PTAB

IPR2023-00527

GCE Gas Control Equipment Inc. v. VBOX, Inc.

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1. Case Identification

2. Patent Overview

  • Title: Portable Oxygen Concentrator with Separation Cartridge
  • Brief Description: The ’628 patent relates to portable oxygen concentrators (POCs) that use pressure swing adsorption (PSA) to provide supplemental oxygen to users. The invention is specifically directed to a POC with a particular "separation cartridge" configuration that contains adsorbent beds for separating nitrogen from ambient air.

3. Grounds for Unpatentability

Ground 1: 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 taught the fundamental elements of the challenged claims, including a compact POC with a housing, a removable shell, and adsorbent bed columns in a "single-ended" design where gas enters and exits from the same end. However, if Deane is considered insufficient regarding portability and cartridge modularity, Dubois and Berntson supply these features. Dubois was cited for teaching optimization of POC components to create a lightweight, patient-wearable device (e.g., via a strap or belt). Berntson was cited for teaching a distinct, modular "oxygen-rich air generator" (ORAG) unit, or separation cartridge, that is removably mounted within a main POC housing to improve serviceability.
    • 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 resulting design with Berntson's teachings to improve ease of maintenance, another recognized industry goal, by making the adsorbent-containing cartridge easily replaceable.
    • Expectation of Success: A POSITA would have a reasonable expectation of success in combining these references because they all relate to POCs, use common components and principles, and address known design objectives like portability and serviceability.

Ground 2: Claims 2-3, 14-15, and 22-23 are obvious over Deane, Dubois, and Berntson in view of 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 dependent claims reciting specific weight and volume limitations. Petitioner asserted that Occhialini taught the "need for optimized design of small, easily-carried, adsorption-based oxygen concentrators" and provided specific examples of how component weights (total system, adsorbent, battery) could be tuned to achieve particular performance metrics. Occhialini's examples allegedly included POCs with total weights under 3 pounds, battery weights under 0.7 pounds, and adsorbent volumes within the ranges recited in the challenged claims (e.g., 5-25 cm³).
    • Motivation to Combine: A POSITA would combine Occhialini's optimization teachings with the POC design of Deane/Dubois/Berntson to achieve the specific lightweight and compact form factors recited in the dependent claims, as miniaturization was a primary goal in the art.
    • Expectation of Success: Success was expected because Occhialini provided a clear roadmap for tuning common POC components to achieve desired size and weight reductions.

Ground 3: Claims 5 and 18 are obvious over Deane, Dubois, and Berntson in view of 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 added Basset to the core combination to address claims 5 and 18, which require the adsorbent material to be a specific type of zeolite (LiLSX). While Deane taught using zeolite generally, Petitioner argued that Basset explicitly taught a POC with adsorbers containing "zeolite, advantageously a lithium zeolite of the LiX type, preferably an LiLSX Zeolite."
    • Motivation to Combine: A POSITA would substitute Deane's general zeolite with the specific LiLSX zeolite taught by Basset to achieve improved adsorbent performance. Petitioner contended that LiLSX zeolite's superiority was well-known, making it a desirable and obvious modification for improving the efficiency of any zeolite-based POC.
    • Expectation of Success: The combination would have been successful because it involved substituting one known adsorbent material for another, more effective, known adsorbent material within the same type of device.

  • Additional Grounds: Petitioner asserted additional obviousness challenges based on Deane alone (Ground 4), Deane combined with Occhialini (Ground 5), and Deane combined with Basset (Ground 6), arguing these combinations would be sufficient if the Board finds that the teachings of Dubois and/or Berntson are unnecessary.

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 embodiments and prosecution history of related applications, where single-bed modules were distinguished from "separation cartridges."
  • "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 was based on the functional relationship described in the claims and specification.

5. Arguments Regarding Discretionary Denial

  • Petitioner argued that discretionary denial under Fintiv is inappropriate. This is the first IPR filed against the ’628 patent, and its merits are presented as compelling. Petitioner filed a Sotera-type stipulation in the parallel district court litigation, agreeing not to pursue the same grounds there, which mitigates concerns of overlapping issues. The district court case is in the District of Maryland, where the median time to trial is long, ensuring the IPR would conclude well before a potential trial.
  • Petitioner also argued that denial under §325(d) would be improper. Although Deane, Dubois, and Occhialini were submitted in an Information Disclosure Statement (IDS) during prosecution, the Examiner never applied them in any rejection or discussed them in the reasons for allowance. The specific combinations argued in the petition were never considered by the USPTO. Furthermore, the references Berntson and Basset were not part of the prosecution record at all.

6. Relief Requested

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