GCE Gas Control Equipment Inc v. VBox Inc

1. Case Identification

• Case #: IPR2023-00527
• Patent #: 10,357,628
• Filed: February 10, 2023
• Petitioner(s): GCE Gas Control Equipment Inc.
• Patent Owner(s): VBOX, Inc.
• Challenged Claims: 1-23

2. Patent Overview

• Title: Portable Oxygen Concentrator
• Brief Description: The ’628 patent discloses a portable oxygen concentrator (POC) that uses pressure swing adsorption to generate concentrated oxygen. The invention centers on a "separation cartridge" containing adsorbent material, which is configured to be selectively removable from a receptacle within the POC's main housing.

3. Grounds for Unpatentability

Ground 1: Obviousness over Deane, Dubois, and Berntson - Claims 1-4, 6-17, and 19-23 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 the core elements of a portable oxygen concentrator with a removable cartridge module. Deane disclosed a POC with adsorbent bed columns (a "separation cartridge") that could be accessed for maintenance by removing a shell, which interfaces with a manifold (a "receptacle"). The cartridge featured inlets and outlets on the same end. To address limitations related to enhanced portability and serviceability, Petitioner combined Deane with two secondary references. Dubois was cited for its teachings on making a POC smaller and lighter, permitting it to be worn by a patient via a belt or strap. Berntson was cited for teaching a distinct, modular "oxygen-rich air generator" (ORAG) unit that functions as a self-contained, easily removable cartridge, thereby improving the serviceability taught in Deane.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Deane with Dubois to satisfy the well-known market demand for smaller, more portable POCs. A POSITA would combine the teachings of Deane with Berntson to improve the ease of maintenance and serviceability by creating a more modular and easily replaceable adsorbent cartridge, which was a recognized design goal in the field.
  • Expectation of Success: Petitioner asserted a POSITA would have had a high expectation of success because all three references relate directly to POC technology, use conventional components, and address known design objectives such as portability and serviceability.

Ground 2: Obviousness over Deane, Dubois, Berntson, and Occhialini - Claims 2-3, 14-15, and 22-23 are obvious over the combination of Deane, Dubois, Berntson, and Occhialini.

• Prior Art Relied Upon: Deane (Application # 2005/0072306), Dubois (Patent 6,520,176), Berntson (WO 2005/009590), and Occhialini (Application # 2005/0257686).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon the combination in Ground 1, adding Occhialini to address the specific weight and volume limitations recited in the challenged dependent claims (e.g., total weight < 3 lbs, battery weight < 0.7 lbs, specific adsorbent volumes). Petitioner contended that Occhialini expressly taught the "need for optimized design of small, easily-carried" POCs and provided detailed examples of relationships between component weights (total system, adsorbent, battery) and performance metrics. Occhialini's examples included POCs with system and component weights falling squarely within the claimed ranges.
  • Motivation to Combine: A POSITA, having combined Deane, Dubois, and Berntson to create a portable and serviceable POC, would have been motivated to consult a reference like Occhialini to optimize the design for further size and weight reduction. This optimization was a recognized and highly desirable goal in the art.
  • Expectation of Success: Success would be expected, as Occhialini provided a clear roadmap for tuning the parameters of standard POC components—like those in Deane—to achieve specific, lighter-weight designs without undue experimentation.

Ground 3: Obviousness over Deane, Dubois, Berntson, and Basset - Claims 5 and 18 are obvious over the combination of 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 also built upon the primary combination from Ground 1, adding Basset to address claims 5 and 18, which require the adsorbent material to be a specific type of zeolite (LiLSX adsorbent). While Deane taught using zeolite generally, Basset was cited for its specific disclosure of a POC using "advantageously a lithium zeolite of the LiX type, preferably an LiLSX Zeolite" to achieve superior performance.
  • Motivation to Combine: A POSITA would combine the teachings of Basset with the primary combination to improve the efficiency and performance of the POC's separation cartridge. Using a known, superior adsorbent material like LiLSX was a simple and predictable way to enhance the device's function.
  • Expectation of Success: A POSITA would have a high expectation of success in substituting the generic zeolite of Deane with the specific LiLSX zeolite of Basset, as this was a known implementation for improving adsorbent performance in the same technical field.

• Additional Grounds: Petitioner asserted additional obviousness challenges based on Deane alone and Deane in combination with only Occhialini or Basset, arguing these combinations render various claims unpatentable for the same reasons articulated in the grounds above.

4. Key Claim Construction Positions

• "separation cartridge": Petitioner argued that, in the context of the ’628 patent, 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 column. This construction was based on the patent’s sole embodiment and prosecution history, where single-bed modules were distinguished from the claimed "separation cartridge."
• "receptacle": Petitioner proposed this term 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 was derived from the functional relationship described in the claims and specification.

5. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under Fintiv, stating that the parallel district court case has a projected time-to-trial of 43.3 months, a stay is likely, and Petitioner filed a Sotera-type stipulation to prevent duplicative efforts. Petitioner also contended that denial under 35 U.S.C. §325(d) would be improper. It argued that although some prior art was submitted in an Information Disclosure Statement (IDS), the Examiner never substantively applied Deane, Dubois, or Occhialini in any rejection. Furthermore, key references Berntson and Basset were never before the Examiner, and the specific combinations and arguments presented in the petition are new.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-23 of Patent 10,357,628 as unpatentable.