Trials@uspto.gov
`571-272-7822
`
`
`Paper No. 10
`
`Entered: August 17, 2017
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FISHER & PAYKEL HEALTHCARE LIMITED,
`Petitioner,
`
`v.
`
`RESMED LIMITED,
`Patent Owner.
`____________
`
`Case IPR2017-00215
`Patent 9,381,316 B2
`____________
`
`
`
`Before BARRY L. GROSSMAN, BEVERLY M. BUNTING, and
`JAMES J. MAYBERRY, Administrative Patent Judges.
`
`MAYBERRY, Administrative Patent Judge.
`
`
`
`
`DECISION
`
`Denying Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`
`571-272-7822
`
`
`Paper No. 10
`
`Entered: August 17, 2017
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FISHER & PAYKEL HEALTHCARE LIMITED,
`Petitioner,
`
`v.
`
`RESMED LIMITED,
`Patent Owner.
`____________
`
`Case IPR2017-00215
`Patent 9,381,316 B2
`____________
`
`
`
`Before BARRY L. GROSSMAN, BEVERLY M. BUNTING, and
`JAMES J. MAYBERRY, Administrative Patent Judges.
`
`MAYBERRY, Administrative Patent Judge.
`
`
`
`
`DECISION
`
`Denying Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`
`
`IPR2017-00215
`Patent 9,381,316 B2
`
`
`I. INTRODUCTION
`
`Petitioner, Fisher & Paykel Healthcare Ltd. (“Fisher”), filed a Petition
`(Paper 1, “Pet.”) requesting inter partes review of claims 1–32 and 59–74
`(the “Challenged Claims”) of U.S. Patent No. 9,381,316 B2 (Ex. 1001, the
`“’316 patent”). Patent Owner, ResMed Ltd. (“ResMed”), filed a Preliminary
`Patent Owner Response (“Prelim. Resp.”). Paper 6. We did not institute
`trial in this proceeding. Paper 8 (“Decision” or “Dec. on Inst.”). Fisher
`timely filed a Request for Rehearing. Paper 9 (“Request” or “Reh’g Req.”).
`For the reasons explained below, Fisher’s Request is denied.
`
`
`II. STANDARD OF REVIEW
`“The burden of showing a decision should be modified lies with the
`party challenging the decision[,]” which party “must specifically identify all
`matters the party believes the Board misapprehended or overlooked, and the
`place where each matter was previously addressed in a motion, an
`opposition, or a reply.” 37 C.F.R. § 42.71(d). And, because Fisher seeks
`rehearing of our Decision on Institution, it must show an abuse of discretion.
`See 37 C.F.R. § 42.71(c) (“When rehearing a decision on petition, a panel
`will review the decision for an abuse of discretion.”). An abuse of discretion
`may arise if a decision is based on an erroneous interpretation of law, if a
`factual finding is not supported by substantial evidence, or if the decision
`represents an unreasonable judgment in weighing relevant factors. Star
`Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v.
`Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d
`1305, 1315–16 (Fed. Cir. 2000). A request for rehearing is not an
`opportunity to present new arguments. See 37 C.F.R. § 42.71(d) (requiring
`
`
`
`2
`
`
`
`IPR2017-00215
`Patent 9,381,316 B2
`
`the rehearing request to “specifically identify all matters the party believes
`the Board misapprehended or overlooked, and the place where each matter
`was previously addressed in a motion, an opposition, or a reply”) (emphasis
`added).
`
`
`III. ANALYSIS
`In its Request, Fisher contends that the Board (1) “misapprehended
`the effect of the prosecution history on the scope of the claims” and
`(2) “overlooked that the structure of Berthon-Jones satisfies the actual
`engagement limitation.” Reh’g Req. 4, 9. We take each of these contentions
`in turn.
`1. The prosecution history of the ’316 patent and the “fixed, non-
`adjustable” claim limitations
`The Challenged Claims include independent claims 1, 59, and 65,
`each of which includes a variation of the “fixed, non-adjustable position”
`limitation. See Ex. 1001, 10:31–35, 17:47–52, 18:47–52; see also Reh’g
`Req. 3 (presenting these limitations, which Fisher terms the “engagement
`limitation”). Claim 1 recites a representative “fixed, non-adjustable
`position” limitation: “wherein each of the at least first and second cushion
`components is structured to engage with the common frame in a fixed, non-
`adjustable position to prevent any relative or adjustable movement between
`each of the at least first and second cushion components and the common
`frame.” Id. at 10:31–35. As we recognized in our Decision, during the
`prosecution of the application that matured into the ’316 patent, ResMed
`distinguished Matula (Ex. 2001) from the claims by adding the subject
`matter of the “fixed, non-adjustable position” limitations. See Dec. on Inst.
`13.
`
`
`
`3
`
`
`
`IPR2017-00215
`Patent 9,381,316 B2
`
`
`During prosecution, the Examiner issued a Notice of Allowability for
`the application that matured into the ’316 patent responsive to an
`amendment filed on February 19, 2016 and an interview conducted on
`February 26, 2016. Ex. 1010, 41–45. In an earlier amendment, which added
`the “fixed, non-adjustable position” limitation, ResMed argued that “the
`patient interface of Matula includes an adjustment mechanism 70 that allows
`the position of the seal member 38 relative to the faceplate 36 to be
`adjusted.” Id. at 400. The Applicant-Initiated Interview Summary for the
`February 26, 2016 interview states that the “Examiner indicated that it
`appears the amendments regarding non-adjustable connection between
`cushion components and common frame overcame the Matula reference,
`which teaches adjustable connection.” Id. at 350; see also id. at 253
`(“Examiner also indicated that the amendments to claims 66, 81, 96, 113,
`and 1331 regarding the cushion components being engaged with the common
`frame in a fixed, non-adjustable position appears to overcome the rejections
`with the Matula reference.”).
`In its Preliminary Response, ResMed explained that its amendment
`adding the “fixed, non-adjustable position” claim limitation and its
`arguments distinguishing Matula explicitly disclaimed mask assemblies
`having adjustment mechanisms. See Prelim. Resp. 28; Reh’g Req. 4. In our
`Decision, we expressly stated that “[w]e agree that ResMed disclaimed a
`mask system with an adjustment mechanism that adjusts the relative position
`of a cushion component and a frame” during prosecution. Dec. on Inst. 25.
`
`
`1 Application claims 66, 81, 96, 113, and 133 issued as 38, 41, 46, 59, and
`75, respectively. See Ex. 1010, 47–51.
`
`
`
`4
`
`
`
`IPR2017-00215
`Patent 9,381,316 B2
`
`
`Fisher contends that we misapprehended the prosecution history of the
`’316 patent. Specifically, Fisher contends that:
`ResMed attempts to define the disclaimer based on the
`simple presence of any adjustment mechanism. However, this
`position has no basis in the claim language added to overcome
`Matula, which does not
`include
`the
`term “adjustment
`mechanism.” Instead, the claim language clearly requires that
`the engagement structure of the cushion component prevent any
`relative or adjustable movement. Thus, the subject matter
`distinguished should be determined by whether it is the
`engagement structure that provides for any relative or adjustable
`movement.
`Reh’g Req. 5. That is, Fisher argues that a proper reading of the prosecution
`history disclaims a mask with an engagement structure between the cushion
`component and frame where that engagement structure allows for relative or
`adjustable movement, not a mask that includes any adjustment mechanism.
`Fisher argues that “[t]he examiner indicated that the adjustment
`mechanism 70 is an ‘adjustable connection’ between the seal member 38 and
`faceplate 36.” Reh’g Req. 6 (citing Ex. 1010, 350).
`We are not persuaded that we abused our discretion in understanding
`the effect of the prosecution history on the scope of the claims, as substantial
`evidence supports our findings. We understand that a prosecution disclaimer
`requires that a patentee make it clear “that the invention does not include a
`particular feature” and that, although “such disavowal can occur either
`explicitly or implicitly, it must be clear and unmistakable.” Luminara
`Worldwide, LLC v. Liown Elecs. Co., 814 F.3d 1343, 1353 (Fed. Cir. 2016).
`We are not persuaded by Fisher that ResMed’s disclaimer is limited to
`adjustment mechanisms that correspond to a structure that forms the
`engagement between a cushion component and a common frame.
`
`
`
`5
`
`
`
`IPR2017-00215
`Patent 9,381,316 B2
`
`
`First, we are not persuaded that the statement in the Applicant-
`Initiated Interview Summary relied on by Fisher identifies Matula’s
`adjustment mechanism 70 as an engagement structure. Instead, we read the
`statement to indicate that adjustment mechanism 70 allows for adjusting the
`relative position between the two connected components. The examiner’s
`reasons for allowing the ’316 patent supports this interpretation—it
`expressly states that “Matula teaches a similar device which provides for
`adjustable/relative movement between the cushion component and common
`frame, whereas the claimed invention is structured such that
`adjustable/relative movement between the cushion component and the
`common frame is prevented.” Ex. 1010, 44. This language says nothing
`about the actual engagement structure being adjustable. Instead, the
`language focuses on the “adjustable/relative movement between the cushion
`component and the common frame.”
`Second, as ResMed asserted in its Preliminary Response, the
`Specification and prosecution history support a claim construction that
`comports with the plain meaning of the “fixed, non-adjustable position”
`claim limitation.2 Prelim. Resp. 16–21. For example, the “fixed, non-
`adjustable position” claim limitation of claim 1 recites “wherein each of the
`at least first and second cushion components is structured to engage with the
`common frame in a fixed, non-adjustable position to prevent any relative or
`adjustable movement between each of the at least first and second cushion
`components and the common frame.” Ex. 1001, 10:31–35. The plain
`meaning of this language is that the cushion components have a structure
`
`
`2 Fisher also asserted that the claim terms should be given their ordinary and
`customary meaning. Pet. 10.
`
`
`
`6
`
`
`
`IPR2017-00215
`Patent 9,381,316 B2
`
`that engages with a common frame such that the relative position of the
`cushion component and the common frame is fixed and non-adjustable.
`Fisher fails to persuade us that we abused our discretion when we found that
`a mask that includes an adjustment mechanism that adjusts the relative
`position of the cushion component with respect to the common frame is not
`encompassed by the “fixed, nonadjustable position” claim limitation.
`Accordingly, we are not persuaded that we misapprehended the effect
`of the prosecution history on the scope of the claims.
`2. Berthon-Jones and the “fixed, non-adjustable” claim limitation
`Fisher contends that we overlooked how Berthon-Jones discloses the
`subject matter of the “fixed, non-adjustable position” claim limitation.
`Reh’g Req. 9. Fisher argues that “[i]t is not relevant to the [analysis of the
`‘fixed, non-adjustable position’ claim] limitation that Berthon-Jones also
`includes a separate adjustment mechanism.” Id. at 9–10. Fisher argues that
`Berthon-Jones discloses that protrusions 524 and raised central structure
`5383 on cushion component 514 provide a snap-fit engagement with frame
`512 and that these engagement structures engage the frame in a fixed, non-
`adjustable manner. Id. at 9.
`We are unpersuaded by Fisher’s argument that we abused our
`discretion, as the argument is inconsistent with our construction of the
`“fixed, non-adjustable position” claim limitations. As we indicated above,
`we interpret these limitations to exclude masks with structures that adjust the
`
`
`3 Fisher’s Petition did not identify raised central structure 538 as satisfying
`the subject matter of the fixed, non-adjustable position” claim limitations.
`See Pet. 25–27 (identifying protrusions 524 and receiving holes 526). We
`do not consider new arguments in a request for rehearing. See 37 C.F.R.
`§ 42.71(d).
`
`
`
`7
`
`
`
`IPR2017-00215
`Patent 9,381,316 B2
`
`relative position of a cushion component and a frame. Fisher’s annotated
`version of Berthon-Jones’s Figures 51–53 from the Petition is reproduced
`below.
`
`
`
`
`
`Annotated Figure 51 shows Berthon-Jones’s mask 510, with
`annotations indicating protrusions 524 and receiving holes 526. Pet. 26.
`
`
`
`8
`
`
`
`IPR2017-00215
`Patent 9,381,316 B2
`
`Annotated Figures 52 and 53 show the operation of Berthon-Jones’s
`adjustment wheel 530, with annotations highlighting chassis (or frame) 512,
`adjustment wheel 530, and cushion portion 516 of cushion/secondary frame
`514. Id. at 27. Fisher contended in the Petition that:
`Although the mask fit is adjustable, once the cushion
`component 514 is in the desired configuration, the cushion
`component 514 and the common frame 512 remain in a fixed,
`non-adjustable position because the protrusions 524 on the
`cushion component 514 form a snap-fit with the receiving holes
`526 on the common frame 512.
`Id. (citing Ex. 1009 (Decl. of Jason Eaton) ¶ 63). That is, once a user adjusts
`the fit of mask 510 using adjustment wheels 530 to a desired configuration,
`the user will not further adjust the mask, and cushion/secondary frame 514 is
`in a fixed, non-adjustable position relative to chassis 512 because the two
`pieces snap-fit together by protrusions 524 and receiving holes 526. As
`Fisher acknowledges, Berthon-Jones’s adjustment wheel 530 adjusts the fit
`of the mask against a user’s face by causing relative motion between
`cushion/secondary frame 514 and chassis 512. See Pet. 26–27.
`Fisher further contends that the adjustment mechanism of Berthon-
`Jones does not change the relative position of the cushion component
`relative to the common frame. Reh’g. Req. 11. Fisher argues that ResMed
`asserts that “some ‘wiggle’ between components due to manufacturing
`tolerances or flexibility of materials” would not take a structure outside the
`scope of the “fixed, non-adjustable position” claim limitations. Id. at 12.
`Fisher argues that Berthon-Jones’s adjustment wheel 530 provides for a
`“slight ‘deflection’ of only the sides of the cushion component.” Id. at 13.
`Fisher continues that “[t]he slight deflection of a peripheral portion of the
`cushion component is insufficient to change the overall position of the
`
`
`
`9
`
`
`
`IPR2017-00215
`Patent 9,381,316 B2
`
`cushion component relative to the common frame, rather, simply changes
`the shape of the cushion component.” Id.
`We are unpersuaded by Fisher’s argument that we abused our
`discretion. First, we do not understand Fisher as making this argument in
`the Petition. That is, we interpret Fisher to argue in the Petition that after a
`user adjusts the fit of mask 510 using adjustment wheels 530 to a desired
`configuration, the user will not further adjust the mask, and
`cushion/secondary frame 514 is in a fixed, non-adjustable position relative to
`chassis 512. See Pet. 27. We cannot misapprehend or overlook an argument
`that is not made.
`Even if the argument as Fisher articulates here is the argument in the
`Petition, we are not persuaded that we overlooked Berthon-Jones disclosing
`the “fixed, non-adjustable position” claim limitations, as substantial
`evidence supports our findings. Berthon-Jones’s adjustment is not the
`“wiggle” that ResMed referenced in its Preliminary Response, which would
`be associated with manufacturing tolerances and flexible materials that may
`allow for some small movement between the components.4 See Prelim.
`Resp. 15. Instead, Berthon-Jones discloses that its adjustment wheel 530 is
`used to adjust the sealing force or fit of the cushion against a user’s face—
`that is, the reason for adjustment wheel 530 as part of the mask is to adjust
`the cushion relative to the frame. See Ex. 1002 ¶ 186; see also ¶ 168
`(“[Figures] 41 through 53 illustrate additional embodiments which allow
`
`
`4 We stress that we do not decide whether the “fixed, non-adjustable
`position” claim limitations would encompass a structure with the “wiggle”
`that ResMed referenced in its Preliminary Response, as we do not need to
`reach that issued in deciding this Request.
`
`
`
`10
`
`
`
`IPR2017-00215
`Patent 9,381,316 B2
`
`pinching along the lateral sides of the patient’s face/nose. . . . Each of these
`embodiments allows for more control over adjustment and adapts more
`readily to variations in physiognomy between [patients] with differently
`shaped noses.”).
`Accordingly, we are not persuaded that we overlooked that the
`structure of Berthon-Jones satisfies the subject matter of the “fixed, non-
`adjustable position” claim limitations.
`
`
`IV. CONCLUSION
`
`For the foregoing reasons, we determine that Fisher has not satisfied
`its burden of demonstrating that we abused our discretion in the Decision on
`Institution, such that our Decision should be modified and trial instituted.
`
`
`V. ORDER
`
`After due consideration of the record before us, it is:
`ORDERED that Fisher’s Request is denied.
`
`
`11
`
`
`
`
`
`
`
`IPR2017-00215
`Patent 9,381,316 B2
`
`For PETITIONER:
`
`Brenton R. Babcock
`Benjamin J. Everton
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2brb@knobbe.com
`2bje@knobbe.com
`
`
`For PATENT OWNER:
`
`Michael Hawkins
`Michael J. Kane
`Christopher Hoff
`Stuart Nelson
`Stephen R. Schaefer
`FISH & RICHARDSON P.C.
`hawkins@fr.com
`kane@fr.com
`hoff@fr.com
`snelson@fr.com
`schaefer@fr.com
`IPR36784-0056IP1@fr.com
`PTABInbound@fr.com
`
`
`
`
`12
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
