656 F. App'x 531
Fed. Cir.2016Background
- This appeal arises from an IPR in which Respironics challenged Zoll’s U.S. Patent No. 6,681,003 as anticipated by WO 98/39061 (Owen). The PTAB found claim 1 unpatentable but sustained claims 2, 4, 5, 8, 9, 16, 19, and 20 as not anticipated.
- The patent claims relate to wearable medical devices that record and transmit patient data (e.g., heart-monitor/defibrillator) to a database and provide access to that data.
- Key claim language at issue: every asserted claim (except claim 1) requires transmission/storage of “patient compliance data” (or similar phrasing).
- Owen discloses a wearable defibrillator that (a) prompts a patient via audio to press a response/cancel button, (b) logs/transmits button presses, and (c) logs/transmissions when a patient exceeds recommended wear time.
- The PTAB construed “patient compliance data” as “data indicating whether a patient has followed instructions for use,” but in applying that construction required additional evidence that the reference recorded the giving of instructions (e.g., timestamps showing instruction timing). The PTAB held Owen did not disclose “patient compliance data” and thus did not anticipate the dependent claims.
- The Federal Circuit held the PTAB erred by adding an instruction-recording requirement to the PTAB’s own construction, found Owen does disclose patient compliance data under the correct construction, vacated the PTAB’s rulings as to the affected claims, and remanded for the Board to consider remaining claim elements.
Issues
| Issue | Respironics' Argument | Zoll's Argument | Held |
|---|---|---|---|
| Whether the PTAB improperly added a requirement to the term “patient compliance data” when applying its construction | The PTAB’s stated construction is broad (“data indicating whether a patient has followed instructions for use”); PTAB improperly required proof the reference recorded when instructions were given | The PTAB’s application (requiring record of instruction timing/affirmative prompting) correctly distinguishes mere sensor logs from compliance data | Court: PTAB added an extra limitation (recording instructions); that addition is improper under claim-construction principles and precedent (e.g., SiRF) — reversed on this point |
| Whether Owen discloses “patient compliance data” under the PTAB’s original construction | Owen’s audio prompts + logged button presses (and logged exceeded wear-time notices) constitute data indicating whether the patient followed instructions | PTAB/Zoll argued logs lacked evidence the patient had been prompted or instructed, so logs do not reflect compliance | Court: Under the PTAB’s original construction, Owen’s disclosures satisfy “patient compliance data.” The PTAB’s contrary conclusion relied on the improper added limitation; reversed |
| Remedy and next steps | Vacate and remand for the PTAB to apply correct construction and determine whether Owen anticipates the full claims | Affirm PTAB decision (Zoll preserved benefit of PTAB application) | Court: Vacated PTAB’s findings of no anticipation for claims 2, 4, 5, 8, 9, 16, 19, 20; remanded so PTAB can determine whether Owen satisfies all other claim limitations |
Key Cases Cited
- Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292 (Fed. Cir.) (standard of review for claim construction and factual findings)
- Teva Pharms. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831 (Sup. Ct.) (deference framework for factual findings in claim construction)
- Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131 (Sup. Ct.) (PTAB applies broadest reasonable interpretation in IPRs)
- SiRF Tech., Inc. v. Int’l Trade Comm’n, 601 F.3d 1319 (Fed. Cir.) (do not import unclaimed, functional steps as claim limitations)
- In re Abbott Diabetes Care Inc., 696 F.3d 1142 (Fed. Cir.) (challenge to application of claim construction)
- Intervet Inc. v. Merial Ltd., 617 F.3d 1282 (Fed. Cir.) (same)