Takeaway: In making an obviousness argument, a petitioner must address all design considerations in combining its references.

In its Final Written Decision, the Board found that challenged claims 9-19, 25-36, 40, and 63 of the ’453 Patent are unpatentable, and that challenged claims 23 and 24 are not unpatentable. The ’453 Patent relates to a humidifier for use with a continuous positive airway pressure (CPAP) device.

The Board began with claim construction, stating that claim terms are interpreted according to their broadest reasonable construction in light of the specification. The Board began with the term “humidifier,” which it determined in the Decision to Institute that the preamble recitations of “humidifier” do not require any specific structure. Patent Owner argued that the preamble should be limiting, but the Board found that there was no evidence to support this argument. The Board then reviewed the term “connecting structure configured to connect between the CPAP apparatus and humidifier and allow communication of an outlet of the CPAP apparatus with the inlet of the humidifier.” Patent Owner asserted that this limitation should be construed to require a “structure that connects a CPAP apparatus and a standalone humidifier to form an integrated assembly in which the outlet of the CPAP apparatus is allowed to communicate with the inlet of the humidifier without an intermediate hose which must be separately connected to the CPAP outlet and humidifier outlet.” The Board agreed with petitioner that neither the specification nor the prosecution history requires this limitation. The Board also rejected Patent Owner’s proposed construction for the term “generally horizontal, open receptacle within which [a] humidifier may be removably disposed by generally horizontally inserting the humidifier within and pulling it out of the receptacle,” finding that the dictionary definitions were not persuasive.

The Board then turned to whether claims 9-19, 40, and 63 are anticipated by Wilson. Patent Owner did not direct any arguments to this challenge. Therefore, the Board deemed all arguments waived and found that Petitioner had demonstrated by a preponderance of the evidence that Wilson anticipates claims 9-19, 40, and 63.

The Board then reviewed whether claims 23 and 24 are obvious over Wilson and Dobson. The Board found that Petitioner had not demonstrated a sufficient basis to combine the structures of Dobson and Wilson to arrive at the apparatus of claims 23 and 24. The Board found that Dobson teaches away from the type of bottle arrangement used for Wilson’s inhaler. The Board also noted that Petitioner did not explain adequately the specific design considerations that are necessary to implement the apparatus taught by Dobson with Wilson’s inhaler.

The Board next reviewed whether claims 25-27 are anticipated by HumidAire. Patent Owner argued that HumidAire does not anticipate claim 25 because it does not disclose a “connecting structure configured to connect between the CPAP apparatus and humidifier and allow communication of an outlet of the CPAP apparatus with the inlet of the humidifier,” and that it lacks a generally horizontal receptical. Because these arguments are based upon Patent Owner’s incorrect construction, the Board did not agree. Therefore, the Board found that Petitioner had proved by a preponderance of the evidence that HumidAire anticipates claims 25-27.

Next, the Board discussed whether claim 28 is obvious over HumidAire and Helot. Patent Owner did not direct any additional arguments to this ground, therefore, the Board determined that Petitioner had proved by a preponderance of the evidence that claim 28 is rendered obvious by HumidAire and Helot.

The Board then reviewed whether claims 29-31 are obvious over HumidAire, Helot, and Maeda. Patent Owner did not direct any additional arguments to this ground, therefore, the Board determined that Petitioner had proved by a preponderance of the evidence that claims 28-31 are rendered obvious by HumidAire, Helot, and Maeda.

Next, the Board discussed whether claim 32 is obvious over HumidAire, Usry, and Prime. Patent Owner did not direct any additional arguments to this ground, therefore, the Board determined that Petitioner had proved by a preponderance of the evidence that claim 31 is rendered obvious by HumidAire, Usry, and Prime.

The Board then discussed whether claim 33 is obvious over HumidAire, Helot, Maeda, and Usry. Patent Owner did not direct any additional arguments to this ground, therefore, the Board determined that Petitioner had proved by a preponderance of the evidence that claim 33 is rendered obvious by HumidAire, Helot, Maeda, and Usry.

The Board next discussed whether claims 34-36 are obvious over HumidAire, Helot, Maeda, Usry, and Glynn. Patent Owner did not direct any additional arguments to this ground, therefore, the Board determined that Petitioner had proved by a preponderance of the evidence that claims 34-36 are rendered obvious by HumidAie, Helot, Maeda, Usry, and Glynn.

Judge Petravick wrote a dissent, joining-in-part and dissenting-in-part regarding the patentability of claims 23 and 24. Judge Petravick was persuaded by Petitioner’s alternate combination that claims 23 and 24 are unpatentable over Wilson and Dobson.

BMC Medical Co. Ltd., 3B Products, L.L.C., and 3B Medical Inc. v. ResMed Limited, IPR2014-01363

Paper 25: Final Written Decision

Dated: January 20, 2016

Patent: RE 44,453 E

Before: Meredith C. Petravick, Barry L. Grossman, and Christopher G. Paulraj Written by: Paulraj

Dissent by: Petravick

Related Proceedings: IPR2014-01196; IPR2014-00551; In the Matter of Certain Sleep-Disordered Breathing Treatment Systems and Components Thereof (ITC Investigation No. 337-TA-890); ResMed Inc. v. BMC Medical Co., Ltd., et al., 313-cv-01246 (S.D. Cal.); ResMed Inc. et al. v. Apex Medical Corporation et al., 8:13-cv-00498 (C.D. Cal.)