I think what they’re trying to do is
`define what the apparatus is by how it behaves when it’s handled in a
`particular way and that’s what the Federal Circuit cases on this say. They
`say look, it’s okay to try to define my apparatus with functional language but
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`IPR2016-01716, 01717 (Patent 8,550,072)
`IPR2016-01719 (Patent 6,398,197)
`IPR2016-01725, 01727 (Patent 7,111,624)
`IPR2016-01729, 01730, 01731 (Patent 8,091,547)
`
`that doesn’t mean that the functional language, you know, standing alone as
`it were isn’t a positive limitation of the claim. So, for example --
`JUDGE DEFRANCO: Well isn’t single motion a positive limitation
`of this claim?
`MR. SCHERKENBACH: I think only in the sense that you have to
`have a humidifier chamber that is capable of being inserted and removed
`from the housing via a single motion.
`JUDGE DEFRANCO: So that’s what they’re doing with the urging
`then, is to find what single motion is?
`MR. SCHERKENBACH: I agree with, okay, but I should say a
`couple of additional things here. First of all, there isn’t any dispute on this
`record that the prior art shows the single motion, okay. So we’re down to
`just the urging, what you might say is the urging gloss on the single motion
`and whether the prior art has that. Our point is that in this case, again I’m
`not saying in every single case you all would see, in this case that language
`was never given any patentable weight. It was never argued as a reason for
`allowance of the claims. It really has only come up in this proceeding and in
`that context I think if you look at the cases we’ve cited, and actually there’s
`another one In re Schreiber which we also cite in our papers. It’s not on our
`slide 11, but In re Schreiber, 128 F.3rd 1473 makes the point that the
`language is relevant to be considered in assessing whether the structure is in
`the prior art. But that doesn’t mean you look at the functional recitation in
`isolation and say oh, does the prior art show that actual function being
`performed? That’s the distinction I’m trying to make.
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`IPR2016-01716, 01717 (Patent 8,550,072)
`IPR2016-01719 (Patent 6,398,197)
`IPR2016-01725, 01727 (Patent 7,111,624)
`IPR2016-01729, 01730, 01731 (Patent 8,091,547)
`
`
`Okay. So let’s move past the threshold issue and get to the substance
`on this urging issue and, you know, the first point -- slide 12 now -- is that
`the claim doesn’t say anything about pressing with a force and, you know,
`that’s the meaning that the Patent Owner wants to sort of impose on the
`urging language. All the claim says is urging, in this example again ’547
`claim 1, urging adjacent and in contact. It doesn’t say how you urge. It
`doesn’t say whether you press or don’t press, or what you press in particular.
`It doesn’t say you have to press the humidifier chamber on to the plate in
`some way.
`JUDGE DEFRANCO: Can you have contact without pressing?
`MR. SCHERKENBACH: Sure, gravity, and in fact that’s how these
`devices work. There’s no pressing necessary because they’re horizontal
`slide-on devices. You slide them on and they sit in position. There’s no
`need to press them.
`JUDGE DEFRANCO: So it’s simply the dead weight of the chamber
`that provides the contact or the pressing or the urging, so to speak?
`MR. SCHERKENBACH: Correct, correct, and remember I mean it’s
`come back up to sort of the common sense level. These are, you know,
`they’re cylindrical typically shaped containers filled with water which is
`reasonably heavy, right, and so you push a container of water horizontally
`and it gets past -- there’s some sort of latching mechanism in all these
`devices -- it gets past the latch and then click, it sits right down. So there
`isn’t even any mechanical engineering needs that you would need a pressing
`force, which probably explains why by the way you look at the
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`IPR2016-01716, 01717 (Patent 8,550,072)
`IPR2016-01719 (Patent 6,398,197)
`IPR2016-01725, 01727 (Patent 7,111,624)
`IPR2016-01729, 01730, 01731 (Patent 8,091,547)
`
`specifications, there’s no disclosure anywhere of a pressing force of any
`kind in terms of pressing the chamber on to the heater. That’s undisputed,
`so I won’t also dwell on that point.
`JUDGE JUNG: Mr. Scherkenbach, before you go on I want to ask
`you about your statement that there’s no disclosure of any pressure
`implicated with the urging language.
`MR. SCHERKENBACH: Yes.
`JUDGE JUNG: But there is one embodiment where the water
`chamber is put in at an angle and when that water chamber is put in at that
`angle and fits on the heating pipe doesn’t that provide some pressure?
`MR. SCHERKENBACH: Let me -- I have a slide on that, but the
`answer is it’s the same principle. That angle -- bear with me one minute
`here. The angle language, this is my slide 17 -- I’m going to skip forward to
`that. So right, Fisher & Paykel says hey, wait a minute, there’s this portion
`of the ’547 patent -- and I’m sorry, I think we don’t have the specific cite on
`this slide, but it’s the ’547 patent at column 7, lines 63 to 66 -- that’s what
`the Patent Owner points to and they say hey, wait a minute, it’s talking about
`you’ve got your flat heater plate but you’re sliding in the humidifier
`chamber at an angle and doesn’t that require some sort of pressing force, and
`the answer is twofold. Number one, it doesn’t say it requires any pressing
`force and number two, again as a matter of just engineering it’s just gravity.
`You know, you take what would be your flat guides in one embodiment and
`you elevate and it’s like you’re sliding down a hill with this chamber full of
`water, it gets in position and it just sits, you know, just sit on the plate. So
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`IPR2016-01716, 01717 (Patent 8,550,072)
`IPR2016-01719 (Patent 6,398,197)
`IPR2016-01725, 01727 (Patent 7,111,624)
`IPR2016-01729, 01730, 01731 (Patent 8,091,547)
`
`again, there’s no reason you would need to press the chamber against the
`plate --
`JUDGE DEFRANCO: Mr. Scherkenbach?
`MR. SCHERKENBACH: Yes.
`JUDGE DEFRANCO: Does the specification detail why that angle
`slide-on motion is there? Does the specification say something about the
`benefit of doing that?
`MR. SCHERKENBACH: It --
`JUDGE DEFRANCO: Aside from this pressing.
`MR. SCHERKENBACH: It actually doesn’t identify a particular
`benefit to be honest. I mean the full language is here on slide 17. It’s two
`sentences. It says in this other embodiment you can orient the sort of
`grooves in this way and then it goes on in the language that actually we
`pointed out and the Patent Owner has not really addressed. It says you still
`would have to have the gas inlet and outlet parallel and aligned with the
`direction of the intended slide-on motion, but it doesn’t say the advantage to
`having it angled is the following. So I can’t help you out on that. There’s
`no discussion of it. It’s really -- I won’t say a throw away but it’s unclear
`why this would be a good thing and there’s certainly, again, I think the
`important point for present purposes is there’s no disclosure of a pressing
`force in this embodiment.
`JUDGE JUNG: Mr. Scherkenbach.
`MR. SCHERKENBACH: Yes.
`JUDGE JUNG: Just one more question.
`
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`IPR2016-01716, 01717 (Patent 8,550,072)
`IPR2016-01719 (Patent 6,398,197)
`IPR2016-01725, 01727 (Patent 7,111,624)
`IPR2016-01729, 01730, 01731 (Patent 8,091,547)
`
`
`MR. SCHERKENBACH: Sure.
`JUDGE JUNG: Dr. Schneider testified that shifting was a concern
`with the earlier CPAP machine. The patient would suddenly get up, yank
`his mask as he gets up which would cause the CPAP to be yanked off the
`nightstand. Even though you say there’s no explicit words that say urge
`equals pressure or there’s no explicit benefit having an angled water
`chamber, it seems to me that Dr. Schneider being a person of ordinary skill
`in the art, he understands that this disclosure has an advantage that it might
`prevent slipping if it’s at an angle, for example, in the case when the patient
`gets up in the middle of the night suddenly.
`MR. SCHERKENBACH: Well fair question, and what I would say is
`this. The alternate embodiment discussed here in the ’547 patent doesn’t
`envision a different mechanism for keeping the chamber in place once it is
`slid to the heater plate. So let’s go back. All these slide-on patents, what
`keeps the chamber in place is some sort of blocking mechanism, in all the
`embodiments it’s a spring loaded latch that you press it down, you get the lip
`started in the groove, you slide that in and then that latch pops back up and
`locks it in place. So again, that is what keeps the chamber in place if you
`were to tip it or roll it, or do something with it. It’s not pressing, and of
`course -- sorry, back up. That’s true in the horizontal embodiment and for
`all we know it’s true in the angled embodiment too because it doesn’t say
`there’s any other mechanism involved. We’re only changing the way in
`which the humidifier chamber is slid on and the second thing I would say is
`the CPAP -- I mean the patient isn’t standing there all night holding the
`
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`IPR2016-01716, 01717 (Patent 8,550,072)
`IPR2016-01719 (Patent 6,398,197)
`IPR2016-01725, 01727 (Patent 7,111,624)
`IPR2016-01729, 01730, 01731 (Patent 8,091,547)
`
`chamber on the heater plate, right? I mean all we’re talking about is whether
`there’s some special force required to put the chamber there in the first
`place, and so the patient’s going to mount it and then go to sleep, and if they
`subsequently yank the hose when they get up in the middle of the night and
`they tip the thing over, their hand pressure is not going to be what’s keeping
`that chamber in place.
`JUDGE JUNG: If it was angled it would probably make it less likely
`that it would tip over. It would probably complete a 180 degree turn but it’s
`like a 45 degree jar, maybe less.
`MR. SCHERKENBACH: It might. I mean I wouldn’t dispute that. I
`mean just as a simple matter of physics, I suppose though I think it would
`depend at what angle it was jostled and all that, but again whether it stays in
`place or doesn’t stay in place is going to be a function largely of the latch
`mechanism which we’re not talking about. The urging language in the
`claims does not pertain to the locking mechanism or the latch mechanism
`and again, what it does pertain to is the initial mounting of the chamber
`heater and that is not something again a patient is not going to be holding
`their hand there on that.
`So with that, let me go on to I think the second claim construction
`issue. Oh, I’m sorry, if I could go back because there is one sort of general
`point. So I mentioned there’s no hook in the claim language for the special
`definition of urging. I wanted to point out that our expert, Mr. Virr,
`commented on this as well and said look, a person of skill would read these
`patents and understand that they don’t contemplate any sort of force pressing
`
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`IPR2016-01716, 01717 (Patent 8,550,072)
`IPR2016-01719 (Patent 6,398,197)
`IPR2016-01725, 01727 (Patent 7,111,624)
`IPR2016-01729, 01730, 01731 (Patent 8,091,547)
`
`the chamber base against the heater. We know that you’re not challenged by
`cross-examination. You’re going to see a lot of that on our slides for the
`slide-on patents because, in fact, Patent Owner didn’t take the deposition of
`Mr. Virr before filing its Patent Office response at all and even when they
`did, they had not submitted Mr. Virr’s deposition. It’s not of record in any
`of the seven IPR’s pertaining to the three slide-on patent cases which, again,
`I think is a little unusual that Mr. Virr obviously says a lot in his declarations
`which in substance goes unchallenged.
`It’s not just Mr. Virr who says the patents don’t describe any pressing
`force. You mentioned Dr. Schneider. He agrees. Slide 15. We did ask him
`in deposition did you see any disclosure of a pressing force? No, I don’t.
`Okay.
`So let me go on, just in the interest of time, to the -- oh, well sort of
`last point I guess is this is their entire argument on these three claims that
`have urging is the claim construction argument. The Patent Owner does not
`argue for patentability based on a broader construction of urging. So if they
`don’t get this narrow construction of applying this special force, there is no
`argument for the patentability of those three claims.
`So let me go on to the second claim construction issue, the auxiliary
`electrical connection argument. This pertains to, for example, ’547 claim 5
`on slide 20, you see this again pertains to three claims -- ’072, claim 11;
`’547, claim 5; ’624, claim 7 -- and in this one a couple of points. They want
`a construction that says the auxiliary connection has to be separate and
`distinct.
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`IPR2016-01716, 01717 (Patent 8,550,072)
`IPR2016-01719 (Patent 6,398,197)
`IPR2016-01725, 01727 (Patent 7,111,624)
`IPR2016-01729, 01730, 01731 (Patent 8,091,547)
`
`
`JUDGE WOODS: Mr. Scherkenbach.
`MR. SCHERKENBACH: Yes.
`JUDGE WOODS: Hi, good morning. If I may please interrupt to ask
`a question.
`MR. SCHERKENBACH: Of course.
`JUDGE WOODS: And focusing on the ’624 patent, claim 7.
`MR. SCHERKENBACH: Yes.
`JUDGE WOODS: So, claim 7 of the ’624 patent recites a connector
`for receiving a breathing hose and at least one auxiliary electrical connection
`plug or socket. So I want to focus first on the plug or socket portion. I
`understand that you’ve relied on electrical -- Bahr’s electrical contacts 48A
`and 48B as satisfying the claim’s electrical connection plug or socket, and
`that’s on page 49 of the petition. Patent Owner, in its definition of plugs and
`sockets, in its Exhibit 2006, supports its argument that these contacts, Bahr’s
`contacts, are neither plugs nor sockets. Patent Owner’s interpretation also
`appears to be consistent with the specification, namely, figures 1 through 4,
`that depict electrical connection 54 as either -- and it appears to be either a
`plug or a socket.
`So, having said that, based on Patent Owner’s definition of plugs and
`sockets and the specification, would you please explain how Bahr’s
`electrical contacts 48A and 48B, which appear to me to be rings within the
`inner surface of that breathing hose, are either plugs or sockets?
`MR. SCHERKENBACH: Sure. Let me say, I’m going to go to slide
`26 where I have the relative figure from Bahr’s there, okay, just so we have
`
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`IPR2016-01716, 01717 (Patent 8,550,072)
`IPR2016-01719 (Patent 6,398,197)
`IPR2016-01725, 01727 (Patent 7,111,624)
`IPR2016-01729, 01730, 01731 (Patent 8,091,547)
`
`it in front of us and we can talk about it. But again, I don’t think you’ll find
`that the definitions of plug or socket submitted by Patent Owner themselves
`say anything at all about this separate or distinct issue. You know, whether
`something is a plug or a socket is a different issue from whether it is a
`distinct or separate item from another recited connector, okay.
`But to answer your question, I’ve given this some thought and what I
`would say is yes, they are plugs or connectors in the plain meaning of that
`word because not in the sense of an electrical plug you plug into a wall, but
`in a very analogous sense where these electrical contacts 48A and 48B, they
`are raised ring like structures that sit or mounted on the outside of a
`cylindrical conduit so they’re sort of bumps, and I think of them as similar to
`the prongs of an electrical outlet and then there is a receptacle, similarly
`there is a receptacle for those ring like bumps in the collar piece. That’s the
`electrical contacts 18A and 18B over there on the collar 20, and so I mean if
`anyone has ever used a quick fit coupling on a hose really of any kind, it
`could be a hydraulic hose, could be an electrical connection., it’s the same
`principle. You have half of the plug or socket on a male piece and the other
`half is on the fe
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