Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`Paper 10
`Entered: August 5, 2019
`
`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.
`
`
`
`DECISION
`Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`

`

`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.”). Pursuant to the authorization set forth
`in our Order entered March 26, 2019 (Paper 6), Petitioner filed a Reply
`limited to the issue of service and issues relating to service of process of
`process raised in the Preliminary Response. Paper 8 (“Reply”).
`We have authority, acting under the designation of the Director, to
`determine whether to institute an inter partes review. 35 U.S.C. § 314;
`37 C.F.R. § 42.4(a). We may not authorize an inter partes review to be
`instituted “unless . . . the information presented in the petition filed under
`section 311 and any response filed under section 313 shows that there is a
`reasonable likelihood that the petitioner would prevail with respect to at least
`1 of the claims challenged in the petition.” 35 U.S.C. § 314(a).
`Upon consideration of the arguments and evidence presented by both
`parties, we determine Petitioner demonstrates a reasonable likelihood that
`Petitioner would prevail with respect to at least one of the claims challenged
`in the Petition. Accordingly, we hereby institute an inter partes review of
`the challenged claims of the ’172 patent.
`
`
`
`1 The ’172 patent includes ex parte reexamination certificate
`US 5,904,172 C1, issued January 3, 2014 (“reexamination certificate”).
`
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`BACKGROUND
`II.
`A. Real Parties in Interest
`Petitioner identifies Petitioner, Sizewise Rentals, L.L.C., Dires, LLC
`d/b/a Personal Comfort Bed, and Raye’s, Inc. d/b/a Wheelchairs of Kansas
`d/b/a Sunflower Medical as the real parties in interest. Pet. 1. Patent Owner
`identifies Patent Owner, Select Comfort SC Corporation, Select Comfort
`Canada Holding Inc., Select Comfort COSC Canada ULC, and Select
`Comfort Limited as the real parties in interest. Paper 5, 1.2
`
`
`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-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 5, 2. The parties
`further identify the following closed 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. filed June 3, 2003); 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 5, 3. Patent Owner also identifies
`
`
`2 Paper 5 does not include page numbers. We treat the pages as being
`numbered consecutively, with the page following the title page as page 1.
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`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 5, 2–3.
`In addition to these district court proceedings, the parties identify
`Certain Air Mattress Systems, Components Thereof, and Methods of Using
`the Same, USITC Inv. No. 337-TA-971 (USITC Oct. 16, 2015). Pet. 2;
`Paper 5, 2. The parties further identify the ex parte reexamination of the
`’172 patent, namely Reexamination Control No. 90/012,456 (filed Oct. 17,
`2012). Pet. 2–3; Paper 5, 3.
`The parties also identify the following Board proceeding: Tempur
`Sealy International, Inc. v. Select Comfort Corp., Case IPR2014-01419
`(PTAB filed Aug. 29, 2014). Pet. 3; Paper 5, 2. Patent Owner further
`identifies American National Manufacturing Inc. v. Sleep Number Corp.,
`Case IPR2019-00497 (PTAB filed Dec. 21, 2018) and American National
`Manufacturing Inc. v. Sleep Number Corp., Case IPR2019-00500 (PTAB
`filed Dec. 21, 2018). Paper 5, 2.
`
`
`C. The ’172 Patent (Ex. 1001)
`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 2, reproduced below, shows an inflatable air mattress system. Id. at
`3:29–30.
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`Figure 2 shows an air mattress system comprising pump 112, left and right
`air hoses 116 and 118, left and right bladders 122 and 124 of inflatable
`bed 120, and controller 126. Id. at 3:61–4:10. Pump 112 has an air inlet, an
`air outlet, and a processor board that receives signals from controller 126 to
`increase or decrease pressure in left bladder 122 or right bladder 124. Id. at
`4:3–6, 10–15.
`Valve enclosure assembly 100 is incorporated into the housing of
`pump 112. Id. at 3:64–65. Valve enclosure assembly 100 is fluidly coupled
`to the air outlet of pump 112, and left and right air hoses 116 and 118 are
`fluidly coupled to valve enclosure assembly 100. Id. at 4:3–8. Left and
`right air hoses 116 and 118 also are fluidly coupled to left and right bladders
`122 and 124, respectively. Id. at 4:8–10.
`Figure 4, reproduced below, shows valve enclosure assembly 100.
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`Patent 5,904,172
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`Figure 4 is an exploded perspective view of valve enclosure assembly 100.
`Id. at 3:34–35. As explained in the ’172 patent, 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 thereover 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. Valve member 226 is biased
`in the closed position, and translation of solenoid plunger 214 opens valve
`218. Id. at 6:7–8, 6:50–52. Valve body 220 preferably includes pressure
`monitor tab 240 having an air passageway that is fluidly coupled to air
`passageway 222 of valve body 220. Id. at 6:21–26.
`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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`Patent 5,904,172
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`D. Challenged Claims
`Petitioner challenges claims 2, 4, 6, 12, 16, 20, 22, and 24 of the
`’172 patent.3 Pet. 4–5. Independent claims 2, 4, and 6 are illustrative, and
`we reproduce them below, adding Petitioner’s labels for the limitations.
`2. [2.a.1] An improved valve enclosure assembly for use with an
`air inflatable mattress having at least one air bladder inflated by
`compressed air, [2.a.2] a pump fluidly coupled to the at least one
`air bladder for providing compressed air thereto, and [2.a.3] a
`processor for providing commands to the improved valve
`enclosure assembly during an inflate/deflate cycle, [2.a.4] 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:
`[2.b.1] 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, [b.2] a
`plurality of guides and stops being disposed within the
`enclosure for correctly positioning components within
`the enclosure; and
`[2.c] 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.
`
`
`4. [4.a.1] An improved valve enclosure assembly for use with an
`air inflatable mattress having at least one air bladder inflated by
`compressed air, [4.a.2] a pump fluidly coupled to the at least one
`air bladder for providing compressed air thereto, and [4.a.3] a
`processor for providing commands to the improved valve
`
`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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`enclosure assembly during an inflate/deflate cycle, [4.a.4] 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:
`[4.b] 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;
`[4.c] at least one valve being disposed within the enclosure,
`the at least one valve being snap fit in an aperture
`defined in a wall of the enclosure; and
`[4.d] 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.
`
`
`
`6. [6.a.1] An improved valve enclosure assembly for use with an
`air inflatable mattress having at least one air bladder inflated by
`compressed air, [6.a.2] a pump fluidly coupled to the at least one
`air bladder for providing compressed air thereto, and [6.a.3] a
`processor for providing commands to the improved valve
`enclosure assembly during an inflate/deflate cycle, [6.a.4] 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:
`[6.b.1] 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, [6.b.2] the
`enclosure being formed of an enclosure portion and a
`rear cover portion, [6.b.3] a flexible seal being
`compressively
`interposed between
`the enclosure
`portion and a rear cover portion to effect a substantially
`fluid tight seal therebetween; and
`[6.c] 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, 9:3–21, 9:27–48.
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`E. Evidence
`Petitioner relies on the following references in asserting that the
`challenged claims are unpatentable. Pet. 5.
`
`Reference
`
`Exhibit No.
`
`WO 96/13947 A1, published May 9, 1996 (“Shafer”)
`
`US 5,353,838, issued Oct. 11, 1994 (“Grant”)
`
`US 4,655,505, issued Apr. 7, 1987 (“Kashiwamura”)
`
`US 5,383,894, issued Jan. 24, 1995 (“Dye)
`
`US 4,309,783, issued Jan. 12, 1982 (“Cammack”)
`
`US 5,044,029, issued Sept. 3, 1991 (“Vrzalik”)
`
`US 5,494,074, issued Feb. 27, 1996 (“Ramacier”)
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`1012
`
`1014
`
`Petitioner relies on a Declaration of Dr. Robert Giachetti (Ex. 1005).
`Pet. 13. Patent Owner relies on a Declaration of Dr. William C. Messner
`(Ex. 2001). Prelim. Resp. 2–3.
`
`
`F. Asserted Grounds of Unpatentability
`Petitioner asserts the following grounds of unpatentability. Pet. 5.
`
`Reference(s)
`Shafer
`
`Shafer and Grant
`
`Claim(s)
`Basis
`35 U.S.C. § 102(b) 2, 12, 22
`
`35 U.S.C. § 103(a) 6, 16, 20, 24
`
`Shafer and Kashiwamura
`
`35 U.S.C. § 103(a) 2
`
`Shafer, Grant, and Kashiwamura
`
`35 U.S.C. § 103(a) 6, 20
`
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`IPR2019-00514
`Patent 5,904,172
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`
`Shafer and Dye
`
`Shafer, Grant, and Dye
`
`Shafer and Cammack
`
`35 U.S.C. § 103(a) 12
`
`35 U.S.C. § 103(a) 16
`
`35 U.S.C. § 103(a) 12
`
`Shafer, Dye, and Cammack
`
`35 U.S.C. § 103(a) 12
`
`Shafer and Cammack
`
`35 U.S.C. § 103(a) 2, 22
`
`Shafer, Kashiwamura, and Cammack 35 U.S.C. § 103(a) 2, 22
`35 U.S.C. § 102(b) 2, 6, 12, 16,
`20, 24
`
`Vrzalik
`
`Vrzalik and Shafer
`
`Shafer, Ramacier
`
`
`
`35 U.S.C. § 103(a) 22
`
`35 U.S.C. § 103(a) 4
`
`III. ANALYSIS
`A. Bar Under 35 U.S.C. § 315(a)(1)
`Patent Owner argues the Petition is barred under 35 U.S.C.
`§ 315(a)(1) because on March 30, 2016, more than two years prior to filing
`the Petition, Petitioner filed a civil action in the Central District of California
`asserting antitrust violations based on Patent Owner’s alleged fraud on the
`United States Patent and Trademark Office in obtaining the ’172 patent.
`Prelim. Resp. 4 (citing Am. Nat’l Mfg. Inc. v. Select Comfort Corp., No. 16-
`cv-00582-GHK-JC (C.D. Cal. dismissed Jan. 13, 2017)). Patent Owner
`asserts Petitioner’s prior antitrust action is “a civil action challenging the
`validity of a claim of the patent” in accordance with 35 U.S.C. § 315(a)(1)
`because “[f]raud in obtaining a United States patent is a classical ground of
`invalidity or unenforceability of the patent.” Id. (quoting C.R. Bard, Inc. v.
`M3 Sys., Inc., 157 F.3d 1340, 1367 (Fed. Cir. 1998)) (citing Xitronix Corp.
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`v. KLA-Tencor Corp., 916 F.3d 429, 439 (5th Cir. 2019)). Patent Owner
`further contends if Petitioner’s antitrust action had been successful, Patent
`Owner would have been collaterally estopped from asserting the validity of
`the patent. Id. at 5 (citing Parklane Hosiery Co., Inc. v. Shore, 439 U.S.
`322, 326 n.5 (1979); Xitronix, 916 F.3d at 439).
`Although Petitioner’s prior antitrust action based on fraudulent
`procurement of the ’172 patent may implicate the validity of the ’172 patent,
`Petitioner’s prior action is nonetheless an antitrust claim, not a challenge to
`the validity of a claim of the ’172 patent. The antitrust action requires a
`showing of knowing and willful fraud, and is subject to the requirements of
`the Sherman Act, such as demonstrating market power and inhibiting
`competition. Walker Process Equip., Inc. v. Food Mach. & Chem. Corp.,
`382 U.S. 172, 174 (1965) (“We have concluded that the enforcement of a
`patent procured by fraud on the Patent Office may be violative of [section] 2
`of the Sherman Act provided the other elements necessary to a [section] 2
`case are present.”); C.R. Bard, 157 F.3d at 1367 (“[T]he Court established
`that antitrust liability under section 2 of the Sherman Act may arise when a
`patent has been procured by knowing and willful fraud, the patentee has
`market power in the relevant market, and has used its fraudulently obtained
`patent to restrain competition.”). Furthermore, the remedy for an antitrust
`action is claim is monetary damages, not an invalidation of a claim of the
`fraudulently-procured patent. As the Supreme Court explained in Walker
`Process:
`Walker counterclaimed under the Clayton Act, not the patent
`laws. While one of its elements is the fraudulent procurement of
`a patent, the action does not directly seek the patent’s annulment.
`The gist of Walker’s claim is that since Food Machinery obtained
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`its patent by fraud it cannot enjoy the limited exception to the
`prohibitions of [Section] 2 of the Sherman Act, but must answer
`under that section and [Section] 4 of the Clayton Act in treble
`damages to those injured by any monopolistic action taken under
`the fraudulent patent claim.
`382 U.S. at 176. Simply put, the focus of an antitrust action is
`anticompetitive conduct, not the validity of a claim of a patent.
`We disagree with Patent Owner that Petitioner’s prior antitrust action
`is “a civil action challenging the validity of a claim of the patent” under 35
`U.S.C. § 315(a)(1). On its face, this statute specifies a civil action
`challenging the validity of a claim of the patent, which an antitrust action is
`not. Furthermore, the legislative history of this statute confirms Congress
`intended “a civil action challenging the validity of a claim of the patent” to
`be limited to a declaratory judgment action for invalidity, not an antitrust
`action.
`The final Committee Report described the operation of 35 U.S.C.
`§ 315(a) as follows:
`Review may not be instituted if the petitioner has previously filed
`a civil action challenging the validity of the patent. The petitioner
`may, however, file a declaratory-judgment action challenging the
`validity of one or more claims in the patent on or after the day
`that he files the review petition, but such action is automatically
`stayed until the patent owner countersues for infringement.
`H.R. Rep. No. 112-98, at 75 (2011) (available at https://www.uspto.gov/
`sites/default/files/aia_implementation/crpt-112hrpt98-pt1.pdf). The
`reference to a declaratory judgment challenging the validity of one or more
`claims in the patent filed on or after a petition indicates the previously-filed
`civil action challenging the validity of the patent is a declaratory judgement
`action for invalidity. The Report also includes the following summary:
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`Time limits during litigation. Parties who want to use inter
`partes review during litigation are required to seek a proceeding
`within 12 months of being served with a complaint alleging
`infringement of the patent, and are barred from seeking or
`maintaining an inter partes review if they file an action for a
`declaratory judgment that the patent is invalid.
`Id. at 47.
`
`In view of the foregoing, at this stage of the proceeding, we disagree
`with Patent Owner that Petitioner’s prior antitrust action is a civil action
`challenging the validity of a claim of the patent ’172 patent that would bar
`the Petition under 35 U.S.C. § 315(a). On this record, Petitioner has shown
`sufficiently it is not barred from requesting inter partes review of the
`’172 patent.
`
`
`B. Service Under 37 C.F.R. § 42.105(a)
`Patent Owner argues Petitioner fails to meet the requirements for
`service under 37 C.F.R. § 42.105(a). Prelim. Resp. 6–16. In failing to meet
`these service requirements, Patent Owner asserts the Petition is not entitled
`to a filing date under 37 C.F.R. § 42.106(a) and is time barred under
`35 U.S.C. § 315(b). Id. at 6, 14.
`Pursuant to 37 C.F.R. § 42.105(a), “[t]he petition and supporting
`evidence must be served on the patent owner at the correspondence address
`of record for the subject patent.” Patent Owner contends Petitioner did not
`effect service “on the patent owner” because the Petition incorrectly
`identifies Select Comfort Corporation as the patent owner.
`Prelim. Resp. 8–11. Patent Owner also contends Petitioner did not effect
`service “at the correspondence address of record for the subject patent”
`because neither of the two addresses to which Petitioner sent a copy of the
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`Petition is the correspondence address of record for the ’172 patent, namely
`Fish & Richardson, P.C., P.O. Box 1022, Minneapolis, MN 55440. Id. at
`11. Per Patent Owner, Petitioner deliberately chose to deliver to the two
`other addresses, instead of the P.O. box address of record, so that Petitioner
`could use FedEx, which does not deliver to P.O. boxes. Id. at 11–12 (citing
`Ex. 2007 ¶ 3). Patent Owner further argues it is prejudiced by Petitioner’s
`actions because it is entitled to rely on the statutory and regulatory
`provisions governing service. Id. at 13–16.
`On the other hand, Petitioner asserts it is indisputable that Patent
`Owner received the Petition in accordance with the statutory provision
`governing service, 35 U.S.C. § 312(a)(5)4, before the expiration of the time
`period set forth in 35 U.S.C. § 315(b)(1). Reply 1, 4–5. According to
`Petitioner, Patent Owner first filed a civil action against Petitioner alleging
`infringement of the ’172 patent on December 29, 2017, and served Petitioner
`on January 2, 2018. Id. at 4 (citing Pet. 1, n.1; Ex. 1034, 2). On
`December 28, 2018, Petitioner sent a copy of the Petition to Ms. Elizabeth
`Patton, Patent Owner’s counsel of record in the related litigation in the
`United States District Court for the Central District of California, who
`received and accepted the Petition on January 2, 2019. Id. (citing Exs. 1031,
`1038, 2). Also on December 28, 2018, Petitioner sent a copy of the Petition
`to the correspondent of record for the ’172 patent, the Minneapolis office of
`Fish & Richardson, P.C., and the Petition was received and accepted on
`
`
`4 Section 312(a)(5): “A petition filed under section 311 may be considered
`only if. . . (5) the petitioner provides copies of any of the documents required
`under paragraphs (2), (3), and (4) to the patent owner or, if applicable, the
`designated representative of the patent owner.”
`
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`January 2, 2019. Id. at 5 (citing Exs. 1032, 1039, 2). In light of Patent
`Owner receiving the Petition before the expiration of the time period set
`forth in 35 U.S.C. § 315(b)(1), Petitioner argues Patent Owner cannot show
`any prejudice. Id. at 8–9.
`As set forth above, 37 C.F.R. § 42.105(a) requires service “on the
`patent owner at the correspondence address of record for the subject patent.”
`This Rule further provides “[t]he petitioner may additionally serve the
`petition and supporting evidence on the patent owner at any other address
`known to the petitioner as likely to effect service,” implying service may be
`effected in other ways apart from using the correspondence of record for the
`patent. 37 C.F.R. § 42.105(a) (emphasis added). Such is the case here.
`Petitioner timely sent the Petition to Patent Owner’s litigation counsel and to
`the brick-and-mortar address of the correspondent of record, Fish &
`Richardson, P.C. There is no dispute that Patent Owner received the Petition
`in accordance with 35 U.S.C. § 312(a)(5) before the expiration of the time
`period set forth in 35 U.S.C. § 315(b)(1), and that Patent Owner has not been
`prejudiced from a lack of notice of this inter partes review proceeding, e.g.
`time to respond to the Petition has been limited, access to evidence has been
`restricted. See Henderson v. United States, 517 U.S. 654, 672 (1996)
`(“[T]he core function of service is to supply notice of the pendency of a
`legal action, in a manner and at a time that affords the defendant a fair
`opportunity to answer the complaint and present defenses and objections.”).
`That said, Petitioner’s decision to use FedEx and not send the Petition
`to the P.O. box listed as the correspondence address of record for the
`’172 patent pursuant to 37 C.F.R. § 42.105(a) is troubling. As Patent Owner
`points out, being able to rely on statutory and regulatory provisions is
`
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`important. Prelim. Resp. 13. However, in view of Petitioner’s accordance
`with 35 U.S.C. § 312(a)(5), Patent Owner’s timely receipt of the Petition,
`and the absence of prejudice to Patent Owner resulting from a lack of a
`notice, a determination that the Petition is time barred as incomplete for
`failing to comply with the service requirements of 37 C.F.R. § 42.105(a)
`would be disproportionate to the harm associated with Petitioner’s alleged
`non-compliance. Thus, on the record before us, Petitioner has shown
`sufficiently that the Petition is entitled to a filing date under 37 C.F.R.
`§ 42.106 and is not time barred under 35 U.S.C. § 315(b).
`
`
`C. Discretionary Denial Under 35 U.S.C. § 325(d)
`We have discretion to deny a petition when “the same or substantially
`the same prior art or arguments previously were presented to the Office.”
`35 U.S.C. § 325(d). In evaluating whether to exercise our discretion under
`§ 325(d), we weigh the following non-exclusive factors (“the Becton
`Dickinson factors”):
`(a) the similarities and material differences between the asserted
`art and the prior art involved during examination; (b) the
`cumulative nature of the asserted art and the prior art evaluated
`during examination; (c) the extent to which the asserted art was
`evaluated during examination, including whether the prior art
`was the basis for rejection; (d) the extent of the overlap between
`the arguments made during examination and the manner in which
`Petitioner relies on the prior art or Patent Owner distinguishes
`the prior art; (e) whether Petitioner has pointed out sufficiently
`how the Examiner erred in its evaluation of the asserted prior art;
`(f) the extent to which additional evidence and facts presented in
`the Petition warrant reconsideration of prior art or arguments.
`Becton, Dickinson & Co. v. B. Braun Melsungen AG, 2017 WL 6405100, at
`*6 (PTAB Dec. 15, 2017) (informative) (citations omitted); see also NHK
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`Spring Co. v. Intri-Plex Techs., Inc., Case IPR2018-00752, slip op. at 11–12
`(PTAB Sept. 12, 2018) (Paper 8) (precedential) (adopting and applying
`Becton Dickinson factors).
`
`Patent Owner argues that we should deny institution under 35 U.S.C.
`§ 325(d) because Petitioner rehashes arguments already overcome during
`prosecution, reexamination, a prior inter partes review proceeding, an ITC
`investigation without explaining why its Petition is not barred based on these
`similar prior arguments. Prelim. Resp. 16–21. Patent Owner does not
`expressly apply the Becton Dickinson factors, but argues Shafer and Vrzalik
`have already been asserted alone and in combination with other similar art.
`Id. at 21. The Office, however, has not previously considered Shafer and
`Vrzalik alone and in combination with other art, and, for the reasons
`discussed below, we decline to exercise discretion to deny institution under
`35 U.S.C. § 325(d).
`
`Beginning with Vrzalik, the ITC considered Vrzalik during an
`investigation of the ’172 patent. Prelim. Resp. 20–21. The ITC’s prior
`consideration of Vrzalik, however, is outside the purview of 35 U.S.C.
`§ 325(d), which is limited to prior art and arguments before the Office.
`
`Turning to Shafer, the Office has not already considered Shafer in
`regard to the ’172 patent, but, as Patent Owner argues, the Office has
`considered Shafer ’1545 during prosecution and reexamination of the
`’172 patent. Prelim. Resp. 17–19. According to Patent Owner, “[t]here is
`no relevant difference between Shafer ’154 . . . and Shafer, cited in the
`Petition.” Id. at 18. Patent Owner similarly contends “Shafer ’154 is the
`
`
`5 US 5,509,154, issued Apr. 23, 1996 (Ex. 2003).
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`patent to which Shafer . . . claims priority, and is identical to the disclosure
`relied upon by Petitioner here.” Id. at n.6.
`During prosecution, in the same Office action, the Examiner rejected
`some claims under 35 U.S.C. § 102(b) as anticipated by Shafer ’154, and
`determined other claims include allowable subject matter, such as guides and
`stops disposed within the enclosure and a flexible seal between an enclosure
`portion and a rear cover. Id. at 17; Ex. 1002, 45, 47, 108–116. The
`Applicant amended the claims to include the allowable subject matter, and
`the Examiner allowed the amended claims. Prelim. Resp. 18–19; Ex. 1002,
`28–41.
`
`During reexamination, Patent Owner asserts the Examiner confirmed
`Shafer ’154 does not teach guides and stops. Prelim. Resp. 19 (citing
`Ex. 1003, 104). Patent Owner also contends the Examiner determined that
`Shafer ’154 does not include a flexible seal between an enclosure portion
`and a rear cover, and that it would not have been obvious to add such a
`flexible seal to Shafer ’154. Id. (citing Ex. 1003, 73, 104).
`
`Contrary to Patent Owner statements, there is a relevant difference
`between Shafer ’154 and Shafer, and Shafer ’154 is not identical to Shafer.
`Namely, Shafer includes an alternate embodiment where air distribution
`unit 206ʹ includes guides and stops, as shown in Figures 18B–D. Ex. 1007,
`22:16–23:1, Figs. 18B–D. It is this alternate embodiment, absent from
`Shafer ’154, on which Petitioner relies for a disclosure of guides and stops.
`See, e.g., Pet. 18–20.
`
`Furthermore, although Petitioner asserts it would have been obvious
`to modify Shafer to include a flexible seal between an enclosure portion and
`a rear cover position of the enclosure (see, e.g., Pet. 28–31), we disagree
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`with Patent Owner that the Examiner during reexamination made a
`determination to the contrary. The Examiner determined it would not have
`been obvious to add a flexible seal to the pump housing of Shafer because
`the pump housing is intended to be open to the surrounding atmosphere.
`Ex. 1003, 73. Petitioner, however, is not relying on Shafer’s pump housing
`for disclosing the enclosure, but instead on Shafer’s air distribution unit.
`Pet. 17–18, 29.
`
`Given the fact that the Office has not considered Vrzalik in regard to
`the ’172 patent, as well as the differences between Shafer ’154 and Shafer
`and the differences between Petitioner’s arguments and the arguments made
`before the Office, Becton Dickinson factors (a)–(d) and (f) weigh against
`denying institution. On balance, the Becton Dickinson factors do not support
`a discretionary denial, and there is no other persuasive reason to exercise our
`discretion to deny the Petition. We, therefore, decline to exercise our
`discretion to deny the Petition under 35 U.S.C. § 325(d).
`
`
`D. Requirement to Construe Challenged Claim Under 37 C.F.R.
`§ 42.104(b)(3)
`Patent Owner argues that the Board should deny institution because
`Petitioner fails to construe “pressure monitor means” (“PMM”), in violation
`of 37 C.F.R. § 42.104(b)(3). Prelim. Resp. 25–28. According to Patent
`Owner, Petitioner never identifies which of its proposed constructions of
`“PMM” it believes is correct, and therefore has not construed the term. Id.
`at 25–27. 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 is relying on all three of its proposed
`constructions for the term “P