NOTE: This disposition is nonprecedential. 

United States Court of Appeals for the Federal Circuit 

2008-1164, -1193 

RESPIRONICS, INC. and RIC INVESTMENTS, LLC, 

Plaintiffs-Appellants, 

v. 

INVACARE CORP., 

Defendant-Cross Appellant. 

W. Thomas McGough, Jr. Reed Smith LLP, of Pittsburgh, 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. With him on the brief were John T. Wiedemann, Nenad 

Pejic, Georgia E. Yanchar, and Jennifer B. Wick. Of counsel on the brief was Eric G. 

Soller, Pietragallo, Bosick & Gordon, of Pittsburgh, Pennsylvania. 

Appealed from: United States District Court for the Western District of Pennsylvania 

Judge Gary L. Lancaster 
NOTE: This disposition is nonprecedential. 

United States Court of Appeals for the Federal Circuit 

2008-1164, -1193 

RESPIRONICS, INC. and RIC INVESTMENTS, LLC, 

 Plaintiffs-Appellants, 

v. 

INVACARE CORP., 

 Defendant-Cross Appellant. 

Appeal from the United States District Court for the Western District of Pennsylvania in 

case no. 04-CV-0336, Judge Gary L. Lancaster. 

 __________________________ 

DECIDED: December 16, 2008 

 __________________________ 

Before SCHALL, CLEVENGER, and LINN, Circuit Judges. 

LINN, Circuit Judge. 

Respironics, Inc. and RIC Investments, LLC (collectively “Respironics”) appeal 

from a final judgment of noninfringement by Invacare, Inc. (“Invacare”) of Respironics’s 

U.S. Patents No. 5,148,802 (“the ’802 patent”), No. 5,433,193 (“the ’193 patent”), and 

No. 6,105,575 (“the ’575 patent”). Invacare cross-appeals from the final judgment of 

literal infringement of U.S. Patent No. 6,609,517 (“the ’517 patent”) and also crossappeals from the final judgment that all four patents-in-suit are not invalid. Respironics 

v. Invacare, No. 04-CV-0336 (W.D. Pa. Jan. 7, 2008) (“Judgment”). Because the district 

court correctly construed the claims of the ’802 and ’193 patents and found them not 

infringed, we affirm the judgment with respect to those two patents. Because the district 
court erred in construing the term “shape” in the ’575 patent and erred in granting 

summary judgment of no anticipation of the ’575 and ’517 patents, we vacate the grant 

of summary judgment of noninfringement of the ’575 patent, reverse the grant of 

summary judgment of validity of the ’575 and ’517 patents, and remand. 

I. BACKGROUND 

Respironics’s four patents-in-suit are directed to the treatment of obstructive 

sleep apnea (“OSA”). A common method for treating OSA is the use of a continuous 

positive airway pressure (“CPAP”) device to supply a constant pressure of air to the 

patient to keep the patient’s airway open. To ease patient discomfort, Respironics 

developed and patented a variety of apparatuses and methods that detect when the 

patient is exhaling and then lower the pressure of incoming air provided during 

exhalation. 

The first two patents—’802 and ’193—are directed to “Bi-level” therapy. Unlike 

CPAP, which supplies only one pressure, Bi-level therapy delivers a higher pressure 

during inhalation and a lower pressure during exhalation. These higher and lower 

pressures are referred to as inhalation positive airway pressure (“IPAP”) and exhalation 

positive airway pressure (“EPAP”), respectively. See ’802 patent col.6 ll.45-59; 

’193 patent col.6 ll.53-67. The third and fourth patents—’575 and ’517—are directed to 

a more sophisticated therapy called proportional positive airway pressure (“PPAP”) 

therapy. See ’575 patent col.6 ll.3-4; ’517 patent col.6 ll.3-4. Instead of supplying only 

one pressure during a given exhalation, PPAP therapy provides varying pressures 

during exhalation. It can do so in one of two ways: (1) in accordance with a 

predetermined pressure profile, which has a shape that is set independent of the 

2008-1164, -1193 2 
patient’s breathing efforts; or (2) in proportion to the patient’s breathing, such that the 

supplied pressure varies with how deeply the patient is breathing. In general, the 

appealed claims of the ’575 patent are directed to the former, “predetermined” 

embodiment, and the appealed claims of the ’517 patent are directed to the latter, 

“proportional” embodiment. 

Respironics sued Invacare for patent infringement. Respironics’s final 

infringement contention was that Invacare’s commercialization of a product (“the 

Commercial Device”) infringed the ’802, ’193, and ’575 patents; and that Invacare’s 

demonstration of a prototype device (“the Tradeshow Device”) infringed the ’517 patent. 

Following a Markman hearing, the district court issued a claim construction order in 

which it construed various contested terms of the patents. Respironics v. Invacare, No. 

04-CV-0336 (W.D. Pa. Aug. 30, 2006) (“Claim Construction Order”). On cross-motions 

for summary judgment, the district court ruled in favor of Respironics that all four 

patents are not invalid as a matter of law and, in particular, that the ’575 and ’517 

patents are not anticipated by a publication authored by Dr. Magdy Younes. 

Respironics v. Invacare, 511 F. Supp. 2d 587 (W.D. Pa. Apr. 26, 2007). The district 

court also granted summary judgment in favor of Invacare that the Commercial Device 

does not infringe the ’802, ’193, and ’575 patents. Id. at 604. However, the district 

court identified one key factual dispute precluding summary judgment as to infringement 

of the ’517 patent: “whether the Vscale factor in the Unloading Equation converts the 

valve position measurements into flow rate signals.” Id. A trial was conducted to 

resolve that question. Answering in the affimative, a jury concluded that the Tradeshow 

Device literally infringed claims 29, 30, and 32 of the ’517 patent. Following post-verdict 

2008-1164, -1193 3 
briefing, the district court denied Invacare’s motion for judgment as a matter of law 

(“JMOL”) and denied Respironics’s motion for a permanent injunction. Respironics v. 

Invacare, No. 04-CV-0336 (W.D. Pa. Jan. 7, 2008) (“JMOL Opinion”). The district court 

entered judgment in accordance with both the summary judgment order and the jury’s 

verdict, and further stayed the bifurcated damages portion of the case pending 

resolution of any appeal. Judgment at 1. 

Respironics appealed from the judgment on issues relating to noninfringement of 

the ’802, ’193, and ’575 patents. Invacare cross-appealed on issues relating to 

infringement of the ’517 patent and validity of the ’575 and ’517 patents. Because the 

judgment “is final as to all issues except for a determination of damages, we have 

jurisdiction under 28 U.S.C. § 1292(c)(2).” Cent. Admixture Pharmacy Servs., Inc. v. 

Advanced Cardiac Solutions, P.C., 482 F.3d 1347, 1353 (Fed. Cir. 2007). 

II. DISCUSSION 

A. Infringement 

“The determination of infringement is a two-step process, wherein the court first 

construes the claims and then determines whether every claim limitation, or its 

equivalent, is found in the accused device.” Roche Palo Alto LLC v. Apotex, Inc., 531 

F.3d 1372, 1377 (Fed. Cir. 2008). Claim construction is a question of law, which we 

review de novo. Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1456 (Fed. Cir. 1998) 

(en banc). Infringement is a question of fact, which we review for substantial evidence 

when tried to a jury, Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323, 1332 (Fed. 

Cir. 2008), but which we review without deference when decided on summary judgment, 

2008-1164, -1193 4 
Bd. of Regents of the Univ. of Texas Sys. v. BENQ Am. Corp., 533 F.3d 1362, 1367 

(Fed. Cir. 2008). 

1. Commercial Device 

We first address whether the district court properly concluded, on summary 

judgment, that the Commercial Device did not infringe the ’802, ’193, and ’575 patents. 

a. Claim Construction of “selected higher and lower pressure magnitudes” 

Respironics challenges the district court’s construction of the term “selected 

higher and lower pressure magnitudes” in method claims 3 and 24 of the ’802 patent 

and method claims 9, 44, and 53 of the ’193 patent. The district court construed this 

term identically for all claims, and the parties do not urge different constructions for 

different claims. Claim 3 of the ’802 patent recites, with disputed term emphasized: 

A method of medical treatment for a patient comprising the steps of: 

[1] providing a flow of breathing gas from a source for delivery to 

the airway of such a patient at selected higher and lower 

pressure magnitudes at least as great as ambient 

atmospheric pressure; 

[2] continually detecting the instantaneous flow rate of said 

breathing gas flowing between said source and the airway of 

such a patient; 

[3] continually processing selected parameters including said 

instantaneous flow rate to provide a reference indicia 

corresponding to an average flow rate of breathing gas 

flowing between said source and said patient; and 

[4] utilizing said instantaneous flow rate and said reference indicia 

to select one of said higher and said lower pressure 

magnitudes for said flow of breathing gas to be applied in the 

airway of such a patient. 

(bracketed numbers added). 

The district court construed the term “selected higher and lower pressure 

magnitudes” in step one to require the pressure magnitudes to be “chosen prior to

2008-1164, -1193 5 
operation of the computer circuitry that is used to determine whether the patient is 

inhaling or exhaling.” Claim Construction Order at 16 (emphasis added). Respironics 

argues that this construction impermissibly imports a temporal limitation into the claims. 

It argues that the method steps are not set forth in any chronological sequence and, 

accordingly, the pressure magnitudes need not be selected at any particular time in the 

sequence. Invacare defends the district court’s construction, arguing that the word 

“select” appears twice in the claims: in the past tense “selected” in step one, and in the 

present tense “to select” in step four. These two occurences of the word “select,” 

coupled with step four’s refererence back to “said” magnitudes in step one, convinces 

Invacare that the magnitudes in step one are selected before any of steps two, three, or 

four are performed. 

The claim language itself provides little insight as to when the pressure 

magnitudes in step one are “selected.” Because steps two and three must be 

performed “continually,” it cannot be said that the claim language itself requires all steps 

to be performed in the order written. Also, the mere fact that step four refers back to 

“said higher and said lower pressure magnitudes” of step one does not, as a rule, 

require step one to be performed before step four. Indeed, in Interactive Gift Express, 

we held that step one of a method claim can be performed after step four, even though 

step four referred to “the catalog code” introduced in step one. Interactive Gift Express, 

Inc. v. Compuserve Inc., 256 F.3d 1323, 1328 (Fed. Cir. 2001) (emphasis added); id. at 

1343 (“[T]here is no reason why step one[ ] . . . must occur before step four[ ] . . . .). 

Thus, in a method claim, a step that recites “said” or “the,” referring to an earlier object, 

does not always have to be performed after the step that first introduces the object. 

2008-1164, -1193 6 
We turn then to the specification, which we have called “‘the single best guide to 

the meaning of a disputed term.’” Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 

2005) (en banc) (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 

(Fed. Cir. 1996)). In this case, the specification discloses only one way to select the 

higher and lower pressure magnitudes: via pressure adjustment controls (labeled “90” 

and “92”), which are depicted as a pair of dials in Figure 4, reproduced below. 

These dials, according to the specification, are used “for setting the respective [higher] 

IPAP and [lower] EPAP pressure levels.” ’802 patent col.13 ll.30-31. Throughout the 

specification, the pressure magnitudes are referred to as being “predetermined,” id.

col.2 l.68-col.3 l.1, col.7 l.40, or “preselected,” id. col.3 l.27. See also ’194 patent col.3 

ll.3-4, l.30. When pressed at oral argument to identify an embodiment in the 

specification where the pressure magnitudes are not preselected, counsel for 

Respironics was unable to do so. Oral Arg. at 5:35-6:10, available at

http://oralarguments.cafc.uscourts.gov/mp3/2008-1164.mp3. Similarly, the district court 

found, and we agree, that “[t]here is no indication in the patents that the lower pressure 

magnitude can somehow be changed breath by breath.” Claim Construction Order at 

2008-1164, -1193 7 
19. The preselection of higher and lower pressure magnitudes is not merely a preferred 

embodiment; it is the patents’ only embodiment. 

The prosecution history also supports the district court’s construction. As 

originally filed, claims 3 and 24 of the ’802 patent used the word “alternately” in place of 

the now-disputed word “selected.” In response to an obviousness rejection, Respironics 

amended the term to its current form and carried it over to the claims of the ’193 patent. 

J.A. 935, 939. Respironics offers no explanation for this amendment. But, to whatever 

extent the word “alternately” might have permitted selection of pressure magnitudes on 

a breath-by-breath basis, a capability nowhere disclosed in the patents, Respironics’s 

decision to replace “alternately” with “selected” forecloses the broader construction. 

Thus, we conclude that the district court correctly construed the term “selected 

higher and lower pressure magnitudes” to require the pressure magnitudes to be 

chosen prior to operation of the computer circuitry that is used to determine whether the 

patient is inhaling or exhaling. See Loral Fairchild Corp. v. Sony Corp., 181 F.3d 1313, 

1322 (Fed. Cir. 1999) (“Although not every process claim is limited to the performance 

of its steps in the order written, the language of the claim, the specification and the 

prosecution history support a limiting construction in this case.”). 

b. Infringement of ’802 and ’193 Patents 

We also conclude that that district court correctly determined that the 

Commercial Device does not infringe the ’802 and ’193 patents under the district court’s 

proper claim construction. As previously discussed, the claims require both higher and 

lower pressure magnitudes to be selected at the outset of operation. The Commercial 

Device, however, preselects only the higher pressure magnitude when operated under 

2008-1164, -1193 8 
normal conditions, not the lower magnitude. Respironics, 511 F. Supp. 2d at 596 

(quoting Respironics’s expert as admitting that “the magnitude of unloading is a function 

of the [SoftX] setting . . . and peak inspiratory flow of the preceding inspiration (patientdetermined quantity)”). Because the Commercial Device does not perform every step of 

the asserted claims, we agree with the district court that the Commercial Device does 

not infringe these patents. 

Respironics argues, alternatively, that operating the Commercial Device in socalled “Standby Mode” might still infringe the ’802 and ’193 patents. Although the 

district court’s opinion did not expressly address this argument, we conclude that 

Respironics’s evidence failed to create a genuine issue of material fact sufficient to 

defeat the grant of summary judgment of noninfringement. Respironics relies on the 

Supplemental Mascara Declaration for the assertion that the ΔV variable in the 

Unloading Equation is given a predetermined value in Standby Mode, which is then 

used to preselect the lower pressure magnitude before the device detects whether the 

patient is inhaling or exhaling, as required by the claims. This statement is directly 

belied by Respironics’s own brief, which expressly defines the ΔV variable as “the 

change in valve position defined by (Peak – Median) for the inhalation of the previous 

breathing cycle.” Appellant’s Br. 14 (emphasis added). Because ΔV presupposes the 

detection of a previous breathing cycle, this operation cannot infringe. A similarly 

noninfringing definition of ΔV is found in the computer code cited in the Supplemental 

Mascara Declaration. See J.A. 1985 (defining “ΔV = 10 (‘valve_change’ initial value)”) 

(citing J.A. 4477 (“The valve_change value is the amount of movement the valve has 

m[a]de from it[s] average position between breaths.”) (emphasis added)). Because 

2008-1164, -1193 9 
there is no genuine issue of material fact that ΔV requires at least one prior breath to 

have been detected, operating the Commercial Device in Standby Mode does not 

infringe as a matter of law. Accordingly, we affirm the judgment of noninfringement of 

the ’802 and ’193 patents. 

c. Claim Construction of “shape” 

Respironics challenges the district court’s construction of the word “shape” in 

claims 21 and 43 of the ’575 patent. That word is used in the following phrase: “a shape

of said predetermined pressure profile is set independent of any monitored respiratory 

characteristics of such a patient.” (emphasis added). The district court construed 

“shape” to mean “magnitude and duration.” Claim Construction Order at 26. We agree 

with Respironics that this construction is unduly narrow. As the intrinsic record makes 

clear, a pressure profile is defined not only by its magnitude and duration, but also by its 

shape, which is a different characteristic reflective of the way the pressure changes over 

time, independent of the particular magnitude and duration of the profile. 

We look first to the claims. The claims themselves suggest that a profile’s shape 

is a separate characteristic that can be set independent of the profile’s magnitude and 

duration. Claims 22 and 44, which depend directly from claims 21 and 43, each recites 

a single additional limitation: “setting at least one of a magnitude and a duration of said 

pressure profile.” (emphases added). Because parent claims 21 and 43 recite that the 

profile’s “shape” is set independent of any monitored respiratory characteristics of a 

patient, the further setting of the profile’s “magnitude” and/or “duration” in claims 22 and 

44 would be redundant if “shape” meant “magnitude and duration,” as construed by the 

district court. 

2008-1164, -1193 10 
Like the claims, the specification refers separately to each of these three 

characteristics: “[T]he defined pressure profile has a shape that generally corresponds 

to a patient’s normal flow,” ’575 patent col.20 ll.23-25 (emphasis added); “Multiple 

predefined pressure profiles, having different magnitudes, durations or both can be 

stored in a CPAP/PPAP device,” id. col.20, ll.53-55 (emphases added). A drawing best 

captures the point. The patent’s Figure 11B, reproduced below, shows three pressure 

profiles (P1, P2, P3) with different magnitudes (M1, M2, M3) and different durations (D1, 

D2, D3). But, despite having different magnitudes and durations, all three pressure 

profiles have the same general shape (a left-of-center “U”-shape), which “drops off 

quickly at the start of expiration then rises slowly.” Id. col.20 ll.63-64. 

The specification thus illustrates that a pressure profile is defined by its duration, 

magnitude, and shape. These three characteristics—duration, magnitude, and shape—

are interrelated, but are different factors in the overall makeup of the pressure profile. 

The profile’s duration (e.g., D1, D2, D3 in Fig. 11B) is the time difference measured from 

the start to the end of the profile. The profile’s magnitude (e.g., M1, M2, M3 in Fig. 11B) 

is the pressure difference between the profile’s maximum and minimum pressures. But 

duration and magnitude alone do not define how quickly or slowly the profile drops off to 

2008-1164, -1193 11 
arrive at the minimum pressure, how long it might stay at any particular pressure, or 

how quickly or slowly the profile rises up to arrive back at the maximum pressure. 

These are considerations that relate to the “shape” of the profile. As shown in 

Figure 11B, the profile’s shape is the contour along which the pressure changes over 

time, independent of the particular magnitude and duration of the profile. 

The prosecution history does not contradict the claims or the specification. The 

disputed term was added to claims 21 and 43 in response to an anticipation rejection 

over U.S. Patent No. 5,598,838 (“Servidio”). Distinguishing Servidio, Respironics 

explained to the examiner that “the shape of [Servidio’s] expiratory model waveform is 

generated based on the inspiratory waveform, which is determined by monitoring the 

patient flow during inspiration. . . . Furthermore, it would not be obvious to modify the 

teachings of [Servidio] so that the shape of the expiratory waveform model is not based 

on the monitored respiratory characteristics of the patient.” J.A. 3719 (emphases 

added). This statement says nothing about the waveform’s magnitude or duration. It 

merely shows that Respironics understood that a “waveform” can have a “shape.” 

We conclude that a profile’s “shape” is not limited to its “magnitude and duration.” 

We therefore modify the construction of the word “shape” to mean “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 

pressure, independent of the exact values of magnitude and duration.” 

d. Infringement of ’575 Patent 

Based on an incorrect construction of the word “shape,” the district court held on 

summary judgment that the Commercial Device did not infringe claims 21, 43, and 44 of 

2008-1164, -1193 12 
the ’575 patent. Because the Commercial Device supplies a pressure whose 

magnitude is based on the patient’s previous breath, the court determined that the 

pressure profile’s “shape” cannot be set independent of the patient’s respiratory 

characteristics. Respironics, 511 F. Supp. 2d. at 587. This would be true if “shape” 

were tied to “magnitude,” as it was under the district court’s construction. But, as 

previously explained, “shape” should not have been so limited. Moreover, Respironics 

points to record evidence that it believes shows that the Commercial Device utilizes a 

predetermined pressure profile having a so-called “bath-tub”-shape that is set 

independent of any monitored breathing characteristics. J.A. 1443 (Respironics’s claim 

chart accusing the Commercial Device of employing a “predetermined pressure profile 

‘bath-tub’ shape”); id. 2334, 2420. Under our modified construction of “shape,” 

Respironics’s evidence may raise a genuine issue of material fact. We therefore vacate 

the grant of summary judgment with respect to noninfringement of the ’575 patent and 

remand the issue for consideration by the district court in the first instance under the 

modified construction. 

e. Disclaimer of CPAP and Bi-level Therapy 

On cross-appeal, Invacare challenges the district court’s claim construction of the 

’802, ’193, and ’575 patents, which Invacare argues should be construed to expressly 

disclaim CPAP and Bi-level therapy from the scope of the claims. Because the district 

court found no infringement of these patents, Invacare’s cross-appeal admittedly seeks 

only “a second ground for non-infringement.” Cross-Appellant’s Br. at 1. This is an 

improper cross-appeal. See Chiron Corp. v. Genentech, Inc., 363 F.3d 1247, 1252 

(Fed. Cir. 2004) (“A cross-appeal is only proper if ‘a party seeks to enlarge its own rights 

2008-1164, -1193 13 
under the judgment or to lessen the rights of its adversary under the judgment.’”) 

(quoting Bailey v. Dart Container Corp. of Mich., 292 F.3d 1360, 1362 (Fed. Cir. 2002). 

We shall therefore treat Invacare’s claim construction argument as an alternative 

ground for affirming the judgment of noninfringement, and shall disregard Invacare’s 

noncompliant Reply Brief on this issue. See Chiron, 363 F.3d 1252 (“Although styled as 

a cross-appeal, this court treats this claim construction issue as an alternative ground 

for affirming the judgment.”). Moreover, because we have affirmed, supra, the judgment 

of noninfringement of the ’802 and ’193 patents, we shall limit our review to the 

’575 patent. 

Having considered Invacare’s argument, we decline to read an express 

disclaimer into the claims, but nevertheless modify the construction of the term 

“predetermined pressure profile” in claims 21 and 43 of the ’575 patent to reflect the 

way this term was later used on summary judgment. Originally, Invacare had urged the 

district court to construe the term to require, among other things, that the pressure 

profile “is used to reduce the CPAP or bi-level pressure.” J.A. 1441 (chart of claim 21); 

id. 1465 (chart of claim 43). That construction was never expressly adopted in the 

Claim Construction Order. Id. at 25 (construing “predetermined pressure profile” only 

with regard to means-plus-function language). Later, on summary judgment, the district 

court apparently adopted Invacare’s earlier proposed construction, stating 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.” Respironics, 511 F. Supp. 2d. at 603. On that basis alone, the district court 

held that claims 21 and 43 were not anticipated by two prior art patents. Id. 

2008-1164, -1193 14 
Respironics does not dispute the district court’s summary judgment interpretation, 

presumably because doing so would jeopardize the validity rulings. We agree with the 

district court’s summary judgment interpretation and find it to be entirely consistent with 

the way the term is used throughout the specification. E.g., ’575 patent col.20 ll.20-25 

(distinguishing “predetermined pressure profile” from straight-line CPAP); id. col.21 

ll.12-18 (distinguishing it from straight-line Bi-level EPAP). Thus, in order to maintain 

consistent claim constructions for both validity and infringement, we shall modify the 

construction of “predetermined pressure profile” to require, as the district court later did, 

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.” Respironics, 511 F. Supp. 2d. at 603. See Kim v. ConAgra Foods, 

Inc., 465 F.3d 1312, 1324 (Fed. Cir. 2006) (“The same claim construction governs for 

validity determinations as for infringement determinations.”). 

Despite the above modification, we nevertheless deny Invacare an alternative 

ground for affirming the grant of summary judgment of noninfringement of the 

’575 patent. Invacare’s noninfringement argument is premised on the assertion that the 

Commercial Device is a standard CPAP device whose pressure remains constant. That 

fact, however, is in dispute. See J.A. 2975, Respironics’s Opp. Def.’s Mot. Partial 

Summ. J. 26 (“[H]owever, the accused device is not a standard CPAP device.”) 

(emphasis in original). Invacare’s own User Manual states that the Commercial Device 

“decreas[es] the pressure that the patient must exhale against” and contains “three (3) 

settings allow[ing] the user to adjust the extent of the pressure drops.” J.A. 5323. The 

User Manual goes on to explain that, in addition to the three adjustable settings, the 

2008-1164, -1193 15 
device “can be set for standard CPAP operation.” Id. The presence of the other three 

settings creates a genuine issue of material fact as to whether the Commercial Device 

can only operate as a standard CPAP device. We therefore conclude that Invacare’s 

CPAP argument does not provide an alternative basis to affirm the grant of summary 

judgment of noninfringement of the ’575 patent. 

2. Tradeshow Device 

We next turn to Invacare’s cross-appeal of the jury’s finding that the Tradeshow 

Device infringed claims 29, 30, and 32 of the ’517 patent. 

a. Claim Construction of “controlling” 

Invacare challenges the district court’s construction of the “controlling” step in 

claim 29 of the ’517 patent, which the district court declined to interpret as a step-plusfunction limitation under 35 U.S.C. § 112 ¶ 6. Claim Construction Order at 34-35. The 

“controlling” step reads: 

controlling a pressure of the flow of breathing gas delivered 

to a patient based on a 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 the 

patient during at least a portion of the expiratory phase 

varies with fluctuations of the fluid characteristic. 

Without pointing to anything in the claim language itself that would dictate construction 

under § 112 ¶ 6, Invacare relies entirely on the prosecution history. Specifically, 

Invacare asserts that Respironics urged the examiner to interpret the “controlling” step 

as a step-plus-function limitation and that the examiner adopted this interpretation. 

Neither assertion is persuasive. 

First, Respironics never urged the examiner to apply § 112 ¶ 6 to method 

claim 29 (then-claim 73). When that claim was added during prosecution, together with 

2008-1164, -1193 16 
apparatus claim 24 (then-claim 68), the pending application already included apparatus 

claim 1 (then-claim 45) and method claim 9 (then-claim 53). J.A. 3790-801. Both 

apparatus claims recite a “processing means . . . for producing a command signal,” and 

both method claims recite “controlling a pressure of the flow of breathing gas delivered 

to a patient.” Notably, the apparatus limitations are written in “means for” format; by 

contrast, the method steps lack the words “step for,” thus triggering a presumption that 

§ 112 ¶ 6 does not apply to the method steps. See Generation II Orthotics Inc. v. Med.

Tech. Inc., 263 F.3d 1356, 1368 (Fed. Cir. 2001) (stating that “there is a presumption 

that . . . limitations are not subject to section 112, paragraph 6” when they do not use 

the words “means for” or “step for”). When Respironics added new claims 68 and 73 

(now 24 and 29, respectively), Respironics told the examiner that “[n]ew independent 

claims 68 and 73 are similar to existing independent claims 45 and 53” (now 1 and 9, 

respectively). J.A. 3788. Although Invacare now seizes upon Respironics’s “similar to” 

language in this statement, it is clear, based on the above comparison of common 

terms, that Respironics was referring to the common language used respectively in the 

two apparatus claims (“processing means . . . for producing a command signal”) and in 

the two method claims (“controlling a pressure of the flow of breathing gas delivered to 

a patient”), not to any alleged similarity between apparatus and method claims. Thus, 

contrary to Invacare’s assertion, Respironics did not urge the examiner to import a 

meaning under § 112 ¶ 6 from the apparatus claims into the method claims. 

Second, the examiner never adopted any step-plus-function interpretation. In the 

reasons for allowance, the examiner set forth the various limitations of the apparatus 

claims, referring to the “processing means” limitation in the apparatus claims, but not 

2008-1164, -1193 17 
the “controlling” step in the method claims. J.A. 3806. After setting forth the apparatus 

limitations, the examiner referred to the “abovementioned” (apparatus) limitations only 

as “means plus function” limitations. Id. (emphasis added). Nowhere in the reasons for 

allowance does the examiner mention the patent’s “controlling” steps, or refer to them 

as step-plus-function limitations. Accordingly, we reject Invacare’s argument that the 

prosecution history compels a different construction. 

b. Exclusion of Noninfringement Opinion 

Invacare asks us to vacate the jury’s verdict regarding the Tradeshow Device 

because the district court ruled that Invacare could not introduce into evidence a prior 

opinion by Respironics’s sole testifying witness, who had opined that the Commercial

Device does not infringe the ’517 patent. The district court sustained Respironics’s 

objection that this evidence was “[i]rrelevant,” J.A. 220, which we interpret as an 

exclusion under Rule 402 of the Federal Rules of Evidence (“Evidence which is not 

relevant is not admissible.”). “We review a district court’s evidentiary rulings under the 

law of the regional circuit.” Proveris Scientific Corp. v. Innovasystems, Inc., 536 F.3d 

1256, 1267 (Fed. Cir. 2008). The Third Circuit reviews the district court’s evidentiary 

rulings for abuse of discretion. United States v. Williams, 458 F.3d 312, 315 (3d Cir. 

2006). 

Because the sole issue at trial was infringement by the Tradeshow Device, we 

see no abuse of discretion in the district court’s decision to exclude the noninfringement 

opinion regarding the Commercial Device. Other available evidence shows that these 

two devices operate quite differently. For example, Invacare’s own product manager, 

Ms. Hanley, testified that she had detected deep exhalation unloading when she used 

2008-1164, -1193 18 
the Tradeshow Device, but detected virtually none with the Commercial Device. J.A. 

2323. Because independent claim 29 requires that the accused device provide 

breathing gas whose pressure “varies with fluctuations of the fluid characteristic,” the 

Commercial Device’s lack of appreciable variations in unloading (in contrast to that of 

the Tradeshow Device) would have been a critical difference for purposes of 

infringement. Given this key difference, the district court did not abuse its discretion in 

concluding that noninfringement by the Commercial Device was not probative of 

whether the Tradeshow Device infringed. See Fed. R. Evid. 401 (defining “relevant 

evidence” as “evidence having any tendency to make the existence of any fact that is of 

consequence to the determination of the action more probable or less probable than it 

would be without the evidence”). 

Invacare’s reliance on Petree v. Victor Fluid Power, Inc., 887 F.2d 34 (3d Cir. 

1989), is misplaced. Evidence in that case was relevant under Rule 402 but was 

excluded by the district court under Rule 403.1

 Petree, 887 F.2d at 37-38. The appeal 

there focused solely on admissibility under Rule 403. Id. at 40-41 (holding that the 

evidence was admissible for impeachment purposes). Here, by contrast, the district 

court sustained Respironics’s objection that the noninfringement opinion was 

“[i]rrelevant.” J.A. 220. Because we affirm this ruling under Rule 402, the parties’ 

arguments regarding unfair prejudice and jury confusion are, themselves, irrelevant. 

 

1

 Federal Rule of Evidence 403 provides, with emphasis added, “Although 

relevant, evidence may be excluded if its probative value is substantially outweighed by 

the danger of unfair prejudice, confusion of the issues, or misleading the jury, or by 

considerations of undue delay, waste of time, or needless presentation of cumulative 

evidence.” 

2008-1164, -1193 19 
c. JMOL 

Invacare appeals the denial of its JMOL motion, asserting that the jury’s verdict 

regarding the Vscale variable used in the Tradeshow Device did not amount to a finding 

of infringement of the ’517 patent. We review the denial of a JMOL motion under the 

law of the regional circuit. 800 Adept, Inc. v. Murex Sec., Ltd., 539 F.3d 1354, 1366 

(Fed. Cir. 2008). In this regard, the Third Circuit asks “whether viewing the evidence in 

the light most favorable to the nonmovant and giving [the nonmovant] the advantage of 

every fair and reasonable inference, there is insufficient evidence from which a jury 

reasonably could reach the conclusions that it did.” Rinehimer v. Cemcolift, Inc., 292 

F.3d 375, 383 (3d Cir. 2002) (internal quotation marks omitted). 

We conclude that Invacare’s JMOL motion was properly denied. In that motion, 

Invacare argued that the question sent to the jury was not dispositive of infringement 

because it pertained only to a single claim element, and that there was no finding as to 

all other claim elements.2 The district court held that Invacare had waived this 

argument because it had not been raised (and no missing claim elements had been 

identified) in opposition to Respironics’s motion for summary judgment of infringement. 

JMOL Opinion at 10-11. Moreover, the district court held that Invacare had a duty of 

candor to come forward and help the court identify any remaining factual issues, rather 

than permit the court to conduct the entire proceeding on an issue the court thought was 

the sole issue in dispute. Id. at 11-12. 

 

2

 The question on the verdict form asked, “Has Respironics proven by the 

preponderance of the evidence that the Vscale variable in the Unloading Equation 

converts valve position information into flow rate units, that is, the volume of breathing 

gas moving per unit of time?” The jury checked “YES,” above “Respironics wins.” J.A. 

2183. 

2008-1164, -1193 20 
We agree: “Counsel must remember that they are not only advocates for their 

clients; they are also officers of the court and are expected to assist the court in the 

administration of justice, particularly in difficult cases involving complex issues of law 

and technology.” Allen Eng’g Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1356 (Fed. 

Cir. 2002). In this case, the district court went to great lengths to understand a complex 

algorithm and to distill the myriad issues down to those issues in material dispute. The 

district court identified a single factual issue—unit conversion by the Vscale variable—

which precluded entry of summary judgment and which would be resolved by a jury. 

Respironics, 511 F. Supp. 2d. at 598 (“If it does [convert valve position information into 

flow rate units], then defendant’s trade show device infringed this patent. If it does not, 

then defendant’s trade show device did not infringe this patent.”). In response, Invacare 

filed a motion for reconsideration that was focused solely on the Vscale variable, nowhere 

addressing any other claim elements. When the district court denied this motion, it 

again stated that the Vscale variable was the sole issue for trial. Later, at an August 2007 

status conference, both parties agreed that the only way to bring the infringement case 

to a close was for a jury to answer the question regarding the Vscale variable. See JMOL 

Opinion at 7-8 (recounting history of case). Invacare never filed any motion in limine

indicating that there were additional issues for trial. Nor did it so indicate in either its 

proposed jury instruction or its proposed verdict form. Six weeks after the August 2007 

status conference, and a mere three weeks before trial was scheduled to begin, 

Invacare stated that it wanted to present its new noninfringement defense, but again 

failed to identify any particular claim element that was missing from the Tradeshow 

Device. Id. at 9. Under these circumstances, we agree with the district court that 

2008-1164, -1193 21 
Invacare should not be permitted to overturn a judgment of infringement based on claim 

limitations that Invacare itself apparently conceded were met. 

B. Anticipation 

Invacare appeals the grant of Respironics’s motion for summary judgment, which 

sought a determination that claims 21 and 43 of the ’575 patent and claims 29, 30, and 

32 of the ’517 patent are not anticipated by a publication authored by Dr. Magdy Younes 

et al., titled “An apparatus for altering the mechanical load of the respiratory system,” 62 

J. Appl. Physiol. 2491 (1987) (“the Younes Article”). We review a district court’s grant of 

summary judgment de novo. Leggett & Platt, Inc. v. VUTEk, Inc., 537 F.3d 1349, 1352 

(Fed. Cir. 2008). “A patent is invalid as anticipated if every limitation in a claim is found 

in a single prior art reference.” Nystrom v. TREX Co., 424 F.3d 1136, 1149 (Fed. Cir. 

2005). “While anticipation is a question of fact, ‘it may be decided on summary 

judgment if the record reveals no genuine dispute of material fact.’” Leggett & Platt, 537 

F.3d at 1352 (quoting Golden Bridge Tech., Inc. v. Nokia, Inc., 527 F.3d 1318, 1321 

(Fed. Cir. 2008)). 

We agree with Invacare; the grant of summary judgment was improper because 

neither Respironics nor the district court identified any claim limitation that was not 

disclosed in the Younes Article. When Respironics moved for summary judgment, it 

identified the following distinctions between the patents and the Younes Article: 

a. The device disclosed [in the Younes Article] does not 

deal with the use of any of the illustrated functions for 

treatment of any particular condition (i.e., matching 

specific function with specific disease states) (id.); 

b. The Younes article discloses a generic apparatus that 

can deliver various desired pressure functions using a 

piston as the gas delivery source (id.); and 

2008-1164, -1193 22 
c. The apparatus has no means to detect and compensate 

for leaks (id.). 

J.A. 1535. The problem with this list is that none of the cited distinctions is reflected in 

the claims of the patents. The first distinction is of no consequence because the claims 

of the ’575 and ’517 patents are not limited to the treatment of any particular condition 

or disease state, but generally recite “delivering pressurized breathing gas to an airway 

of a patient.” The second misses the mark because the claims do not necessarily 

preclude using pistons as the gas delivery source. As for the third, leak detection is not 

recited in the claims. Respironics has never explained how these alleged differences 

relate to the claims of the ’575 and ’517 patents. 

Moreover, in opposition to Respironics’s motion, Invacare submitted several 

claim charts purporting to match each claim limitation with a specific disclosure in the 

Younes Article. J.A. 4528 (Def.’s Br. Opp. Pl.’s Mot. Partial Summ. J. 7); id. 806-09 

(charts of ’575 patent); id. 816-18 (charts of ’517 patent). The district court’s summary 

judgment opinion, however, does not refer to these charts; nor does the opinion explain 

which claim limitation(s) are missing in the Younes Article. We take no view on the 

technical merits of Invacare’s claim charts, but note that the district court on remand 

should determine whether Invacare has shown the existence of a genuine issue of 

material fact. See Freedman Seating Co. v. Am. Seating Co., 420 F.3d 1350, 1363 

(Fed. Cir. 2005) (stating that an accused infringer “only needed to show the existence of 

a genuine issue of material fact in order to preclude summary judgment for” the 

patentee) (citing Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 252 (1986)). We 

therefore reverse the grant of summary judgment of validity with regard to claims 21 and 

43 of the ’575 patent and claims 29, 30, and 32 of the ’517 patent. Although the district 

2008-1164, -1193 23 
court erred by granting summary judgment on the grounds set forth in Respironics’s 

motion, Respironics may move again for summary judgment more clearly setting forth 

whatever patentable differences it believes exist over the Younes Article. 

C. Additional Claim Constructions 

Respironics requests that we construe various other terms that were not 

determinative in the district court’s infringement analyses. We have, on occasion, 

exercised our discretion to construe such terms in the interest of judicial efficiency. 

Here, we decline to construe any additional terms in the ’802 and ’193 patents, because 

the district court correctly found no infringement of those patents under the term 

“selected higher and lower pressure magnitudes,” and because those patents do not 

present any remaining issues on remand. See Inpro II Licensing, S.A.R.L. v. T-Mobile 

USA, Inc., 450 F.3d 1350, 1352 (Fed. Cir. 2006) (declining to construe additional terms 

where noninfringement was affirmed under dispositive term and where no validity issues 

remained). However, because we have held, supra, that a remand is necessary to 

reconsider both infringement of the ’575 patent and anticipation of the ’575 and ’517 

patents, we shall review the disputed claim constructions of those patents. See Chimie 

v. PPG Indus., Inc., 402 F.3d 1371, 1375 n.2 (Fed. Cir. 2005) (construing second term 

after vacating summary judgment of noninfringement under first term, where “the 

construction of this second disputed term was not dispositive to the district court’s 

decision, but may be relevant on remand”). 

1. Claim Construction of “fluid characteristic” 

Respironics argues that “fluid characteristic” in the claims of the ’575 and ’517 

patents should not be limited to just “flow rate,” because the specification also discloses 

2008-1164, -1193 24 
“volume” as a fluid characteristic. See ’575 patent col.23 ll.65-67 (“said fluid 

characteristic is one of a rate of said flow of gas within said patient interface and a 

volume of gas to be exhaled”) (emphases added). We agree that the claim construction 

should be modified to include volume. Although volume can be calculated from flow 

rate, such a calculation would require additional steps to be performed: measuring time 

and then multiplying time by average flow rate (or integrating a time-varying flow rate). 

Aside from volume, however, Respironics points to no other fluid characteristic 

disclosed in the specification. Nor do we see any. Thus, properly construed, “fluid 

characteristic” means “flow rate or volume.” 

2. Claim Construction of “corresponding to” 

Respironics also contends that the phrase “corresponding to” means something 

more than just “equal to.” For the reasons stated above, our review here is limited to 

the term’s use in the “sensing” step of the ’517 patent’s claim 29, which recites: “sensing 

a fluid characteristic associated with the flow of breathing gas and outputting a signal 

corresponding to the fluid characteristic.” (emphasis added). In this context, we agree 

with Respironics that “corresponding to” is broader than “equal to.” This particular step 

recites a “fluid characteristic,” which we have construed, supra, to mean flow rate or 

volume. It would make no sense, then, to say that a flow rate or volume is “equal to” a 

signal, when the specification speaks of electrical signals that are typically measured in 

units of voltage or current. Two such things cannot be equal to one another. Rather, it 

is more proper to say that the two are functionally related to one another: the magnitude 

of the outputted signal varies as a function of the magnitude of the sensed flow rate or 

volume. These two things “correspond to” one another in the sense that they are 

2008-1164, -1193 25 
2008-1164, -1193 26 

“similar, comparable, and/or matching”—the term’s plain and ordinary meaning. 

Because the modified construction is broader than the construction under which 

infringement was found, our modification of “corresponding to” does not disturb the 

finding of infringement. 

III. CONCLUSION 

For the foregoing reasons, we affirm the judgment in all but two respects: we 

vacate the grant of summary judgment of noninfringement as to claims 21, 43, and 44 of 

the ’575 patent; and reverse the grant of summary judgment of validity as to claims 21 

and 43 of the ’575 patent and claims 29, 30, and 32 of the ’517 patent. We remand the 

case for further proceedings consistent with this opinion. 

AFFIRMED-IN-PART, REVERSED-IN-PART, VACATED-IN-PART, AND REMANDED