Docket No. 2015-1485 (IPR2013-00322)
REYNA, MAYER, CHEN
July 29, 2016
Brief Summary: Board’s decision of no anticipation vacated and remanded because decision was based on claim construction modified from decision to institute where final decision indicated that construction applied.
Summary: Respironics appealed Board finding that certain claims of Zoll’s US 6,681,003 relating to wearable medical devices that can record and remotely communicate a patient’s medical information. The dispute relates to whether the prior art discloses the “patient compliance data” limitation of the claims and whether the Board impermissibly modified its construction of the same in its final decision (i.e., vs. the decision to institute which the Board noted it would maintain in the final decision). The FC panel noted that it has previously considered this type of claim construction challenge (In re Abbott, FC 2012; Intervet, FC 2010). The analysis includes determining “whether the Board added a limitation when it applied the construction [and] whether that limitation is appropriate under claim construction law. The FC panel found the Board initially construed the term to mean “data indicating whether a patient has followed instructions for use” without a “specific requirement relating to the instructions for use.” However, it also concluded that in its final decision, the Board added the limitation “that the device store information not just about patient compliance but also about instructions it gave to the patient.” And it found this was improper under claim construction law (“the fact that an unclaimed element may be necessary for a device to function as claimed does not, standing alone, allow courts to treat the unclaimed element as a claim limitation” (SiRF Tech., FC 2010 (while “forwarding” and “downloading” of data was necessary to carry out the claimed “transmitting” step, “they were not claimed and thus did not act as limitations”). The Board’s modification was therefore rejected and the decision vacated and remanded for consideration as to whether the prior art satisfies the “patient compliance data” limitation as originally construed.