Trials@uspto.gov
`571-272-7822
`
`
`Paper No. 7
`
`Entered: January 25, 2018
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`
`
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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 IPR2017-01905
`Patent 8,950,404 B2
`____________
`
`
`Before BARRY L. GROSSMAN, BEVERLY M. BUNTING, and
`JAMES J. MAYBERRY, Administrative Patent Judges.
`
`MAYBERRY, Administrative Patent Judge.
`
`
`
`
`DECISION
`
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`

`

`IPR2017-01905
`Patent 8,950,404 B2
`
`
`I. INTRODUCTION
`Petitioner, Fisher & Paykel Healthcare Ltd. (“Fisher”), filed a Petition
`(Paper 1, “Pet.”) requesting inter partes review of claims 9–12, 21, 37–39,
`47, 56–58, and 66 (the “Challenged Claims”) of U.S. Patent No. 8,950,404
`B2 (Ex. 1101, the “’404 patent”). Patent Owner, ResMed Ltd. (“ResMed”),
`filed a Preliminary Patent Owner Response (Paper 6, “Prelim. Resp.”) to the
`Petition. We have jurisdiction under 35 U.S.C. § 314 and 37 C.F.R.
`§ 42.4(a). The Board determines whether to institute trial on behalf of the
`Director. 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, Preliminary Response, and evidence of record, we
`exercise our discretion under 35 U.S.C. § 314(a) to not institute trial in this
`proceeding.
`
`A. Related Matters
`Fisher and ResMed are involved in district court litigation involving
`the ’404 patent 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 8; Paper 3, 2. Claims 1–66 of the ’404 patent were
`challenged in an earlier-filed inter partes review proceeding—IPR2017-
`
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`IPR2017-01905
`Patent 8,950,404 B2
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`00340, for which the Board instituted trial on certain claims. Id.; see also
`Ex. 2002 (providing the Decision on Institution for IPR2017-00340).
`B. The ’404 Patent
`The ’404 patent, titled “Headgear for Masks,” issued February 10,
`2015, with claims 1–66. Ex. 1101, (54), (45), 23:14–28:53. The ’404 patent
`is generally directed “to headgear . . . for use in holding a mask in position
`on a patient’s face, the mask being used for treatment, e.g., of Sleep
`Disordered Breathing (SDB) with Continuous Positive Airway Pressure
`(CPAP) or Non-Invasive Positive Pressure Ventilation (NIPPV).” Id. at
`1:16–21. Figures 1 and 6 of the ’404 patent depict embodiments of the ’404
`patent’s headgear and are reproduced below.
`
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`IPR2017-01905
`Patent 8,950,404 B2
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`
`Figure 1 depicts “a side view of headgear in position on a patient’s
`head according to an embodiment of the” ’404 patent and Figure 6 depicts “a
`rear perspective view of headgear in position on a patient’s head according
`to another embodiment of the” ’404 patent. Ex. 1101, 4:9–10, 4:26–28. In
`the embodiment of Figure 1, mask 10 is connected to upper side strap 20 and
`lower side strap 30. Id. at 8:9–12. Top strap 40 is configured to pass over
`the top of a wearer’s head and attach to the top ends of two opposing
`rigidizers 60, with rear strap 50 interconnecting the lower ends of opposing
`rigidizers 60. Id. at 8:12–18. Rigidizers of the ’404 patent are “constructed
`of a rigid or semi-rigid material that . . . add[s] rigidity to the headgear . . . .
`[The rigidizers] . . . resist or prevent stretching of the headgear in the
`lengthwise direction of the rigidizer [and] [t]he rigidizers may be
`substantially inextensible.” Id. at 7:36–39.
`The headgear of the embodiment of Figure 6 includes upper side strap
`620 and lower side strap 630 attached to mask 10. Ex. 1101, 10:5–9.
`
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`IPR2017-01905
`Patent 8,950,404 B2
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`Rigidizer 660 is substantially circular or oval in shape, with an arc removed
`at the lower portion of rigidizer 660 to allow the size of the shape to be
`adjusted. Id. at 10:1–4. In the embodiments of Figures 1 and 6, straps 20,
`30, 620, and 630 include VELCRO® tabs “to engage the remainder of the
`strap to secure the strap in place and allow” mask 10 to be adjusted. Id. at
`15:35–39.
`Figures 14C and 14G are reproduced below:
`
`
`
`
`
` Figures 14C and 14G depict “cross-sectional views showing
`alternative rigidizer configurations.” Ex. 1101, 16:58–59. In the
`embodiment depicted in Figure 14C, “the rigidizer may include a semi-rigid
`molded component 980 that is covered in fabric 981, e.g., two pieces of
`fabric joined by stitching.” Id. at 17:21–23. The embodiment depicted in
`Figure 14G includes fabric layers 1381 around rigidizer 1380, with the
`fabric layers joined together at abutting ends, with the joint offset from the
`flat surface of the layers. See id., Fig. 14G. “The fabric outer layers may be
`heat sealed together, stitched, ultrasonically cut, CNC knife cut, or otherwise
`joined.” Id. at 17:44–46.
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`IPR2017-01905
`Patent 8,950,404 B2
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`
`C. Challenged Claims
`Claims 1, 29, and 48 of the ’404 patent are independent, with each of
`the Challenged Claims depending, directly or indirectly, from one of these
`claims. These claims are reproduced below:
`1. A headgear system for holding a respiratory mask in a
`position on a face of a patient to enhance a mask seal with the
`patient’s face, the headgear system including a plurality of straps
`providing a four-point arrangement for attachment with the
`respiratory mask, said plurality of straps comprising:
`at least one upper strap configured to extend above the
`patient’s ears in use;
`at least one lower strap configured to extend below the
`patient’s ears in use; and
`a rear portion,
`wherein at least one strap of said plurality of straps is
`constructed from a laminate having at least a first fabric layer and
`a second fabric layer, said first fabric layer being constructed and
`arranged to be located on a patient-contacting side in use, and
`said second fabric layer being constructed and arranged to be
`located on a non patient-contacting side in use and further
`wherein said first fabric layer and said second fabric layer are
`joined at a joint configured to be positioned away from the
`patient’s face when in use and wherein said at least one strap of
`said plurality of straps has a first rounded lateral edge when
`viewed in cross-section, and
`wherein the joint is positioned at approximately a center
`or middle of the first rounded lateral edge when viewed in cross
`section.
`Ex. 1001, 23:14–38.
`29. A headgear system for holding a respiratory mask in a
`position on a face of a patient to enhance a mask seal with the
`patient’s face, the headgear system including a plurality of straps
`providing a four-point arrangement for attachment with the
`respiratory mask, said plurality of straps comprising:
`
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`IPR2017-01905
`Patent 8,950,404 B2
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`
`at least one upper strap configured to extend above the
`patient’s ear in use, the at least one upper strap including loop
`material and an end with hook material, for adjustable attachment
`to a slot of a forehead support;
`at least one lower strap configured to extend below the
`patient’s ear in use, the at least one lower strap including loop
`material and an end with hook material for adjustable attachment
`to a headgear clip that connects with a lower part of the mask;
`and
`
`a rear strap portion having a rear loop configured and
`dimensioned to circumscribe the rear of the patient’s head, the at
`least one upper strap and the at least one lower strap being
`attached to the rear strap portion via stitched joins, the rear strap
`portion comprising a material that is relatively inextensible
`compared to a relatively extensible material of the at least one
`upper strap,
`wherein at least one strap of said plurality of straps is
`constructed from a laminate having at least a first layer and a
`second layer, said first layer being constructed and arranged to
`be located on a patient-contacting side in use, and said second
`layer being constructed and arranged to be located on a non
`patient-contacting side in use, and further wherein each of said
`first layer and said second layer forms a part of at least one
`rounded lateral edge of the at least one strap when viewed in
`cross-section.
`Ex. 1001, 24:65–25:28.
`48. A headgear system for holding a respiratory mask in a
`position on a face of a patient to enhance a mask seal with the
`patient's face, the headgear system including a plurality of straps
`providing a four-point arrangement for attachment with the
`respiratory mask, said plurality of straps comprising:
`a pair of upper straps each configured to extend above the
`patient’s ear in use, each said upper strap including an outwardly
`facing loop material layer and an end with hook material to
`adjustably engage the outwardly facing loop material layer, for
`length-adjustable attachment to a slot of a forehead support;
`
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`IPR2017-01905
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`a pair of lower straps each configured to extend below the
`patient’s ear in use, each said lower strap including an outwardly
`facing loop material layer and an end with hook material to
`adjustably engage the outwardly facing loop material layer, for
`length-adjustable attachment to a headgear clip that connects
`with a lower part of the mask; and
`a rear strap portion having a rear loop configured and
`dimensioned to circumscribe the rear of the patient’s head, each
`said upper strap and each said lower strap being attached to the
`rear strap portion via stitched joins, the rear strap portion
`comprising a first material with a first extensibility and each said
`upper or lower strap comprising a second material with a second
`extensibility that is different than the first extensibility of the first
`material,
`wherein each of said upper strap and each said lower strap
`is constructed from at least a patient-contacting fabric material
`layer and a respective said outwardly facing loop material layer,
`each said patient-contacting fabric material
`layer being
`constructed and arranged to engage the patient’s face while in
`use, and further wherein mutual edges of the patient-contacting
`fabric material layer and said outwardly facing loop material
`layer form a joint positioned, as seen in cross-section, at a lateral
`edge of each said upper strap and each said lower strap, each said
`joint being spaced away from the patient’s face in use while the
`patient-contacting fabric material layer contacts the patient’s
`face in use.
`Ex. 1001, 26:37–27:9.
`
`D. The Prior Art
`Fisher’s asserted grounds of unpatentability for the Challenged Claims
`rely on the following references:
`Amarasinghe
`WO 2004/041341 A1 May 21, 2004
`Ho
`WO 2008/030831 A2 Mar. 13, 2008
`Corrigall
`US 3,424,633
`Jan. 28, 1969
`Carroll
`WO 2007/006089 A1
`Jan. 18, 2007
`
`Ex. 1102
`Ex. 1103
`Ex. 1104
`Ex. 1125
`
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`IPR2017-01905
`Patent 8,950,404 B2
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`
`Berthon-Jones
`Omura
`Dreyfus
`
`US 2006/0118117 A1
`WO 2008/068966 A1
`US 2,126,755
`
`June 8, 2006
`June 12, 2009
`Aug. 16, 1938
`
`Ex. 1126
`Ex. 11281
`Ex. 1129
`
`
`E. Asserted Grounds of Unpatentability
`Fisher asserts the following grounds of unpatentability for the
`Challenged Claims, each under 35 U.S.C. § 103:
`
`Claims Challenged
`
`9
`
`9
`
`10–12, 37–39, 47, 56–58, and 66
`
`10–12, 37–39, 47, 56–58, and 66
`
`10–12, 37–39, 47, 56–58, and 66
`
`21
`
`References
`Amarasinghe, Corrigall, and
`Carroll
`Amarasinghe, Corrigall, and
`Berthon-Jones
`Amarasinghe, Corrigall, Ho, and
`Carroll
`Amarasinghe, Corrigall, Ho, and
`Berthon-Jones
`Amarasinghe, Corrigall, Ho, and
`Omura
`Amarasinghe, Corrigall, and
`Dreyfus
`Pet. 12. In support of these asserted grounds of unpatentability, Fisher relies
`on the testimony of Mr. Richard Lordo. See Ex. 1113 (“Lordo Decl.”).
`
`II. ANALYSIS
`A. Our Discretion Under 35 U.S.C. § 314(a)
`The Board has discretion not to institute an inter partes review. See
`35 U.S.C. § 314(a) (authorizing institution of an inter partes review under
`particular circumstances, but not requiring institution under any
`
`
`1 Ex. 1128 is a certified English translation of Ex. 1127.
`
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`Patent 8,950,404 B2
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`circumstances); 37 C.F.R. § 42.108(a) (stating “the Board may authorize the
`review to proceed”) (emphasis added); Harmonic Inc. v. Avid Tech, Inc., 815
`F.3d 1356, 1367 (Fed. Cir. 2016) (explaining that under § 314(a), “the PTO
`is permitted, but never compelled, to institute an IPR proceeding”). ResMed
`contends that we should exercise our discretion under 35 U.S.C. § 314(a)
`and not institute trial in this proceeding. Prelim. Resp. 2–43. We address
`this contention, below, after first recounting the procedural history of the
`’404 patent at the Board.
`1. Procedural History of the ’404 Patent at the Board
`On November, 2016,2 Fisher filed a petition challenging all of the
`claims of the ’404 patent. See Ex. 2001 (providing the petition for IPR2017-
`00340). IPR2017-00340 challenged claims 1–66 under two grounds of
`unpatentability. Ex. 2001, 18.3 These two grounds involved Amarasinghe,
`Corrigall, and Ho. ResMed filed a Preliminary Response to that petition on
`February 22, 2017.
`On May 16, 2017 the Board instituted inter partes review in IPR2017-
`00340 on a subset of claims. See Ex. 2002, 52–53. In that decision, the
`Board found that Fisher failed to demonstrate a reasonably likelihood of
`success in proving the Challenged Claims in the current Petition are
`unpatentable. See id. at 52. Trial proceeded in IPR2017-00340 on the
`instituted claims and ResMed filed a Patent Owner Response on August 8,
`
`
`2 “ResMed asserted a claim for infringement of the ’404 [p]atent . . . on
`September 7, 2016.” Pet. 13.
`3 In referencing Ex. 2001, we refer to the exhibit’s pagination, not the
`pagination of the petition.
`
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`2017. Trial is currently ongoing, and a Final Written Decision is due May
`16, 2018.
`On August 2, 2017, Fisher filed the present Petition.
`2. § 314(a)
`ResMed contends that we should exercise our discretion under
`35 U.S.C. § 314(a) as Fisher has filed multiple petitions against the ’404
`patent. Prelim. Resp. 2–3. ResMed argues that the present Petition is just
`one of five follow-on petitions that target four separate ResMed patents. Id.
`at 3–4.
`In assessing the equities of allowing Fisher’s follow-on Petition
`challenging the claims of the ’404 patent, our precedential decision in
`General Plastic Indus. Co. v. Canon Kabushiki Kaisha, Case IPR2016–
`01357, slip op. at 15–19 (PTAB Sept. 6, 2017) (Paper 19) (precedential),
`provides a non-exhaustive list of factors to consider. These factors include:
`1. whether the same petitioner previously filed a petition
`directed to the same claims of the same patent;
`2. whether at the time of filing of the first petition the
`petitioner knew of the prior art asserted in the second petition or
`should have known of it;
`3. whether at the time of filing of the second petition the
`petitioner already received the patent owner’s preliminary
`response to the first petition or received the Board’s decision on
`whether to institute review in the first petition;
`4. the length of time that elapsed between the time the
`petitioner learned of the prior art asserted in the second petition
`and the filing of the second petition;
`5. whether the petitioner provides adequate explanation for the
`time elapsed between the filings of multiple petitions directed
`to the same claims of the same patent;
`6. the finite resources of the Board; and
`
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`7. the requirement under 35 U.S.C. § 316(a)(11) to issue a final
`determination not later than 1 year after the date on which the
`Director notices institution of review.
`General Plastic, slip. op. at 16 (citing NVIDIA Corp. v. Samsung Elec. Co.,
`IPR2016-00134, slip op. 6–7 (PTAB May 4, 2016) (Paper 9)). In applying
`these factors, we consider not only the congressional intent that inter partes
`review proceedings provide an effective and efficient alternative to district
`court litigation, but also the potential for abuse of the review process through
`repeated attacks by the same petitioner with respect to the same patent. See
`Gen. Plastic, slip. op. at 16–17 (citing H.R. Rep. No. 112-98, pt.1, at 40
`(2011)). We address each of these factors in turn, below.
`Factor 1: Whether the same petitioner previously filed a petition
`directed to the same claims of the same patent
`In the present Petition, Fisher challenges claims 9–12, 21, 37–39, 47,
`56–58, and 66 of the ’404 patent. Pet. 1. Each of these claims were
`challenged by Fisher in IPR2017-00340. These Challenged Claims are the
`subset of claims for which trial was not instituted in IPR2017-00340.
`Fisher explains that this follow-on Petition addressing the claims not
`instituted in IPR2017-00340 was necessitated by the Board’s claim
`construction in that proceeding. We address this assertion below, in
`connection with Factor 5.
`We weigh this factor in ResMed’s favor.
`Factor 2: Whether at the time of filing of the first petition the
`Petitioner knew of the prior art asserted in the second petition or should
`have known of it
`The primary prior art references in the present Petition are the same as
`in IPR2017-00340—Amarasinghe, Ho, and Corrigall. See Ex. 2001, 17.
`Fisher contends that it did not think that the additional prior art references
`
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`asserted in the present Petition—Carroll, Berthon-Jones, Omura, and,
`Dreyfus—were needed in IPR2017-00340, given the claim construction
`Fisher asserted in that proceeding. Pet. 6. Fisher explains that these prior art
`references were added to address the Board’s claim construction in
`IPR2017-00340. Id.
`ResMed contends that Fisher knew or should have known about all of
`the prior art asserted in the present Petition. Prelim. Resp. 22–23. ResMed
`further contends that Fisher does not deny that it knew of the references at
`the time the petition in IPR2017-00340 was filed. See id. at 24. ResMed
`argues that, under these facts, “granting institution would unfairly force
`Patent Owner to defend multiple successive attacks.” Id.
`We find that this factor does not favor either party. Fisher does not
`dispute that it knew of most, if not all, of the prior art cited in the present
`Petition at the time it filed the IPR2017-00340 petition, weighing against
`Fisher. This fact is balanced, however, by the large number of claims in the
`’404 patent (66). Given our rules that limit the length of a petition, a large
`number of claims, such as in the ’404 patent, forces a petitioner to be
`economical in the breadth of its challenges, including the opportunity to
`assert a variety of prior art to cover the possible breadth of claim
`constructions.
`Factor 3: Whether at the time of filing of the second petition the
`petitioner already received the patent owner’s preliminary response to the
`first petition or received the Board’s decision on whether to institute review
`in the first petition
`At the time Fisher filed the present Petition, Fisher had received
`ResMed’s Preliminary Response and our decision denying institution in
`IPR2017-00340. Fisher used our decision in IPR2017-00340 as a roadmap
`
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`to prepare the present Petition. Specifically, the present Petition addresses
`the patentability of the Challenged Claims, claims for which trial was not
`instituted in IPR2017-00340, under the claim constructions the Board
`presented in the decision for that proceeding. See Pet. 14.
`Fisher asserts that ResMed was not prejudiced by Fisher having
`access ResMed’s Preliminary Response in IPR2017-00340 as Fisher gained
`no advantage from the Preliminary Response. Pet. 5.
`ResMed contends that Fisher benefitted from substantial time to shape
`the arguments in the present Petition. Prelim. Resp. 25. ResMed argues that
`Fisher benefitted during this time from ResMed’s Preliminary Response,
`ResMed’s deposition of Mr. Lordo, and from the Board’s decision without
`adequately justifying the time delay. Id.
`ResMed also argues that Fisher refined certain positions that were not
`in response to the Board’s claim construction but instead the Board’s
`treatment of those positions in the IPR2017-00340 proceeding. Prelim.
`Resp. 16. Specifically, ResMed argues that Fisher refined its arguments
`with respect to the “substantially circular or oval” subject matter of the
`claims. See id. ResMed explains that Fisher relies on Carroll and Berthon-
`Jones for disclosing this subject matter. Id. at 17.
`We find that this factor weighs in favor of ResMed.
`Factor 4: The length of time that elapsed between the time the
`petitioner learned of the prior art asserted in the second petition and the
`filing of the second petition
`Fisher asserts that upon learning of the Board’s constructions in its
`decision in IPR2017-00340, it gathered additional prior art to address the
`
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`patentability of the Challenged Claims in light of those constructions. See
`Pet. 6.
`This factor weighs heavily in favor of Fisher. There appears to be no
`dispute that Fisher was aware of most, if not all, of the prior art references
`asserted in the present Petition. More significantly, however, Congress
`included in the AIA a safeguard to protect patent owners from harassing
`proceedings involving a patent, like the ’404 patent, that has been asserted in
`district court litigation. The AIA statute provides a one-year time limit for a
`petitioner (or real party in interest or privy) who is served by a complaint
`alleging infringement of a patent to challenge the patent in an inter partes
`proceeding. See 35. U.S.C. § 315(b). Fisher filed the present Petition within
`that one-year window. As it is now more than one year from when ResMed
`asserted that Fisher infringed the ’404 patent, § 315(b) shelters ResMed
`from additional petitions by Fisher.
`Factor 5: Whether the petitioner provides adequate explanation for
`the time elapsed between the filings of multiple petitions directed to the same
`claims of the same patent
`Fisher explains that we denied institution of trial of the currently
`Challenged Claims in IPR2017-00340 based on a construction of the claim
`term “inextensible” (and related terms) that neither party proposed. Pet. 1.
`Fisher also explains that our construction of the term “compressed in a
`region” took the claims outside the scope of the asserted prior art. Id. Fisher
`characterizes the Board’s constructions in IPR2017-00340 as “unexpected.”
`Id. at 2.
`Fisher argues that it had no opportunity to address our constructions
`for the Challenged Claims, as trial was not instituted for those claims. Pet.
`2; see also id. at 7 (“While the Board is not constrained by the parties’
`
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`proposed constructions and is free to adopt its own construction, the Board
`must also give the parties an opportunity to respond.”). Fisher contends that
`the present Petition addresses these new constructions and explains how the
`Challenged Claims are unpatentable under the Board’s constructions. Id.
`Fisher argues that it “believes that its implied ‘ordinary meaning’
`construction of those limitations was reasonable, but now requests that the
`Board allow Petitioner to challenge the claims based on the Board’s
`construction.” Id. at 6.
`Fisher further contends that the present Petition is distinguishable
`from those follow-on petitions denied by the Board for using decisions as a
`roadmap. Pet. 7. Fisher argues that, unlike those petitions, the petition in
`IPR2017-00340 was not deficient but, instead, relied on a claim construction
`that the Board ultimately rejected. Id.
`ResMed contends that Fisher should not have been surprised by the
`Board’s constructions in IPR2017-00340. Prelim. Resp. 31. For example,
`ResMed explains that the Specification expressly defines the term
`“substantially inextensible,” a definition the Board applied in IPR2017-
`00340. Id. ResMed argues that Fisher’s position that the Board adopted
`constructions that were not asserted by either party is disingenuous, as
`ResMed identified this lexicographic definition in its Preliminary Response
`and argued that neither Fisher nor Mr. Lordo applied this definition to any of
`the claim. Id. at 32. ResMed continues that the Board’s construction of
`“inextensible” was consistent with how Fisher characterized the term in the
`IPR2017-00340 petition. Id. at 33.
`ResMed further contends that Fisher’s position with respect to the
`claim term “compressed in a region” is also unavailing. Prelim. Resp. 33–
`
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`34. As ResMed explains, the claim limitation in question (claim 21) recites
`“wherein the first fabric layer and the second fabric layer are compressed in
`a region to stiffen the at least one strap of said plurality of straps.” Id. at 34.
`Fisher asserted that this limitation was met by a prior art reference that
`disclosed compressing an intermediate foam layer, not the first fabric layer
`and the second fabric layer as required by the claim. Id. As such, the
`deficiency in Fisher’s position was not a function of the Board’s
`construction.
`We weigh this factor heavily in favor of ResMed. Fisher fails to
`adequately explain why the Board’s constructions of “inextensible,”
`“substantially inextensible,” and “relatively inextensible” were unexpected.
`A foundational tenet in claim construction is that terms are given their
`ordinary and customary meaning, unless the patentee acted as his or her own
`lexicographer, giving a term a specific definition. See Cisco Sys., Inc. v.
`Int’l Trade Comm’n, 873 F.3d 1354, 1361 (Fed. Cir. 2017) (“We depart
`from the ordinary meaning when patentees act as their own
`lexicographers.”); MPHJ Tech. Investments, LLC v. Ricoh Americas Corp.,
`847 F.3d 1363, 1374 (Fed. Cir. 2017) (“To act as a lexicographer, a patentee
`must ‘clearly set forth a definition of the disputed claim term’ and ‘clearly
`express an intent to redefine the term.’”). As ResMed indicates, the
`Specification of the ’404 patent provides an express construction of the term
`“substantially inextensible.” The Specification reads: “In this specification,
`a substantially ‘inextensible’ structure will be taken to mean a structure that
`when subject to the forces normally encountered in use of a respiratory
`mask, will have an elongation of less than about 5%, more preferably less
`than about 3%.” Ex. 1101, 6:4–8. We find this statement to (1) clearly
`
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`express the patentee’s intent to define the term “substantially inextensible,”
`and (2) clearly sets forth a definition. In light of this lexicographical
`definition, Fisher’s reliance on the broadest reasonable interpretation of the
`term “substantially inextensible” in the IPR2017-00340 petition was not
`objectively reasonable.
`Also, the petition in IPR2017-00340 did not clearly distinguish
`between claims reciting “inextensible,” “substantially inextensible,” and
`“relatively inextensible.” For example, in addressing claims 10, 37, and
`56—each of which recites “substantially inextensible”—Fisher cross-
`references its discussion at section VIII(c)(2)(d)(iii) of the petition for
`IPR2017-00340. Ex. 2001, 84. That discussion addresses claims 29 and 48,
`which recites the term “relatively inextensible.” See id. at 64. That analysis
`cross-references the analysis at section VIII(B)(6) of the petition for
`IPR2017-00340. Id. at 65. The analysis at section VIII(B)(6) addresses
`claims 8, 9, and 14, which recites “inextensible” and “relatively
`inextensible.” See id. at 47. In the analysis, Fisher states that
`“Amarasinghe[] discloses an extensible or stretchable portion and a rear
`portion that is relatively inextensible or configured not to stretch.” Id. at 48.
`Through this series of cross-references, Fisher fails to adequately explain
`how, even under a broadest reasonable construction, this analysis applies
`equally to claims reciting “inextensible,” “substantially inextensible,” and
`“relatively inextensible.”
`Further, as ResMed contends, the Board’s denial of institution of
`claim 21 did not rely on an unexpected claim construction. Instead, Fisher
`failed to adequately explain how the prior art disclosed the express subject
`matter of claim 21. See Ex. 2002, 38 (“ResMed argues that the teachings in
`
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`Corrigall relied on by Fisher are directed to compressing the foam, not the
`fabric layers. Prelim. Resp. 39–40. We agree. Claim 21 requires the fabric
`layers to be compressed, not an intervening layer.”).
`In contrast to what Fisher argues here, the petition in IPR2017-00340
`was deficient and Fisher used the decision on institution as a roadmap to
`cure the deficiencies. This was not a case where a party provides a well-
`reasoned claim construction, but a construction the Board does not adopt.
`Instead, the petition in IPR2017-00340 made the blanket statement that
`claim terms were to be given their broadest reasonable interpretation without
`evaluating if that approach was proper for all terms. See Ex. 2001, 19; see
`also 37 C.F.R. § 42.104(b)(3) (requiring a petition to set forth “[h]ow the
`challenged claim is to be construed”).
`Still further, we find Fisher’s assertion that it had no opportunity to
`address our constructions for the non-instituted claims addressed in the
`present Petition is without merit. Fisher had the opportunity to file a request
`for rehearing to explain that we misapprehended the construction of certain
`claim terms and explain why the broadest reasonable interpretations
`implicitly applied to the claims by Fisher were appropriate. Fisher did not
`file such a request. Also, Fisher does not explain adequately in the current
`Petition how its claim construction approach was objectively reasonable.
`See Pet. 6–7 (stating that Fisher believes that its implicit constructions were
`reasonable, but providing no further explanation to support such a belief).
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`Factor 6: The finite resources of the Board, and Factor 7: The
`requirement under 35 U.S.C. § 316(a)(11) to issue a final determination not
`later than 1 year after the date on which the Director notices institution of
`review
`We find that these factors do not weigh significantly for or against
`exercising our discretion.
`
`Conclusion
`Having weighed the facts of this case against the General Plastics
`factors, we exercise our discretion under 35 U.S.C. § 314(a) not to institute
`trial in this proceeding.
`
`
`III. CONCLUSION
`After considering the evidence and arguments presented in the
`Petition, including its supporting testimonial evidence, and Preliminary
`Response, we exercise our discretion under 35 U.S.C. § 314(a) not to
`institute trial in this proceeding.
`
`
`IV. ORDER
`After due consideration of the record before us, it is:
`ORDERED that the Petition is denied as to all Challenged Claims and
`no trial is instituted.
`
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`IPR2017-01905
`Patent 8,950,404 B2
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`For PETITIONER:
`
`Brenton R. Babcock
`Curtis R. Huffmire
`Benjamin J. Everton
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2brb@knobbe.com
`2crh@knobbe.com
`2bje@knobbe.com
`
`
`For PATENT OWNER:
`
`Michael T. Hawkins
`Michael J. Kane
`Christopher C. Hoff
`Nicholas W. Stephens
`Craig A. Deutsch
`FISH & RICHARDSON P.C.
`hawkins@fr.com
`kane@fr.com
`hoff@fr.com
`nstephens@fr.com
`deutsch@fr.com
`
`
`
`21
`
`