Takeaway: Decisions on patentability in an ITC proceeding have no bearing on the decision in an IPR, because the decision are based on different evidentiary standards (clear and convincing evidence in the ITC v preponderance of the evidence in an IPR).

In its Final Written Decision, the Board concluded that all of the challenged claims 1-7 of the ’453 patent were unpatentable. Moreover, the Board dismissed Petitioner’s Motion to Exclude Evidence as moot.

The ’453 patent relates to a humidifier for use with a continuous positive airway pressure (CPAP) device. The Board had instituted inter partes review based on grounds alleged by Petitioner that claims 1 and 4-7 are anticipated by Schatzl; claim 3 was obvious over Schatzl and Daniell; and Claims 1 and 2 are obvious over Prime, Schatzl, and Dobson. The Board determined that no explicit claim construction was necessary.

Patent Owner did not provide any arguments with regard to the anticipation ground or the obviousness ground related to claim 3. The Board had noted previously in its Scheduling Order that “any arguments for patentability not raised in the [Patent Owner’s] Response will be deemed waived.” Accordingly, upon consideration of the arguments, the Board determined that Petitioner had demonstrated by a preponderance of the evidence that Schatzl anticipates claims 1 and 4-7 and that Schatzl and Daniell render claim 3 obvious.

With regard to the final obviousness ground, Patent Owner first argued that the ITC in the related investigation rejected Petitioner’s argument that Schatzl and Dobson render claim 2 obvious. The Board did not agree that such a decision had any bearing on this proceeding. First, the ground in this proceeding includes the teachings of Prime that were not discussed in the ITC. Second, the ITC decision was decided based on the clear and convincing evidentiary standard, while the Board decides patentability based on a preponderance of the evidence standard.

The Board was also not persuaded by Patent Owner’s argument that Petitioner had failed to show how the teachings of Schatzl and Dobson could be applied to Prime. The Board noted that Patent Owner’s arguments were premised on the ability to physically combine the structures in Prime and Schatzl. However, it is well established that the criterion for obviousness is “not whether the references could be physically combined but whether the claimed inventions are rendered obvious be the teachings of the prior art as a whole.” Therefore, taking into account all of the arguments, the Board determined that Petitioner had demonstrated by a preponderance of the evidence that the combination of Prime, Schatzl, and Dobson renders obvious claims 1 and 2.

BMC Medical Co. Ltd., 3B Products, LLC, and 3B Medical Inc. v. ResMed Limited, IPR2014-01196

Paper 25: Final Written Decision

Dated: January 19, 2016

Patent: RE 44,453 E

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

Written by: Paulraj

Related Proceedings: IPR2014-01363; 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., 3:13-cv-01246 (S.D. Cal.); ResMed Inc. et al. v. Apex Medical Corporation et al., 8:13-cv-00498 (C.D. Cal.)