NOTE: This dispos ition is nonprecedential.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. Tabachnickand 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United States District Court for the Western District of Pennsylvania Judge Gary L. LancasterNOTE: This disposition is nonprecedential.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 noninf ringement by Invacare, Inc. (“I nvacare”) of Respironics’s U.S. Patents No. 5,148,802 (“t he ’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 judgm ent 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 th e ’802 and ’193 patents and found them not infringed, we affirm the judgment with respect to those two patents. Because the districtcourt 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 t he ’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 tr eating OSA is the use of a continuous positive airway pressure (“CPAP”) device to s upply a constant pressure of air to the patient to keep the patient’s airway open. To ease pati ent discomfort, Respironics developed and patented a variet y of apparatuses and met hods that detect when the patient is exhaling and then lower the pressure of inco ming 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-l evel therapy delivers a higher pressure during inhalation and a lower pressure during exhalation. These higher and lower pressures are referred to as inhalation pos itive 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. Th e 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 2patient’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 t he 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, ’1 93, and ’575 patents; and that Invacare’s demonstration of a prototype device (“the Trades how Device”) infringed the ’517 patent. Following a Markman hearing, the district court issu ed a claim construction order in which it construed various cont ested 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 distri ct 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 favo r 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 V scale 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 a ffimative, a jury concluded that the Tradeshow Device literally infringed cl aims 29, 30, and 32 of the ’517 patent. Following post-verdict

2008-1164, -1193 3briefing, 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 bifurcat ed damages portion of the case pending resolution of any appeal. Judgmentat 1. Respironics appealed from t he judgment on issues relating to noninfringement of the ’802, ’193, and ’575 patents. Invacare cross-appealed on issues relating to infringement of the ’517 patentand validity of the ’575 and ’517 patents. Because the judgment “is final as to a ll issues except for a dete rmination 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 tw o-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 constr uction 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 def erence when decided on summary judgment,

2008-1164, -1193 4Bd. 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 districtcourt properly concluded, on summary judgment, that the Commercial Device did no t infringe the ’802, ’193, and ’575 patents. a. Claim Construction of “selected higher and lower pressure magnitudes” Respironics challenges the district c ourt’s construction of the term “selected higher and lower pressure magnitudes” in me thod 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 parti es do not urge different constructions for different claims. Claim 3 of the ’802 pat ent 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 in stantaneous flow rate of said breathing gas flowing between said source and the airway of such a patient; [3] continually processing sele cted 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 hig her 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 t he pressure magnitudes to be “chosen prior to

2008-1164, -1193 5operation of the computer circ uitry that is used to dete rmine 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 fo rth 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 occur ences 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 littl e insight as to when the pressure magnitudes in step one are “selected.” Because steps two and three must be performed “continually,” it cannotbe said that the claim languag e 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 perform ed 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 st ep one[ ] . . . must occur before step four[ ] . . . .). Thus, in a method claim, a step that recites “s aid” 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 6We 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 specif ication discloses only one way to select the higher and lower pressure magnitudes: via pr essure 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 pr essed at oral argument to i dentify an embodiment in the specification where the pr essure 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 pat ents that the lower pressure magnitude can somehow be ch anged breath by breath.” Claim Construction Order at 2008-1164, -1193 719. The preselection of higher and lower pre ssure magnitudes is notmerely a preferred embodiment; it is the pat ents’ only embodiment. The prosecution history also supports th e district court’s construction. As originally filed, claims 3 and 24 of the ’802 patent used the wo rd “alternately” in place of the now-disputed word “selected.” In respon se 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 explanati on for this amendment. But, to whatever extent the word “alternately” might have pe rmitted selection of pressure magnitudes on a breath-by-breath basis, a capability nowher e disclosed in the patents, Respironics’s decision to replace “alternately” with “selec ted” forecloses the broader construction. Thus, we conclude that the district c ourt 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 us ed to determine whether the patient is inhali ng 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 wr itten, the language of the clai m, 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 corre ctly determined that the Commercial Device does not infringe the ’8 02 and ’193 patents under the district court’s proper claim construction. As previously di scussed, the claims r equire both higher and lower pressure magnitudes to be selected atthe outset of operation. The Commercial Device, however, preselects only the highe r pressure magnitude when operated under

2008-1164, -1193 8normal conditions, not the lower magnitude. Respironics , 511 F. Supp. 2d at 596 (quoting Respironics’s expert as admitting t hat “the magnitude of unl oading is a function of the [SoftX] setting . . . and peak inspiratory flow of the preceding inspiration (patientdetermined quantity)”). Becaus e the Commercial Device does not perform every step of the asserted claims, we agree wit h the district court that the Commercial Device does not infringe t hese patents. Respironics argues, alternat ively, that operating the Commercial Device in socalled “Standby Mode” might still infringe the ’802 and ’193 patent s. Although the district court’s opinion did not expressl y 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 Declarati on for the assertion that the ΔV variable in the Unloading Equation is given a predetermined value in Stand by 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 brie f, which expressly defines the ΔV variable as “the change in valve position defin ed by (Peak – Median) fo r the inhalation of the previous breathing cycle .” Appellant’s Br. 14 (emphasis added). Because ΔV presupposes the detection of a previous breat hing cycle, this operation can not infringe. A similarly noninfringing def inition of ΔV is found in the computer c ode 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 9there is no genuine issue of material fact that ΔV requires at least one prior breath to have been detected, operating the Commerc ial 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 constructi on 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 i ndependent of any moni tored respiratory characteristics of such a patient.” (em phasis added). The district court construed “shape” to mean “magni tude and duration.” Claim Construction Order at 26. We agree with Respironics that this construction is undul y 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 refl ective of the way the pressure changes over time, independent of the particular m agnitude 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 direct ly 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). Becaus e parent claims 21 and 43 recite that the profile’s “shape” is set independent of any m onitored 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 10Like the claims, the specification refe rs separately to each of these three characteristics: “[T]he defi ned pressure profile has a shape that generally corresponds to a patient’s normal flow,” ’575 patent col.20 ll.23-25 (empha sis 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 be low, shows three pressure profiles (P 1 , P 2 , P 3 ) with different magnitudes (M 1 , M 2 , M 3 ) and different durations (D 1 , D 2 , D 3 ). But, despite having different magnit udes and durations, al l three pressure profiles have the same general shape (a le ft-of-center “U”-shape), which “drops off quickly at the start of expi ration then rises slowly.” Id. col.20 ll.63-64.

The specification thus illustrates that a pre ssure profile is defined by its duration, magnitude, and shape. These three characterist ics—duration, magnitude, and shape— are interrelated, but are different factors in the overall makeup of th e pressure profile. The profile’s duration (e.g., D 1 , D 2 , D 3 in Fig. 11B) is the time difference measured from the start to the end of the profile . The profile’s magnitude (e.g., M 1 , M 2 , M 3 in Fig. 11B) is the pressure difference between the prof ile’s maximum and minimum pressures. But duration and magnitude alone do not define how quickly or slowlythe profile drops off to

2008-1164, -1193 11arrive at the minimum pressure , how long it might stay atany 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 prof ile. As shown in Figure 11B, the profile’s sha pe is the contour along whic h the pressure changes over time, independent of the particular magni tude and duration of the profile. The prosecution history does not contradict the claims or the s pecification. 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. . . . Further more, it would not be obvious to modify the teachings of [Servi dio] so that the shape of the expiratory wave form model is not based on the monitored respiratory characteristi cs of the patient.” J.A. 3719 (emphases added). This statement says no thing about the waveform’s m agnitude 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 th e 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 va lues 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 clai ms 21, 43, and 44 of

2008-1164, -1193 12the ’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 pat ient’s respiratory characteristics. Respironics , 511 F. Supp. 2d. at 587. Th is 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 em ploying a “predetermi ned 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 judgmentwith respect to noninfringement of the ’575 patent and remand the issue for consideration by the di strict court in the first instance under the modified construction. e. Disclaimer of CPAP and Bi-level Therapy On cross-appeal, Invacare challenges the dist rict 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.” Cr oss-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 s eeks to enlarge its own rights

2008-1164, -1193 13under the judgment or to less en the rights of its adver sary 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 noninf ringement, 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.”). Mo reover, 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 argum ent, 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 judgm ent. 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 constr uction 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 cons tant pressure of CPAP or the reduced EPAP pressure of bi-level therapy once t he 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 antic ipated by two prio r art patents. Id.

2008-1164, -1193 14Respironics does not dispute the district court’s summary judgment interpretation, presumably because doing so woul d jeopardize the validity ru lings. We agree with the district court’s summary judgmen t interpretation and find it to be entirely consistent with the way the term is used throughout the spec ification. 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 st raight-line Bi-level EPAP). Thus, in order to maintain consistent claim constructions for both va lidity 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 pre ssure of CPAP or the reduced EPAP pressure of bi-level therapyonce 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 argumentis 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 Us er Manual states that the Commercial Device “decreas[es] the pressure t hat the patient must exhale agai nst” and contains “three (3) settings allow[ing] the user to adjust the ext ent of the pressure dr ops.” J.A. 5323. The User Manual goes on to explain that, in addition to the three adjustable settings, the

2008-1164, -1193 15device “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 alternat ive basis to affirm the grant of summary judgment of noninfringem ent 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 c onstruction of the “cont rolling” 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 lan guage itself that would dictate construction under § 112 ¶ 6, Invacare re lies entirely on the pr osecution history. Specifically, Invacare asserts that Respir onics urged the examiner to in terpret the “controlling” step as a step-plus-function limitation and that the examiner adopted th is interpretation. Neither assertion is persuasive. First, Respironics never urged the exami ner to apply § 112 ¶ 6 to method claim 29 (then-claim 73). When that claim was added during prosec ution, together with 2008-1164, -1193 16apparatus 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 mean s . . . for producing a command signal,” and both method claims recite “controlling a pressure of the flow of br eathing gas delivered to a patient.” Notably, the apparatus limitations are written in “means for” format; by contrast, the method steps lack the words “st ep for,” thus triggeri ng 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”). Wh en Respironics added new claims 68 and 73 (now 24 and 29, respectively), Respironics told the exami ner that “[n]ewindependent claims 68 and 73 are similar to existing ind ependent 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 t he 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 all eged similarity between apparatu s and method claims. Thus, contrary to Invacare’s assertion, Respir onics did not urge the ex aminer to import a meaning under § 112 ¶ 6 from the apparatus claims into the method claims. Second, the examiner never adopted any st ep-plus-function interpretation. In the reasons for allowance, the examiner set fo rth the various limitations of the apparatus claims, referring to the “processing means” lim itation in the apparatus claims, but not

2008-1164, -1193 17the “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 m ention the patent’s “controlling” steps, or refer to them

as step -plus-function limitations. Accordingly, we reject In vacare’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 TradeshowDevice 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 t he ’517 patent. The district court sustained Respironics’s objection that this evidence was “[i]rrelevan t,” J.A. 220, which we interpret as an exclusion under Rule 402 of the Federal Rules of Ev idence (“Evidence which is not relevant is not admissible.”). “We review a district court’s evidentiary rulings under the law of the regi onal 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 in fringement by the Tradeshow Device, we see no abuse of discretion in the district co urt’s decision to exclud e the noninfringement opinion regarding the Commercia l 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 detec ted deep exhalation unloading when she used

2008-1164, -1193 18the Tradeshow Device, but detected virtually none with the Commercial Device. J.A. 2323. Because independent claim 29 require s that the accused device provide breathing gas whose pressure “varies with fluct uations of the fluid characteristic,” the Commercial Device’s lack of appreciable variati ons in unloading (in co ntrast to that of the Tradeshow Device) woul d have been a critical difference for purposes of infringement. Given this key difference, the district court did not abuse its discretion in concluding that noninfringem ent by the Commercial Devi ce was not probative of whether the Tradeshow Device infringed. See Fed. R. Evid. 401 (defining “relevant evidence” as “evidence having any tendency to ma ke the existence of anyfact that is of consequence to the determination of the acti on 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 ca se was relevant under Rule 402 but was excluded by the districtcourt 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 (holdi ng 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 affi rm this ruling under Ru le 402, the parties’ arguments regarding unfair prej udice and jury confusion are, themselves, irrelevant.

1 Federal Rule of Evidence 403 provides, with emphasis added, “ Although relevant , evidence may be excluded if its probativ e 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 19c. JMOL Invacare appeals the denial of its JMOL moti on, asserting that the jury’s verdict regarding the V scale variable used in the Tradeshow De vice did not amount to a finding of infringement of the ’517 pat ent. We review t he 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 “w hether viewing the evidence in the light most favorable to the nonmovant and giving [the nonmovant] the advantage of every fair and reasonable infer ence, 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 t he 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 t hat 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, t he district court held thatInvacare had a duty of candor to come forward and he lp the court identify any rema ining 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 a sked, “Has Respironics proven by the preponderance of the ev idence that the V scale variable in the Unloading Equation converts valve position information into flow ra te 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 20We agree: “Counsel must remember that they are not only advocates for their clients; they are also office rs of the court and are expect ed to assist the court in the administration of justice, particularly in diffi cult 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 we nt 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 fa ctual issue—unit conversion by the V scale 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 po sition 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 V scale variable, nowhere addressing any other claim el ements. When the district court denied this motion, it again stated that the V scale 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 ans wer the question regarding the V scale variable. See JMOL Opinion at 7-8 (recounting history of case). Invacare never filed any motion in limine indicating that there were additi onal issues for trial. Nor did it so indicate in either its proposed jury instruction or it s proposed verdict form. Six weeks after the August 2007 status conference, and a mere three wee ks before trial was scheduled to begin, Invacare stated that it wanted to pres ent its new noninfringem ent defense, but again failed to identify any particular claim el ement that was missing from the Tradeshow Device. Id. at 9. Under these circumstances, we agree with the dist rict court that

2008-1164, -1193 21Invacare should not be permitt ed to overturn a judgment of infringement based on claim limitations that Invacare it self 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 me chanical load of the respiratory system,” 62 J. Appl. Physiol. 2491 (1987) (“the Younes Arti cle”). We review a di strict 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 antic ipated if every limitati on 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 genui ne 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; t he grant of summary judgm ent was improper because neither Respironics nor the district court i dentified any claim limitation that was not disclosed in the Younes Article. When Respironics moved for summary judgment, it identified the following dist inctions between the patent s 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 specif ic disease states) (id.); b. The Younes article disclos es a generic apparatus that can deliver various desired pressure functions using a piston as the gas deliv ery source (id.); and

2008-1164, -1193 22c. The apparatus has no means to detect and compensate for leaks (id.). J.A. 1535. The problem wit h this list is that none of the ci ted distinctions is reflected in the claims of the patents. The firs t distinction is of no c onsequence because the claims of the ’575 and ’517 patent s are not limited to the treatment of any particular condition or disease state, but generally recite “delivering pressu rized 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 ne ver 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 lim itation with a specific disclosure in the Younes Article. J.A. 4528 (Def.’s Br. Opp. Pl.’s Mot. Part ial 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 s hown 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 infr inger “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 judgm ent of validity with r egard to claims 21 and 43 of the ’575 patent and claims 29, 30, and 32 of the ’517 pat ent. Although the district
2008-1164, -1193 23court erred by granting summary judgment on the grounds set forth in Respironics’s motion, Respironics may move again for summa ry judgment more cl early setting forth whatever patentable differences it belie ves 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 infr ingement analyses. We have, on occasion, exercised our discretion to construe such terms in the interest of ju dicial efficiency. Here, we decline to construe any additional terms in the ’ 802 and ’193 patents, because the district court correctly found no infr ingement of those patents under the term “selected higher and lower pressure magni tudes,” 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 affi rmed under dispositive term and where no validity issues remained). However, because we have held, supra , that a remand is necessary to reconsider both infringementof the ’575 patent and anti cipation of the ’575 and ’517 patents, we shall review the disputed cl aim 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 noninf ringement 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 characterist ic” in the claims of the ’575 and ’517 patents should not be limited to just “flow rate,” becaus e 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 flowof 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 calc ulated from flow rate, such a calculation woul d 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 ’5 17 patent’s claim 29, which recites: “sensing a fluid characteristic associated with the fl ow 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 electr ical 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 func tionally 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 252008-1164, -1193 26 “similar, comparable, and/or matching”—t he term’s plain and ordinary meaning. Because the modified construction is br oader 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 judgmentof 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-PAR T, VACATED-IN-PART, AND REMANDED