Ex Parte 5,607,454 et alDownload PDFPatent Trial and Appeal BoardJan 31, 201890013483 (P.T.A.B. Jan. 31, 2018) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 90/013,483 04/01/2015 5,607,454 ZOLL-002/00US 319081-2009 1852 24737 7590 02/01/2018 PHILIPS INTELLECTUAL PROPERTY & STANDARDS 465 Columbus Avenue Suite 340 Valhalla, NY 10595 EXAMINER DAWSON, GLENN K ART UNIT PAPER NUMBER 3993 MAIL DATE DELIVERY MODE 02/01/2018 PAPER Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte KONINKLIJKE PHILIPS N.V. and PHILIPS ELECTRONICS NORTH AMERICA CORPORATION1 Appellant, Patent Owner ____________________ Appeal 2017-004119 Reexamination Control 90/013,483 Patent No. 5,607,4542 Technology Center 3900 ____________________ Before DANIEL S. SONG, RAE LYNN P. GUEST, and BRETT C. MARTIN, Administrative Patent Judges. SONG, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING In the Request for Rehearing (hereinafter “Req. Reh’g”), the Patent Owner requests reconsideration under 37 C.F.R. § 41.52 of our Decision mailed August 1, 2017 (hereinafter “Original Decision” or “Orig. Dec.”) affirming the Examiner’s rejections of claim 51. 1 Koninklijke Philips N.V. and Philips Electronics North America Corporation are the real parties in interest (Appeal Brief (hereinafter “App. Br.”) 1). 2 Issued March 4, 1997 (hereinafter “the ’454 patent”). Appeal 2017-004119 Reexamination Control 90/013,483 Patent No. 5,607,454 2 The Patent Owner argues that in the Original Decision, the Board “presented new arguments on claim construction, overlooked aspects of the intrinsic record contrary to those claim constructions, and misapprehended the operation of the circuit described in the specification.” (Req. Reh’g 1). We address the various arguments of the Patent Owner infra, but in an order that differs from the order presented in the Request for Rehearing. The Patent Owner initially argues that “[a]n electrical circuit that delivers electrical energy to the patient requires all components including the additional impedance to be in the current path of the patient. Otherwise, the additional impedance is not part of the electrical circuit that initially provides electrical energy to the patient.” (Req. Reh’g 2; see also id. at 6). According to the Patent Owner, an interpretation of the claim “whereby the additional impedance and the patient are not in the same current flow path would mean that the additional impedance disclosed in the ’454 patent is never removed from the circuit.” (Req. Reh’g 8; see also id. at 2). The Patent Owner asserts that “under the Board’s interpretation, claim 51 would not cover any embodiment disclosed in the patent, which cannot be correct.” (Req. Reh’g 2–3; see also id. at 7). However, this line of argument has already been sufficiently addressed by the Board (Orig. Dec. 11–13, 15–16). While the Patent Owner seeks to interpret claim 51 as requiring the patient and the additional impedance physically connected to form a serially connected electrical path, the claim does not recite either a single electrical path or a series circuit. A person of ordinary skill in the art would not understand the limitation “removing the additional impedance” to mean physical removal of the “element” (i.e., resistor) from the electrical circuit, such physical removal of Appeal 2017-004119 Reexamination Control 90/013,483 Patent No. 5,607,454 3 an element not being supported by the Specification of the ’454 patent. As already explained, Hirschberg discloses: a defibrillator including a current limiter that limits the current supplied to the patient to a predetermined maximum value Io by removing an “additional impedance” . . . from the disclosed electrical circuit via the controllable resistor 44. (Orig. Dec. 14 (edited to remove reference to “(i.e., separable quantity of impedance)”)). The device of Hirschberg clearly performs the step of “removing the additional impedance from the electrical circuit if the electrical parameter is within a defined range prior to the end of the discharging step,” as required by claim 51. The essence of the Patent Owner’s argument is that the electrical circuit is different than that exemplified in the Specification of the ’454 patent. However, although Hirschberg teaches a parallel electrical circuit in performing the method, nothing in claim 51 limits the recited electrical circuit to a series configuration, and we disagree that a person of ordinary skill would understand claim 51 as being limited to a series electrical circuit. The fact that the peripheral bounds of what is encompassed by the claim language is not exemplified as an embodiment in the disclosure of the ’454 patent does not mean that the claim does not encompass such embodiments. The Patent Owner fails to recognize that claim language is not necessarily limited to the preferred embodiment, and can encompass more than the exemplary embodiment disclosed in the Specification of the ’454 patent. Such is the basis of prior art invalidity, wherein a previously unknown/unapplied prior art is uncovered, and the claims were written too broadly so as to encompass not only what is Appeal 2017-004119 Reexamination Control 90/013,483 Patent No. 5,607,454 4 disclosed in its application, but also that which is disclosed in the newly uncovered prior art. The Patent Owner further argues that the Board overlooked parts of the intrinsic record, including the prosecution history, establishing that the claimed “additional impedance” is not merely a “separable quantity of impedance,” but instead, is an “impedance element,” and apparently, a discrete, fixed resistor, that is “removed entirely from the circuit.” (Req. Reh’g 3; see also id. at 8). Specifically, as to the intrinsic record, the Patent Owner argues that “[t]he only embodiment disclosed in the ’454 patent on this safety circuit shows the additional impedance as a discrete resistor 64,” and “describes closing switch 66 ‘to take safety resistor 64 out of the circuit.’” (Req. Reh’g 9 (emphasis added) (citing col. 6, ll. 53–56; col. 6, l. 66–col. 7, l. 3; Fig. 4)). Hence, the apparent position of the Patent Owner is that the recitation “additional impedance” must be interpreted to mean a discrete (fixed) resistor because that is all that is shown in Figure 4 of the ’454 patent and described therein. However, this begs the question as to why claim 51 does not recite “a discrete fixed resistor” considering the Specification of the ’454 patent describes “resistor 64” (col. 6, l. 53), and this resistor is illustrated in Figure 4 as being of a fixed type, unless the applicant intended claim 51 to be interpreted more broadly so as to encompass electrical devices/circuits that provide impedance, for example, a variable resistor.3 As explained, a 3 We observe that the symbol used in Figure 4 of the ’454 patent is that of a fixed resistor, which differs from the symbol for a variable resistor. Appeal 2017-004119 Reexamination Control 90/013,483 Patent No. 5,607,454 5 particular embodiment appearing in the written description must not be read into the claim if the claim language is broader than the embodiment. See Superguide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004); Specialty Composites v. Cabot Corp., 845 F.2d 981, 987 (Fed. Cir. 1988) (“Where a specification does not require a limitation, that limitation should not be read from the specification into the claims.”); Electro Med. Sys., S.A. v. Cooper Life Scis., Inc., 34 F.3d 1048, 1054 (Fed. Cir. 1994) (“claims are not to be interpreted by adding limitations appearing only in the specification.”); Lemelson v. United States, 752 F.2d 1538, 1551–52 (Fed.Cir.1985) (“even if the specification only discloses apparatus directed to executing automatic prepositioning of the workpiece or the measurement device or both, this does not dictate reading such a limitation into the prepositioning step of the claim.”). Moreover, as will be discussed infra, this argument and the Patent Owner’s assertion that the resistor must be “removed entirely from the circuit” (Req. Reh’g 9) are not credible because they are inconsistent with representations made during a patent litigation in which claim 51 was asserted against an alleged infringer. As to the prosecution history, we find Patent Owner’s argument based on the original Examiner’s treatment of the term unpersuasive. (Req. Reh’g 9; see also id. at 10). The Patent Owner does not establish that such construction was the proper interpretation, or that such interpretation is binding during the present reexamination. In that regard, we agree with the reexamining Examiner that “even if that is true that does not limit the claims to such construction here,” and “just because the examiner used prior art where the additional impedance was identified as a single unit would not Appeal 2017-004119 Reexamination Control 90/013,483 Patent No. 5,607,454 6 mean that the claim required same.” (Ans. 17). Otherwise, claim interpretation errors would not be correctable through reexaminations. The Patent Owner’s further argument based on “the requirement that the ‘triggering event for removal of the additional impedance’ occur prior to the end of the discharge” (Req. Reh’g 10 (citing to Response to Second Office Action dated January 29, 1996, 3–4)) is unpersuasive because the portion of the record relied upon does not pertain to the additional impedance, but instead, pertains to monitoring of the electrical parameter before the end of the discharging step. The Patent Owner also argues that the Original Decision erred because during the original prosecution, “[t]he applicants further explained that the ‘element’ of ‘an additional impedance’ recited in the claim is not the electrodes, and that the claim was amended ‘to point out that the recited impedance is an element separate from the electrodes.’” (Req. Reh’g 10 (emphasis added by the Patent Owner) (citing Response to Office Action dated July 21, 1995, 84). The Patent Owner reiterates that during the 4 The relevant portion of the prosecution history states: The Examiner asserts that the Bell et al. electrodes are the recited “additional impedance.” It is clear from claim [51]’s recitation of an impedance that this element is not the electrodes, which were recited earlier in the claim. Nonetheless, in an effort to make this point even more clearly, Applicants have amended claim [51] to point out that the recited impedance is an element separate from the electrodes and that the impedance forms a circuit with the patient, the energy source and the electrodes. The Bell et al. references lack this additional impedance. (Response to Office Action dated July 21, 1995, 8 (emphasis added by the Patent Owner)). Appeal 2017-004119 Reexamination Control 90/013,483 Patent No. 5,607,454 7 original prosecution, “the applicants expressly stated that the ‘additional impedance’ is an element, i.e., a discrete component within the circuit,” in contrast to the interpretation set forth by the Board (Req. Reh’g 11). We are persuaded by the Patent Owner’s argument that the proper interpretation of “additional impedance” is a physical impedence “element” (specifically, a resistor) in view of the prosecution history.5 Specifically, during prosecution, the Patent Owner asserted that the term “additional impedance” refers to an element as argued. Accordingly, we withdraw those portions of the Original Decision in which “additional impedance” was interpreted to mean “a separable quantity of impedance that can be removed from the circuit,” (see, e.g., Orig. Dec. 8–11), and further modify the Original Decision to any extent that it is inconsistent with the revised interpretation of the term “additional impedance” to mean an “element,” and/or reasoning set forth in the present Decision on Request for Rehearing. Nevertheless, Patent Owner’s interpretation of the term “additional impedance” still does not establish patentability of claim 51. For example, the Original Decision affirmed Rejection 2, in which claim 51 was rejected as being obvious over Hirschberg, even if the term “additional impedance” refers to a physical “element” or a “resistor.” (Orig. Dec. 18). In that regard, the Decision affirms the rejection based on the Examiner’s finding: 5 As noted in the Original Decision (Orig. Dec. 7), the ’454 patent has expired, and thus, claim 51 is interpreted using ordinary and customary meaning of the terms as understood by a person of ordinary skill in the art when read in the context of the specification and prosecution history. See In re Rambus, Inc., 753 F.3d 1253, 1256 (Fed. Cir. 2014); Phillips v. AWHCorp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). Appeal 2017-004119 Reexamination Control 90/013,483 Patent No. 5,607,454 8 that even if “additional impedance” recited claim 51 is interpreted to mean “discrete resistor(s) which are removed in their entirety from the circuit” as advocated by the Patent Owner, such a configuration would have been obvious because Hirschberg “does not specify any particular controllable resistor” and thus, it would have been obvious to select an appropriate, known, controllable resistor that is commonly implemented as a collection of discrete resistors wherein resistance over the collection is controlled by switching on and off (adding or removing) one or more of the discrete resistors (Ans. 8–9). According to the Examiner, such selection of a commonly known resistor merely applies a known technique to a known device to yield a predictable result (Ans. 9). The Examiner also alternatively finds that “it would have been obvious to simply substitute a switchable collection of discrete resistors for the controllable resistor 44 in FIG. 6 of Hirschberg” using standard techniques (Ans. 10). (Orig. Dec. 18–19). As the Original Decision points out “[t]he Patent Owner does not dispute that controllable resistors implemented as a collection of discrete resistors were known and common, or that substitution for the controllable resistor merely applies a known technique.” (Orig. Dec. 19). Accordingly, Rejection 2 affirmed in the Original Decision already encompasses the Patent Owner’s interpretation of the term “additional impedance” as an element, and concludes that claim 51 is still unpatentable. The Patent Owner also argues that the “Board cited a portion of the specification not previously relied on by the Examiner” in referencing column 6, lines 59–63 of the ’454 patent (Req. Reh’g 2, 4). This argument is unpersuasive because we are required to review the entirety of the ’454 patent to discern the scope of claim 51, including its disclosure that the operating sequence of switches may be modified. The Patent Owner further Appeal 2017-004119 Reexamination Control 90/013,483 Patent No. 5,607,454 9 argues that the Board “misapprehended the ’454 specification” as to this disclosure, pointing to portions of the ’454 patent that explain the operation of the embodiment shown in Figure 4 (Req. Reh’g 4), and that the modification of the operating sequence referred to is only relevant prior to discharge. Thus, according to Patent Owner, “the controller would need to open switch 66 before initiating delivery.” (Req. Reh’g 5). Based thereon, the Patent Owner states that the Board’s interpretation is untenable because “switch 66 can start out in the closed position” so that “the additional impedance is not part of the electrical circuit that initially delivers electrical energy to the patient” and the energy delivered to the patient would not be limited (Req. Reh’g 2; see also id. at 7). However, the Patent Owner misunderstands the point of the Board’s citation to the ’454 patent’s disclosure of modifying the operating sequence, which is that the ’454 patent does not describe its invention as being fixed and unmodifiable. Instead, the ’454 patent teaches that the invention can be modified, and teaches such modification so as to encompass undisclosed variations of the embodiment exemplified in Figure 4. Thus, as stated in the Original Decision, “[i]n view of the disclosure of such alternatives in which resistor 64 is bypassed initially, one of ordinary skill in the art would not understand claim 51 as requiring the unrecited features of the preferred embodiment.” (Orig. Dec. 11; see also id. at 15). The Original Decision focus is properly on how a person of ordinary skill would understand the claim, and not on whether or not the Specification sets forth all the details of other embodiments falling within the scope of the claim. In other words, a person of ordinary skill in the art would not understand claim 51 to be a Appeal 2017-004119 Reexamination Control 90/013,483 Patent No. 5,607,454 10 picture claim directed to only one preferred embodiment shown in Figure 4, but rather, would understand claim 51 more broadly as encompassing undisclosed variations. As mentioned supra, in an argument apparently directed toward Rejections 2 and 3, the Patent Owner further argues that: While the Board contends that the variable resistor in Hirschberg could have been “implemented as a collection of discrete resistors wherein the resistance over the collection is controlled by switching on and off (adding or removing) one or more of the discrete resistors,” Decision at 18, Hirschberg does not teach removing entirely the additional impedance element. (Req. Reh’g 11 (emphasis added)). In that regard, the Patent Owner also requests that the Board “hold that claim 51 requires removing the entire additional impedance element and not just a portion of the impedance.” (Req. Reh’g 11 (emphasis added)). Accordingly, the apparent argument is that if the variable resistor of Hirschberg is implemented as a collection of discrete resistors, the entire collection must be removed to satisfy the claim. However, notwithstanding the fact that it is implicit that the device of Hirschberg would remove the entire collection of discrete resistors under certain operating circumstances, the Patent Owner again reads limitations of the preferred embodiment disclosed in the Specification into the language of claim 51. Moreover, Patent Owner’s assertion that the additional impedance element resistor must be “removed entirely from the circuit” (Req. Reh’g 9), and its general argument that claim 51 is limited to the preferred embodiment shown in Figure 4 of the ’454 patent, is inconsistent with, and is undermined by, its representation made during the patent litigation in Appeal 2017-004119 Reexamination Control 90/013,483 Patent No. 5,607,454 11 which claim 51 was asserted against an alleged infringer. In particular, during the trial Koninklijke Philips N.V. et al. v. Zoll Medical Corp. (Case No. 10-11041-NMG and 12-12255-NMG, D. Mass), upon direct examination by Patent Owner’s attorney Mr. J. Michael Jakes, the Patent Owner’s expert Dr. Patrick Wolf testified that defibrillators made by Zoll infringed claim 51 of the ’454 patent, even though such defibrillators have multiple resistors that are removed in accordance with a scheduled sequence.6 Accordingly, the Patent Owner cannot now in good faith assert 6 The relevant portions of the transcript are reproduced below, the question of Mr. Jakes being answered by Dr. Wolf: Q. And one of the other differences with Claim 51 was removing the impedance. Let’s look at that with respect to all of Zoll’s defibrillators. And now we’re looking at Slide 87. Did you find that the Zoll defibrillators remove the impedance from the circuit if the parameter is within a defined range as required by Claim 51? A. I did. And again, this was Exhibit 691, the Boucher declaration, in which it says that in Step 18, series defibrillators, the calculated patient impedance is used to select a defibrillation schedule. And then the schedule’s -- the schedule sets out -- and this is in Step 19 -- how many resistors will be used in the defibrillation circuit and the sequence in which they will be removed. (Trial transcript, Day Three, 3-61, ll. 2–15 (emphasis added)). A. . . . The “DAC” is the shorthand notation for the resistor selection circuit that they -- that Zoll uses. And the “DAC” -- in the second paragraph there, it says, “The DAC circuit contains six 10-ohm resistor elements,” each being shorted according to a prescribed schedule. (Trial transcript, Day Three, 3-66, ll. 10–14 (emphasis added)). Appeal 2017-004119 Reexamination Control 90/013,483 Patent No. 5,607,454 12 that its claim requires a discrete resistor that is removed “entirely” or that claim 51 is restricted to the preferred embodiment illustrated in Figure 4. DECISION As discussed above, we have considered the Original Decision in view of the Request for Rehearing. Accordingly, we modify the Original Decision to withdraw those portions of the Original Decision in which “additional impedance” was interpreted to mean “a separable quantity of impedance that can be removed from the circuit,” and to be consistent with this Decision on Request for Rehearing. Moreover, we withdraw the affirmance of Rejection 1 because neither the Examiner nor the Board considered the rejection while interpreting “additional impedance” to be an element. However, we decline to modify the Original Decision as to Rejection 2 in which interpretation of “additional impedance” to be an element was considered. We further decline to modify the Original Decision as to Rejection 3, which further builds on Rejection 2, but also relies on Drori for the explicit disclosure of a bank of resistors with switches for providing variable resistance or impedance in electrical circuits (Orig. Dec. 30). Accordingly, claim 51 of the ’454 patent remains rejected. DENIED A party seeking judicial review must timely serve notice on the Director of the United States Patent and Trademark Office. See Appeal 2017-004119 Reexamination Control 90/013,483 Patent No. 5,607,454 13 37 C.F.R. § 90.2. Copy with citationCopy as parenthetical citation