Hill-Rom Services, Inc. v. Matal
16-2199
| Fed. Cir. | Dec 15, 2017Background
- Hill-Rom’s ’263 patent claims a hospital bed control system with multiple modules communicating over a serial bus (CAN) and, as amended during reexamination, requires the control system to “periodically verify the functionality of each module.”
- Hill-Rom added claims that require modules to transmit status/heartbeat messages and added dependent claims requiring a CAN and a “module that operates as a master.”
- Stryker requested inter partes reexamination; the Examiner rejected challenged claims as anticipated/obvious over prior art including Hill-Rom’s own Kummer patent (peer-to-peer, ad hoc diagnostics) and Zeltwanger (CAN and SDO protocol).
- The Board affirmed rejections: it construed “periodically” to include regular and intermittent/irregular intervals and concluded Zeltwanger’s SDO satisfies the master-module limitation (or that one would make an SDO module).
- Hill-Rom appealed. The Federal Circuit (intervenor: PTO Director) reviewed claim construction and the Board’s factual/legal findings and addressed anticipation/obviousness for the disputed claim limitations.
Issues
| Issue | Hill-Rom's Argument | PTO/Stryker's Argument | Held |
|---|---|---|---|
| Proper construction of "periodically" in claims 1 and 14–15 | “Periodically” means repeated at regular (equally spaced) intervals (consistent with heartbeat embodiment) and excludes ad hoc/random checks | Broad plain meaning allows repetition without requiring equal spacing; Board construed to include regular and intermittent/irregular intervals | Court: "Periodically" = repeated at spaced time intervals (need not be equally spaced) but excludes random/ad hoc or only-prompted checks; reverse Board to extent it allowed ad hoc/random checks |
| Whether Kummer anticipates or renders obvious claims requiring “periodically” verify functionality | Kummer lacks periodic, unprompted status messages; its diagnostics are ad hoc or after module use, so does not disclose/amend | Board/Examiner found Kummer’s diagnostics satisfy periodically or render it obvious | Court: Substantial evidence lacking that Kummer discloses periodic limitation; reversed anticipation and obviousness findings for claims 1 and 14–15 |
| Whether "module that operates as a master" can be satisfied by Zeltwanger’s SDO (non-physical protocol) | Master module is a physical device (modules have microcontrollers/transceivers and are electrically coupled); an SDO is a protocol, not a physical master module | Board/Examiner treated SDO (or SDO "module") as satisfying master-module limitation; argued conversion to an SDO module would be obvious | Court: Board erred in finding SDO itself is a master module and in failing to make clear factual findings; vacated and remanded claims 31–32 for proper analysis of master-module limitation and motivation-to-combine reasoning |
| Board’s explanation and motivation-to-combine in obviousness analysis (claims 31–32) | Board failed to articulate a clear factual basis/motivation to combine Kummer and Zeltwanger to yield a master module; mere acceptances of Examiner conclusions insufficient | Board relied on Examiner and respondent silence; stated Hill-Rom didn’t identify defects | Court: Board’s analysis cursory/ambiguous and lacked required explication; vacated obviousness determinations and remanded for detailed reasoning |
Key Cases Cited
- In re Rambus, 753 F.3d 1253 (Fed. Cir.) (claims in reexamination get broadest reasonable construction consistent with the specification)
- Teva Pharm. USA, Inc. v. Sandoz, 135 S. Ct. 831 (Sup. Ct.) (claim construction review de novo; underlying factual findings reviewed for substantial evidence)
- CAE Screenplates Inc. v. Heinrich Fiedler GmbH & Co. KG, 224 F.3d 1308 (Fed. Cir.) (different claim terms presumed to have different meanings absent evidence to the contrary)
- SEC v. Chenery Corp., 332 U.S. 194 (U.S.) (courts may not invent or guess the agency’s rationale; agency must explain basis for decision)
- Power Integrations, Inc. v. Lee, 797 F.3d 1318 (Fed. Cir.) (Board must set out reasoning in sufficient detail to permit meaningful appellate review)
- Personal Web Techs., LLC v. Apple, Inc., 848 F.3d 987 (Fed. Cir.) (vacatur where Board’s motivation-to-combine analysis was deficient)