GCE Gas Control Equipment Inc v. VBox Inc

1. Case Identification

• Case #: IPR2023-00326
• Patent #: 11,389,614
• Filed: December 23, 2022
• Petitioner(s): GCE Gas Control Equipment Inc.
• Patent Owner(s): VBOX, Inc.
• Challenged Claims: 1-16

2. Patent Overview

• Title: Portable Oxygen Concentrator
• Brief Description: The ’614 patent discloses a portable oxygen concentrator (POC) featuring a "separation cartridge" that is selectively removable from a receptacle. The cartridge contains at least one bed of adsorbent material and is configured with an inlet and an outlet that both orient in the same direction, opposite the direction of removal.

3. Grounds for Unpatentability

Ground 1: Claims 1-5 and 7-16 are obvious over Deane in view of Dubois and Berntson.

• Prior Art Relied Upon: Deane (Application # 2005/0072306), Dubois (Patent 6,520,176), and Berntson (WO 2005/009590).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Deane, the primary reference, taught all key features of a portable oxygen concentrator with a removable separation cartridge as claimed. Specifically, Deane’s adsorbent bed columns (508a, 508b) and associated housing (602) function as the claimed cartridge, which is removable from a manifold (512) that acts as the receptacle. Deane further disclosed a "single-ended column design" where both the feed gas inlet and product gas outlet are located on the same end of the columns, with fluid flow paths corresponding to those recited in the claims.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine the primary teachings of Deane with the secondary references for two main reasons. First, a POSITA would incorporate the teachings of Dubois, which focuses on optimizing components to create a highly portable, patient-wearable concentrator, to enhance the known portability of Deane’s device. Second, a POSITA would look to Berntson’s disclosure of a distinct, easily removable oxygen-rich air generator (ORAG) unit to make Deane’s separation cartridge more modular and improve its serviceability, a well-known design goal.
  • Expectation of Success: A POSITA would have a high expectation of success, as all three references relate to POCs and address common design objectives like portability and maintenance using conventional components and principles.

Ground 2: Claims 2, 3, and 15 are obvious over Deane, Dubois, and Berntson in view of Hill ’719.

• Prior Art Relied Upon: Deane (Application # 2005/0072306), Dubois (Patent 6,520,176), Berntson (WO 2005/009590), and Hill ’719 (Patent 6,311,719).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon Ground 1 to address dependent claims reciting springs for holding the adsorbent beds in place. Petitioner contended that Deane disclosed a spring (616) at the first (product/outlet) end of its adsorbent column. The challenged claims require a spring at the second (opposite) end of the bed. Hill ’719 explicitly taught placing springs at the bottom (feed end) of adsorption vessels to hold the packed beds firmly in place.
  • Motivation to Combine: A POSITA, seeking design flexibility for retaining adsorbent material, would combine Deane’s teachings with those of Hill ’719. Petitioner argued it was a simple and obvious design choice to place a spring at the feed end (as taught by Hill ’719), the product end (as taught by Deane), or at both ends to achieve the same function of securing the adsorbent bed.
  • Expectation of Success: Success would be expected as this combination involved applying a known mechanical retention method (a spring at the feed end) from a similar device to provide a well-understood alternative for securing the adsorbent material.

Ground 3: Claim 6 is obvious over Deane, Dubois, Berntson, and Basset.

• Prior Art Relied Upon: Deane (Application # 2005/0072306), Dubois (Patent 6,520,176), Berntson (WO 2005/009590), and Basset (Application # 2005/0028868).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground addressed claim 6, which specified that the zeolite used in the adsorbent bed is an "LiLSX adsorbent." While Deane taught using zeolite generally, Basset expressly disclosed a POC using a lithium zeolite of the LiX type, "preferably an LiLSX Zeolite," to separate nitrogen from air.
  • Motivation to Combine: A POSITA would combine Deane's general teaching of a zeolite adsorbent with Basset's specific teaching of LiLSX zeolite to achieve improved adsorbent performance. Petitioner asserted that the superior performance of LiLSX over other zeolites was well-known in the art at the time, making its substitution into Deane's system an obvious path to a better product.
  • Expectation of Success: The expectation of success was high because it involved substituting a known, superior adsorbent material into a standard POC system to achieve a predictable improvement in separation efficiency.

• Additional Grounds: Petitioner asserted additional obviousness challenges based on Deane alone (Ground 4), Deane in view of Hill ’719 (Ground 5), and Deane in view of Basset (Ground 6), arguing these combinations rendered various claims obvious for the same core reasons presented in Grounds 1-3.

4. Key Claim Construction Positions

• "Separation Cartridge": Petitioner argued that, based on the specification and prosecution history of related patents, a POSITA would understand this term to mean "a housing that holds multiple adsorbent columns for gas separation and provides separate inlet and outlet ports for each adsorbent column." This construction was central to mapping Deane’s multiple adsorbent columns onto the single claimed "separation cartridge."
• "Receptacle": Petitioner proposed that this term should be construed as "a structure that releasably interfaces with the inlet(s) and outlet(s) of the separation cartridge and at least partially contains the separation cartridge." This construction allowed Petitioner to identify Deane’s manifold (512), or the combination of the manifold and outer shell (204), as the claimed "receptacle."

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under Fintiv would be inappropriate because a parallel district court case was in an early stage, with an average time-to-trial of 43.3 months in that district, and Petitioner had filed a Sotera-type stipulation to prevent duplicative invalidity arguments.
• Petitioner also contended that denial under 35 U.S.C. §325(d) was unwarranted. It argued the Examiner erred during prosecution by failing to issue any prior art rejections and not considering the asserted prior art combinations. Although some references were submitted in an Information Disclosure Statement, they were not substantively applied, and the petition presented new theories and evidence, favoring institution under the Becton factors.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-16 of the ’614 patent as unpatentable.