Takeaway: A showing that a reference discloses a means-plus-function element requires showing that the reference discloses the corresponding structure in the context of performing the recited function.

In its Decision, the Board denied Petitioner’s Request for Rehearing of the Board’s determination in the previously-rendered Final Written Decision. The Board indicated that it had considered the Request for Rehearing but nonetheless elected to decline to modify the Decision.

The Final Written Decision had concluded that Petitioner had not proven by a preponderance of the evidence that claims 2, 4, 5, 8, 9, 16, 19, and 20 of the ’003 are unpatentable. Petitioner’s Request for Rehearing asserted in its Final Written Decision, the Board incorrectly determined that the Owen reference fails to disclose the claimed “patient compliance data” and that the Board erred in it treatment of the means-plus-function limitations recited in claims 4 and 19.

As for the first assertion, the Request for Rehearing argued that “Owen’s ‘statements indicating that the patient has been wearing electrode harness 4 for greater than a recommended period of time’ . . . is patient compliance data because it indicates whether the patient has followed his physician’s instructions to wear the device for a recommended period of time.” Petitioner went on to argue in the Request that Patent Owner’s own expert “acknowledged that wear time data is a measure of patient compliance.”  More particularly, Petitioner argued “that the word ‘recommended’ indicates that it was the patient to whom the recommendation regarding wear time was given.”

The Board disagreed, finding that the Final Written Decision had properly explained that “Owen does not disclose that it is the patient who is told what the recommended wear time is,” and that Petitioner had acknowledged this point.  Moreover, the Board indicated that Petitioner had not identified “where in its Petition or elsewhere in the record it identifies any disclosure in Owen to the contrary.”  The Board also disagreed with positions taken by Petitioner in the Request for Rehearing in connection with a “button push” issue that was addressed in the Final Written Decision.

Regarding the second assertion, it was Petitioner’s position in the Request for Rehearing that Patent Owner had not disputed “that Owen discloses the structures disclosed by the ‘003 patent as corresponding to the functions recited in means-plus-function limitations of claims 4 and 19.” But the Board did not consider this assertion to be indicative of any error in the Final Written Decision, because the Board had concluded “Owen does not disclose the corresponding structure in the context of the claimed function.”

Respironics, Inc. v. Zoll Medical Corporation, IPR2013-00322 
Paper 48: Decision on Petitioner’s Request for Rehearing 
Dated: January 2, 2015 
Patent: 6,681,003 B2 
Before: Bryan F. Moore, Brian J. McNamara, and Scott E. Kamholz
Written by: Kamholz