Trials@uspto.gov
`571-272-7822
`
`
`Paper No. 8
`
`Entered: May 3, 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 IPR2017-00218
`Patent 9,381,316 B2
`____________
`
`
`
`
`
`
`
`
`Before RICHARD E. RICE, BARRY L. GROSSMAN, and
`JAMES J. MAYBERRY, Administrative Patent Judges.
`
`MAYBERRY, Administrative Patent Judge.
`
`DECISION
`
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`

`

`IPR2017-00218
`Patent 9,381,316 B2
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`
`I. INTRODUCTION
`
`Petitioner, Fisher & Paykel Healthcare Ltd. (“Fisher”), filed a Petition
`(Paper 1, “Pet.”) requesting inter partes review of claims 33–58 and 75–85
`(the “Challenged Claims”) of U.S. Patent No. 9,381,316 B2 (Ex. 1101, the
`“’316 patent”). Patent Owner, ResMed Ltd. (“ResMed”), filed a Preliminary
`Patent Owner Response (“Prelim. Resp.”). Paper 6. We have jurisdiction
`under 35 U.S.C. § 314 and 37 C.F. R. § 42.4(a).
`To institute an inter partes review, we must determine that the
`information presented in the Petition shows “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). For the reasons set forth below, upon
`considering the Petition, Patent Owner Preliminary Response, and
`supporting evidence, we conclude that the information presented in the
`Petition fails to establish a reasonable likelihood that Fisher will prevail with
`respect to at least 1 of the Challenged Claims, and we do not institute inter
`partes review on any of the Challenged Claims.
`A. Related Matters
`Fisher indicates that the ’316 patent is involved in district court
`litigation in the Southern District of California, in a case styled Fisher &
`Paykel Healthcare Ltd. v. ResMed Corp., Case No. 3:16-cv-02068-DMS-
`WVG (S.D. Cal.). Pet. 6; see also Paper 4, 2 (identifying the Southern
`District of California litigation). Fisher further indicates that it has filed,
`concurrent with this Petition, a second petition seeking inter partes review
`
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`of the ’316 patent. Pet. 6; see also Paper 4, 2 (identifying the proceeding as
`IPR2017-00215).
`
`B. The ’316 Patent
`1. The Disclosure of the ’316 Patent
`The ’316 patent, titled “Interchangeable Mask Assembly,” issued July
`5, 2016 with claims 1–85. Ex.1101, (54), (45), 9:57–22:17. The ’316 patent
`is generally directed “to a nasal assembly used for treatment, e.g., of Sleep
`Disordered Breathing (SDB) with Continuous Positive Airway Pressure
`(CPAP) or Non-Invasive Positive Pressure Ventilation (NPPV).” Ex.1101,
`1:17–20. Figure 1 of the ’316 patent depicts an embodiment of the claimed
`interchangeable mask assembly and is reproduced below.
`
`Figure 1 depicts a schematic view of the mask assembly of an
`exemplary embodiment. Ex.1101, 3:9–10. Interchangeable mask system 5
`includes common frame 10 and interchangeable cushion components 15, 20,
`interchangeable elbow components 25, 30, and headgear 35. Id. at 3:45–49.
`
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`Common frame 10 includes central opening 45 and second opening
`46. Ex.1101, 3:52–54. Interchangeable cushion components 15, 20 include
`portions 16, 21, respectively, which interface with second opening 46 when
`one of the cushion components is attached to the mask. Id. at 3:54–58.
`Interchangeable cushion components 15, 20 further include openings 17, 22,
`respectively, which interface with central opening 45 when one of the
`cushion components is attached to the mask. Id. at 4:15–20.
`“Common frame 10 is configured to be selectively coupled to one of
`cushion components 15, 20 and to one of elbow components 25, 30.”
`Ex.1101, 4:9–11. Cushion components 15, 20 differ from one another in at
`least one respect, such that one of the cushion components may be more
`suited to a wearer than the other. See id. at 4:20–23. Similarly, elbow
`components 25, 30 differ in at least one respect, such that one of the elbows
`may be preferred over the other for a specific mask system. See id. at 4:31–
`35.
`2. The Prosecution History of the ’316 Patent
`In the Reasons for Allowance section of the Notice of Allowability of
`U.S. Application No. 12/320,663, which matured into the ’316 patent, the
`Examiner stated that “[t]he closest prior art references of record are: Geist
`([U.S. Pat.] 7,353,827), Matula, Jr. et al. ([U.S. Pat. Application]
`2014/0083430), Chen ([U.S. Pat.] 6,615,832), Ho ([U.S. Pat. Application]
`2006/0076019), and Ging et al. ([U.S. Pat. Application] 2003/0196658).”
`Ex. 1108 (Excerpts from File History), 43. Fisher characterizes the
`prosecution of the application that matured into the ’316 patent as involving
`five office actions from the examiner, with the patentee amending the claims
`following each action to overcome the examiner’s rejections. Pet. 12.
`
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`
`Particularly relevant to this proceeding, the patentee amended claims
`65, 66, 81, 96, and 133 (which issued as independent claims 33, 38, 41, 46,
`and 75, respectively) to include a limitation that the cushion component be
`structured to engage the common frame in a fixed, non-adjustable position
`(the “fixed, non-adjustable position” claim limitation). See Ex. 1108, 190–
`194, 202–03.1 See Section I.C, infra (providing the listing of independent
`claims 33, 38, 41, 46, 75, and 78, including emphasizing each particular
`“fixed, non-adjustable position” claim limitation for each independent
`claim). As ResMed explains, it distinguished, during prosecution, U.S. Pat.
`Application 2014/0083430 A1 (“Matula,” Ex. 2101) because Matula’s mask
`system included an adjustment mechanism that adjusted the position of its
`cushion component relative to its frame. See Prelim. Resp. 29–31. As such,
`ResMed contends that, through the “fixed, non-adjustable position” claim
`limitation and its arguments distinguishing Matula, ResMed explicitly
`disclaimed mask assemblies having adjustment mechanisms. Id. at 31.
`C. Challenged Claims
`Of the Challenged Claims, claims 33, 38, 41, 46, 75, and 78 are
`independent. Each independent claim includes a variation of the “fixed,
`non-adjustable position” limitation. See Ex.1101, 12:30–13:9, 13:44–14:14,
`14:26–15:9, 15:29–16:3, 19:52––20:37, and 20:50–21:9. Claim 33 is
`representative of the independent claims and is reproduced below:
`33. An interchangeable mask system for delivering breathable
`gas to a patient, comprising:
`
`
`1 Claim 161, which issued as independent claim 78, was included the “fixed,
`non-adjustable position” limitation when the claim was newly-added during
`prosecution. See 1108, 82.
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`a common frame structured and arranged to interface with
`at least first and second cushion components that are different
`structurally from one another in at least one aspect, each of the
`at least first and second cushion components including an
`integrated unit having a front portion and a cushion structured to
`engage a patient’s face, the front portion and the cushion of each
`of the at least first and second cushion components defining a
`mask interior breathing chamber, wherein the front portion of
`each of the at least first and second cushion components is
`relatively harder than the cushion thereof, and the front portion
`of each of the at least first and second cushion components
`having an opening by which the breathable gas is delivered to the
`mask interior breathing chamber thereof,
`wherein the common frame is external to the mask interior
`breathing chamber defined by each of the at least first and second
`cushion components,
`wherein the common frame does not define part of the
`mask interior breathing chamber defined by each of the at least
`first and second cushion components,
`wherein the front portion, the cushion, and the mask
`interior breathing chamber thereof of each of the at least first and
`second cushion components form a unit that as a whole is
`interchangeable with the common frame, and
`wherein the front portion of 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,
`wherein the common frame includes a first opening having
`a closed shape and a second opening having a closed shape that
`is spaced apart and superior to the first opening, and the front
`portion of each of the at least first and second cushion
`components includes a protrusion that is spaced apart and
`superior to the opening of each of the at least first and second
`cushion components, and
`wherein each of the at least first and second cushion
`components is configured to be engaged with the common frame
`
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`
`into the fixed, non-adjustable position by engaging the protrusion
`of each of the at least first and second cushion components with
`the second opening of the common frame substantially along an
`anterior-posterior axis.
`Ex.1101, 12:30–13:9 (emphasis added).
`D. The Prior Art
`Fisher’s asserted grounds of unpatentability for the Challenged Claims
`rely on the following references:
`Berthon-Jones
`WO 2004/041342 A1 May 21, 2004
`Barnett
`US 6,412,488 B1
`July 2, 2002
`Gunaratnam
`US 6,796,308 B2
`Sept. 28, 2004
`
`
`
`Lovell
`US 6,631,718 B1
`Oct. 14, 2003
`McAuley
`US 8,714,157 B2
`May 6, 2014
`
`E. Asserted Grounds of Unpatentability
`Fisher asserts the following grounds of unpatentability for the
`Challenged Claims:
`
`Ex. 1102
`Ex. 1103
`Ex. 1104
`
`Ex. 1105
`Ex. 1106
`
`References
`Berthon-Jones and Barnett
`
`Basis2
`35 U.S.C. § 103(a)
`
`Berthon-Jones, Barnett, and
`Gunaratnam
`
`35 U.S.C. § 103(a)
`
`Claims Challenged
`33–35, 37–39, 41–44,
`46, 56, 58, 75–76,
`and 78–85
`47–55
`
`
`2 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
`Stat. 284, 296–307 (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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`
`References
`Berthon-Jones, Barnett, and
`McAuley
`
`
`Basis2
`35 U.S.C. § 103(a)
`
`Claims Challenged
`36, 40, 45, 57, and 77
`
`II. ANALYSIS
`A. Level of Ordinary Skill in the Art
`Fisher asserts that the level of ordinary skill in the art to which the
`’316 patent pertains is “a bachelor’s degree in mechanical engineering,
`biomedical engineering, or other similar type of engineering degree,
`combined with at least two years of experience in the field of masks,
`respiratory therapy, patient interfaces, or relevant product design
`experience.” Pet. 13 (citing Ex. 1107 (Decl. of Jason Eaton) ¶ 27). ResMed
`does not dispute this characterization of the level of ordinary skill at this
`time.
`Factual indicators of the level of ordinary skill in the art include “the
`various prior art approaches employed, the types of problems encountered in
`the art, the rapidity with which innovations are made, the sophistication of
`the technology involved, and the educational background of those actively
`working in the field.” Jacobson Bros., Inc. v. United States, 512 F.2d 1065,
`1071 (Ct. Cl. 1975); see also Orthopedic Equip. Co. v. United States, 702
`F.2d 1005, 1011 (Fed. Cir. 1983) (quoting with approval Jacobson Bros.).
`We find, based on our review of the record before us, that Fisher’s asserted
`level of ordinary skill in the art is reasonable and, for the purposes of this
`Decision, we adopt Fisher’s definition.
`B. Claim Construction
`In an inter partes review, claim terms in an unexpired patent are given
`their broadest reasonable construction in light of the specification of the
`
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`patent in which they appear. 37 C.F.R. § 42.100(b); see also Cuozzo Speed
`Techs., LLC v. Lee, 136 S. Ct. 2131, 2142–46 (2016) (concluding that
`37 C.F.R. § 42.100(b) “represents a reasonable exercise of the rulemaking
`authority that Congress delegated to the Patent Office”). Under the broadest
`reasonable construction standard, claim terms are given their ordinary and
`customary meaning, as would be understood by one of ordinary skill in the
`art in the context of the entire disclosure. In re Translogic Tech., Inc., 504
`F.3d 1249, 1257 (Fed. Cir. 2007). Also, we are careful not to read a
`particular embodiment appearing in the written description into the claim if
`the claim language is broader than the embodiment. See In re Van Geuns,
`988 F.2d 1181, 1184 (Fed. Cir. 1993) (“[L]imitations are not to be read into
`the claims from the specification.”).
`Fisher contends that we should afford the terms of the Challenged
`Claims their ordinary and customary meaning in light of the Specification
`and does not offer any express constructions for any term in the Challenged
`Claims. See Pet. 9–10. In its Preliminary Response, ResMed offers an
`express claim construction for the “fixed, non-adjustable position” limitation
`of independent claims 33, 38, 41, 46, 75, and 78.
`ResMed contends that this limitation should be construed to mean that
`the engagement between the recited cushion components and the common
`frame “be structured such that adjustable/relative movement between the
`cushion component and the common frame is prevented.” Prelim. Resp. 15.
`ResMed contends that this construction is the plain meaning of the “fixed,
`non-adjustable position” limitations and was made clear during prosecution
`of the application that matured into the ’316 patent. Id. ResMed explains
`that the “fixed, non-adjustable position” limitation “is about omitting a
`
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`specific adjustment feature that changes how components engage with one
`another.” Id.
`As discussed above in our brief summary of the prosecution history,
`each of the independent claims challenged in the Petition (claims 33, 38, 41,
`46, 75, and 78) includes a variation of the “fixed, non-adjustable position”
`limitation. This amendment distinguished Matula’s mask system, which
`includes an adjustment mechanism that adjusts the position of its cushion
`component relative to its frame.
`We agree with ResMed that the plain and customary meaning of the
`“fixed, non-adjustable position” limitations, in view of the Specification and
`prosecution history, limits the claimed structure to a structure where the
`engagement between the cushion component and common frame prevents
`relative movement and adjustment between the cushion component and
`common frame. We adopt this claim interpretation for this Decision.
`ResMed urges us to deny Fisher’s Petition because Fisher did not
`provide an express construction of the “fixed, non-adjustable position” claim
`limitation, which ResMed characterizes as an “important” limitation in this
`proceeding. Prelim. Resp. 38 (citing Rule 37 C.F.R. § 42.104(b)(3)). To
`support this position, ResMed relies on prior Board decisions that have held
`that compliance with Rule 42.104(b)(3) cannot be satisfied with a statement
`that the claims should be given their broadest reasonable interpretation or
`that have denied petitions for failing to construe a critical claim term. Id. at
`38–39.
`We are not persuaded that we should deny Fisher’s Petition on this
`ground. As ResMed itself asserts, the “fixed, non-adjustable position”
`
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`should be given its ordinary meaning—which is exactly what Fisher asserts.
`Compare Prelim. Resp. 14–15 with Pet. 9–10.
`C. Overview of the Asserted Prior Art
`The Petition relies on four prior art references in its asserted grounds
`of unpatentability—Berthon-Jones, Barnett, Gunaratnam, and McAuley. As
`will be evident from our analysis below, we need provide an overview of
`two of these references only—Berthon-Jones and Barnett.
`1. Berthon-Jones
`Berthon-Jones, titled “Mask and Components Thereof,” is an
`international application published May 21, 2004. Ex. 1102, (54), (43). The
`applicant is Patent Owner, ResMed. Id. (71). Berthon-Jones is generally
`directed to “a full-face mask for use with Non-Invasive Positive Pressure
`Ventilation (NIPPV), Continuous Positive Airway Pressure (CPAP) and
`ventilators generally.” Id. ¶ 2. Berthon-Jones’s Figure 51 is reproduced
`below:
`
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`“[Figure] 51 is an exploded perspective view of [ ] mask assembly
`510 according to an[] embodiment of the invention” disclosed in Berthon-
`Jones. Ex. 1102 ¶ 177. Mask 510 includes chassis 512 and
`cushion/secondary frame 514. Id. Chassis 512 connects to a mask headgear
`(not shown in Figure 51) and cushion/secondary frame 514 is adapted to
`form a seal with the mask user’s face. Id.
`Cushion/secondary frame 514 includes connecting members 524,
`which interface with receiving holes 526 in chassis 512 to provide a snap-fit
`connection between cushion/secondary frame 514 and chassis 512. Ex.
`1102 ¶ 182. Cushion/secondary frame 514 further includes projections 528,
`
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`which cooperate with adjustment wheels 530 to adjust cushion/secondary
`frame 514 relative to chassis 512. Id.
`Berthon-Jones’s Figures 52 and 53, reproduced below, illustrate the
`operation of adjustment wheels 530.
`
`
`Figures 52 and 53 “are schematic cross-sectional views of a portion of
`. . . mask chassis 512 and cushion/secondary frame 514 in an engaged
`position, showing an adjustment wheel 530 installed in an adjustment wheel
`retaining portion 542 and engaging a projection 528 on the secondary frame
`518.” Ex. 1102 ¶ 185. As Berthon-Jones describes:
`To adjust the force of the cushion/secondary frame 514
`against the skin 550, the user would turn the adjustment wheels
`530, causing the thicker portion of the wheel 530 to move
`towards and contact the projection 528. Once the thicker portion
`
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`has contacted the projection 528, the secondary frame portion
`514 deflects to thereby cause the cushion 516 to move towards
`or more closely towards the patient’s skin, thereby adjusting the
`sealing force and/or fit. [Figure] 53 illustrates the wheel 530 in
`a position in which it causes the cushion/secondary frame 514 to
`deflect towards the skin [and away from chassis 512],
`eliminating the gaps and/or improving the fit/seal between the
`skin 550 and cushion portion 516.
`Id. ¶ 186.
`2. Barnett
`Barnett, titled “Low Contact Nasal Mask and System Using Same,”
`issued July 2, 2002. Ex. 1103, (54), (45). Barnett is generally directed to “a
`low contact nasal mask that includes a one-piece, light-weight seal member
`defining a nose receiving cavity, a collar coupled to the seal member, and a
`conduit coupling member, and to a system for supplying a flow of gas to a
`patient.” Id. at 1:9–12. Barnett’s Figure 1A is reproduced below:
`
`
`Figure 1A depicts “a sectional side view of a low contact nasal mask
`assembly according to the principles of” the mask system disclosed in
`
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`Barnett. Ex. 1103, 2:65–66. Nasal mask assembly 30 communicates
`breathing gas to a patient from a pressure generating device, such as a
`ventilator, CPAP device, or other device. Id. at 3:33–43. Nasal mask
`assembly 30 includes seal member 32, collar 34, and conduit coupling
`member 36. Id. at 3:48–50. Seal member 32 is fixed to collar 34 and
`conduit coupling member 36 is rotateably mounted on collar 34 so that
`conduit coupling member 36 freely rotates about a central axis of collar 34.
`Id. at 3:50–56. Barnett discloses that seal member 32 may be replaced with
`seal member 32', where seal member 32' is “specifically designed to
`correspond to the facial features of smaller patients, such as children, but is
`otherwise similar to seal member 32.” Id. at 6:1–14.
`Barnett’s Figures 3A and 4A are reproduced below.
`
`
`
`
`
`Figure 3A depicts “a front view of an alternative configuration for the
`seal member” and Figure 4A depicts “a rear view of a collar in the low
`contact nasal mask assembly” depicted in Figure 1A. Ex. 1103, 3:6–7,
`3:11–12. Barnett discloses that seal member 32' (and, also, seal member 32)
`includes channels 82 as part of neck portion 46, which receive protrusions
`
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`80 of collar 34 to secure seal member 32' to collar 34 and prevent relative
`rotational movement between seal member 32' and collar 34. See id. at
`7:35–45.
`
`D. Asserted Grounds of Unpatentability
`Fisher proposes three grounds of unpatentability for the Challenged
`Claims of the ’316 patent: 1) claims 33–35, 37–39, 41–44, 46, 56, 58, 75,
`76, and 78–85 are unpatentable under 35 U.S.C. § 103(a) over Berthon-
`Jones and Barnett; 2) claims 47–55 are unpatentable under 35 U.S.C.
`§ 103(a) over Berthon-Jones, Barnett, and Gunaratnam; and 3) claims 36,
`40, 45, 57, and 77 are unpatentable under 35 U.S.C. § 103(a) over Berthon-
`Jones, Barnett, and McAuley.
`Section 103(a) [of 35 U.S.C.] forbids issuance of a patent when
`“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 said subject matter
`pertains.”
`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 ordinary skill in the art; and (4) when available, secondary
`considerations, such as commercial success, long felt but unsolved needs,
`and failure of others. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`We addressed the level of ordinary skill in the art supra. The record
`does not include any evidence of secondary considerations. We address the
`relevant scope and content of the prior art and any differences between the
`claimed subject matter and these relevant prior art disclosures, below.
`
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`1. Independent Claims 33, 38, 41, 46, 75, and 78 over Berthon-Jones and
`Barnett for Ground 1
`Ground 1 addresses the patentability of each of the six independent
`claims of the Challenged Claims— claims 33, 38, 41, 46, 75, and 78. As we
`discussed above, each of these claims recite a version of the “fixed, non-
`adjustable position” claim limitation. See Section I.C, supra. The “fixed,
`non-adjustable position” claim limitation of claim 41 is representative of
`these limitations and 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.1101, 15:5–9.
`The Petition provides two alternative analyses regarding the “fixed,
`non-adjustable position” limitation. See Pet. 23–26. We address each
`alternative in turn, below.
`a. The “fixed, non-adjustable position” limitation and Berthon-Jones
`With respect to the subject matter of the “fixed, non-adjustable” claim
`limitations, Fisher asserts that “Berthon-Jones discloses protrusions 524 on
`the cushion component 514 that are adapted to be inserted into
`corresponding receiving holes 526 on the common frame 512 to provide a
`snap-fit between the cushion component 514 and the common frame 512.”
`
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`Pet. 23. In support of its position, Fisher annotates Berthon-Jones’s Figures
`51–53, which we reproduce below.
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`Annotated Figure 51 shows Berthon-Jones’s mask 510, with
`annotations indicating protrusions 524 and receiving holes 526. Pet. 24.
`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 25. Fisher contends 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.
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`Id. (citing Ex. 1107 (Decl. of Jason Eaton) ¶ 60). We understand Fisher’s
`position to be that, 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.
`ResMed argues that Fisher’s position is contrary to the plain language
`of the “fixed, non-adjustable position” limitations of claims 1, 59, and 65.
`Prelim. Resp. 25. We agree.
`As ResMed explains, 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 (the alleged cushion component) and chassis
`512 (the alleged common frame). Prelim. Resp. 26–27. ResMed explains
`that Berthon-Jones’s Figures 52 and 53 illustrate this relative movement as it
`depicts differing-sized gaps between cushion/secondary frame 514 and
`chassis 512 depending on the position of adjustment wheel 530. Id. at 27.
`Fisher’s position acknowledges that 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. 24–
`25. However, Fisher asserts that the “fixed, non-adjustable position”
`limitations of claims 33, 38, 41, 46, 75, and 78 are broad enough to cover a
`structure that is adjustable, but, when no adjustment is made, the cushion
`component is fixed relative to the common frame. See id. at 25.
`We do not read the “fixed, non-adjustable position” limitations of
`claims 33, 38, 41, 46, 75, and 78 so broadly. As ResMed correctly argues, at
`all times, Berthon-Jones’s adjustment wheel 530 is available to adjust mask
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`510, causing relative motion between cushion/secondary frame 514 and
`chassis 512. See Prelim. Resp. 28–29. As such, the disclosed structure is
`not in a “non-adjustable” configuration as required by claims 33, 38, 41, 46,
`75, and 78.
`Finally, ResMed argues that the structure of Berthon-Jones, including
`an adjustment mechanism, was disclaimed during the prosecution of the
`application that matured into the ’316 patent. Prelim. Resp. 29–30. As
`ResMed illustrates in its Preliminary Response, the claims of the ’316 patent
`were amended to distinguish the Matula reference, with its adjustment
`mechanism. See id. at 30–31. We agree that ResMed disclaimed a mask
`system with an adjustment mechanism that adjusts the relative position of a
`cushion component and a frame.
`Accordingly, for the reasons above, we find that the Petition fails to
`establish a reasonable likelihood that Berthon-Jones discloses the subject
`matter of the “fixed, non-adjustable position” limitations of claims 33, 38,
`41, 46, 75, and 78.
`b. The “fixed, non-adjustable position” limitation and Barnett
`Fisher alternatively contends that, “[t]o the extent Berthon-Jones
`provides insufficient disclosure for [“fixed, non-adjustable position”
`limitation], Barnett expressly discloses a fixed, non-adjustable position
`between the frame and cushion component. Pet. 26. Fisher contends that
`Barnett teaches that its cushion component (seal 32 or seal 32') engages
`collar 34 (the alleged common frame) through protrusions 80 and channels
`82. Id.
`ResMed responds that Fisher fails to meet its burden to adequately
`explain how its alternative position with respect to the “fixed, non-adjustable
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`position” limitations relates to Fisher’s overall obviousness positions with
`respect to claims 33, 38, 41, 46, 75, and 78. Prelim. Resp. 31–32.
`We agree with ResMed and determine that Fisher’s alternative
`position with respect to the “fixed, non-adjustable position” limitations of
`claims 33, 38, 41, 46, 75, and 78 fails to establish a reasonable likelihood
`that these claims are rendered obvious by the prior art of record. Fisher fails
`to adequately explain its obviousness positions based on Barnett disclosing
`the “fixed, non-adjustable position” limitations of claims 33, 38, 41, 46, 75,
`and 78. Specifically, Fisher does not explain if its obviousness position is
`that, based on the teachings of Barnett of a fixed, non-adjustable relationship
`between a cushion component and common frame, that a person having
`ordinary skill in the art would modify Berthon-Jones’s mask 510 to remove
`adjustment wheel 530. See Prelim. Resp. 33 (“Petitioner never proposes that
`Berthon-Jones’s adjustment feature or the adjustment wheels [5]30 be
`removed.”). Fisher also fails to explain if its alternative position is that an
`artisan of ordinary skill would have replaced Berthon-Jones’s
`cushion/secondary frame 514 and chassis 512 with Barnett’s seal 32 and
`collar 34, yet retain other features of Berthon-Jones’s mask relied on for
`other claim elements. See id. at 32. Finally, although Fisher provides
`reasons for its proposed modifications, none of the reasons address this
`alternative teaching of a fixed, non-adjustable structure by Barnett. See Pet.
`31–33 (addressing modifications concerning multiple cushion components
`and elbows, but not providing a reasoning for employing Barnett’s
`engagement feature). Fisher does not argue or adequately explain why one
`of ordinary skill in the art would have modified the Berthon-Jones mask
`with the non-adjustable features disclosed in Barnett.
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`Accordingly, for the reasons above, we find that the Petition fails to
`establish a reasonable likelihood that, to the extent Barnett discloses the
`subject matter of the “fixed, non-adjustable position” limitations of claims
`33, 38, 41, 46, 75, and 78, these claims are rendered obvious by the prior art
`of record.
`2. Grounds 2 and 3
`Fisher’s grounds 2 and 3 address the subject matter of dependent
`claims 36, 40, 45, 47–55, 57, and 77—claims that depend, directly or
`indirectly, from independent claims 33, 38, 41, 46, and 75. For each of these
`grounds, Fisher relies on its alternative positions of how either Berthon-
`Jones or Barnett discloses the subject matter of the “fixed, non-adjustable
`position” limitations of claims 33, 38, 41, 46, and 75. That is, Fisher does
`not contend that Gunaratnam or McAuley cure the deficiency we discuss
`above with respect to the “fixed, non-adjustable position” limitations of
`claims 33, 38, 41, 46, and 75.
`Accordingly, we determine that the Petition fails to establish a
`reasonable likelihood that dependent claims 36, 40, 45, 47–55, 57, and 77
`are unpatentable under Grounds 2 and 3.
`
`
`III. CONCLUSION
`
`After considering the evidence and arguments presented in the
`Petition, including its supporting testimonial evidence, and Patent Owner
`Preliminary Response, we conclude that the information presented in the
`Petition fails to establish a reasonable likelihood that Fisher will prevail with
`respect to at least 1 of the Challenged Claims, and we do not institute inter
`partes review on any of the Challenged Claims.
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`IV. ORDER
`
`After due consideration of the record before us, it is:
`ORDERED that Petitioner’s Petition for an inter partes review of
`claims 33–58 and 75–85 of U.S. Patent No. 9,381,316 B2 is denied.
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`For PETITIONER:
`
`Brenton R. Babco