`571-272-7822
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`Paper No. 10
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`Entered: August 17, 2017
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`
`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 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)
`
`
`
`
`
`
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`IPR2017-00218
`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 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 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
`
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`IPR2017-00218
`Patent 9,381,316 B2
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`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 33, 38, 41, 46, 75,
`and 78, each of which includes a variation of the “fixed, non-adjustable
`position” limitation. Claims 41, 46, and 75 recite 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.” Ex. 1101, 15:5–9, 15:66–16:3, 20:10–14. See also
`Reh’g Req. 4 (presenting the “fixed, non-adjustable position” limitation for
`claims 33, 38, 41, 46, 75, and 78, which Fisher terms the “engagement
`limitation”). As we recognized in our Decision, during the prosecution of
`the application that matured into the ’316 patent, ResMed distinguished
`Matula (Ex. 2101) from the claims by adding the subject matter of the
`“fixed, non-adjustable position” limitations. See Dec. on Inst. 10.
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`Patent 9,381,316 B2
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`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. 1108, 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. 29; Reh’g Req. 4–5. 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. 21.
`
`
`1 Application claims 66, 81, 96, 113, and 133 issued as 38, 41, 46, 59, and
`75, respectively. See Ex. 1108, 47–51.
`
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`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. 5–6. 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. 7 (citing Ex. 1108, 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 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.
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`IPR2017-00218
`Patent 9,381,316 B2
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`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. 1108, 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. 14–23. For example, the “fixed, non-
`adjustable position” claim limitation of claim 41 requires “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 plain meaning
`of this language is that the cushion components have a structure that engages
`
`
`2 Fisher also asserted that the claim terms should be given their ordinary and
`customary meaning. Pet. 9–10.
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`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 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.
`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. 23–25 (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).
`
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`IPR2017-00218
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`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.
`
`
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`
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`Annotated Figure 51 shows Berthon-Jones’s mask 510, with
`annotations indicating protrusions 524 and receiving holes 526. Pet. 23.
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`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 24–25. 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. at 25 (citing Ex. 1107 (Decl. of Jason Eaton) ¶ 60). 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. 24–25.
`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. 12. 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 13.
`Fisher argues that Berthon-Jones’s adjustment wheel 530 provides for a
`“slight ‘deflection’ of only the sides of the cushion component.” Id. Fisher
`continues that “[t]he slight deflection of a peripheral portion of the cushion
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`component is insufficient to change the overall position of the cushion
`component relative to the common frame, rather, simply changes the shape
`of the cushion component.” Id. at 14.
`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. 25. 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. 1102 ¶ 186; see also id. at ¶ 168
`
`
`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 issue in deciding this Request.
`
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`(“[Figures] 41 through 53 illustrate additional embodiments which allow
`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.
`
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`IPR2017-00218
`Patent 9,381,316 B2
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`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
`IPR36784-0056IP2@fr.com
`PTABInbound@fr.com
`
`
`
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