Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper No. 8
`Entered: May 19, 2017
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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`INOGEN, INC.,
`Petitioner,
`
`v.
`
`SEPARATION DESIGN GROUP IP HOLDINGS, LLC,
`Patent Owner.
`
`Case IPR2017-00300
`Patent 8,894,751 B2
`
`Before KRISTINA M. KALAN, CHRISTOPHER M. KAISER, and
`ELIZABETH M. ROESEL, Administrative Patent Judges.
`
`KAISER, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Tel: 571-272-7822
`
`Paper No. 8
`Entered: May 19, 2017
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`INOGEN, INC.,
`Petitioner,
`
`v.
`
`SEPARATION DESIGN GROUP IP HOLDINGS, LLC,
`Patent Owner.
`
`Case IPR2017-00300
`Patent 8,894,751 B2
`
`Before KRISTINA M. KALAN, CHRISTOPHER M. KAISER, and
`ELIZABETH M. ROESEL, Administrative Patent Judges.
`
`KAISER, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`
`
`
`
`
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`IPR2017-00300
`Patent 8,894,751 B2
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`INTRODUCTION
`
`A. Background
`Inogen, Inc. (“Petitioner”) filed a Petition (Paper 1, “Pet.”) requesting
`inter partes review of claims 22–32 of U.S. Patent No. 8,894,751 B2
`(Ex. 1001, “the ’751 patent”). Separation Design Group IP Holdings, LLC
`(“Patent Owner”) filed a Preliminary Response (Paper 6, “Prelim. Resp.”).
`We have authority to determine whether to institute an inter partes
`review. 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a). The standard for
`instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which
`provides that an inter partes review may not be instituted unless “there is a
`reasonable likelihood that the petitioner would prevail with respect to at least
`1 of the claims challenged in the petition.”
`After considering the Petition and the evidence currently of record, we
`determine that Petitioner has demonstrated that there is a reasonable
`likelihood that it would prevail with respect to at least one of the claims
`challenged in the Petition. Accordingly, we institute inter partes review.
`
`B. Related Matters
`There is a pending petition for inter partes review of U.S. Patent No.
`9,199,055 B2, which is related to the ’751 patent. That proceeding has been
`assigned case number IPR2017-00453. Paper 4, 2–3. In addition, an action
`alleging infringement of the ’751 patent is ongoing in Separation Design
`Group IP Holdings, LLC v. Inogen, Inc., Case No. 2:15-cv-08323-JAK-JPR
`(C.D. Cal.). Pet. 6–7; Paper 4, 2.
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`Patent 8,894,751 B2
`C. The Asserted Grounds of Unpatentability
`Petitioner contends that claims 22–32 of the ’751 patent are
`unpatentable based on the following grounds (Pet. 11–51):1
`Statutory
`Basis
`Challenged Claim(s)
`Ground
`§ 103
`
`22–28, 31, and 32
`
`22–28, 31, and 32
`
`22–28, 31, and 32
`
`29 and 30
`
`29 and 30
`
`29 and 30
`
`§ 103
`
`§ 103
`
`§ 103
`
`§ 103
`
`§ 103
`
`McCombs,2 Whitley,3 and
`AAPA4
`McCombs, Whitley, and
`Occhialini5
`Jagger,6 McCombs, and
`AAPA
`McCombs, Whitley, AAPA,
`and Bliss7
`McCombs, Whitley,
`Occhialini, and Bliss
`Jagger, McCombs, AAPA,
`and Bliss
`
`D. The ’751 Patent
`The ’751 patent is directed to “[l]ightweight, portable oxygen
`concentrators that operate using an ultra rapid, sub one second, adsorption
`
`
`1 Petitioner also relies on a declaration from Brenton A. Taylor. Ex. 1011.
`2 McCombs et al., US 2006/0117957 A1, published June 8, 2006 (Ex. 1002,
`“McCombs”).
`3 Whitley et al., US 2007/0137487 A1, published June 21, 2007 (Ex. 1003,
`“Whitley”).
`4 Petitioner contends that statements in the ’751 patent are Applicant
`Admitted Prior Art (“AAPA”). Pet. 23–25 (citing Ex. 1001, 1:49–55, 2:10–
`18, 10:57–59, 18:6–12, 18:33–44).
`5 Occhialini et al., U.S. Patent No. 7,279,029 B2, issued Oct. 9, 2007 (Ex.
`1004, “Occhialini”).
`6 Jagger et al., US 2006/0174874 A1, published Aug. 10, 2006 (Ex. 1005,
`“Jagger”).
`7 Bliss et al., US 2006/0230931 A1, published Oct. 19, 2006 (Ex. 1006,
`“Bliss”).
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`cycle based on advanced molecular sieve materials.” Ex. 1001, at [57]. A
`portable oxygen concentrator (“POC”) is a small device that provides
`therapeutic oxygen to patients who need it. Id. at 1:40–48. The POCs of
`the ’751 patent operate by using a compressor to pressurize ambient air and
`forcing the pressurized air through beds of molecular sieve materials that
`adsorb nitrogen, allowing air with a higher concentration of oxygen to flow
`out of the device. Id. at 10:57–61. During a subsequent reduction in
`pressure, nitrogen is desorbed from the molecular sieve material and
`discharged from the device as a waste stream. Id. at 10:62. In the ’751
`patent, these swings of pressure take “less than one second.” Id. at 10:53–
`56. The short duration of these cycles requires molecular sieve particles
`ranging in diameter from about 60 microns to 180 microns to allow rapid
`diffusion of gas in and out of the particles. Id. at 11:6–20. The ’751 patent
`describes its POCs as having removable and replaceable adsorbent modules.
`Id. at 12:31–38.
`
`E. Illustrative Claims
`Claims 22–32 of the ’751 patent are challenged. Claims 22 and 32 are
`independent, and claims 22 and 31 are illustrative:
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`22. A portable oxygen concentrator, comprising:
`at least one removable module comprising
`a housing;
`at least one adsorbent bed contained in said housing;
`wherein said adsorbent bed comprises at least one molecular
`sieve material;
`wherein said molecular sieve material has a substantially
`spherical shape;
`wherein the ratio of the length of said absorbent bed to the
`diameter of said absorbent bed is less than about 4.8:1; and
`wherein said absorbent bed is capable of a ratio of product
`flow rate to mass of said molecular sieve material of greater
`than 3.3 ml/min/g;
`a compressor;
`a manifold to control gas flow into and out of said removable
`module;
`at least one removable battery cell;
`wherein said portable oxygen concentrator weighs less than
`about 5 kg; and
`wherein said portable oxygen concentrator is capable of
`producing up to 3 liters of oxygen per minute at 22° C. and 1
`atmosphere pressure.
`Ex. 1001, 26:11–34.
`
`31. A removable module of claim 22,
`wherein said removable module is replaceable by a user.
`Id. at 26:58–59.
`
`ANALYSIS
`
`A. Claim Construction
`In an inter partes review, we construe claim terms in an unexpired
`patent according to their broadest reasonable construction in light of the
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`specification of the patent in which they appear. 37 C.F.R. § 42.100(b); see
`Cuozzo Speed Techs. LLC v. Lee, 136 S. Ct. 2131, 2144 (2016) (upholding
`the use of the broadest reasonable interpretation standard). Claim terms
`generally 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).
`Petitioner contends that the challenged claims are unpatentable under
`Patent Owner’s proposed constructions in the related infringement litigation,
`as well as the District Court’s constructions, including for the terms
`“removable module” and “substantially spherical shape.” Pet. 11–12. Patent
`Owner proposes constructions for the terms “removable module” and
`“replaceable by a user.” Prelim. Resp. 11–25. To determine whether to
`institute inter partes review, we need construe only “removable module” and
`“replaceable by a user.” See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc.,
`200 F.3d 795, 803 (Fed. Cir. 1999) (“only those terms need be construed that
`are in controversy, and only to the extent necessary to resolve the
`controversy”).
`
`1. Removable Module
`Patent Owner proposes construing “removable module” as “unit
`comprised of one or more assembled components that is releasably
`connectible to the remainder of the POC, the unit being readily accessible
`and disconnectible without substantial disassembly of the POC.” Prelim.
`Resp. 14. Petitioner relies on the District Court’s construction: “unit
`comprised of one or more assembled components that is releasably
`connectible to one or more other components.” Pet. 12; Ex. 1014, 11.
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`We are not bound by the construction given a term by the District
`Court, because the District Court applies a different claim-construction
`standard than we are required to apply. Power Integrations, Inc. v. Lee, 797
`F.3d 1318, 1326 (Fed. Cir. 2015). When such a claim construction is made
`of record, however, we must acknowledge it and “assess whether it is
`consistent with the broadest reasonable construction of the term” being
`construed. Id. Here, for purposes of deciding whether to institute review,
`and based on the present record, we determine that the District Court’s
`construction of “removable module” is consistent with the broadest
`reasonable construction of the term.
`The District Court’s construction and Patent Owner’s proposed
`construction differ in that Patent Owner’s construction would require that
`the removable module be “readily accessible and disconnectible without
`substantial disassembly of the POC.” It is true, as Patent Owner notes, that
`the ’751 patent describes the invention as “featur[ing] a removable and
`replaceable adsorbent module that is designed to be patient friendly and
`require very little physical strength or dexterity to install.” Ex. 1001, 12:28–
`34. But we note that the cited portion of the specification is not a discussion
`of “a removable adsorbent module,” but rather a discussion of “a removable
`and replaceable adsorbent module.” Id. Thus, to the extent that this portion
`of the specification has any definitional significance, it relates to “removable
`and replaceable,” not to “removable.”
`Moreover, we are not persuaded by Patent Owner’s argument that the
`’751 patent limits “removable module” to removals that do not require
`“substantial disassembly of the POC.” Patent Owner relies on the ’751
`patent’s description of “a rupture plate . . . that [is] pierced by a piercing
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`mechanism when the module is installed,” such that the connection of the
`module and the remainder of the POC “is made automatically in a single
`step.” Prelim. Resp. 15. However, this is a description of a preferred
`embodiment, not a limitation of the claim. Nor are we persuaded to limit the
`term based on the inclusion in the ’751 patent of other embodiments that
`provide for easy replacement of adsorbent modules. “[I]t is important not to
`import into a claim limitations that are not part of the claim.” SuperGuide
`Corp. v. DirecTV Enter., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004). This rule
`extends to a prohibition on limiting the claims to the embodiments described
`in the specification of the patent, absent clear disclaimer in the specification.
`In re Am. Acad. Of Sci. Tech Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004)
`(“We have cautioned against reading limitations into a claim from the
`preferred embodiment described in the specification, even if it is the only
`embodiment described, absent clear disclaimer in the specification.”);
`Liebel-Flarsheim Co. v. Medrad Inc., 358 F.3d 898, 906 (Fed. Cir. 2004);
`Altiris Inc. v. Symantec Corp., 318 F.3d 1363, 1371 (Fed. Cir. 2003).
`Accordingly, for purposes of this decision, and based on the present
`record, we construe “removable module” as “unit comprising one or more
`assembled components that is releasably connectible to one or more other
`components.” To the extent that the parties believe the record developed
`during trial will require a different construction, we welcome further
`discussion of the construction of this term at the appropriate time during the
`pendency of the inter partes review.
`
`2. Replaceable by a User
`Patent Owner proposes construing “replaceable by a user” as
`“configured with a user-friendly design, such that the module is capable of
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`being easily removed and replaced in a minimal number of steps by a typical
`end user of the device.” Prelim. Resp. 24. Petitioner does not propose a
`construction.
`In the related litigation asserting infringement of the ’751 patent, the
`District Court construed “replaceable by a user” as “capable of being
`removed and reinstalled by a user of the device.” Ex. 1014, 28. For
`purposes of deciding whether to institute review, and based on the present
`record, we determine that the District Court’s construction of “replaceable
`by a user” is consistent with the broadest reasonable construction of the
`term.
`The District Court’s construction and Patent Owner’s proposed
`construction differ in that Patent Owner’s construction would require
`something that is “replaceable by a user” to be “configured with a user-
`friendly design” and in that Patent Owner’s construction would require the
`replacement to be capable of being performed “in a minimal number of steps
`by a typical end user of the device.” Patent Owner has not provided us with
`reasons why the “user” of the claims of the ’751 patent must be “a typical
`end user,” as opposed to a member of a broader set of users, nor has Patent
`Owner explained why the replacement must take “a minimal number of
`steps.” Further, as the District Court noted with respect to the similar phrase
`“designed to be user friendly,” Ex. 1014, 28, the scope of “configured with a
`user-friendly design” is unclear and, thus, unhelpful in claim construction.
`The description in the ’751 patent of embodiments having modules
`that are “very simple to replace” and “as easy to change as the battery pack”
`does not persuade us to limit the claim term “replaceable by a user” to
`replacements that are carried out “in a minimal number of steps by a typical
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`end user.” As discussed above, “it is important not to import into a claim
`limitations that are not part of the claim.” SuperGuide, 358 F.3d at 875.
`This prohibits us from limiting the claims to the embodiments described in
`the specification, absent a clear disclaimer. In re Am. Acad. Of Sci. Tech
`Ctr., 367 F.3d at 1369; Liebel-Flarsheim, 358 F.3d at 906; Altiris, 318 F.3d
`at 1371. In addition, although Patent Owner references statements made by
`Petitioner in an unrelated patent application, Prelim. Resp. 23–24, it is
`unclear under what theory those statements could control the broadest
`reasonable interpretation of any term as it is used in the ’751 patent.
`Accordingly, for purposes of this decision, and based on the present
`record, we construe “replaceable by a user” as “capable of being installed
`and uninstalled by a user of the device.” Our preliminary construction
`differs only slightly from the District Court’s, replacing “removed and
`reinstalled” with “installed and uninstalled,” to avoid suggesting that the
`removable module needs to be reusable. To the extent that the parties
`believe the record developed during trial will require a different
`construction, we welcome further discussion of the construction of this term
`at the appropriate time during the pendency of the inter partes review.
`
`B. Asserted Obviousness over McCombs, Whitley, and AAPA
`Petitioner argues that the subject matter of claims 22–28, 31, and 32
`would have been obvious to a person of ordinary skill in the art given the
`teachings of McCombs, Whitley, and AAPA. Pet. 27–44.
`
`1. McCombs
`McCombs relates to “[a] compact and highly portable combination
`pressure swing adsorption apparatus and product gas conservation device for
`medical use . . . in which the operating components are detachably mounted
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`together as a single unit.” Ex. 1002, at [57]. It discloses “an oxygen
`concentrator apparatus that can . . . be highly portable and easily
`manipulated and transported even by patients with relatively limited physical
`capacities.” Id. ¶ 7. The apparatus of McCombs includes a housing
`enclosure, a battery, a compressor, a manifold, and two adsorbent beds. Id.
`¶¶ 20–30, 44, Fig. 7. The adsorbent beds, manifolds, and compressor are
`“held together as a compact unit,” which is “attached to central chassis 108,”
`making the unit capable of being “readily assembled in production and
`readily accessed for servicing.” Id. ¶ 30, Fig. 8.
`
`2. Whitley
`Whitley relates to a “[p]ortable medical oxygen concentrator.” Ex.
`1003, at [57]. Figure 3 of Whitley is reproduced below:
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`Figure 3 depicts “an exploded view” of “a portable medical oxygen
`concentrator according to an embodiment of the invention” of Whitley. Id.
`¶¶ 64, 66. Contained within shell 1 is air separation system 15, which
`includes several adsorbent columns “that are removably mounted in
`cylindrical collars.” Id. ¶¶ 84–86. These adsorbent columns “may be
`detachably connected to the base assembly at one end to allow easy
`replacement.” Id. ¶ 77.
`
`3. AAPA
`In the written description of its invention, the ’751 patent itself notes
`several things that previously were known in the art. First, the ’751 patent
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`states that “[r]espiratory oxygen usage rates” were known to range from 3
`to 10 “liters per minute at 22° C. and 1 atmosphere pressure,” depending on
`the characteristics of the patient being treated. Ex. 1001, 1:49–55. Second,
`the ’751 patent states that “[p]ressure swing adsorption systems typically
`use[d] adsorbent beds filled with spherical particles of the molecular sieve
`materials.” Id. at 10:57–59. Third, the ’751 patent describes an earlier
`commercial portable oxygen concentrator that “[made] the sieve beds
`replaceable” by providing “separate pouches for [the] compressor, sieve
`beds, and batteries.” Id. at 18:6–12. Finally, the ’751 patent describes the
`prior-art use of multiple or additional batteries with an oxygen concentrator,
`the use of batteries mounted externally on an oxygen concentrator, and the
`use of interchangeable battery packs in “various battery operated tools.” Id.
`at 18:33–44.
`
`4. Analysis
`Petitioner argues that all limitations of claims 22–28, 31, and 32 are
`taught or suggested by the combination of McCombs, Whitley, and AAPA.
`Pet. 27–44, 62–83.
`
`a. Reason to Combine
`Petitioner argues that it would have been obvious for a person of
`ordinary skill in the art to have combined the teachings of McCombs,
`Whitley, and AAPA because doing so would have involved no more than
`combining “familiar elements according to known methods . . . [to] yield
`predictable results.” Pet. 40 (citing KSR Int’l Co. v. Teleflex, Inc., 550
`U.S. 398, 416 (2007)). Patent Owner does not argue otherwise. Prelim.
`Resp. 41–42. On the present record, Petitioner has made a sufficient
`showing that combining the teachings of McCombs, Whitley, and AAPA
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`would have been obvious. Each of these prior-art references relates to
`portable oxygen concentrators. Ex. 1001, 10:57–59, 18:6–12; Ex. 1002, at
`[57]; Ex. 1003, at [57]. Moreover, each of the portable oxygen
`concentrators disclosed in these references uses a pressure-swing adsorption
`process. Ex. 1001, 10:57–59; Ex. 1002 ¶ 2; Ex. 1003 ¶ 77. Accordingly, on
`the present record, there is sufficient support for Petitioner’s argument that
`“the features taught in Whitley [and AAPA] would have been readily
`compatible with and easily incorporated into the POC of McCombs with a
`reasonable expectation of success.” Pet. 40–41 (citing Ex. 1011 ¶¶ 171–
`174).
`
`b. Claims 22–28, 31, and 32: Removable Module
`Petitioner argues that the combination of McCombs, Whitley, and
`AAPA teaches or suggests each of the limitations of each of claims 22–28,
`31, and 32. Pet. 27–44, 62–83. Patent Owner argues that no reference
`teaches the “removable module” that is recited in each of claims 22–28, 31,
`and 32. Prelim. Resp. 41–42.
`With respect to the “removable module” limitation, as discussed
`above, we construe “removable module” as “unit comprising one or more
`assembled components that is releasably connectible to one or more other
`components.” Petitioner argues that this limitation is taught or suggested by
`each of McCombs, Whitley, and AAPA. Pet. 27–29. McCombs discloses a
`POC “in which the operating components are detachably mounted together
`as a single unit.” Ex. 1002, at [57]. Specifically, McCombs depicts “a
`compact unit” made up of adsorbent beds, manifolds, and a compressor all
`mounted together in a way that permits them to be attached to or detached
`from the remainder of the POC. Id. ¶ 30, Figs. 7, 8. Whitley discloses
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`adsorbent columns that “may be detachably connected to the base assembly
`at one end.” Ex. 1003 ¶ 77. AAPA discloses a commercial product in
`which the adsorbent sieve beds are replaceable “as a separate unit” contained
`in a “separate pouch[].” Ex. 1001, 18:6–12.
`Patent Owner argues that none of these references teaches or suggests
`a “removable module.” Prelim. Resp. 27–42. With respect to McCombs,
`Patent Owner argues that “the adsorbent beds are not designed to be easily
`accessible or replaced in minimal steps,” because they are located behind
`many other components of the POC and because a commercial product that
`allegedly “corresponds to” the invention of McCombs has “11 pages of
`instructions on how to replace the adsorbent bed columns.” Id. at 28–31
`(citing Ex. 2003, 27, 29–35, 41–43). As discussed above, for purposes of
`this decision, and on the current record, we do not construe “removable
`module” as requiring a unit that is readily accessible and disconnectible
`without substantial disassembly of the POC, as argued by Patent Owner.
`Accordingly, even if McCombs’s module is difficult or complicated to
`remove from the POC, that does not mean, on the current record, that
`McCombs fails to teach or suggest a “removable module.”
`With respect to Whitley, Patent Owner argues that the adsorbent
`columns are not “removable” because “the entire exterior housing (1) of the
`concentrator must be fully removed from the bottom platform (9) to expose
`the interior operable components of the concentrator before the adsorbent
`columns are accessible.” Prelim. Resp. 33–34. This is not persuasive,
`because, under the broadest reasonable interpretation of “removable
`module,” there is no requirement that there be no disassembly of the POC
`before removal of the modules. Patent Owner also argues that, once the
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`Whitley POC is fully assembled, removing the adsorbent columns requires
`the manual removal of pneumatic tubes connecting the adsorbent columns to
`the manifold, as well as tube clamps that hold the tubes in place. Again, this
`is not persuasive, because a “removable module” need not be removed in a
`single step. Based on the present record, Whitley’s adsorbent columns each
`comprise “one or more assembled components,” and each column “is
`releasably connectible to” the base assembly. Pet. 38, 64–65 (quoting Ex.
`1003 ¶ 77; citing Ex. 1003, at [57], ¶¶ 1, 3, 5, 32, 93, 101, Figs. 3–8).
`With respect to AAPA, Patent Owner argues that the ’751 patent
`“expressly disclaimed” or disavowed the prior-art V-Box POC, as well as
`any “cartridge that requires disconnecting and connecting eight pneumatic
`tubes . . . because it is not as simple to replace as the preferred embodiment.”
`Prelim. Resp. 39–40 (citing Ex. 1001, 18:7–18). “Where the specification
`makes clear that the invention does not include a particular feature, that
`feature is deemed to be outside the reach of the claims of the patent, even
`though the language of the claims, read without reference to the
`specification, might be considered broad enough to encompass the feature in
`question.” SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242
`F.3d 1337, 1341 (Fed. Cir. 2001). A disavowal may be inferred when the
`specification both (1) contains only disparaging remarks about the
`disavowed feature and (2) simultaneously depicts embodiments only without
`the disavowed feature. In re Abbott Diabetes Care Inc., 696 F.3d 1142,
`1149–50 (Fed. Cir. 2012). Here, the ’751 patent describes the replaceable
`sieve beds of the prior-art system as requiring “8 pneumatic connections”
`and tubing that “introduces sizeable flow restrictions.” Ex. 1001, 18:6–12.
`On this record, we are not persuaded that this language rises to the level of
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`“disparaging” the prior-art system. See Abbott Diabetes Care, 696 F.3d at
`1149 (describing as disparaging a comment that the prior-art system
`“hinders the convenient use of these devices for everyday applications”).
`Moreover, the features of the ’751 patent that contrast with the prior art are
`not required in all embodiments of the ’751 patent. Ex. 1001, 2:32–62
`(describing rupture plates and fibrous pads as “optional”), 2:63–3:16
`(describing piercing mechanisms as “optional”), 3:17–47 (describing
`piercing mechanisms and moisture control unit as “optional”), 18:6–18
`(describing “one embodiment” as overcoming the prior-art disadvantages by
`having “only three pneumatic connection points” and rupture plates that
`“preferably” cover the ports and are pierced upon insertion of a module into
`the POC).
`At most, the ’751 patent disparages V-Box’s specific implementation
`of replaceable sieve beds, but there is no disclaimer of AAPA’s teaching of
`replaceable sieve beds. Ex. 1001, 18:9–10 (“This makes the sieve beds
`replaceable . . . .”). It is that teaching that Petitioner proposes to combine
`with the other cited art. Pet. 34. In re Keller, 642 F.2d 413, 425 (CCPA
`1981) (“[t]he test for obviousness is not whether the features of a secondary
`reference may be bodily incorporated into the structure of the primary
`reference. . . . Rather, the test is what the combined teachings of those
`references would have suggested to those of ordinary skill in the art.”)
`Accordingly, Patent Owner’s disclaimer argument is not a reason to deny
`institution based on Petitioner’s Ground 1.
`
`c. Claim 31: Replaceable by a User
`Claim 31 depends from claim 22 and adds a limitation requiring that
`the removable module be “replaceable by a user.” Ex. 1001, 26:58–59.
`
`17
`
`
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`IPR2017-00300
`Patent 8,894,751 B2
`
`Petitioner contends that this limitation is taught or suggested by each
`of McCombs, Whitley, and AAPA. Pet. 81–82. McCombs discloses a
`portable oxygen concentrator that can be “easily manipulated . . . even by
`patients with relatively limited physical capacities.” Ex. 1002 ¶ 7. Whitley
`discloses adsorbent columns that are designed “to allow easy replacement.”
`Ex. 1003 ¶ 77. AAPA discloses sieve beds that are “replaceable” and are
`contained in a pouch on a belt to be worn by a user of a POC. Ex. 1001,
`18:6–12. In addition, Petitioner’s declarant states that each of these
`disclosures would be interpreted by a person of ordinary skill in the art as
`including replacement by a user of a POC. Ex. 1011 ¶¶ 164–166.
`Patent Owner argues that no reference teaches or suggests
`replacement of a removable module by a user of a POC. Prelim. Resp. 27–
`42. With respect to McCombs, Patent Owner argues that “the adsorbent
`beds are not designed to be easily accessible or replaced in minimal steps”
`because they are located behind many other components of the POC and
`because a commercial product that allegedly “corresponds to” the invention
`of McCombs has “11 pages of instructions on how to replace the adsorbent
`bed columns.” Id. at 28–31 (citing Ex. 2003, 27, 29–35, 41–43). As
`discussed above, for purposes of this decision, we construe “replaceable by a
`user” as “capable of being installed and uninstalled by a user of the device.”
`We do not accept Patent Owner’s arguments that the claim limitation
`requires “a user-friendly design” that is “easily removed and replaced in a
`minimal number of steps by a typical end user of the device.” Prelim. Resp.
`24. Accordingly, even if McCombs’s module is difficult or complicated to
`replace, that does not mean, on the current record, that McCombs fails to
`teach or suggest a module that is “replaceable by a user.”
`
`18
`
`
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`IPR2017-00300
`Patent 8,894,751 B2
`
`With respect to Whitley, Patent Owner argues that the adsorbent
`columns are not “replaceable by a user” because “the entire exterior housing
`(1) of the concentrator must be fully removed from the bottom platform (9)
`to expose the interior operable components of the concentrator before the
`adsorbent columns are accessible.” Prelim. Resp. 33–34. According to
`Patent Owner, “it would be . . . strictly prohibited by the manufacture[r] for
`a user to remove the exterior housing to expose and obtain access to the
`interior operable components of the concentrator.” Id. at 34. This is not
`persuasive, because, under the broadest reasonable interpretation of
`“replaceable by a user,” there is no requirement that the replacement occur
`without further disassembly of the POC or in a way that is desired by the
`manufacturer of the POC. Based on the present record, Whitley’s adsorbent
`columns each comprise “one or more assembled components,” each column
`“is releasably connectible to” the base assembly, and this is done “to allow
`easy replacement” of the adsorbent columns. Pet. 38, 64–65, 81–82 (quoting
`Ex. 1003 ¶ 77; citing Ex. 1003, at [57], ¶¶ 1, 3, 5, 32, 93, 101, Figs. 3–8).
`With respect to AAPA, Patent Owner argues that the prior-art
`cartridge “is not configured to be user-friendly to remove and would be
`prohibitively difficult and complex for a typical user of the concentrator,
`who is elderly and/or has limited strength or dexterity, to replace.” Prelim.
`Resp. 40. As discussed above, however, the broadest reasonable
`interpretation of “replaceable by a user,” on the present record, is not limited
`to modules that are replaceable by “a typical user.” A user who is not
`elderly and does not have limited strength or dexterity is still “a user.”
`
`19
`
`
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`IPR2017-00300
`Patent 8,894,751 B2
`
`On the present record, we determine that Petitioner has established a
`reasonable likelihood of prevailing in showing the obviousness of claim 31
`over the combination of McCombs, Whitley, and AAPA.
`
`d. Other Limitations
`Petitioner argues that the combination of McCombs, Whitley, and
`AAPA teaches or suggests each of the limitations of each of claims 22–28,
`31, and 32. Pet. 27–44, 62–83. For the reasons recited in the Petition, which
`we adopt for purposes of this decision, we determine that Petitioner has
`made a sufficient showing that the references teach or suggest all the
`limitations of claims 22–28, 31, and 32 other than the “removable module”
`and “replaceable by a user” limitations discussed above. Pet. 27–44, 62–83
`(citing Ex. 1001, 1:49–55, 2:14–16, 10:57–61, 18:6–12, 18:33–44; Ex. 1002,
`at [54], [57], ¶¶ 3, 5, 7, 21, 28–37, 40, Claim 1, Figs. 4, 7–9; Ex. 1003, at
`[57], ¶¶ 1–3, 5, 32, 82, 83, 93–95, 77, 101, 130, Figs. 3–8). Accordingly, we
`determine that Petitioner has established a reasonable likelihood of
`prevailing in showing the obviousness of claims 22–28, 31, and 32 over the
`combination of Jagger, McCombs, and AAPA.
`
`C. Asserted Obviousness over McCombs, Whitley, and Occhialini
`Petitioner argues that the subject matter of claims 22–28, 31, and 32
`would have been obvious to a person of ordinary skill in the art given the
`teachings of McCombs, Whitley, and Occhialini. Pet. 44–46.
`
`1. Occhialini
`Occhialini relates to a “[s]ystem for producing an oxygen-rich gas.”
`Ex. 1004, at [57]. Specifically, Occhialini discloses the optimization of the
`weight of the adsorbent relative to gas flow rate in POCs. Id. at 20:32–
`21:29.
`
`20
`
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`IPR2017-00300
`Patent 8,894,751 B2
`2. Analysis
`Petitioner relies on Occhialini to teach only a single limitation of each
`claim: “wherein said adsorbent bed is capable of a ratio of product flow rate
`to mass of said molecular sieve material of greater than 3.3 ml/min/g.”
`Pet. 44–45. Patent Owner does not dispute this teaching of Occhialini.
`Prelim. Resp. 42–43. In addition, we determine that Petitioner has shown
`sufficiently, on the present record and for the present decision, that
`McCombs teaches or suggests this limitation. Pet. 29–30, 68–69 (citing Ex.
`1002 ¶¶ 36–37). For the reasons given by Petitioner, which we adopt for
`purposes of the present decision, Petitioner also has shown sufficiently that
`Occhialini teaches or suggests this limitation. Pet. 19–21, 44–45, 69–70
`(citing Ex. 1004, 20:32–21:29
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