Respironics, Inc. v. Invacare Corp. , 437 F. App'x 917 ( 2011 )

NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
__________________________
RESPIRONICS, INC., AND RIC INVESTMENTS,
LLC,
Plaintiffs-Appellants,
v.
INVACARE CORP.,
Defendant-Cross Appellant.
__________________________
2010-1447,-1505
__________________________
Appeal from the United States District Court for the
Western District of Pennsylvania in case no. 04-CV-0336,
Chief Judge Gary L. Lancaster.
___________________________
Decided: July 8, 2011
___________________________
W. THOMAS MCGOUGH, JR., Reed Smith, LLP, of Pitts-
burgh, Pennsylvania, argued for plaintiffs-appellants.
With him on the brief were GENE A. TABACHNICK and
JOSHUA S. BISH.
CHARLES B. LYON, Calfee, Halter & Griswold, LLP, of
Cleveland, Ohio, argued for defendant-cross appellant.
RESPIRONICS v. INVACARE CORP 2
With him on the brief were MITCHELL G. BLAIR, NENAD
PEJIC and JENNIFER B. WICK.
__________________________
Before BRYSON, MAYER, and DYK, Circuit Judges.
BRYSON, Circuit Judge.
I
Respironics, Inc., owns two patents through its wholly
owned subsidiary, RIC Investments, LLC. The patents,
U.S. Patent No. 6,609,517 (“the ’517 patent”), and U.S.
Patent No. 6,105,575 (“the ’575 patent”), share a common
specification. Both are entitled “Method and Apparatus
for Providing Positive Airway Pressure to a Patient.” The
’517 patent is a continuation-in-part of the ’575 patent.
Respironics sued Invacare for infringement of the ’575
patent, the ’517 patent, and other patents not relevant to
this appeal. Early in the proceedings, the district court
entered summary judgment that Invacare’s “Commercial
Device” did not infringe the asserted claims of the ’575
patent. Respironics’ allegation that Invacare’s “Trade
Show Device” infringed the ’517 patent was tried before a
jury, which found that the Trade Show Device infringed
the asserted claims of that patent. The district court
granted Respironics’ motion for summary judgment as to
anticipation of the asserted claims of the ’517 and ’575
patents, holding that those claims were not anticipated by
a 1987 article by Dr. Magdy K. Younes entitled “An
Apparatus for Altering the Mechanical Load of the Respi-
ratory System.”
Respironics appealed issues relating to infringement,
and Invacare cross-appealed issues relating to both in-
fringement and validity. In Respironics I, this court
3 RESPIRONICS v. INVACARE CORP
modified the district court’s construction of some of the
appealed claim terms. Respironics, Inc. v. Invacare Corp.,
303 F. App’x 865 (Fed. Cir. 2008) (Respironics I). This
court vacated the summary judgment of noninfringement
of the ’575 patent and remanded the case to the district
court to consider infringement under the modified claim
construction. On Invacare’s cross-appeal of the summary
judgment of no anticipation, this court noted that neither
Respironics nor the district court had identified any claim
limitation that was not disclosed in the asserted refer-
ence. This court remanded so that Respironics could more
clearly articulate the differences between that reference
and the asserted claims.
On remand, both Invacare and Respironics filed cross-
motions for summary judgment as to the validity of both
patents and infringement of the ’575 patent. Invacare’s
anticipation defense again focused on the article by Dr.
Younes, a physician and researcher specializing in respi-
ratory therapy. Dr. Younes served as Respironics’ expert
witness on validity. Invacare’s expert witness on validity
was Jeffrey L. Orth, a biomedical engineer. The district
court reopened the record and allowed both Mr. Orth and
Dr. Younes to submit updated declarations setting forth
each expert’s opinion on anticipation under the amended
claim construction. The court also allowed each side to
depose its opponent’s expert for a second time.
Following that supplementary discovery, Respironics
argued that Dr. Younes had identified eight elements that
distinguished his 1987 article from the asserted claims.
The district court agreed with Invacare, however, that the
elements that Dr. Younes identified did not distinguish
the asserted claims from the Younes article. Nonetheless,
the court held that Invacare had not shown that the
article disclosed all of the elements “as arranged” in the
RESPIRONICS v. INVACARE CORP 4
claims. Accordingly, the court held that no reasonable
jury could find that the Younes article anticipated the
asserted claims and entered summary judgment in favor
of Respironics on the issue of invalidity of the claims of
the ’575 and ’517 patents. After construing the term
“predetermined” in the claims of the ’575 patent, a term
this court did not squarely address in Respironics I, the
district court entered summary judgment that the ac-
cused Commercial Device does not infringe the asserted
claims of the ’575 patent.
Respironics has again appealed the judgment as to in-
fringement, and Invacare has again cross-appealed the
judgment as to anticipation. Because we hold that the
asserted claims of the two patents are anticipated by the
Younes reference, we reverse the summary judgment of
no anticipation. In light of that ruling, it is not necessary
for us to address Respironics’ appeal relating to the
construction of “predetermined,” as the dispute over the
construction of that term is relevant only to infringement
and not to validity.
II
A device embodying Respironics’ claimed invention
provides “positive pressure support therapy” to patients
suffering from sleep apnea, a condition characterized by a
collapse in the soft tissue of the airway. Traditional
CPAP (continuous positive airway pressure) therapy
supplies a steady stream of positive air pressure to a
sleeping patient. The delivered pressure is constant,
regardless of whether the patient is inhaling or exhaling.
When the patient is inhaling, the direction of the airflow
assists the patient’s efforts to inhale and holds the airway
open, preventing it from collapsing. When the patient is
exhaling, however, the flow of air is in opposition to the
5 RESPIRONICS v. INVACARE CORP
patient’s breath. Many patients found exhaling against
the stream of air uncomfortable and consequently discon-
tinued CPAP therapy. Respironics’ patents are directed
to a method and a device that reduces the magnitude of
the positive pressure that is provided to the patient
during the expiratory phase of the breathing cycle as
compared to the magnitude of the pressure that is deliv-
ered during the inspiratory phase.
Both patents describe two embodiments of the inven-
tion: the “proportional” embodiment and the “predeter-
mined” embodiment. The asserted claims of the ’517
patent (claims 29, 30, and 32) are directed to the “propor-
tional” embodiment, whereas the asserted claims of the
’575 patent (claims 21, 43, and 44) are directed to the
“predetermined” embodiment.
A device that practices the “proportional” embodiment
measures physiological aspects of the patient’s breathing
habits, such as the rate at which the patient inhales and
exhales, the volume of air that the patient moves with
each breath, or the “pressure gradient between the inlet
of the patient’s airway and his lungs.” ’517 patent, col. 9,
ll. 31-41. The device uses a formula, discussed in Respi-
ronics I, to control the reduction in expiratory pressure in
response to those monitored characteristics.
In contrast, a device that practices the “predeter-
mined” embodiment decreases the pressure during exha-
lation based not on the patient’s monitored breathing
habits, but instead on a function that the patent refers to
as a “pressure profile.” ’575 patent, col. 7, ll. 5-17. We
construed that term in Respironics I, in which we held
that a “pressure profile” has three components: duration,
magnitude, and shape. We explained that duration is
“the time difference measured from the start to the end of
RESPIRONICS v. INVACARE CORP 6
the profile”; magnitude is “the pressure difference be-
tween the profile’s maximum and minimum pressures”;
and the profile’s shape is “the contour along which the
pressure changes over time, describing the way in which
the profile drops off to arrive at the minimum pressure
and then rises up to arrive back at the maximum pres-
sure, independent of the particular magnitude and dura-
tion of the profile.”
Invacare contends that Dr. Younes’s 1987 article an-
ticipates the “predetermined” and the “proportional”
claims. The article describes an apparatus for altering
the “load” of the respiratory system, which refers to the
air pressure that a patient must work against while
breathing. The respiratory support device disclosed in the
Younes article can deliver both positive and negative
pressure. That is, the apparatus can function both as a
ventilator and as a positive pressure support apparatus.
For the reasons discussed below, we agree with Invacare
that no reasonable jury could conclude that the Younes
article is not anticipatory.
A
Respironics argues that eight features of the ’517 and
’575 patents are not disclosed in the Younes article. We
agree with the district court that those features are not
actually limitations of the claims. Because every claim
limitation is found in the Younes reference, Invacare has
met its burden to make a prima facie showing of anticipa-
tion. See Orion IP, LLC v. Hyundai Motor Am., 605 F.3d
967, 977 (Fed. Cir. 2010). We further conclude that
Respironics has not pointed to any contrary evidence that
would raise a genuine issue of material fact as to whether
the Younes article anticipates the claims. See Leggett &
Platt, Inc. v. VUTEk, Inc., 537 F.3d 1349, 1352 (Fed. Cir.
7 RESPIRONICS v. INVACARE CORP
2008). We therefore hold that the asserted claims are
invalid as anticipated.
1. The ’517 Patent
The validity of claims 29, 30, and 32 is at issue.
Claim 29 reads as follows:
A method of delivering pressurized breathing gas
to an airway of a patient, comprising:
generating a flow of breathing gas;
sensing a fluid characteristic associated with the
flow of breathing gas and outputting a signal corre-
sponding to the fluid characteristic;
selecting an expiratory gain; and
controlling a pressure of the flow of breathing gas
delivered to a patient based on a product of the expi-
ratory gain and the fluid characteristic during at
least a portion of an expiratory phase of such a pa-
tient's breathing cycle, so that a pressure of the flow
of breathing gas delivered to the patient during at
least a portion of the expiratory phase varies with
fluctuations of the fluid characteristic.
Dr. Younes’s article unquestionably discloses an ap-
paratus that generates a flow of a breathing gas. It also
discloses “sensing a fluid characeristic associated” with
that flow of breathing gas. In Respironics I, we construed
“fluid characteristic” as “flow or volume,” and the Younes
article explicitly discloses a sensor for the flow of gas,
stating that “[f]low is measured by use of a pneuma-
tograph, and airway pressure is sampled at the breathing
valve.” Dr. Younes agreed during his deposition on re-
mand that the apparatus disclosed in his article includes
appropriate sensors to measure the flow rate and volume
of the breathing gas and to generate a signal correspond-
ing to those parameters. The expiratory gain is a constant
RESPIRONICS v. INVACARE CORP 8
that is used to change the delivered pressure depending
on the flow rate. ’517 patent, col. 11, ll. 11-14 (“[G]ain is
the constant used to augment pressure based on the flow
rate.”). The greater the gain, the greater the reduction in
expiratory pressure. Dr. Younes agreed that his appara-
tus discloses selecting gain and multiplying the signal by
the gain.
In seeking to show that the Younes article does not
anticipate claim 29, Respironics argues that the Younes
article “does not describe anything having to do with
preventing the collapse of the ‘airway of the patient.’”
Respironics argues that claim 29 (and every asserted
claim) is directed to the treatment of obstructive sleep
apnea and that treating that disorder requires preventing
the collapse of the upper airway in particular, not the
“airway” in general. According to Respironics, in the
context of these patents “everyone knows that the ‘airway’
referred to is the upper airway.” Respironics then asserts
that the Younes article does not specifically disclose
providing positive pressure to prevent the collapse of the
upper airway in a patient suffering from obstructive sleep
apnea.
As the district court recognized, the distinction that
Respironics seeks to draw between the Younes article and
claim 29 is wholly unsupported. In Respironics I, we
noted that the claims of the ’517 and ’575 patents are “not
limited to the treatment of any particular condition or
disease state, but recite ‘delivering pressurized breathing
gas to an airway of a patient.’” The ’517 specification
acknowledges that the system disclosed in Younes applies
pressure “directly to the subject’s airway.” ’517 patent,
col. 3, ll. 58-60. The Younes article therefore plainly
discloses the claim limitation of “delivering pressurized
breathing gas to the airway of a patient.”
9 RESPIRONICS v. INVACARE CORP
Respironics also argues that the Younes article does
not teach “controlling a pressure of the flow of breathing
gas,” the last step in the method of claim 29. In particu-
lar, Respironics argues that the system disclosed in Dr.
Younes’s article does not measure and control for air
leakage that inevitably occurs between the patient inter-
face (a mask, for example) and the patient. Respironics’
position is that a system that does not account for leakage
cannot accurately calculate a “fluid characteristic” and
therefore cannot vary the applied pressure in response to
that parameter. Because the apparatus disclosed in
Younes does not have that capability, Respironics argues
that the article cannot anticipate claim 29. Respironics
made the same argument in Respironics I, in response to
which we noted that “leak detection is not recited in the
claims” of the ’517 and ’575 patents. The same point
applies here—the absence of a disclosure of leak detection
in the Younes article does not defeat anticipation, because
leak detection is not a limitation of the asserted claims.
Claim 30 of the ’517 patent reads as follows:
The method of claim 29, wherein generating
the flow of breathing gas includes carrying the
flow of breathing gas to an airway of a patient via
a conduit, and wherein controlling the pressure of
the flow of breathing gas includes exhausting gas
from the conduit.
Claim 30 adds the step of reducing the delivered pressure
by venting gas from the conduit that carries the pressur-
ized gas from the apparatus to the patient. The Younes
article discloses the inclusion of “logic circuits” that direct
the position of a “spirometric piston” to control the release
of breathing gas from the patient–apparatus conduit to
attain a predetermined pressure. Although the article
RESPIRONICS v. INVACARE CORP 10
states that this aspect of the disclosed breathing appara-
tus was not actually built, a reference is anticipatory if it
enables one skilled in the art to practice the invention.
The prior inventor need not have reduced his invention to
practice. Verizon Servs. Corp. v. Cox Fibernet Va., Inc.,
602 F.3d 1325, 1337 (Fed. Cir. 2010). There is no dispute
that the Younes disclosure is enabling. Thus, as with
Claim 29, the Younes article clearly discloses each of the
limitations of claim 30.
Claim 32 of the ’517 patent reads as follows:
The method of claim 29, wherein controlling
a pressure of the flow of breathing gas delivered to
a patient based includes controlling the pressure
of the flow of breathing gas based on:
(1) an inspiratory positive airway pressure
(IPAP) during an inspiratory phase of such a pat-
ent’s breathing cycle, and
(2) based on the product of the expiratory
gain and the fluid characteristic during at least a
portion of an expiratory phase of such a patient’s
breathing cycle, so that a pressure of the flow of
breathing gas delivered to such a patient during
at least a portion of the expiratory phase varies
with fluctuations of the fluid characteristic.
Claim 32 differs from claim 29 only in that it specifically
recites the step of applying positive pressure to the pa-
tient’s airway during inspiration (“IPAP”). The specifica-
tion of the ’517 patent defines IPAP as a constant value.
’517 patent, col. 2, ll. 20-27. The specification states that
the Younes system “may load or unload during inspira-
tion, expiration, or both[.]” Id. at col. 3, ll. 56-57. Dr.
11 RESPIRONICS v. INVACARE CORP
Younes agreed that the apparatus disclosed in his article
can provide a constant positive pressure. He also agreed
that the apparatus can include a gating circuit and recti-
fier that allow for deviation from that constant pressure
during one phase of the breathing cycle. That is, he
agreed that his article enables one skilled in the art to
maintain constant pressure during inspiration and to
reduce that pressure during expiration (and only during
expiration) based on the product of a gain and a measured
fluid characteristic. Thus, Invacare met its burden to
show clear and convincing evidence that each of the
limitations of claim 32 was found in the Younes article.
2. The ’575 Patent
From the ’575 patent, claim 21 provides as follows:
A proportional positive airway pressure
apparatus for delivering pressurized breathing
gas to an airway of a patient, said apparatus com-
prising:
a gas flow generator;
a patient interface adapted to couple said
gas flow generator to an airway of a patient;
a sensor adapted to detect at least one
physiological condition of such a patient, wherein
said physiological condition is suitable for use to
differentiate between an expiratory phase and an
inspiratory phase of a breathing cycle of such a
patient and to output a signal indicative thereof;
a pressure controller associated with at
least one of said gas flow generator and said pa-
tient interface to control a pressure of said breath-
ing gas provided by said gas flow generator;
control means for controlling said pressure
controller so as to cause said breathing gas to be
delivered to such a patient at a first pressure level
RESPIRONICS v. INVACARE CORP 12
during at least a portion of said inspiratory phase
of said breathing cycle and in accordance with a
predetermined pressure profile during said expi-
ratory phase of said breathing cycle, wherein a
shape of said predetermined pressure profile is set
independent of any monitored respiratory charac-
teristics of such a patient.
The Younes article discloses all of the limitations of
claim 21. The “gas flow generator” is disclosed for the
same reasons as in the ’517 patent. So is the “sensor.”
The Younes article discloses a pneumotachograph to
measure the flow and means to measure pressure; that
signal is fed to a gating circuit, “which identifies positive
or negative zero crossing of the flow signal” and thus
distinguishes between inhalation and exhalation.
Respironics argues that four limitations of claim 21
are missing from the Younes article: (1) “airway of a
patient”; (2) “patient interface”; (3) “predetermined pres-
sure profile”; and (4) “shape.”
As to the first limitation, we reject Respironics’ argu-
ment with respect to the term “airway of a patient” for the
same reason that we rejected the same argument made
with respect to claim 29 of the ’517 patent.
As to “patient interface,” Respironics argues that the
term means “a mask (or nasal cannulae) strapped to the
patient while he sleeps.” According to Respironics, the
Younes article does not disclose either of those specific
interfaces and therefore does not anticipate the claim.
The specification undermines Respironics’ argument,
however. In one embodiment, “the patient interface is
either a nasal mask or a full face mask.” ’575 patent, col.
9, ll. 8-9. But other embodiments refer to the interface as
being “a mouthpiece, a nasal seal, nasal prongs or cannu-
13 RESPIRONICS v. INVACARE CORP
lae, an endotrachial tube, a trachea adapter or any other
suitable appliance for interfacing between a source of
breathing gas and a patient.” Id. at col. 9, ll. 11-14. The
specification continues: “Also, the phrase ‘patient inter-
face’ can encompass more than the interface worn by the
patient. For example, the patient interface can include . .
. any other structures that connect the source of pressur-
ized breathing gas to the patient.” Id. at col. 9, ll. 14-18.
In his deposition testimony on remand, Dr. Younes stated
that the pressure-support apparatus disclosed in his
article and a commercial CPAP machine use fundamen-
tally different types of patient interfaces, with the inter-
face of his article being more invasive than a typical
CPAP interface. But he did not suggest that the Younes
article fails to disclose a “patient interface” as that term is
broadly used in the ’575 patent. Because Respironics’
proposed interpretation of that term conflicts with its own
specification, there is no disputed issue of fact as to
whether the Younes article discloses a “patient interface”
as the term is used in the ’575 patent.
The third and fourth limitations that Respironics
suggests are missing from the Younes article are the
related terms “predetermined pressure profile” and
“shape.” The Younes article states that the applied
pressure can be “made to change in proportion to any
external function,” for example, a sinusoidal function. Dr.
Younes acknowledged that his article fully enables an
apparatus and a method in which the pressure controller
delivers “a continuous positive airway pressure in inhala-
tion, and a pre-determined pressure profile in exhalation,
reducing the pressure of the CPAP.” 1 He agreed that the
1 The dispute between Invacare and Respironics re-
garding the construction of “predetermined pressure
profile” does not affect the invalidity analysis. In the
RESPIRONICS v. INVACARE CORP 14
pressure profile disclosed in his article has “a shape in
which the pressure changes over time,” and he further
agreed that the disclosed shape of the pressure profile
“describes the way the profile drops off to arrive at the
minimum pressure, and then rises up to arrive back at
the maximum pressure, independent of the exact values
of magnitude and duration.” See Respironics I, 303 F.
App’x at 872-73 (construing “pressure profile” and
“shape”).
After making that concession, Dr. Younes stated that
he never reduced that particular aspect of his invention to
practice. As noted, however, anticipation does not require
order on appeal, the district court held that “predeter-
mined” means “chosen in advance, before operation.” The
court therefore required that each of the three character-
istics of the “pressure profile”—duration, magnitude, and
shape—must be selected in advance. Respironics argues
that this construction conflicts with the specification and
violates the mandate in Respironics I. Invacare dis-
agrees.
In Respironics I, we held that “the predetermined
pressure profile reduces the constant pressure of CPAP or
the reduced EPAP pressure of bi-level therapy once the
device detects the expiratory breathing phase.” That is
the construction Respironics favors, and it was the gov-
erning construction when Dr. Younes acknowledged that
his article discloses and enables a “predetermined pres-
sure profile.”
After Dr. Younes made that concession, the district
court ruled that “predetermined” means “chosen in ad-
vance, before operation.” The Younes article discloses a
“function generator” that can generate a sine wave with a
fixed (i.e., “predetermined”) shape, magnitude, and dura-
tion. The article plainly anticipates that element under
the district court’s construction of “predetermined.” We
need not decide, therefore, whether the district court’s
construction was in error, because on this record, the
article anticipates either way.
15 RESPIRONICS v. INVACARE CORP
that the prior art reference was reduced to practice, as
long as it was enabled. Dr. Younes conceded that his
article provides an enabling disclosure of the contested
claim limitations.
For the same reasons, there is no dispute that the ar-
ticle discloses all of the limitations of claim 43 of the ’575
patent, which recites the method that corresponds to
apparatus claim 21.
Claim 44 of the ’575 patent depends on claim 43 and
adds the additional step of “setting at least one of a mag-
nitude and duration of said pressure profile.” The Younes
article discloses that element by describing a control
panel that includes the ability to select “magnitude,
pattern, duration, and time of application (in relation to
the respiratory cycle) of the altered load.”
B
Although the district court rejected the distinguishing
features that Respironics identified, the court accepted
Respironics’ position that the Younes article does not
disclose all the limitations “as arranged” in the claim.
Respironics continues to press that argument as a basis
for upholding the district court’s ruling. The “re-
arrangement” argument relies mainly on the way that
Invacare’s expert, Mr. Orth, presented the figures from
the Younes article in his expert report. The diagram in
Mr. Orth’s expert report corresponding to the proportional
embodiment appears below. Mr. Orth prepared a similar
diagram for the predetermined embodiment. Those
diagrams match elements of the underlying circuitry of
Younes, as illustrated in Figure 3 of Younes (left), with
the schematic version of the apparatus, as illustrated in
Figure 1 of Younes (right). Mr. Orth added the arrows
RESPIRONICS v. INVACARE CORP 16
indicated by callouts (1) through (6). The diagram pre-
sented in Mr. Orth’s report did not include the numerical
callouts. Those were included in Invacare’s brief, but they
do not affect the substance of the diagrams.
Mr. Orth did not have to combine features from unre-
lated embodiments in the Younes article to generate the
above diagram, which depicts the claimed invention.
Moreover, contrary to Respironics’ contention that the
diagram is “fabricated and self-serving,” the diagram was
presented to Dr. Younes during his deposition on remand
and Dr. Younes acknowledged that it fairly and accu-
rately represents the teaching of his 1987 article.
The first callout illustrates the connection between
the pneumotachograph, which measures the patient’s
breathing habits, and the flow attenuator. Dr. Younes
agreed:
Q. First, with respect to the flow rate
signal, the pneumotachograph provides a
flow rate signal, isn’t that correct?
A. That’s correct.
17 RESPIRONICS v. INVACARE CORP
Q. [I]n figure three, you indicate flow in,
in the flow attenuator?
A. Right.
Q. So, as it is set up in figure three, it
means that the flow rate signal is going
into the flow attenuator?
A. Only if you connected this way.
Q. [Y]ou will agree that the way the flow rate
is shown . . . as going into the control panel
and the flow in, is one of the ways that is de-
scribed in the Younes article[.]
A. That yes, that this is something that can
be done with the Younes article, yeah, it is the
Younes apparatus.
The second callout illustrates the connection between the
flow attenuator, where the signal is multiplied (i.e.,
reduced) by a preselected gain, and the rectifier. Again,
Dr. Younes agreed that the annotation in Dr. Orth’s
diagram accurately presents that aspect of his article:
Q. And with respect to the Younes apparatus . . .
once it enters the flow in of the flow attenuator, it
is multiplied by a gain in the attenuator, correct?
A. Attenuators usually reduce the signal as op-
posed to increasing it, but that’s fine.
Q. It is still a multiplication of a gain?
A. Right, right, right.
The rectifier allows the apparatus to apply or to vary the
applied pressure during only one part of the breathing
cycle; for example, it permits the apparatus to reduce the
pressure only during expiration. With reference to the
diagram, Dr. Younes agreed:
Q. [T]he signal coming out of the flow attenuator is
shown as going into the rectifier. That’s certainly
RESPIRONICS v. INVACARE CORP 18
something disclosed and described in the Younes arti-
cle, is it not?
A. Yes, that’s only if you want to apply, to change the
pressure in proportion to the flow during one part of
the cycle. The rectifier is only useful if you want to say
I want to apply it only during inspiration or only dur-
ing expiration, then you go through the rectifier.
The third callout represents the connection between
the rectifier and an offset amplifier, a connection the
Younes article plainly discloses: “The rectifier output is
then connected to the amplifier input and from there to
the drive input.” Again, Dr. Younes agreed:
Q. [I]f you want to combine, is there a way to com-
bine flow rate with any other parameter described in
your article?
A. Yes, you can go with the—you can go into the op-
posite amplifier and dial in an additional constant
signal.
Q. And that would be described [in the Younes arti-
cle] where you say: “If flow, volume, or other external
function are additionally inputted into the offset am-
plifier, combined loads can be applied.”
A. Right.
Q. So the arrow going up to the offset amplifier
would be in accordance with what I just read.
A. Yes.
The fourth callout is the other input to the offset ampli-
fier, a constant voltage signal. The fifth callout repre-
sents the connection between the amplifier and the
pressure generator. Dr. Younes agreed that those connec-
tions and callouts are entirely consistent with his disclo-
sure:
Q. And what is the other input to the offset am-
plifier?
19 RESPIRONICS v. INVACARE CORP
A. Its own input, it is just a constant voltage gen-
erator.
Q. So showing a straight line coming into the
voltage source . . . is consistent with what is de-
scribed and illustrated in the Younes article . . .
correct?
A. Yeah. In practice, the output of the offset am-
plifier, which in this case would also contain the
flow signal, would go into the input of the top cir-
cuit, which has an amplifier. And then it would
go to the device itself, to the pressure.
Finally, the sixth callout represents the physical connec-
tion between the patient and the pressure generator, i.e.,
the “patient interface.”
Mr. Orth chose to annotate the figures in order to fa-
cilitate his presentation of a highly technical reference to
the district court. We see no indication that he picked
and chose from multiple disclosed embodiments or other-
wise altered the figures in a way that would suggest that
the article does not disclose all the elements of the inven-
tion as arranged in the claims.
C
In sum, we agree with the district court that the fea-
tures that Respironics argues distinguish its claims from
Dr. Younes’s article do not correspond to elements of the
claims and therefore cannot distinguish the claims from
the prior art. However, we disagree with the district
court’s conclusion that the elements of the Younes article
were not “arranged” in a manner that rendered the article
anticipatory. For that reason, we reverse the district
court’s grant of summary judgment to Respironics on the
issue of anticipation. Moreover, as the above analysis
indicates, the Younes article discloses every element of
RESPIRONICS v. INVACARE CORP 20
the asserted claims and it does so in a manner that does
not require rearrangement of the disclosed elements to
obtain the invention of the asserted claims. Because we
conclude that a reasonable jury would necessarily find
that the asserted claims are anticipated by the Younes
article, we hold that the claims are anticipated as a
matter of law. We therefore direct the entry of judgment
in favor of Invacare on the issue of anticipation. In light
of our holding as to invalidity, Respironics’ appeal of the
court’s construction of the term “predetermined” and
summary judgment of noninfringement is moot.
Each party shall bear its own costs for this appeal.
REVERSED and REMANDED