RESMED, INC. vs New York University

PATENT OWNER NEW YORK UNIVERSITY’S NOTICE OF APPEAL TO THE UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT UNDER 37 C.F.R. § 90.2(a)

Final Written Decision: JUDGMENT Final Written Decision Determining All Challenged Claims Unpatentable 35 U.S.C. sec. 318a ORDER Denying Patent Owners Motion to Exclude Paper 48 and Denying Petitioner’s Motion to Exclude Paper 51 37 C.F.R. sec. 42.64c

Patent Owner's Responses to Petitioner's Oral Hearing Objections

Petitioner's Response to Patent Owner's Objections to Oral Hearing Arguments

Patent Owner's Objections to Petitioner's Arguments During the October 2, 2023 Oral Hearing

Petitioner's Oral Hearing Objections

Other: Hearing transcript

Patent Owner's Updated Demonstratives Slide Presentation

Patent Owner's Updated Exhibits List

Patent Owner's Objections to Petitioner's Hearing Demonstratives

Petitioner’s Objections to Patent Owner’s Demonstrative Exhibits for Oral Argument

Petitioner's Updated Exhibit List

Petitioner's Updated Demonstratives

Patent Owner's New York University Demonstrative Slide Presentation

ORDER Granting Patent Owner’s Motions for Admission Pro Hac Vice of Chiara M. Carni 37 C.F.R. 42.10

Petitioner's Updated Exhibit List

Petitioner's Demonstratives

Patent Owner's Updated Mandatory Notices

Updated Power of Attorney for Patent Owner New York University and Designation of Lead and Backup Counsel

Patent Owner's Reply to Petitioner's Opposition to Patent Owner's Motion to Exclude

Petitioner's Reply in Support of its Motion to Exclude Evidence

Patent Owner's Opposition to Petitioner's Motion to Exclude Evidence

Petitioner's Opposition to Patent Owner's Motion to Exclude Evidence

LEAP Practitioner Request and Verification Form (Petitioner)

LEAP Practitioner Request and Verification Form (Patent Owner)

Patent Owner's Motion to Exclude Evidence

Petitioner's Motion to Exclude Evidence

Order: Setting Oral Argument

Patent Owner New York University's Sur-Reply to Petitioner's Reply

Patent Owner's Motion for Pro Hac Vice Admission of Chiara M. Carni

Declaration of Chiara M. Carni In Support of Patent Owner's Motion for PHV Admission

SUPPLEMENTAL SCHEDULING ORDER Modifying Due Date 8 (Oral Argument)

Patent Owner's Objections to Evidence

Petitioner's Request for Oral Argument

Petitioner's Reply to Patent Owner's Response

Prosecution History of U.S. Patent No. 9,168,344

Bates Declaration Corrections

U.S. Patent Nor 7,945,303 to Bates, et al.

McClure, Kristin et al., Classification and Detection of Breathing Patterns with Wearable Sensors and Deep Learning

Declaration of Dr. Jason Kirkness in Support of Petitioner’s Reply to Patent Owner Response

Deposition Transcript of Jason Bates Vol. 1

Deposition Transcript of Jason Bates Vol. 2

File History of U.S. Patent No. 9,108,009

U.S. Patent No. 9,108,009 B2 to Rapoport et al

U.S. Patent No. 9,168,344 B2 to Rapoport et al.

U.S. Patent No. 9,427,539 B2 to Rapoport et al.

U.S. Patent No. 6,988,994 B2 to Rapoport et al.

Douglas, N.J., Control of breathing during sleep, 67 CLINICAL SCIENCE 465

Patent Owner's Request For Oral Argument

Petitioner's Objections to Patent Owner's Evidence

Bates, Ph.D., Jason Hamilton Tunstall PDF Full - Vol. 1

Bates, Ph.D., Jason Hamilton Tunstall PDF Full - Vol. 2

June 21, 2023 Email String from C. Tan re corrections (originally designated Petitioner's Exhibit 1048)

US7945303

Classification and Detection of Breathing Patterns with Wearable Sesnors and Deep Learning

992 Petition - Updated Exhibit List

Petitioner's Notice of Deposition of Dr. Bates

992 Petition - Updated Patent Owner's Mandatory Notices

992 Petition - Updated Patent Owner's Power of Attorney

Patent Owner New York University's Response

Declaration of Dr. Jason Hamilton Tunstall Bates

Curriculum Vitae of Jason H. T. Bates

Cited Publications

Board Email on Friday February 3, 2023, 3:51 PM

U.S. Patent No. 6,398,739 to Sullivan et al.

Signal Acquisition and Conditioning With Low Supply Voltages, Texas Instruments Inc., SLAA018, August 1997

Fifty Years of Signal Processing. The IEEE Signal Processing Society, 1998

N. Wiener. Extrapolation, Interpolation and Smoothing of Stationary Time Series. The Technology Press of The Massachusetts Institute of Technology and John Wiley & Sons, Inc., New York, 1950

Generation of random sequences with jointly specified probability density and autocorrelation functions. Biological Cybernetics. Vol 47, pp. 141-146, 1983

Deposition Transcript of Jason P. Kirkness, Ph.D. – Volume 1

Deposition Transcript of Jason P. Kirkness, Ph.D. – Volume 2

U.S. Patent No. 6,397,845 to Burton (“Burton845”)

Certificate of Type-Volume Limitations

Decision Granting Petitioner’s Unopposed Motion to Substitute Expert and Entering a Revised Scheduling Order

Patent Owner's Objections to Evidence

Patent Owner's Notice of Deposition of Dr. Jason P. Kirkness

ResMed, Inc’s Unopposed Motion To Substitute Expert

Substitute Declaration of Dr. Jason P. Kirkness In Support of Petition For Inter Partes Review

Exhibit 1047 – CV of J. Kirkness

Updated Patent Owner's Mandatory Notices

Updated Patent Owner's Power of Attorney

Patent Owner's Notice of Deposition of Dr. Khosrow Behbehani

Updated Power of Attorney

Order: Granting Petitioners Motions for Admission Pro Hac Vice of Eric E. Lancaster 37 C.F.R. sec. 42.10

Order: Conditionally Granting Petitioners Motions for Admission Pro Hac Vice of Sara L. Townsend 37 C.F.R. sec. 42.10

Notice of Joint Stipulation to Modify Due Dates 1, 2, 3, 5, and 6

Petitioner’s Motion For Pro Hac Vice Admission of Eric E. Lancaster

Declaration of Eric E. Lancaster in Support of Petitioner’s Motion For Pro Hac Vice Admission of Eric E. Lancaster

Petitioner’s Motion For Pro Hac Vice Admission of Sara L. Townsend

Declaration of Sara Townsend in Support of Petitioner’s Motion For Pro Hac Vice Admission of Sara L. Townsend

Petitioner’s Updated Mandatory Notices

Patent Owner's Objections to Evidence

Institution Decision: Grant

Order: Scheduling Order

Patent Owner's Sur-Reply to Petitioner's Reply to Patent Owner's Preliminary Response

Petitioner's Reply to Patent Owner's Preliminary Response

Patent Owner New York University's Corrected Certificate of Service

Patent Owner New York University's Preliminary Response

U.S. Patent No. 6,988,994

Prosecution History of U.S. Patent No. 6,988,994

U.S. Patent No. 7,011,087, Response to Non-Final Rejection (Apr. 4, 2005)

Matthews, Response to Non-Final Rejection (Sept. 16, 2005)

Corrected Petition for Inter Partes Review of U.S. Patent No. 10,384,024

Order: Granting Petitioners Motion to Correct Petition

PATENT OWNER NEW YORK UNIVERSITY'S OPPOSITION TO RESMED INC.'S MOTION TO CORRECT PETITION

JULY 7, 2022 EMAIL TO THE BOARD FROM PETITIONER'S COUNSEL

ResMed Inc.'s Motion to Correct Petition

Ex 1039 Petition Redline

Ex 1040 Nguyen Dec ISO Correction

Ex 1041 Eastly Dec ISO Correction

Order Authorizing Petitioner's Motions to Correct the Petition

Patent Owner's Mandatory Notices

Power of Attorney for Patent Owner New York University

Notice: Notice filing date accorded

U.S. Patent No. 10,384,024 ("'024 patent")

Prosecution History of U.S. Patent No. 10,384,024 ("'024 FH")

Curriculum Vitae of Dr. Khosrow Behbehani ("Behbehani CV")

U.S. Patent No. 5,245,995 to Sullivan et al. ("Sullivan995")

WO 01/05460 to Sullivan ("Sullivan460")

U.S. Patent No. 7,168,429 to Matthews et al. ("Matthews")

U.S. Patent No. 5,490,502 to Rapoport et al. ("Rapoport")

M. Berthon-Jones, "Feasibility of a Self-Setting CPAP Machine," Sleep 16:S120-123 (1993) ("Berthon-Jones 1993")

U.S. Patent No. 5,704,345 to Berthon-Jones ("Berthon-Jones345")

D. Rapoport, "Methods to Stabilize the Upper Airway Using Positive Pressure," Sleep 19(9):S123-S130 ("Rapoport 1996")

C. Sullivan, "Reversal of Obstructive Sleep Apnoea by Continuous Positive Airway Pressure Applied through the Nares," Lancet 1981:1862-5 ("Sullivan 1981")

M. Pressman et al., "Ramp Abuse: A novel Form of Patient Noncompliance to Administration of Nasal Continuous Positive Airway Pressure for Treatment of Obstructive Sleep Apnea,"

U.S. Patent No. 6,484,719 to Berthon-Jones ("Berthon-Jones719")

S. Thompson et al., "Sleep as a Teaching Tool for Integrating Physiology and Motor Control," Advances in Physiology Education (June 2001)

R. Tamisier et al., "Characterization of pharyngeal resistance during sleep in a spectrum of sleep-disordered breathing," J Appl Physiol 89:120-130, 2000 ("Tamisier")

D. Hudgel et al., "Mechanics of the respiratory system and breathing pattern during sleep in normal humans," The American Physiology Society (1984)

M. Craske, "Nocturnal Panic," American Psychological Association 153 (1997)

Teschler, H., et al., "Automated Continuous Positive Airway Pressure Titration for Obstructive Sleep Apnea Syndrome," Am. J. Respir. Crit. Care Med. 54:734-740 (1996)

ResMed, "AutoSet Portable II Plus Overview & Interpretation Guide, Rev. 1," (1999)

ResMed, "Auotset T, Optimal Therapy for your OSA Patients," (2000)

Sunrise Medical, "DeVillibis, AutoAdjust, LT Nasal CPAP System Instructions Guide Model 8054," (1999)

Respironics, "Introducing the REMstar Auto. A simply smarter Smart CPAP" (2002)

ResMed Origins, downloaded from https://document.resmed.com/en-us/documents/articles/resmed-origins.pdf on May 3, 2022.

U.S. Patent No. 7,966,061 to Al-Abed, et al. ("Al-Abed")

WO 03/75991 to Delache ("Delache")

F. Roux, et al., "Continuous Positive Airway Pressure: New Generations," Clinics in Chest Medicine (2003)

V. Hoffstein, et al., "Treatment of Obstructive Sleep Apnea with Nasal Continuous Positive Airway Pressure," Am. Rev. Respir. Dis. (1992)

R. Berry, et al., "The Use of Auto-Titrating Continuous Positive Airway Pressure Treatment of Adult Obstructive Sleep Apnea," (2002)

Declaration of Dr. Khosrow Behbehani

Inter Partes Review Petition of U.S. Patent 10,384,024

Petitioner's Power of Attorney