Respironics, Inc. v. Invacare, Corp. , 303 F. App'x 865 ( 2008 )

NOTE: This disposition is nonprecedential.
United States Court of Appeals for the Federal Circuit
2008-1164, -1193
RESPIRONICS, INC. and RIC INVESTMENTS, LLC,
Plaintiffs-Appellants,
v.
INVACARE CORP.,
Defendant-Cross Appellant.
W. Thomas McGough, Jr. Reed Smith LLP, of Pittsburgh, Pennsylvania, argued
for plaintiffs-appellants. With him on the brief were Gene A. Tabachnick and Joshua S.
Bish.
Charles B. Lyon, Calfee, Halter & Griswold LLP, of Cleveland, Ohio, argued for
defendant-cross appellant. With him on the brief were John T. Wiedemann, Nenad
Pejic, Georgia E. Yanchar, and Jennifer B. Wick. Of counsel on the brief was Eric G.
Soller, Pietragallo, Bosick & Gordon, of Pittsburgh, Pennsylvania.
Appealed from: United States District Court for the Western District of Pennsylvania
Judge Gary L. Lancaster
NOTE: This disposition is nonprecedential.
United States Court of Appeals for the Federal Circuit
2008-1164, -1193
RESPIRONICS, INC. and RIC INVESTMENTS, LLC,
Plaintiffs-Appellants,
v.
INVACARE CORP.,
Defendant-Cross Appellant.
Appeal from the United States District Court for the Western District of Pennsylvania in
case no. 04-CV-0336, Judge Gary L. Lancaster.
__________________________
DECIDED: December 16, 2008
__________________________
Before SCHALL, CLEVENGER, and LINN, Circuit Judges.
LINN, Circuit Judge.
Respironics, Inc. and RIC Investments, LLC (collectively “Respironics”) appeal
from a final judgment of noninfringement by Invacare, Inc. (“Invacare”) of Respironics’s
U.S. Patents No. 5,148,802 (“the ’802 patent”), No. 5,433,193 (“the ’193 patent”), and
No. 6,105,575 (“the ’575 patent”). Invacare cross-appeals from the final judgment of
literal infringement of U.S. Patent No. 6,609,517 (“the ’517 patent”) and also cross-
appeals from the final judgment that all four patents-in-suit are not invalid. Respironics
v. Invacare, No. 04-CV-0336 (W.D. Pa. Jan. 7, 2008) (“Judgment”). Because the district
court correctly construed the claims of the ’802 and ’193 patents and found them not
infringed, we affirm the judgment with respect to those two patents. Because the district
court erred in construing the term “shape” in the ’575 patent and erred in granting
summary judgment of no anticipation of the ’575 and ’517 patents, we vacate the grant
of summary judgment of noninfringement of the ’575 patent, reverse the grant of
summary judgment of validity of the ’575 and ’517 patents, and remand.
I. BACKGROUND
Respironics’s four patents-in-suit are directed to the treatment of obstructive
sleep apnea (“OSA”). A common method for treating OSA is the use of a continuous
positive airway pressure (“CPAP”) device to supply a constant pressure of air to the
patient to keep the patient’s airway open. To ease patient discomfort, Respironics
developed and patented a variety of apparatuses and methods that detect when the
patient is exhaling and then lower the pressure of incoming air provided during
exhalation.
The first two patents—’802 and ’193—are directed to “Bi-level” therapy. Unlike
CPAP, which supplies only one pressure, Bi-level therapy delivers a higher pressure
during inhalation and a lower pressure during exhalation. These higher and lower
pressures are referred to as inhalation positive airway pressure (“IPAP”) and exhalation
positive airway pressure (“EPAP”), respectively. See ’802 patent col.6 ll.45-59;
’193 patent col.6 ll.53-67. The third and fourth patents—’575 and ’517—are directed to
a more sophisticated therapy called proportional positive airway pressure (“PPAP”)
therapy. See ’575 patent col.6 ll.3-4; ’517 patent col.6 ll.3-4. Instead of supplying only
one pressure during a given exhalation, PPAP therapy provides varying pressures
during exhalation. It can do so in one of two ways: (1) in accordance with a
predetermined pressure profile, which has a shape that is set independent of the
2008-1164, -1193 2
patient’s breathing efforts; or (2) in proportion to the patient’s breathing, such that the
supplied pressure varies with how deeply the patient is breathing. In general, the
appealed claims of the ’575 patent are directed to the former, “predetermined”
embodiment, and the appealed claims of the ’517 patent are directed to the latter,
“proportional” embodiment.
Respironics sued Invacare for patent infringement. Respironics’s final
infringement contention was that Invacare’s commercialization of a product (“the
Commercial Device”) infringed the ’802, ’193, and ’575 patents; and that Invacare’s
demonstration of a prototype device (“the Tradeshow Device”) infringed the ’517 patent.
Following a Markman hearing, the district court issued a claim construction order in
which it construed various contested terms of the patents. Respironics v. Invacare, No.
04-CV-0336 (W.D. Pa. Aug. 30, 2006) (“Claim Construction Order”). On cross-motions
for summary judgment, the district court ruled in favor of Respironics that all four
patents are not invalid as a matter of law and, in particular, that the ’575 and ’517
patents are not anticipated by a publication authored by Dr. Magdy Younes.
Respironics v. Invacare, 511 F. Supp. 2d 587 (W.D. Pa. Apr. 26, 2007). The district
court also granted summary judgment in favor of Invacare that the Commercial Device
does not infringe the ’802, ’193, and ’575 patents. Id. at 604. However, the district
court identified one key factual dispute precluding summary judgment as to infringement
of the ’517 patent: “whether the Vscale factor in the Unloading Equation converts the
valve position measurements into flow rate signals.” Id. A trial was conducted to
resolve that question. Answering in the affimative, a jury concluded that the Tradeshow
Device literally infringed claims 29, 30, and 32 of the ’517 patent. Following post-verdict
2008-1164, -1193 3
briefing, the district court denied Invacare’s motion for judgment as a matter of law
(“JMOL”) and denied Respironics’s motion for a permanent injunction. Respironics v.
Invacare, No. 04-CV-0336 (W.D. Pa. Jan. 7, 2008) (“JMOL Opinion”). The district court
entered judgment in accordance with both the summary judgment order and the jury’s
verdict, and further stayed the bifurcated damages portion of the case pending
resolution of any appeal. Judgment at 1.
Respironics appealed from the judgment on issues relating to noninfringement of
the ’802, ’193, and ’575 patents. Invacare cross-appealed on issues relating to
infringement of the ’517 patent and validity of the ’575 and ’517 patents. Because the
judgment “is final as to all issues except for a determination of damages, we have
jurisdiction under 28 U.S.C. § 1292(c)(2).” Cent. Admixture Pharmacy Servs., Inc. v.
Advanced Cardiac Solutions, P.C., 482 F.3d 1347, 1353 (Fed. Cir. 2007).
II. DISCUSSION
A. Infringement
“The determination of infringement is a two-step process, wherein the court first
construes the claims and then determines whether every claim limitation, or its
equivalent, is found in the accused device.” Roche Palo Alto LLC v. Apotex, Inc., 531
F.3d 1372, 1377 (Fed. Cir. 2008). Claim construction is a question of law, which we
review de novo. Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1456 (Fed. Cir. 1998)
(en banc). Infringement is a question of fact, which we review for substantial evidence
when tried to a jury, Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323, 1332 (Fed.
Cir. 2008), but which we review without deference when decided on summary judgment,
2008-1164, -1193 4
Bd. of Regents of the Univ. of Texas Sys. v. BENQ Am. Corp., 533 F.3d 1362, 1367
(Fed. Cir. 2008).
1. Commercial Device
We first address whether the district court properly concluded, on summary
judgment, that the Commercial Device did not infringe the ’802, ’193, and ’575 patents.
a. Claim Construction of “selected higher and lower pressure magnitudes”
Respironics challenges the district court’s construction of the term “selected
higher and lower pressure magnitudes” in method claims 3 and 24 of the ’802 patent
and method claims 9, 44, and 53 of the ’193 patent. The district court construed this
term identically for all claims, and the parties do not urge different constructions for
different claims. Claim 3 of the ’802 patent recites, with disputed term emphasized:
A method of medical treatment for a patient comprising the steps of:
[1] providing a flow of breathing gas from a source for delivery to
the airway of such a patient at selected higher and lower
pressure magnitudes at least as great as ambient
atmospheric pressure;
[2] continually detecting the instantaneous flow rate of said
breathing gas flowing between said source and the airway of
such a patient;
[3] continually processing selected parameters including said
instantaneous flow rate to provide a reference indicia
corresponding to an average flow rate of breathing gas
flowing between said source and said patient; and
[4] utilizing said instantaneous flow rate and said reference indicia
to select one of said higher and said lower pressure
magnitudes for said flow of breathing gas to be applied in the
airway of such a patient.
(bracketed numbers added).
The district court construed the term “selected higher and lower pressure
magnitudes” in step one to require the pressure magnitudes to be “chosen prior to
2008-1164, -1193 5
operation of the computer circuitry that is used to determine whether the patient is
inhaling or exhaling.” Claim Construction Order at 16 (emphasis added). Respironics
argues that this construction impermissibly imports a temporal limitation into the claims.
It argues that the method steps are not set forth in any chronological sequence and,
accordingly, the pressure magnitudes need not be selected at any particular time in the
sequence. Invacare defends the district court’s construction, arguing that the word
“select” appears twice in the claims: in the past tense “selected” in step one, and in the
present tense “to select” in step four. These two occurences of the word “select,”
coupled with step four’s refererence back to “said” magnitudes in step one, convinces
Invacare that the magnitudes in step one are selected before any of steps two, three, or
four are performed.
The claim language itself provides little insight as to when the pressure
magnitudes in step one are “selected.” Because steps two and three must be
performed “continually,” it cannot be said that the claim language itself requires all steps
to be performed in the order written. Also, the mere fact that step four refers back to
“said higher and said lower pressure magnitudes” of step one does not, as a rule,
require step one to be performed before step four. Indeed, in Interactive Gift Express,
we held that step one of a method claim can be performed after step four, even though
step four referred to “the catalog code” introduced in step one. Interactive Gift Express,
Inc. v. Compuserve Inc., 256 F.3d 1323, 1328 (Fed. Cir. 2001) (emphasis added); id. at
1343 (“[T]here is no reason why step one[ ] . . . must occur before step four[ ] . . . .).
Thus, in a method claim, a step that recites “said” or “the,” referring to an earlier object,
does not always have to be performed after the step that first introduces the object.
2008-1164, -1193 6
We turn then to the specification, which we have called “‘the single best guide to
the meaning of a disputed term.’” Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir.
2005) (en banc) (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582
(Fed. Cir. 1996)). In this case, the specification discloses only one way to select the
higher and lower pressure magnitudes: via pressure adjustment controls (labeled “90”
and “92”), which are depicted as a pair of dials in Figure 4, reproduced below.
These dials, according to the specification, are used “for setting the respective [higher]
IPAP and [lower] EPAP pressure levels.” ’802 patent col.13 ll.30-31. Throughout the
specification, the pressure magnitudes are referred to as being “predetermined,” id.col.2 l.68-col.3 l.1, col.7 l.40, or “preselected,” id. col.3 l.27. See also ’194 patent col.3
ll.3-4, l.30. When pressed at oral argument to identify an embodiment in the
specification where the pressure magnitudes are not preselected, counsel for
Respironics was unable to do so. Oral Arg. at 5:35-6:10, available at
http://oralarguments.cafc.uscourts.gov/mp3/2008-1164.mp3. Similarly, the district court
found, and we agree, that “[t]here is no indication in the patents that the lower pressure
magnitude can somehow be changed breath by breath.” Claim Construction Order at
2008-1164, -1193 7
19. The preselection of higher and lower pressure magnitudes is not merely a preferred
embodiment; it is the patents’ only embodiment.
The prosecution history also supports the district court’s construction. As
originally filed, claims 3 and 24 of the ’802 patent used the word “alternately” in place of
the now-disputed word “selected.” In response to an obviousness rejection, Respironics
amended the term to its current form and carried it over to the claims of the ’193 patent.
J.A. 935, 939. Respironics offers no explanation for this amendment. But, to whatever
extent the word “alternately” might have permitted selection of pressure magnitudes on
a breath-by-breath basis, a capability nowhere disclosed in the patents, Respironics’s
decision to replace “alternately” with “selected” forecloses the broader construction.
Thus, we conclude that the district court correctly construed the term “selected
higher and lower pressure magnitudes” to require the pressure magnitudes to be
chosen prior to operation of the computer circuitry that is used to determine whether the
patient is inhaling or exhaling. See Loral Fairchild Corp. v. Sony Corp., 181 F.3d 1313,
1322 (Fed. Cir. 1999) (“Although not every process claim is limited to the performance
of its steps in the order written, the language of the claim, the specification and the
prosecution history support a limiting construction in this case.”).
b. Infringement of ’802 and ’193 Patents
We also conclude that that district court correctly determined that the
Commercial Device does not infringe the ’802 and ’193 patents under the district court’s
proper claim construction. As previously discussed, the claims require both higher and
lower pressure magnitudes to be selected at the outset of operation. The Commercial
Device, however, preselects only the higher pressure magnitude when operated under
2008-1164, -1193 8
normal conditions, not the lower magnitude. Respironics, 511 F. Supp. 2d at 596(quoting Respironics’s expert as admitting that “the magnitude of unloading is a function
of the [SoftX] setting . . . and peak inspiratory flow of the preceding inspiration (patient-
determined quantity)”). Because the Commercial Device does not perform every step of
the asserted claims, we agree with the district court that the Commercial Device does
not infringe these patents.
Respironics argues, alternatively, that operating the Commercial Device in so-
called “Standby Mode” might still infringe the ’802 and ’193 patents. Although the
district court’s opinion did not expressly address this argument, we conclude that
Respironics’s evidence failed to create a genuine issue of material fact sufficient to
defeat the grant of summary judgment of noninfringement. Respironics relies on the
Supplemental Mascara Declaration for the assertion that the ΔV variable in the
Unloading Equation is given a predetermined value in Standby Mode, which is then
used to preselect the lower pressure magnitude before the device detects whether the
patient is inhaling or exhaling, as required by the claims. This statement is directly
belied by Respironics’s own brief, which expressly defines the ΔV variable as “the
change in valve position defined by (Peak – Median) for the inhalation of the previous
breathing cycle.” Appellant’s Br. 14 (emphasis added). Because ΔV presupposes the
detection of a previous breathing cycle, this operation cannot infringe. A similarly
noninfringing definition of ΔV is found in the computer code cited in the Supplemental
Mascara Declaration. See J.A. 1985 (defining “ΔV = 10 (‘valve_change’ initial value)”)
(citing J.A. 4477 (“The valve_change value is the amount of movement the valve has
m[a]de from it[s] average position between breaths.”) (emphasis added)). Because
2008-1164, -1193 9
there is no genuine issue of material fact that ΔV requires at least one prior breath to
have been detected, operating the Commercial Device in Standby Mode does not
infringe as a matter of law. Accordingly, we affirm the judgment of noninfringement of
the ’802 and ’193 patents.
c. Claim Construction of “shape”
Respironics challenges the district court’s construction of the word “shape” in
claims 21 and 43 of the ’575 patent. That word is used in the following phrase: “a shape
of said predetermined pressure profile is set independent of any monitored respiratory
characteristics of such a patient.” (emphasis added). The district court construed
“shape” to mean “magnitude and duration.” Claim Construction Order at 26. We agree
with Respironics that this construction is unduly narrow. As the intrinsic record makes
clear, a pressure profile is defined not only by its magnitude and duration, but also by its
shape, which is a different characteristic reflective of the way the pressure changes over
time, independent of the particular magnitude and duration of the profile.
We look first to the claims. The claims themselves suggest that a profile’s shape
is a separate characteristic that can be set independent of the profile’s magnitude and
duration. Claims 22 and 44, which depend directly from claims 21 and 43, each recites
a single additional limitation: “setting at least one of a magnitude and a duration of said
pressure profile.” (emphases added). Because parent claims 21 and 43 recite that the
profile’s “shape” is set independent of any monitored respiratory characteristics of a
patient, the further setting of the profile’s “magnitude” and/or “duration” in claims 22 and
44 would be redundant if “shape” meant “magnitude and duration,” as construed by the
district court.
2008-1164, -1193 10
Like the claims, the specification refers separately to each of these three
characteristics: “[T]he defined pressure profile has a shape that generally corresponds
to a patient’s normal flow,” ’575 patent col.20 ll.23-25 (emphasis added); “Multiple
predefined pressure profiles, having different magnitudes, durations or both can be
stored in a CPAP/PPAP device,” id. col.20, ll.53-55 (emphases added). A drawing best
captures the point. The patent’s Figure 11B, reproduced below, shows three pressure
profiles (P1, P2, P3) with different magnitudes (M1, M2, M3) and different durations (D1,
D2, D3). But, despite having different magnitudes and durations, all three pressure
profiles have the same general shape (a left-of-center “U”-shape), which “drops off
quickly at the start of expiration then rises slowly.” Id. col.20 ll.63-64.
The specification thus illustrates that a pressure profile is defined by its duration,
magnitude, and shape. These three characteristics—duration, magnitude, and shape—
are interrelated, but are different factors in the overall makeup of the pressure profile.
The profile’s duration (e.g., D1, D2, D3 in Fig. 11B) is the time difference measured from
the start to the end of the profile. The profile’s magnitude (e.g., M1, M2, M3 in Fig. 11B)
is the pressure difference between the profile’s maximum and minimum pressures. But
duration and magnitude alone do not define how quickly or slowly the profile drops off to
2008-1164, -1193 11
arrive at the minimum pressure, how long it might stay at any particular pressure, or
how quickly or slowly the profile rises up to arrive back at the maximum pressure.
These are considerations that relate to the “shape” of the profile. As shown in
Figure 11B, the profile’s shape is the contour along which the pressure changes over
time, independent of the particular magnitude and duration of the profile.
The prosecution history does not contradict the claims or the specification. The
disputed term was added to claims 21 and 43 in response to an anticipation rejection
over U.S. Patent No. 5,598,838 (“Servidio”). Distinguishing Servidio, Respironics
explained to the examiner that “the shape of [Servidio’s] expiratory model waveform is
generated based on the inspiratory waveform, which is determined by monitoring the
patient flow during inspiration. . . . Furthermore, it would not be obvious to modify the
teachings of [Servidio] so that the shape of the expiratory waveform model is not based
on the monitored respiratory characteristics of the patient.” J.A. 3719 (emphases
added). This statement says nothing about the waveform’s magnitude or duration. It
merely shows that Respironics understood that a “waveform” can have a “shape.”
We conclude that a profile’s “shape” is not limited to its “magnitude and duration.”
We therefore modify the construction of the word “shape” to mean “contour along which
the pressure changes over time, describing the way in which the profile drops off to
arrive at the minimum pressure and then rises up to arrive back at the maximum
pressure, independent of the exact values of magnitude and duration.”
d. Infringement of ’575 Patent
Based on an incorrect construction of the word “shape,” the district court held on
summary judgment that the Commercial Device did not infringe claims 21, 43, and 44 of
2008-1164, -1193 12
the ’575 patent. Because the Commercial Device supplies a pressure whose
magnitude is based on the patient’s previous breath, the court determined that the
pressure profile’s “shape” cannot be set independent of the patient’s respiratory
characteristics. Respironics, 511 F. Supp. 2d. at 587. This would be true if “shape”
were tied to “magnitude,” as it was under the district court’s construction. But, as
previously explained, “shape” should not have been so limited. Moreover, Respironics
points to record evidence that it believes shows that the Commercial Device utilizes a
predetermined pressure profile having a so-called “bath-tub”-shape that is set
independent of any monitored breathing characteristics. J.A. 1443 (Respironics’s claim
chart accusing the Commercial Device of employing a “predetermined pressure profile
‘bath-tub’ shape”); id. 2334, 2420. Under our modified construction of “shape,”
Respironics’s evidence may raise a genuine issue of material fact. We therefore vacate
the grant of summary judgment with respect to noninfringement of the ’575 patent and
remand the issue for consideration by the district court in the first instance under the
modified construction.
e. Disclaimer of CPAP and Bi-level Therapy
On cross-appeal, Invacare challenges the district court’s claim construction of the
’802, ’193, and ’575 patents, which Invacare argues should be construed to expressly
disclaim CPAP and Bi-level therapy from the scope of the claims. Because the district
court found no infringement of these patents, Invacare’s cross-appeal admittedly seeks
only “a second ground for non-infringement.” Cross-Appellant’s Br. at 1. This is an
improper cross-appeal. See Chiron Corp. v. Genentech, Inc., 363 F.3d 1247, 1252
(Fed. Cir. 2004) (“A cross-appeal is only proper if ‘a party seeks to enlarge its own rights
2008-1164, -1193 13
under the judgment or to lessen the rights of its adversary under the judgment.’”)
(quoting Bailey v. Dart Container Corp. of Mich., 292 F.3d 1360, 1362 (Fed. Cir. 2002).
We shall therefore treat Invacare’s claim construction argument as an alternative
ground for affirming the judgment of noninfringement, and shall disregard Invacare’s
noncompliant Reply Brief on this issue. See Chiron, 363 F.3d 1252 (“Although styled as
a cross-appeal, this court treats this claim construction issue as an alternative ground
for affirming the judgment.”). Moreover, because we have affirmed, supra, the judgment
of noninfringement of the ’802 and ’193 patents, we shall limit our review to the
’575 patent.
Having considered Invacare’s argument, we decline to read an express
disclaimer into the claims, but nevertheless modify the construction of the term
“predetermined pressure profile” in claims 21 and 43 of the ’575 patent to reflect the
way this term was later used on summary judgment. Originally, Invacare had urged the
district court to construe the term to require, among other things, that the pressure
profile “is used to reduce the CPAP or bi-level pressure.” J.A. 1441 (chart of claim 21);
id. 1465 (chart of claim 43). That construction was never expressly adopted in the
Claim Construction Order. Id. at 25 (construing “predetermined pressure profile” only
with regard to means-plus-function language). Later, on summary judgment, the district
court apparently adopted Invacare’s earlier proposed construction, stating that “the
predetermined pressure profile reduces the constant pressure of CPAP or the reduced
EPAP pressure of bi-level therapy once the device detects the expiratory breathing
phase.” Respironics, 511 F. Supp. 2d. at 603. On that basis alone, the district court
held that claims 21 and 43 were not anticipated by two prior art patents. Id.
2008-1164, -1193 14
Respironics does not dispute the district court’s summary judgment interpretation,
presumably because doing so would jeopardize the validity rulings. We agree with the
district court’s summary judgment interpretation and find it to be entirely consistent with
the way the term is used throughout the specification. E.g., ’575 patent col.20 ll.20-25
(distinguishing “predetermined pressure profile” from straight-line CPAP); id. col.21
ll.12-18 (distinguishing it from straight-line Bi-level EPAP). Thus, in order to maintain
consistent claim constructions for both validity and infringement, we shall modify the
construction of “predetermined pressure profile” to require, as the district court later did,
that “the predetermined pressure profile reduces the constant pressure of CPAP or the
reduced EPAP pressure of bi-level therapy once the device detects the expiratory
breathing phase.” Respironics, 511 F. Supp. 2d. at 603. See Kim v. ConAgra Foods,
Inc., 465 F.3d 1312, 1324 (Fed. Cir. 2006) (“The same claim construction governs for
validity determinations as for infringement determinations.”).
Despite the above modification, we nevertheless deny Invacare an alternative
ground for affirming the grant of summary judgment of noninfringement of the
’575 patent. Invacare’s noninfringement argument is premised on the assertion that the
Commercial Device is a standard CPAP device whose pressure remains constant. That
fact, however, is in dispute. See J.A. 2975, Respironics’s Opp. Def.’s Mot. Partial
Summ. J. 26 (“[H]owever, the accused device is not a standard CPAP device.”)
(emphasis in original). Invacare’s own User Manual states that the Commercial Device
“decreas[es] the pressure that the patient must exhale against” and contains “three (3)
settings allow[ing] the user to adjust the extent of the pressure drops.” J.A. 5323. The
User Manual goes on to explain that, in addition to the three adjustable settings, the
2008-1164, -1193 15
device “can be set for standard CPAP operation.” Id. The presence of the other three
settings creates a genuine issue of material fact as to whether the Commercial Device
can only operate as a standard CPAP device. We therefore conclude that Invacare’s
CPAP argument does not provide an alternative basis to affirm the grant of summary
judgment of noninfringement of the ’575 patent.
2. Tradeshow Device
We next turn to Invacare’s cross-appeal of the jury’s finding that the Tradeshow
Device infringed claims 29, 30, and 32 of the ’517 patent.
a. Claim Construction of “controlling”
Invacare challenges the district court’s construction of the “controlling” step in
claim 29 of the ’517 patent, which the district court declined to interpret as a step-plus-
function limitation under 35 U.S.C. § 112 ¶ 6. Claim Construction Order at 34-35. The
“controlling” step reads:
controlling a pressure of the flow of breathing gas delivered
to a patient based on a product of the expiratory gain and
the fluid characteristic during at least a portion of an
expiratory phase of such a patient’s breathing cycle, so that
a pressure of the flow of breathing gas delivered to the
patient during at least a portion of the expiratory phase
varies with fluctuations of the fluid characteristic.
Without pointing to anything in the claim language itself that would dictate construction
under § 112 ¶ 6, Invacare relies entirely on the prosecution history. Specifically,
Invacare asserts that Respironics urged the examiner to interpret the “controlling” step
as a step-plus-function limitation and that the examiner adopted this interpretation.
Neither assertion is persuasive.
First, Respironics never urged the examiner to apply § 112 ¶ 6 to method
claim 29 (then-claim 73). When that claim was added during prosecution, together with
2008-1164, -1193 16
apparatus claim 24 (then-claim 68), the pending application already included apparatus
claim 1 (then-claim 45) and method claim 9 (then-claim 53). J.A. 3790-801. Both
apparatus claims recite a “processing means . . . for producing a command signal,” and
both method claims recite “controlling a pressure of the flow of breathing gas delivered
to a patient.” Notably, the apparatus limitations are written in “means for” format; by
contrast, the method steps lack the words “step for,” thus triggering a presumption that
§ 112 ¶ 6 does not apply to the method steps. See Generation II Orthotics Inc. v. Med.
Tech. Inc., 263 F.3d 1356, 1368 (Fed. Cir. 2001) (stating that “there is a presumption
that . . . limitations are not subject to section 112, paragraph 6” when they do not use
the words “means for” or “step for”). When Respironics added new claims 68 and 73
(now 24 and 29, respectively), Respironics told the examiner that “[n]ew independent
claims 68 and 73 are similar to existing independent claims 45 and 53” (now 1 and 9,
respectively). J.A. 3788. Although Invacare now seizes upon Respironics’s “similar to”
language in this statement, it is clear, based on the above comparison of common
terms, that Respironics was referring to the common language used respectively in the
two apparatus claims (“processing means . . . for producing a command signal”) and in
the two method claims (“controlling a pressure of the flow of breathing gas delivered to
a patient”), not to any alleged similarity between apparatus and method claims. Thus,
contrary to Invacare’s assertion, Respironics did not urge the examiner to import a
meaning under § 112 ¶ 6 from the apparatus claims into the method claims.
Second, the examiner never adopted any step-plus-function interpretation. In the
reasons for allowance, the examiner set forth the various limitations of the apparatus
claims, referring to the “processing means” limitation in the apparatus claims, but not
2008-1164, -1193 17
the “controlling” step in the method claims. J.A. 3806. After setting forth the apparatus
limitations, the examiner referred to the “abovementioned” (apparatus) limitations only
as “means plus function” limitations. Id. (emphasis added). Nowhere in the reasons for
allowance does the examiner mention the patent’s “controlling” steps, or refer to them
as step-plus-function limitations. Accordingly, we reject Invacare’s argument that the
prosecution history compels a different construction.
b. Exclusion of Noninfringement Opinion
Invacare asks us to vacate the jury’s verdict regarding the Tradeshow Device
because the district court ruled that Invacare could not introduce into evidence a prior
opinion by Respironics’s sole testifying witness, who had opined that the Commercial
Device does not infringe the ’517 patent. The district court sustained Respironics’s
objection that this evidence was “[i]rrelevant,” J.A. 220, which we interpret as an
exclusion under Rule 402 of the Federal Rules of Evidence (“Evidence which is not
relevant is not admissible.”). “We review a district court’s evidentiary rulings under the
law of the regional circuit.” Proveris Scientific Corp. v. Innovasystems, Inc., 536 F.3d
1256, 1267 (Fed. Cir. 2008). The Third Circuit reviews the district court’s evidentiary
rulings for abuse of discretion. United States v. Williams, 458 F.3d 312, 315 (3d Cir.
2006).
Because the sole issue at trial was infringement by the Tradeshow Device, we
see no abuse of discretion in the district court’s decision to exclude the noninfringement
opinion regarding the Commercial Device. Other available evidence shows that these
two devices operate quite differently. For example, Invacare’s own product manager,
Ms. Hanley, testified that she had detected deep exhalation unloading when she used
2008-1164, -1193 18
the Tradeshow Device, but detected virtually none with the Commercial Device. J.A.
2323. Because independent claim 29 requires that the accused device provide
breathing gas whose pressure “varies with fluctuations of the fluid characteristic,” the
Commercial Device’s lack of appreciable variations in unloading (in contrast to that of
the Tradeshow Device) would have been a critical difference for purposes of
infringement. Given this key difference, the district court did not abuse its discretion in
concluding that noninfringement by the Commercial Device was not probative of
whether the Tradeshow Device infringed. See Fed. R. Evid. 401 (defining “relevant
evidence” as “evidence having any tendency to make the existence of any fact that is of
consequence to the determination of the action more probable or less probable than it
would be without the evidence”).
Invacare’s reliance on Petree v. Victor Fluid Power, Inc., 887 F.2d 34 (3d Cir.
1989), is misplaced. Evidence in that case was relevant under Rule 402 but was
excluded by the district court under Rule 403. 1 Petree, 887 F.2d at 37-38. The appeal
there focused solely on admissibility under Rule 403. Id. at 40-41 (holding that the
evidence was admissible for impeachment purposes). Here, by contrast, the district
court sustained Respironics’s objection that the noninfringement opinion was
“[i]rrelevant.” J.A. 220. Because we affirm this ruling under Rule 402, the parties’
arguments regarding unfair prejudice and jury confusion are, themselves, irrelevant.
1
Federal Rule of Evidence 403 provides, with emphasis added, “Although
relevant, evidence may be excluded if its probative value is substantially outweighed by
the danger of unfair prejudice, confusion of the issues, or misleading the jury, or by
considerations of undue delay, waste of time, or needless presentation of cumulative
evidence.”
2008-1164, -1193 19
c. JMOL
Invacare appeals the denial of its JMOL motion, asserting that the jury’s verdict
regarding the Vscale variable used in the Tradeshow Device did not amount to a finding
of infringement of the ’517 patent. We review the denial of a JMOL motion under the
law of the regional circuit. 800 Adept, Inc. v. Murex Sec., Ltd., 539 F.3d 1354, 1366
(Fed. Cir. 2008). In this regard, the Third Circuit asks “whether viewing the evidence in
the light most favorable to the nonmovant and giving [the nonmovant] the advantage of
every fair and reasonable inference, there is insufficient evidence from which a jury
reasonably could reach the conclusions that it did.” Rinehimer v. Cemcolift, Inc., 292
F.3d 375, 383 (3d Cir. 2002) (internal quotation marks omitted).
We conclude that Invacare’s JMOL motion was properly denied. In that motion,
Invacare argued that the question sent to the jury was not dispositive of infringement
because it pertained only to a single claim element, and that there was no finding as to
all other claim elements. 2 The district court held that Invacare had waived this
argument because it had not been raised (and no missing claim elements had been
identified) in opposition to Respironics’s motion for summary judgment of infringement.
JMOL Opinion at 10-11. Moreover, the district court held that Invacare had a duty of
candor to come forward and help the court identify any remaining factual issues, rather
than permit the court to conduct the entire proceeding on an issue the court thought was
the sole issue in dispute. Id. at 11-12.
2
The question on the verdict form asked, “Has Respironics proven by the
preponderance of the evidence that the Vscale variable in the Unloading Equation
converts valve position information into flow rate units, that is, the volume of breathing
gas moving per unit of time?” The jury checked “YES,” above “Respironics wins.” J.A.
2183.
2008-1164, -1193 20
We agree: “Counsel must remember that they are not only advocates for their
clients; they are also officers of the court and are expected to assist the court in the
administration of justice, particularly in difficult cases involving complex issues of law
and technology.” Allen Eng’g Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1356 (Fed.
Cir. 2002). In this case, the district court went to great lengths to understand a complex
algorithm and to distill the myriad issues down to those issues in material dispute. The
district court identified a single factual issue—unit conversion by the Vscale variable—
which precluded entry of summary judgment and which would be resolved by a jury.
Respironics, 511 F. Supp. 2d. at 598 (“If it does [convert valve position information into
flow rate units], then defendant’s trade show device infringed this patent. If it does not,
then defendant’s trade show device did not infringe this patent.”). In response, Invacare
filed a motion for reconsideration that was focused solely on the Vscale variable, nowhere
addressing any other claim elements. When the district court denied this motion, it
again stated that the Vscale variable was the sole issue for trial. Later, at an August 2007
status conference, both parties agreed that the only way to bring the infringement case
to a close was for a jury to answer the question regarding the Vscale variable. See JMOL
Opinion at 7-8 (recounting history of case). Invacare never filed any motion in limine
indicating that there were additional issues for trial. Nor did it so indicate in either its
proposed jury instruction or its proposed verdict form. Six weeks after the August 2007
status conference, and a mere three weeks before trial was scheduled to begin,
Invacare stated that it wanted to present its new noninfringement defense, but again
failed to identify any particular claim element that was missing from the Tradeshow
Device. Id. at 9. Under these circumstances, we agree with the district court that
2008-1164, -1193 21
Invacare should not be permitted to overturn a judgment of infringement based on claim
limitations that Invacare itself apparently conceded were met.
B. Anticipation
Invacare appeals the grant of Respironics’s motion for summary judgment, which
sought a determination that claims 21 and 43 of the ’575 patent and claims 29, 30, and
32 of the ’517 patent are not anticipated by a publication authored by Dr. Magdy Younes
et al., titled “An apparatus for altering the mechanical load of the respiratory system,” 62
J. Appl. Physiol. 2491 (1987) (“the Younes Article”). We review a district court’s grant of
summary judgment de novo. Leggett & Platt, Inc. v. VUTEk, Inc., 537 F.3d 1349, 1352
(Fed. Cir. 2008). “A patent is invalid as anticipated if every limitation in a claim is found
in a single prior art reference.” Nystrom v. TREX Co., 424 F.3d 1136, 1149 (Fed. Cir.
2005). “While anticipation is a question of fact, ‘it may be decided on summary
judgment if the record reveals no genuine dispute of material fact.’” Leggett & Platt, 537
F.3d at 1352 (quoting Golden Bridge Tech., Inc. v. Nokia, Inc., 527 F.3d 1318, 1321
(Fed. Cir. 2008)).
We agree with Invacare; the grant of summary judgment was improper because
neither Respironics nor the district court identified any claim limitation that was not
disclosed in the Younes Article. When Respironics moved for summary judgment, it
identified the following distinctions between the patents and the Younes Article:
a. The device disclosed [in the Younes Article] does not
deal with the use of any of the illustrated functions for
treatment of any particular condition (i.e., matching
specific function with specific disease states) (id.);
b. The Younes article discloses a generic apparatus that
can deliver various desired pressure functions using a
piston as the gas delivery source (id.); and
2008-1164, -1193 22
c. The apparatus has no means to detect and compensate
for leaks (id.).
J.A. 1535. The problem with this list is that none of the cited distinctions is reflected in
the claims of the patents. The first distinction is of no consequence because the claims
of the ’575 and ’517 patents are not limited to the treatment of any particular condition
or disease state, but generally recite “delivering pressurized breathing gas to an airway
of a patient.” The second misses the mark because the claims do not necessarily
preclude using pistons as the gas delivery source. As for the third, leak detection is not
recited in the claims. Respironics has never explained how these alleged differences
relate to the claims of the ’575 and ’517 patents.
Moreover, in opposition to Respironics’s motion, Invacare submitted several
claim charts purporting to match each claim limitation with a specific disclosure in the
Younes Article. J.A. 4528 (Def.’s Br. Opp. Pl.’s Mot. Partial Summ. J. 7); id. 806-09
(charts of ’575 patent); id. 816-18 (charts of ’517 patent). The district court’s summary
judgment opinion, however, does not refer to these charts; nor does the opinion explain
which claim limitation(s) are missing in the Younes Article. We take no view on the
technical merits of Invacare’s claim charts, but note that the district court on remand
should determine whether Invacare has shown the existence of a genuine issue of
material fact. See Freedman Seating Co. v. Am. Seating Co., 420 F.3d 1350, 1363
(Fed. Cir. 2005) (stating that an accused infringer “only needed to show the existence of
a genuine issue of material fact in order to preclude summary judgment for” the
patentee) (citing Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 252 (1986)). We
therefore reverse the grant of summary judgment of validity with regard to claims 21 and
43 of the ’575 patent and claims 29, 30, and 32 of the ’517 patent. Although the district
2008-1164, -1193 23
court erred by granting summary judgment on the grounds set forth in Respironics’s
motion, Respironics may move again for summary judgment more clearly setting forth
whatever patentable differences it believes exist over the Younes Article.
C. Additional Claim Constructions
Respironics requests that we construe various other terms that were not
determinative in the district court’s infringement analyses. We have, on occasion,
exercised our discretion to construe such terms in the interest of judicial efficiency.
Here, we decline to construe any additional terms in the ’802 and ’193 patents, because
the district court correctly found no infringement of those patents under the term
“selected higher and lower pressure magnitudes,” and because those patents do not
present any remaining issues on remand. See Inpro II Licensing, S.A.R.L. v. T-Mobile
USA, Inc., 450 F.3d 1350, 1352 (Fed. Cir. 2006) (declining to construe additional terms
where noninfringement was affirmed under dispositive term and where no validity issues
remained). However, because we have held, supra, that a remand is necessary to
reconsider both infringement of the ’575 patent and anticipation of the ’575 and ’517
patents, we shall review the disputed claim constructions of those patents. See Chimie
v. PPG Indus., Inc., 402 F.3d 1371, 1375 n.2 (Fed. Cir. 2005) (construing second term
after vacating summary judgment of noninfringement under first term, where “the
construction of this second disputed term was not dispositive to the district court’s
decision, but may be relevant on remand”).
1. Claim Construction of “fluid characteristic”
Respironics argues that “fluid characteristic” in the claims of the ’575 and ’517
patents should not be limited to just “flow rate,” because the specification also discloses
2008-1164, -1193 24
“volume” as a fluid characteristic. See ’575 patent col.23 ll.65-67 (“said fluid
characteristic is one of a rate of said flow of gas within said patient interface and a
volume of gas to be exhaled”) (emphases added). We agree that the claim construction
should be modified to include volume. Although volume can be calculated from flow
rate, such a calculation would require additional steps to be performed: measuring time
and then multiplying time by average flow rate (or integrating a time-varying flow rate).
Aside from volume, however, Respironics points to no other fluid characteristic
disclosed in the specification. Nor do we see any. Thus, properly construed, “fluid
characteristic” means “flow rate or volume.”
2. Claim Construction of “corresponding to”
Respironics also contends that the phrase “corresponding to” means something
more than just “equal to.” For the reasons stated above, our review here is limited to
the term’s use in the “sensing” step of the ’517 patent’s claim 29, which recites: “sensing
a fluid characteristic associated with the flow of breathing gas and outputting a signal
corresponding to the fluid characteristic.” (emphasis added). In this context, we agree
with Respironics that “corresponding to” is broader than “equal to.” This particular step
recites a “fluid characteristic,” which we have construed, supra, to mean flow rate or
volume. It would make no sense, then, to say that a flow rate or volume is “equal to” a
signal, when the specification speaks of electrical signals that are typically measured in
units of voltage or current. Two such things cannot be equal to one another. Rather, it
is more proper to say that the two are functionally related to one another: the magnitude
of the outputted signal varies as a function of the magnitude of the sensed flow rate or
volume. These two things “correspond to” one another in the sense that they are
2008-1164, -1193 25
“similar, comparable, and/or matching”—the term’s plain and ordinary meaning.
Because the modified construction is broader than the construction under which
infringement was found, our modification of “corresponding to” does not disturb the
finding of infringement.
III. CONCLUSION
For the foregoing reasons, we affirm the judgment in all but two respects: we
vacate the grant of summary judgment of noninfringement as to claims 21, 43, and 44 of
the ’575 patent; and reverse the grant of summary judgment of validity as to claims 21
and 43 of the ’575 patent and claims 29, 30, and 32 of the ’517 patent. We remand the
case for further proceedings consistent with this opinion.
AFFIRMED-IN-PART, REVERSED-IN-PART, VACATED-IN-PART, AND REMANDED
2008-1164, -1193 26