ResMed Ltd v. Fisher & Paykel Healthcare Ltd

1. Case Identification

• Case #: IPR2016-01716
• Patent #: 8,550,072
• Filed: September 7, 2016
• Petitioner(s): ResMed Limited, ResMed Inc., and ResMed Corp
• Patent Owner(s): Fisher & Paykel Healthcare Limited
• Challenged Claims: 6, 7, and 11

2. Patent Overview

• Title: Apparatus for Delivering Humidified Gases
• Brief Description: The ’072 patent describes an apparatus for delivering humidified gases, such as a continuous positive airway pressure (CPAP) machine. The purported invention is a configuration where the patient outlet tube is located on the main motor housing rather than on the removable humidifier chamber, allowing the chamber to be slid in and out without disconnecting the patient tube.

3. Grounds for Unpatentability

Ground 1: Anticipation of Claim 6 - Claim 6 is anticipated under 35 U.S.C. § 102(b) by Netzer.

• Prior Art Relied Upon: Netzer (International Publication No. WO 1998/04311).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Netzer, published nearly two years before the ’072 patent’s earliest priority date, discloses every element of independent claim 6. Netzer describes a gas supply device for respiratory treatment with a removable liquid container (humidification chamber). Crucially, Netzer’s patient gas outlet is located on the main housing of the device, separate from the humidification chamber. This design allows the liquid container to be inserted and removed via a single sliding motion using guide profiles and grooves, establishing fluid connections automatically without requiring the user to disconnect the patient hose. Petitioner asserted that Netzer explicitly discloses the claimed blower, pressurized gas outlet to the chamber, humidified gas return from the chamber, and patient outlet from the main housing, all configured for single-motion connection.
  • Key Aspects: Petitioner contended the Examiner overlooked this reference during prosecution because the applicant submitted only a non-translated German-language version of Netzer, obscuring its full anticipatory disclosure.

Ground 2: Obviousness of Claim 7 - Claim 7 is obvious over Netzer in view of Levine.

• Prior Art Relied Upon: Netzer (WO 1998/04311), Levine (Patent 5,943,473).
• Core Argument for this Ground:
  • Prior Art Mapping: Dependent claim 7 adds the limitation that the apparatus includes a chamber heater, and the single sliding motion urges the base of the chamber into contact with the heater. Petitioner argued that while Netzer discloses a "heating unit" activated upon insertion of the liquid container, it does not explicitly state that the chamber base contacts the heater. Levine was introduced as it discloses a heated cartridge humidifier where the humidifier cartridge slides into engagement with a heating unit, causing a conductive portion of the chamber’s base plate to make direct thermal contact with the heating surface.
  • Motivation to Combine: A POSITA would combine Netzer with Levine to implement a well-known, conventional, and efficient method of heating the water chamber. Petitioner asserted that arranging a heating plate beneath a water container for conductive heat transfer was ubiquitous in both CPAP devices and common household appliances (e.g., coffee makers). Levine provided a clear and predictable implementation of this principle that a POSITA would logically apply to Netzer’s design to ensure efficient heating, an objective mentioned in Netzer itself.
  • Expectation of Success: The combination involved applying a standard heating element design to a known slide-in chamber system, which would have been a simple and predictable modification with a high expectation of success.

Ground 3: Obviousness of Claim 11 - Claim 11 is obvious over Netzer in view of Bahr.

• Prior Art Relied Upon: Netzer (WO 1998/04311), Bahr (Application # 2001/0017134).

• Core Argument for this Ground:

  • Prior Art Mapping: Dependent claim 11 adds a patient outlet that includes a connector for receiving a breathing hose along with at least one auxiliary electrical or pneumatic connector for simultaneous connection. Petitioner asserted that Netzer discloses the fluid connection for the patient hose but not an integrated auxiliary electrical connector. Bahr was introduced to remedy this, as it explicitly discloses a fluid conduit system for a ventilator that features an integrated connector establishing both a gas-tight fluid connection and an electrical connection simultaneously. Bahr’s connector includes electrical contacts on the ventilator port and complementary contacts on the breathing hose interface.
  • Motivation to Combine: A POSITA would have been motivated to combine Netzer’s CPAP device with Bahr’s integrated connector to achieve a primary goal of the ’072 patent: simplifying user connections. Bahr was designed to solve the known problem of requiring separate connections for fluid and electrical lines (e.g., for a heated hose), which created extra work and risk of disconnection. Applying Bahr’s elegant, single-action connection solution to Netzer’s device was a logical step to improve operational simplicity.
  • Expectation of Success: Integrating a known combined fluid/electrical connector into a CPAP machine was a straightforward application of existing technologies to achieve the predictable result of enhanced user convenience.

• Additional Grounds: Petitioner asserted an alternative obviousness challenge to claim 6 based on Netzer alone, arguing that even if Netzer is found not to anticipate every limitation, it renders the claim obvious under §103.

4. Key Technical Contentions (Beyond Claim Construction)

• Priority Date of Claim 11: A central contention was that claim 11 of the ’072 patent is not entitled to any priority date earlier than September 18, 2002. Petitioner argued that the key limitation of claim 11—the simultaneous connection of a breathing hose with an auxiliary electrical or pneumatic connector—was new matter first introduced in the application that led to the ’624 patent. Because this subject matter was absent from earlier priority documents, Bahr (published in 2001) qualifies as prior art against claim 11 under §102.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 6, 7, and 11 of the ’072 patent as unpatentable.