ResMed Ltd v. Fisher & Paykel Healthcare Limited

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) device. The purported invention involves locating the patient outlet tube on the main device housing rather than on the removable humidifier chamber, which allows the chamber to be attached or removed without disconnecting the patient's breathing tube.

3. Grounds for Unpatentability

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

• Prior Art Relied Upon: Netzer (WO 1998/04311).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Netzer, a reference for which the examiner only had a non-translated version, discloses every limitation of independent claim 6. Netzer describes a CPAP device with a main housing and a removable liquid container (humidifier chamber) that slides into the housing. Critically, Netzer’s patient gas outlet is located on the main housing, separate from the removable chamber. This configuration allows the chamber to be inserted or removed via a single sliding motion without requiring disconnection of the patient breathing hose, thereby teaching the core inventive concept of the ’072 patent.

Ground 2: Obviousness of Claim 6 - Claim 6 is obvious under 35 U.S.C. §103 over Netzer.

• Prior Art Relied Upon: Netzer (WO 1998/04311).
• Core Argument for this Ground:
  • Prior Art Mapping: As an alternative to Ground 1, Petitioner argued that claim 6 is obvious over Netzer. The argument posited that a disclosure that anticipates is the "epitome of obviousness." Furthermore, Petitioner contended that even if not anticipatory, Netzer’s disclosure of a patient outlet on the main housing, combined with the ’072 patent’s own admissions that slide-on humidifier chambers were well-known in the prior art, would have rendered the claimed combination obvious to a person of ordinary skill in the art (POSITA).

Ground 3: Obviousness of Claim 7 - Claim 7 is obvious under §103 over Netzer in view of Levine.

• Prior Art Relied Upon: Netzer (WO 1998/04311) and Levine (Patent 5,943,473).
• Core Argument for this Ground:
  • Prior Art Mapping: Dependent claim 7 adds the limitation of a "chamber heater" where the single sliding motion of the chamber also "urges a base of said chamber in contact with said heater." Petitioner argued that while Netzer discloses a heating unit for its slide-in chamber, it might not explicitly disclose that the chamber base makes contact with the heater. Levine was introduced to supply this missing teaching, as it explicitly discloses a humidifier cartridge with a conductive base plate that slides into engagement with and makes direct contact with a heating surface for efficient heat transfer.
  • Motivation to Combine: A POSITA would combine Netzer and Levine to implement a well-known and conventional method for heating a water container. Given that Netzer already taught a slide-in chamber and a heater, it would have been an obvious design choice to adopt Levine’s efficient base-contact heating method to ensure effective vaporization and minimize energy consumption, a stated goal of the Netzer reference.
  • Expectation of Success: A POSITA would have had a high expectation of success, as the combination merely applies a known heating technique (from Levine) to a known type of CPAP system (from Netzer), arranging old elements to perform their known functions with predictable results.

Ground 4: Obviousness of Claim 11 - Claim 11 is obvious under §103 over Netzer in view of Bahr.

• Prior Art Relied Upon: Netzer (WO 1998/04311) and Bahr (Application # 2001/0017134).
• Core Argument for this Ground:
  • Prior Art Mapping: Dependent claim 11 adds a patient outlet connector that receives a breathing hose and includes "at least one auxiliary electrical connection plug or socket...for a simultaneous connection" of both fluid and electrical components. Petitioner asserted that Netzer provides the foundational CPAP system, while Bahr teaches the specific combined fluid-electrical connector. Bahr explicitly addresses the problem of requiring separate connections for a breathing tube and its associated electrical lines (e.g., for a heated hose) and discloses a unified connector with both gas port and electrical contacts to solve this problem.
  • Motivation to Combine: A POSITA would combine these references to achieve the goal of simplifying the connections a patient must make, which is an explicit goal of the ’072 patent itself. Bahr was designed to overcome the exact problem of "additional installation work for the user" caused by separate connections. A POSITA seeking to improve Netzer's device would have been motivated to incorporate Bahr’s elegant single-action connector to enhance user convenience and reduce the risk of connection errors.
  • Expectation of Success: Incorporating a known integrated connector from Bahr into the patient outlet of a known CPAP system like Netzer would have been a straightforward integration of compatible technologies with predictable, successful results.

4. Key Technical Contentions (Beyond Claim Construction)

• Priority Date of Claim 11: Petitioner contended that claim 11 is not entitled to any priority date earlier than September 18, 2002. It argued that the subject matter of claim 11—specifically the simultaneous electrical and fluid connector—was first introduced in the application that became the ’624 patent and was not supported by earlier priority documents. This assertion is critical because it establishes Bahr, which was published in August 2001, as valid prior art against claim 11 under §102.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that its prior, voluntarily dismissed declaratory judgment action regarding the ’072 patent has no preclusive effect under §315(a). It also noted that the co-pending district court litigation was filed less than a year prior to the petition, making the one-year time bar under §315(b) inapplicable.

6. Relief Requested

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