PTAB

IPR2017-00061

Fisher & Paykel Healthcare Ltd v. ResMed Ltd

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Patient Interface
  • Brief Description: The ’931 patent relates to Continuous Positive Airway Pressure (CPAP) mask systems used for treating sleep-disordered breathing. The disclosed system includes a two-part assembly comprising a shroud module for headgear attachment and a cushion module that provides a seal against the patient's face.

3. Grounds for Unpatentability

Ground 1: Obviousness over D’Souza and Ultra Mirage - Claims 1, 6, 10, 11, 18, 31, and 32 are obvious over D’Souza in view of Ultra Mirage.

  • Prior Art Relied Upon: D’Souza (WO 2007/041751) and Ultra Mirage (a commercial product brochure).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that D’Souza, a prior art publication from the patent owner, disclosed nearly all limitations of independent claim 1. This included a mask system with a shroud module (skeleton frame) and a separate cushion module (cushion/frame sub-assembly) made of different materials (plastic and silicone) that are removably and non-rotatably coupleable. The primary element allegedly missing from D'Souza was a "protruding vent arrangement" on the frame. Petitioner asserted that Ultra Mirage, a commercial CPAP mask, explicitly taught an air vent on the frame in the precise nasal bridge location where D'Souza's frame protrudes, providing CO2 washout.
    • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine these references because both relate to CPAP masks and address common design goals. A POSITA would be motivated to incorporate the well-known vent design from Ultra Mirage onto the protruding nasal bridge portion of D'Souza's frame to minimize dead space, effectively flush exhaled air, and reduce noise output, which are all known benefits.
    • Expectation of Success: Petitioner contended there was a high expectation of success because adding a standard vent to a mask frame was a simple, predictable modification. The features taught in Ultra Mirage were readily compatible with the D'Souza mask assembly.

Ground 2: Obviousness over D’Souza, Ultra Mirage, and Matula-II - Claims 4, 5, 26, 33, 37, and 40–42 are obvious over D’Souza, Ultra Mirage, and Matula-II.

  • Prior Art Relied Upon: D’Souza (WO 2007/041751), Ultra Mirage (brochure), and Matula-II (Application # 2007/0044804).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground added Matula-II to the primary combination to address limitations not taught by D'Souza or Ultra Mirage. Petitioner argued Matula-II taught a cushion with "one or more folds" in the nasal bridge portion to provide greater flexibility and adaptability, as required by claim 4. For claims reciting a "plurality of snap fingers" for a snap-fit connection, Matula-II disclosed a pair of prongs that function as snap-fingers to create a removable mechanical couple.
    • Motivation to Combine: A POSITA would incorporate Matula-II's cushion folds into the D'Souza design to improve the seal and enhance patient comfort, a well-known objective in the field. Likewise, a POSITA would have found it obvious to use the snap-fit mechanism from Matula-II as a known technique to create a simple and reliable removable interlock between the shroud and cushion modules of D'Souza.
    • Expectation of Success: Integrating flexible folds into a silicone cushion and using snap-fingers for plastic components were common and predictable design choices in CPAP mask engineering.

Ground 3: Obviousness over D’Souza, Ultra Mirage, and Barnett - Claims 12, 14, 16, and 17 are obvious over D'Souza, Ultra Mirage, and Barnett.

  • Prior Art Relied Upon: D’Souza (WO 2007/041751), Ultra Mirage (brochure), and Barnett (Patent 6,412,488).

  • Core Argument for this Ground:

    • Prior Art Mapping: This ground added Barnett to the core combination to teach limitations related to the elbow module and interchangeable cushion sizes. For claims requiring a 360-degree rotating elbow connected directly to the shroud module (claims 12 and 14), Barnett disclosed an elbow rotatably mounted on a collar that functions as a shroud. For claims requiring different-sized cushion modules (small, medium, large) coupleable to the same shroud module (claims 16 and 17), Barnett explicitly taught providing different seal members for different patient populations (e.g., adults and children) that attach to a commonly sized collar.
    • Motivation to Combine: A POSITA would combine Barnett's teachings to improve user experience and product versatility. Attaching a rotating elbow directly to the shroud, as taught by Barnett, would make it easier to detach tubing without disturbing the mask seal. Providing different-sized, interchangeable cushions to fit a common shroud was a known strategy to reduce manufacturing complexity and accommodate a wider range of patients.
    • Expectation of Success: Modifying the elbow attachment point and offering modular, different-sized cushions were routine design adaptations that a POSITA would expect to implement successfully.

  • Additional Grounds: Petitioner asserted additional obviousness challenges based on combinations of D'Souza and Ultra Mirage with FlexiFit (for headgear features), Lovell (for polycarbonate material), Jaffre (for an anti-asphyxia valve), and Gunaratnam-II (for other headgear features).

4. Arguments Regarding Discretionary Denial

  • Petitioner argued that this petition was not redundant under 35 U.S.C. § 325(d) despite the concurrent filing of three other IPR petitions against the same patent. It contended the petitions were necessary because they challenged different claims or relied on different key prior art references. Specifically, this petition relied on D'Souza, which the Patent Owner might attempt to disqualify by "swearing behind," necessitating a separate petition based on Barnett, which is indisputable prior art under §102(b).

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1, 4-8, 10-22, 25, 26, 28-37, and 40-42 of Patent 9,119,931 as unpatentable.