Trials@uspto.gov
`571.272.7822
`
`
`
`
`
`Paper 94
`Date: August 4, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`AMERICAN NATIONAL MANUFACTURING, INC.,
`Petitioner,
`
`v.
`
`SLEEP NUMBER CORPORATION
`f/k/a SELECT COMFORT COMPORATION,
`Patent Owner.
`____________
`
`IPR2019-00514
`Patent 5,904,172
`____________
`
`
`
`Before SCOTT A. DANIELS, FRANCES L. IPPOLITO, and
`ALYSSA A. FINAMORE, Administrative Patent Judges.
`
`FINAMORE, Administrative Patent Judge.
`
`
`JUDGMENT
`Final Written Decision
`Determining Some Challenged Claims Unpatentable
`35 U.S.C. § 318(a); 37 C.F.R. § 42.73
`
`ORDER
`Dismissing Patent Owner’s Motion to Exclude
`Dismissing Petitioner’s Motion to Exclude
`37 C.F.R. § 42.64(c)
`Authorizing Entry of an Amended Stipulated Protective Order
`Conditionally Granting Patent Owner’s Motions to Seal
`Conditionally Granting Petitioner’s Motion to Seal
`37 C.F.R. §§ 42.14, 42.54
`
`
`
`
`571.272.7822
`
`
`
`
`
`Paper 94
`Date: August 4, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`AMERICAN NATIONAL MANUFACTURING, INC.,
`Petitioner,
`
`v.
`
`SLEEP NUMBER CORPORATION
`f/k/a SELECT COMFORT COMPORATION,
`Patent Owner.
`____________
`
`IPR2019-00514
`Patent 5,904,172
`____________
`
`
`
`Before SCOTT A. DANIELS, FRANCES L. IPPOLITO, and
`ALYSSA A. FINAMORE, Administrative Patent Judges.
`
`FINAMORE, Administrative Patent Judge.
`
`
`JUDGMENT
`Final Written Decision
`Determining Some Challenged Claims Unpatentable
`35 U.S.C. § 318(a); 37 C.F.R. § 42.73
`
`ORDER
`Dismissing Patent Owner’s Motion to Exclude
`Dismissing Petitioner’s Motion to Exclude
`37 C.F.R. § 42.64(c)
`Authorizing Entry of an Amended Stipulated Protective Order
`Conditionally Granting Patent Owner’s Motions to Seal
`Conditionally Granting Petitioner’s Motion to Seal
`37 C.F.R. §§ 42.14, 42.54
`
`
`
`
`
`IPR2019-00514
`Patent 5,904,172
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`
`INTRODUCTION
`I.
`Petitioner filed a Petition requesting an inter partes review of
`claims 2, 4, 6, 12, 16, 20, 22, and 24 of U.S. Patent No. 5,904,172 (“the
`’172 patent”)1. Paper 2 (“Pet.”). Patent Owner filed a Preliminary
`Response. Paper 7 (“Prelim. Resp.”). With our authorization (Paper 6),
`Petitioner filed a Reply addressing Patent Owner’s alleged improper service.
`Paper 8 (“Reply”). On August 5, 2019, we granted Petitioner’s request, and
`instituted an inter partes review of the ’172 patent. Paper 10 (“Inst. Dec.”).
`After institution, Patent Owner filed a Response. Paper 46 (“PO
`Resp.”). Petitioner filed a Reply to Patent Owner’s Response. Paper 69
`(“Reply”). Patent Owner filed a Sur-reply. Paper 78 (“Sur-reply”).
`Each party requested oral argument (Papers 80 and 81), and an oral
`argument was held on May 20, 2020. A transcript of the oral argument has
`been entered into the record. Paper 93 (“Tr.”).
`Patent Owner filed a Motion to Exclude Petitioner’s Evidence.
`Paper 82 (“PO Mot. Excl.”). Petitioner filed an Amended Opposition
`(Paper 89), and Patent Owner filed a Reply (Paper 92). Similarly, Petitioner
`filed a Motion to Exclude Evidence. Paper 83 (“Pet. Mot. Excl.”). Patent
`Owner filed an Opposition (Paper 85), and Petitioner filed a Reply
`(Paper 91).
`The parties jointly stipulate to the entry of a Stipulated Protective
`Order (Ex. 2034). Paper 40. In accordance with the Stipulated Protective
`Order, Patent Owner filed a Motion to Seal (Paper 49, “PO Mot. Seal”) and
`
`
`1 The ’172 patent includes ex parte reexamination certificate
`US 5,904,172 C1, issued January 3, 2014 (“reexamination certificate”).
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`a subsequent Motion to Seal (Paper 83, “PO 2nd Mot. Seal”), and Petitioner
`also filed a Motion to Seal (Paper 68, “Pet. Mot. Seal”). All of the Motions
`to Seal are unopposed.
`This Final Written Decision (“Decision”) is issued pursuant to
`35 U.S.C. § 318(a). For the reasons that follow, we conclude Petitioner has
`not demonstrated that claims 2, 4, 6, 12, 20, 22, and 24 are unpatentable by a
`preponderance of the evidence, but has demonstrated that claim 16 is
`unpatentable by a preponderance of the evidence.
`
`
`BACKGROUND
`II.
`A. Real Parties in Interest
`Petitioner identifies the real parties in interest as itself, American
`National Manufacturing, Inc., as well as Number Bed Holdings, LLC;
`Sizewise Rentals, L.L.C.; Dires, LLC d/b/a Personal Comfort Bed; and
`Raye’s, Inc. d/b/a Sizewise Manufacturing. Paper 74, 2. Patent Owner
`identifies the real parties in interest as itself, Sleep Number Corporation, in
`addition to Select Comfort Retail Corporation; Select Comfort SC
`Corporation; Select Comfort Canada Holding Inc.; Select Comfort COSC
`Canada ULC; and Select Comfort Limited. Paper 75, 1.
`
`
`B. Related Matters
`The parties identify Sleep Number Corp. v. American National
`Manufacturing, Inc., No. 3:17-cv-03517-B (N.D. Tex. dismissed
`Feb. 20, 2018) and Sleep Number Corp. v. Sizewise Rentals, LLC, No. 3:17-
`cv-03518-N (N.D. Tex. dismissed Feb. 20, 2018), which were refiled as
`Sleep Number Corp. v. American National Manufacturing, Inc., No. 5:18-
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`cv-00357-AB SP (C.D. Cal. filed Feb. 20, 2018) and Sleep Number Corp. v.
`Sizewise Rentals, LLC, No. 5:18-cv-00356-AB SP (C.D. Cal. filed
`Feb. 20, 2018), respectively, and currently stayed. Pet. 1; Paper 75, 2. The
`parties further identify the following terminated proceedings: Select Comfort
`Corp. v. The Sleep Better Store, LLC, No. 0:12-cv-1148 (D. Minn. dismissed
`Aug. 13, 2013); Select Comfort Corp. v. Halcyon Waterspring, No. 0:03-cv-
`3324 (D. Minn. dismissed Jan. 29, 2004); and Select Comfort Corp. v.
`Tempur Sealy International, Inc. d/b/a Tempur-Pedic, No. 0:14-cv-00245
`(D. Minn. dismissed Sept. 6, 2017). Pet. 2–3; Paper 75, 3. Patent Owner
`also identifies the following antitrust action: American National
`Manufacturing Inc. v. Select Comfort Corp., No. 16-cv-00582-GHK-JC
`(C.D. Cal. dismissed Jan. 13, 2017). Paper 75, 3.
`In addition to these district court proceedings, the parties identify
`Certain Air Mattress Systems, Components Thereof, and Methods of Using
`the Same, Inv. No. 337-TA-971, USITC Pub. 4926 (Aug. 2019) (Final),
`vacated in part, 2020 WL 416443 (Jan. 22, 2020) (vacated with respect to
`the ’172 patent). Pet. 2; Paper 74, 2; Paper 75, 2–3. The parties further
`identify the ex parte reexamination of the ’172 patent, namely
`Reexamination Control No. 90/012,456 (filed Oct. 17, 2012)2. Pet. 2–3;
`Paper 75, 3.
`The parties also identify the following Board proceeding: Tempur
`Sealy International, Inc. v. Select Comfort Corp., IPR2014-01419, Paper 7
`(PTAB Feb. 17, 2015) (denying institution). Pet. 3; Paper 75, 3. Patent
`Owner further identifies American National Manufacturing Inc. v. Sleep
`
`
`2 The record from the reexamination is Exhibit 1003.
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`Number Corp., IPR2019-00497, Paper 105 (PTAB July 23, 2020) (final
`written decision) and American National Manufacturing Inc. v. Sleep
`Number Corp., IPR2019-00500, Paper 105 (PTAB July 23, 2020) (final
`written decision). Paper 75, 2.
`
`
`C. The ’172 Patent (Ex. 1001)
`The ’172 patent is titled “VALVE ENCLOSURE ASSEMBLY.”
`Ex. 1001, code [54]. A valve enclosure assembly is preferably coupled to a
`pump of an inflatable mattress system, as shown in Figure 1, reproduced
`below.
`
`
`Figure 1 is a front elevational view of prior art valve enclosure assembly 10
`coupled to pump 12. Id. at 1:13–14, 3:27–28. Air inlet 16 provides inlet air
`to pump 12, and pressurized air is discharged from pump 12 into prior art
`valve enclosure assembly 10 through air outlet 18 in the rear face of the
`valve enclosure assembly. Id. at 1:16–20. Front face 28 of prior art valve
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`enclosure assembly 10 includes right outlet sleeve 32 and left outlet
`sleeve 36 defining right air outlet 30 and left air outlet 34, respectively. Id.
`at 1:30–35.
`Although not shown in Figure 1, right and left solenoids are mounted
`in prior art valve enclosure assembly 10 and close right air outlet 30 and left
`air outlet 34, respectively. Id. at 1:42–49. Each solenoid includes a shiftable
`plunger, and a sealing disk is positioned on the end of the plunger. Id.
`at 1:43–45. In the closed configuration, the sealing disk sealingly engages
`the inner peripheral surface of the respective outlet sleeve. Id. at 1:45–49.
`A coil spring is mounted between the solenoid and the sealing disk to bias
`the sealing disk to the closed configuration, thereby fluidly sealing the
`mattress from the prior art valve enclosure assembly 10. Id. at 1:49–53.
`Processor board 20 is mounted on the upper surface of pump 12 and
`includes right pressure sensor 24 and left pressure sensor 22. Id. at 1:20–23.
`Right pressure sensor 24 is connected via pressure monitor tube 42 to
`monitor port 38, which is formed on right outlet sleeve 32 and fluidly
`coupled to right air outlet 30, and, similarly, left pressure sensor 22 is
`connected via another pressure monitor tube 42 to monitor port 40, which is
`formed on left outlet sleeve 36 and fluidly coupled to left air outlet 34. Id.
`at 1:35–41.
`In operation, processor board 20 receives a command to inflate either
`the right or the left bladder of the mattress. Id. at 1:54–56. Pump 12 is
`energized and discharges compressed air into prior art valve enclosure
`assembly 10 via air outlet 18. Id. at 1:56–59. Processor board 20
`determines a pressure differential between the commanded pressure and the
`existing pressure in either the right or the left bladder using inputs from
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`either right pressure senor 24 or left pressure sensor 22. Id. at 1:59–63. The
`right or left solenoid is actuated and opens the respective right air outlet 30
`or left air outlet 34 to inflate the desired bladder of the mattress. Id.
`at 1:63–66. While the bladder is being inflated, the solenoid must be
`periodically disengaged and close the air outlet to provide processor
`board 20 a reading of the existing air pressure in the bladder. Id.
`at 1:66–2:3.
`Prior art valve enclosure assembly 10 suffers drawbacks. Id. at 2:4–5.
`Due to pressure in the bladders constantly acting on the sealing disks, prior
`art valve enclosure assembly 10 requires strong springs to bias the sealing
`disks in the closed configuration, thereby requiring large solenoids. Id.
`at 2:6–16. The constant pressure on the sealing disks also causes leaks
`around the periphery of the sealing disks. Id. at 2:21–24. Additionally, with
`the need to periodically seat the sealing disk to monitor the pressure in the
`respective bladder, the solenoid needs to be actuated many times during
`inflation, resulting in heat buildup. Id. at 2:16–20. In view of these
`drawbacks, the ’172 patent explains: “[T]here is a need in the industry to
`minimize bladder leaks, to provide for continuous monitoring of existing
`pressure in a bladder of the mattress, and to provide for increased production
`efficiencies. Such production efficiencies include reducing assembly time
`and eliminating chemical sealants on the valve air enclosure.” Id.
`at 2:27–32.
` According to the ’172 patent, “the present invention relates to an
`improved valve enclosure assembly used to control the pressure in [an]
`inflatable mattress and method to inflate the mattress.” Ex. 1001, 1:5–8.
`Figure 4, reproduced below, shows improved valve enclosure assembly 100.
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`Figure 4 is an exploded perspective view of improved valve enclosure
`assembly 100. Id. at 3:34–35. Improved valve enclosure assembly 100 has
`two major structural components, enclosure 130 and rear cover 132, which
`mate together to form air chamber 133 internal thereto. Id. at 4:17–20. Rear
`cover 132 includes three air ports: pressure monitoring port 146, first inlet
`port 148, and second inlet port 150. Id. at 4:31–33. Pressure monitoring
`port 146 is fluidly coupled to the interior of valve enclosure assembly 100
`and has an outwardly directed portion designed to receive a small tube for
`conveying pressure to a pressure sensor. Id. at 4:33–37. First and second
`inlet ports 148 and 150 mate with the outlet of pump 112. Id. at 4:38–50.
`Deformable gasket 202 is interposed between enclosure 130 and rear
`cover 132. Id. at 5:45–46. Compression of deformable gasket 202 fluidly
`seals rear cover 132 and enclosure 130. Id. at 6:63–67.
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`Valve 218 and corresponding solenoid 210 are disposed within valve
`enclosure assembly 100. Id. at 5:59–60, 6:39. Spring 228 biases valve
`member 226 in the closed position, and translation of solenoid plunger 214
`opens valve 218. Id. at 6:7–8, 6:50–52, Figs. 7–8. Unlike the sealing disk
`of prior art valve enclosure assembly 10, which sealingly engages the outlet
`sleeve such that pressure in the bladder acts against the closed configuration
`of the valve, valve member 226 contacts valve seat 230 formed peripheral to
`air inlet 232 so that pressure in the bladder biases the valve to the closed
`position. Compare id. at 1:45–49, with id. at 6:7–12, Fig. 7; see also id. at
`7:6–10 (“[P]ressure bears on the back side of the valve member 226, thereby
`assisting the valve spring 228 in biasing the valve member 226 against the
`valve seat 230.”).
`Solenoid guides 196 and solenoid stops 198 are located in bottom 170
`of enclosure 130. Id. at 5:34–40. Solenoid 210 is slidably positioned by
`solenoid guides 196 and slid into enclosure 130, and travel into
`enclosure 130 is arrested by solenoid 210 coming into contact with solenoid
`stops 198. Id. at 6:39–43.
`Valve body 218 includes ramped snap-fit ring 234, expanded diameter
`portion 240, and O-ring 236 disposed between ramped snap-fit ring 234 and
`expanded diameter portion 240. Id. at 6:17–21. Ramped snap-fit ring 234
`of valve 218 rides up beveled face 192 of valve opening 190 as valve 218 is
`pressed into valve opening 190. Id. at 6:29–32. As snap-fit ring 234 passes
`through valve opening 190 and compressively engages the inner peripheral
`surface of valve opening 190, O-ring 236 is put into a compressive sealed
`engagement between expanded diameter portion 240 of valve 218 and
`beveled face 192 of valve opening 190. Id. at 6:32–38.
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`When a command is received to either inflate or deflate an air bladder,
`the processor of the pump must be able to continuously monitor pressure in
`the bladder. Id. at 7:63–8:3. With some pump configurations, monitoring
`can be provided by coupling pressure monitoring port 146 of rear cover 132,
`as shown in Figure 4, to the processor. Id. at 8:3–6.
`As the ’172 patent acknowledges, with other types of pumps, pressure
`monitoring must be taken from valve 218 and may not be continuous. Id.
`at 8:7–9. In such case, valves 218 may include optional pressure monitor
`tabs 240, as shown in Figure 9, reproduced below. Id. at 8:9–10.
`
`Figure 9 is an exploded perspective view of the improved valve enclosure
`assembly 100 having two valves 218 with pressure monitor tabs 240. Id.
`at 3:51–53, 6:22–24. Pressure monitor tab 240 has an air passageway
`
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`defined therein that is fluidly coupled to air passageway 222 of valve
`body 220. Id. at 6:23–26. Akin to prior art valve enclosure assembly 10,
`valve 218 that is fluidly coupled to the left bladder includes a fluid coupling
`from the left pressure sensor to monitor port 240 disposed thereon, and
`valve 218 that is fluidly coupled to the right bladder includes a fluid
`coupling from the right pressure sensor to its monitor port 240. Id.
`at 8:10–15.
`
`
`D. Challenged Claims
`Petitioner challenges claims 2, 4, 6, 12, 16, 20, 22, and 24 of the
`’172 patent.3 Pet. 4–5. Independent claim 2, reproduced below, is
`illustrative.
`2. An improved valve enclosure assembly for use with an air
`inflatable mattress having at least one air bladder inflated by
`compressed air, a pump fluidly coupled to the at least one air
`bladder for providing compressed air thereto, and a processor for
`providing commands to the improved valve enclosure assembly
`during an inflate/deflate cycle, the improved valve enclosure
`assembly being fluidly coupled intermediate the pump and the at
`least one air bladder for controlling the inflation of the at least
`one air bladder, comprising:
`an enclosure defining a substantially fluidly sealed air
`chamber and having at least one air inlet to the air
`chamber being fluidly coupled to the pump, a plurality
`of guides and stops being disposed within the enclosure
`
`
`3 On page 4 of the Petition, Petitioner “petitions for inter partes
`review . . . of claims 2, 4, 6, 12, 16, 22, 24 (‘Challenged Claims’) of [the
`’172 patent].” Although Petitioner omits claim 20 in this statement,
`Petitioner’s asserted grounds encompass claim 20. Pet. 5, 32–35, 41, 61–62.
`Accordingly, we understand Petitioner to be seeking an inter partes review
`of claims 2, 4, 6, 12, 16, 20, 22, and 24 of the ’172 patent.
`
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`for correctly positioning components within the
`enclosure; and
`pressure monitor means being operably coupled to the
`processor and being in fluid communication with the at
`least one bladder for continuously monitoring the
`pressure in the at least one bladder.
`Ex. 1001, 8:46–65.
`Independent claim 4 is similar to independent claim 2, and recites “at
`least one valve being snap fit in an aperture defined in a wall of the
`enclosure,” but not “guides and stops” as in independent claim 2. Id.
`at 9:3–21. Independent claim 6 is also similar to independent claim 2, and
`recites “the enclosure being formed of an enclosure portion and a rear cover
`portion, a flexible seal being compressively interposed between the
`enclosure portion and a rear cover portion to effect a substantially fluid tight
`seal therebetween,” but again not “guides and stops.” Id. at 9:27–48.
`Independent claim 20 is similar to independent claim 6, and recites “two or
`more valves being in fluid communication with both the exterior of the
`enclosure and with the air chamber.” Id. at reexamination
`certificate 2:14–41.
`Independent claims 12 and 16 are similar to independent claims 2
`and 6, respectively, and recite “at least one valve operatively coupled to the
`enclosure . . . for selectively fluidly coupling the air chamber to the at least
`one air bladder.” Id. at 10:61–11:19, 12:8–36. Also, independent claims 12
`and 16 recite “pressure monitor means . . . for monitoring the pressure in the
`at least one bladder,” as opposed to “pressure monitor means . . . for
`continuously monitoring the pressure in the at least one bladder,” as recited
`in independent claims 2 and 6. Compare id. at 11:16–19, 12:33–36, with id.
`at 8:62–65, 9:44–47.
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`Claim 22 depends from independent claim 2, and recites “at least one
`solenoid configured to operate a valve, wherein the at least one solenoid is at
`least partially received within the air chamber of the enclosure.” Id. at
`reexamination certificate 2:45–48. Claim 24 similarly depends from
`independent claim 2, and recites “the enclosure is formed of an enclosure
`portion and a rear cover portion,” similar to independent claims 6, 16
`and 20. Id. at reexamination certificate 2:53–55.
`
`
`E. Evidence
`Petitioner relies on the following references in asserting that the
`challenged claims are unpatentable. Pet. 5.
`
`Reference
`
`Exhibit No.
`
`Shafer et al., WO 96/13947 A1, published May 9, 1996
`(“Shafer”)
`
`Grant, US 5,353,838, issued Oct. 11, 1994 (“Grant”)
`
`Kashiwamura et al., US 4,655,505, issued Apr. 7, 1987
`(“Kashiwamura”)
`
`Dye, US 5,383,894, issued Jan. 24, 1995 (“Dye)
`
`Cammack et al., US 4,309,783, issued Jan. 12, 1982
`(“Cammack”)
`
`Vrzalik, US 5,044,029, issued Sept. 3, 1991 (“Vrzalik”)
`
`Ramacier, Jr. et al., US 5,494,074, issued Feb. 27, 1996
`(“Ramacier”)
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`1012
`
`1014
`
`Both parties rely on testimonial evidence. Petitioner relies on
`Declarations of Dr. Robert Giachetti (Exs. 1005, 1069). Patent Owner
`deposed and cross-examined Dr. Giachetti, and submits transcripts of these
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`depositions (Exs. 2067, 2068, 2096). Petitioner also relies on Declarations
`of Craig Miller, Jr. (Exs. 1072, 1080), and a Declaration of Matthew R.
`Lynde, Ph.D. (Ex. 1071). Patent Owner deposed and cross-examined Mr.
`Miller and Dr. Lynde, and submits a transcript of Mr. Miller’s deposition
`(Ex. 2097) and a transcript of Dr. Lynde’s deposition (Ex. 2098).
`Patent Owner proffers a Declaration of Dr. William C. Messner
`(Ex. 2040). Petitioner deposed and cross-examined Dr. Messner, and
`submits transcripts of these depositions (Exs. 1063, 1064, 1066). Patent
`Owner also relies on the Declaration of Dr. John Abraham (Ex. 2041), the
`Declaration of George Edwards (Ex. 2054), the Declaration of Carl G.
`Degen (Ex. 2055), the Declaration of Paul Mahoney (Ex. 2056), and the
`Declaration of Robert Nunn (Ex. 2057). Petitioner deposed and
`cross-examined each of these declarants, and submits a transcript of Mr.
`Abraham’s deposition (Ex. 1065), Mr. Edwards’s depositions (Exs. 1055,
`1056), Mr. Degen’s deposition (Ex. 1067), Mr. Mahoney’s deposition
`(Ex. 1068), and Mr. Nunn’s deposition (Ex. 1054). Patent Owner further
`relies on the Declaration of Elizabeth A. Patton (Ex. 2058).
`
`
`F. Asserted Grounds of Unpatentability
`Petitioner asserts the following grounds of unpatentability. Pet. 5.
`
`Reference(s)
`Shafer
`
`Shafer, Grant
`
`Claim(s)
`Basis
`35 U.S.C. § 102(b) 2, 12, 22
`
`35 U.S.C. § 103(a) 6, 16, 20, 24
`
`Shafer, Kashiwamura
`
`35 U.S.C. § 103(a) 2
`
`Shafer, Grant, Kashiwamura
`
`35 U.S.C. § 103(a) 6, 20
`
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`Shafer, Dye
`
`Shafer, Grant, Dye
`
`Shafer, Cammack
`
`35 U.S.C. § 103(a) 12
`
`35 U.S.C. § 103(a) 16
`
`35 U.S.C. § 103(a) 2, 12, 224
`
`Shafer, Dye, Cammack
`
`35 U.S.C. § 103(a) 12
`
`Shafer, Kashiwamura, Cammack
`
`Vrzalik
`
`Vrzalik, Shafer
`
`Shafer, Ramacier
`
`
`
`35 U.S.C. § 103(a) 2, 22
`35 U.S.C. § 102(b) 2, 6, 12, 16,
`20, 24
`
`35 U.S.C. § 103(a) 22
`
`35 U.S.C. § 103(a) 4
`
`III. ANALYSIS
`A. Level of Ordinary Skill in the Art
`Petitioner contends a person of ordinary skill in the art would have an
`“undergraduate degree (B.S.) in Mechanical Engineering, or equivalent
`technical discipline, and at least one year of experience with designing or
`developing products or machines including pumps, valves, and computer
`control systems that can fill via pump and or drain (vent) through the use of
`computer controlled valves and pumps.” Pet. 8 (citing Ex. 1005 ¶ 27).
`Petitioner further contends such a person would be “knowledgeable about
`standard fluid power components and their selection (pumps, solenoid
`
`
`4 Petitioner addresses separately the asserted ground of unpatentability of
`claim 12 under 35 U.S.C. § 103(a) over Shafer and Cammack from the
`asserted ground of unpatentability of claims 2 and 22 under 35 U.S.C.
`§ 103(a) over Shafer and Cammack. Pet. 5, 45–52. As both grounds are
`premised on the alleged obviousness in view of Shafer and Cammack, we
`consider them together as a single ground.
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`valves, check valves etc.) and the basics of computer control and
`methodology (e.g. selecting sensors, reading the sensor output into a system
`for control).” Id. (citing Ex. 1005 ¶ 27).
`Patent Owner does not oppose Petitioner’s proffered level of ordinary
`skill in the art, nor does Patent Owner provide its own explanation of the
`level of ordinary skill. Furthermore, Dr. Messner relies on Petitioner’s
`proffered level of ordinary skill in his analysis. Ex. 2040 ¶ 65.
`Petitioner’s definition of the level of ordinary skill is consistent with
`the level of ordinary skill reflected in the ’172 patent and the references on
`which Petitioner’s asserted grounds of unpatentability are based. For
`example, the ’172 patent relates to “an improved valve enclosure assembly
`used to control the pressure in the inflatable mattress and method to inflate
`the mattress.” Ex. 1001, 1:5–8, see also Figs. 1–10 (showing pumps and
`valve assembly enclosures including valves and solenoids for controlling the
`flow of air therethrough). Shafer relates generally to “improved methods
`and apparatus for attaining and regulating the fluid pressure in one or more
`fluid accommodating structures,” and, more particularly, to “improved air
`pumps, controllers, information processing and hand controls for measuring
`and varying the air pressure in an air mattress.” Ex. 1007, 1:1–5, see also
`Figs. 1, 5, 10–23e (showing pumps, valve enclosure assemblies, and
`algorithms for controlling air flow). Vrzalik discloses a low air loss bed
`including a plurality of air bags, as well as valves and circuitry that are
`capable of changing the pressures in the air bags to selectable maximum and
`minimum values. Ex. 1012, Abstract, Figs. 3, 8, 9A–B, 10, 12–19
`(depicting air plumbing, an air box, circuitry, and algorithms for controlling
`air flow). Grant is directed to a diaphragm pump and directional flow
`
`16
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`IPR2019-00514
`Patent 5,904,172
`
`controller. Ex. 1008, code 54. As the record supports it, we adopt
`Petitioner’s level of ordinary skill in the art.
`
`
`B. Claim Construction
`We interpret a claim “using the same claim construction standard that
`would be used to construe the claim in a civil action under 35 U.S.C.
`282(b).” 37 C.F.R. § 42.100(b) (2019).5 Under this standard, we construe
`the claim “in accordance with the ordinary and customary meaning of such
`claim as understood by one of ordinary skill in the art and the prosecution
`history pertaining to the patent.” Id. Furthermore, we expressly construe the
`claims to the extent necessary to determine whether Petitioner has shown the
`challenged claims to be unpatentable. See Nidec Motor Corp. v. Zhongshan
`Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need
`only construe terms ‘that are in controversy, and only to the extent necessary
`to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g,
`Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).
`
`
`
`5 The Office has changed the claim construction standard in AIA
`proceedings to replace the broadest reasonable interpretation (“BRI”)
`standard with the same claim construction standard used in a civil action in
`federal district court. Changes to the Claim Construction Standard for
`Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal
`Board, 83 Fed. Reg. 51340 (Oct. 11, 2018). The change applies to petitions
`filed on or after November 13, 2018. Id. The present Petition was filed on
`December 29, 2018, so we construe the claims in accordance with the
`federal district court standard, now codified at 37 C.F.R. § 42.100(b) (2019).
`
`17
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`IPR2019-00514
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`
`1. “pressure monitor means”
`Petitioner provides three constructions for “pressure monitor means,”
`namely, PMM1, PMM2, and PMM3. Pet. 10–12; Reply 8–11. PMM1 is
`based on the construction Patent Owner proposes in its infringement
`contentions in the related district court litigation. Pet. 11. PMM2 is based
`on the function associated with the “pressure monitor means” being
`“continuously monitoring,” as recited in independent claims 2 and 6, and
`PMM3 is based on the associated function being “monitoring,” as recited in
`independent claims 12 and 16. Id. at 12. For each proposed construction,
`Petitioner construes the term as a means-plus-function limitation under 35
`U.S.C. § 112, sixth paragraph, and identifies the function and corresponding
`structure. Id. at 11–12. We summarize Petitioner’s constructions as
`follows:
`
`Proposed
`Construction Function
`continuously
`monitoring the
`pressure in the
`at least one
`bladder
`
`PMM1
`
`PMM2
`
`continuously
`monitoring the
`pressure in the
`at least one
`bladder
`
`Structure
`
`a port fluidly coupled to the interior of the
`valve enclosure assembly that is designed
`to receive a tube, a pressure sensor, and a
`tube connected to the port and to the
`pressure sensor, and equivalents thereof
`a port on the enclosure fluidly coupled to
`the interior of the valve enclosure
`assembly that is designed to receive a
`tube, a pressure sensor, and a tube
`connected to the port and to the pressure
`sensor, and equivalents thereof
`
`18
`
`
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`IPR2019-00514
`Patent 5,904,172
`
`
`PMM3
`
`monitoring the
`pressure in the
`at least one
`bladder
`
`a port on the valve fluidly coupled to the
`valve that is designed to receive a tube, a
`pressure sensor, and a tube connected to
`the port and to the pressure sensor, and
`equivalents thereof
`
`At the outset, we disagree with Patent Owner that Petitioner’s three
`proposed constructions fail to comply with 37 C.F.R. § 42.104(b)(3), which
`requires the identification of how each challenged claim is to be construed.
`PO Resp. 12. This requirement under 37 C.F.R. § 42.104(b)(3) does not
`mandate a single construction for a claim term. Although uncertainty as to
`which construction is being relied upon may be tantamount to a failure to
`construe the term, there is no such uncertainty here. Petitioner identifies
`which construction it is applying when alleging a reference teaches the
`“pressure monitoring means” recited in a claim. See, e.g., Pet. 25 (“To the
`extent [“pressure monitor means”] of claim 2 is construed according to
`PMM1 . . . .”). In view of Petitioner’s identifications, it is clear Petitioner
`relies on Shafer and Vrzalik for disclosing “pressure monitor means”
`pursuant to PMM1 or PMM3, and on Kashiwamura and Dye for teaching
`“pressure monitor means” under PMM2 and PMM3, respectively.
`Accordingly, Petitioner’s three proposed constructions for “pressure monitor
`means” do not violate 37 C.F.R. § 42.104(b)(3).
`Turning to the proposed constructions, both parties assert “pressure
`monitor means” should be interpreted as a means-plus-function limitation
`under 35 U.S.C. § 112, sixth paragraph, and we agree. The term includes
`the word “means” without reciting sufficiently definite structure. See, e.g.,
`Personalized Media Commc’ns, LLC v. Int’l Trade Comm’n, 161 F.3d 696,
`703–04 (Fed. Cir. 1998) (explaining the use of the word “means” triggers a
`
`19
`
`
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`IPR2019-00514
`Patent 5,904,172
`
`presumption that 35 U.S.C. § 112, sixth paragraph, applies, which may be
`overcome if the term recites sufficiently definite structure).
`Nonetheless, the parties dispute how “pressure monitor means” should
`be construed under 35 U.S.C. § 112, sixth paragraph. Petitioner construes
`the term as PMM1, PMM2, and PMM3 (Pet. 10–12; Reply 8–11), and
`Patent Owner argues that PMM1 is the proper construction (PO Resp. 13;
`Sur-reply 10). According to Patent Owner, PMM1 keeps the claims
`consistent, whereas PMM2 and PMM3 improperly narrow the scope of the
`claims by importing limitations from the Specification. PO Resp. 13–14;
`Sur-reply 10. Patent Owner also alleges that a person of ordinary skill in the
`art would understand “pressure monitor means” in accordance with PMM1.
`PO Resp. 13 (citing Ex. 2040 ¶ 83).
`Construing a means-plus-function limitation under 35 U.S.C. § 112,
`sixth paragraph, is a two-step process. Williamson v. Citrix Online, LLC,
`792 F.3d 1339, 1351 (Fed. Cir. 2015). We first identify the recited function,
`and then determine what structure described in the specification corresponds
`to the recited function. Id. As our reviewing court has explained:
`In enacting [35 U.S.C. § 112, sixth paragraph], Congress struck
`a balance in allowing patentees to express a claim limitation by
`reciting a function to be performed rather than by reciting
`structure for performing that function, while placing specific
`constraints on how such a limitation is to be construed, namely,
`by restricting the scope of coverage to only the structure,
`materials, or acts described in the specification as corresponding
`to the claimed function and equivalents thereof.
`Id. at 1347.
`Each of independent claims 2, 4, 6, 12, 16, and 20 includes the term
`“pressure monitor means.” Ex. 1001, 8:62, 9:18, 44, 11:16, 12:33,
`reexamination certificate 2:34. In independent claims 2, 4, 6, and 20, the
`
`20
`
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`IPR2019-00514
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`
`term is used with the function “continuously monitoring the pressure in the
`at least one bladder” (id. at 8:62–65, 9:18–21, 44–47, reexamination
`certificate 2:34–41), whereas, in independent claims 12 and 16, the term is
`used with the function “monitoring the pressure in the at least one bladder”
`(id. at 11:16–19, 12:33–36). Put simply, independent claims 2, 4, 6, and 20
`recite the function of “continuously monitoring,” and independent claims 12
`and 16 recite the function of “monitoring.”
`The Specification similarly draws a distinction between “continuously
`monitoring” and “monitoring,” and describes different structures for
`performing these functions. According to the Specification, when a
`command is received to either inflate or defl
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