Fisher & Paykel Healthcare Limited v. ResMed Limited

1. Case Identification

• Case #: IPR2017-00061
• Patent #: 9,119,931
• Filed: October 12, 2016
• Petitioner(s): Fisher & Paykel Healthcare Limited
• Patent Owner(s): ResMed Limited
• Challenged Claims: 1, 4-8, 10-22, 25, 26, 28-37, and 40-42

2. Patent Overview

• Title: CPAP Mask System
• Brief Description: The ’931 patent relates to Continuous Positive Airway Pressure (CPAP) mask systems for treating sleep-disordered breathing. The disclosed systems include a multi-part mask assembly with a frame, a patient-contacting cushion, and a removable shroud, held in place by headgear.

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 application from the Patent Owner, taught nearly all limitations of independent claim 1, including a mask system with a shroud module and a cushion module configured to be removably and non-rotatably coupled. D'Souza disclosed a two-part assembly with a skeleton frame (shroud) and a cushion/frame sub-assembly. For claim elements not expressly taught by D’Souza, Petitioner asserted that Ultra Mirage, a commercial CPAP mask, supplied the missing features. Specifically, Ultra Mirage taught a "protruding vent arrangement" for CO2 washout and "quick release headgear clips" corresponding to the claimed removable headgear connectors.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine the known, desirable features of the Ultra Mirage mask with the D’Souza assembly. The motivation was to incorporate a well-known vent design to improve CO2 washout and add quick-release clips for user convenience in fitting and removal, both of which were predictable improvements.
  • Expectation of Success: Because both references were directed to CPAP masks, a POSITA would have found their features readily compatible and would have had a high expectation of success in combining them to achieve predictable results.

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 in view of Ultra Mirage and Matula-II.

• Prior Art Relied Upon: D’Souza (WO 2007/041751), Ultra Mirage (product brochure), and Matula-II (Application # 2007/0044804).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon Ground 1 by adding Matula-II to teach features related to the cushion and snap-fit mechanism. Petitioner contended that while D'Souza disclosed the basic mask structure, Matula-II taught a cushion with "one or more folds" in the nasal bridge region to provide a higher degree of flexibility and adaptability. Furthermore, Matula-II was cited for teaching a "plurality of snap fingers" that elastically deform to create a removable snap-fit interlock, a feature Petitioner argued was an obvious implementation of the coupling mechanism described in D'Souza.
  • Motivation to Combine: A POSITA would have been motivated to incorporate the folds from Matula-II into the D'Souza cushion to improve sealing and comfort in the delicate nasal bridge area. Similarly, a POSITA would have been motivated to modify D'Souza's retaining portion to include the snap fingers taught by Matula-II to create a more robust and reliable snap-fit connection, which is a simple substitution of one known mechanical interlock for another to achieve a predictable result.

Ground 3: Obviousness over D'Souza, Ultra Mirage, and FlexiFit - Claims 7 and 8 are obvious over D'Souza in view of Ultra Mirage and FlexiFit.

• Prior Art Relied Upon: D’Souza (WO 2007/041751), Ultra Mirage (product brochure), and FlexiFit (product instructions for use).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground added FlexiFit, another commercial mask, to teach specific headgear connector configurations. Dependent claim 7 requires that "each upper headgear connector includes a slot," and claim 8 requires that "each lower headgear connector is adapted to be removably interlocked with a headgear clip." Petitioner argued that FlexiFit explicitly disclosed attaching upper straps through corresponding slots in the mask base and using removable clips for the lower straps.
  • Motivation to Combine: A POSITA would have been motivated to incorporate the headgear connector configuration from FlexiFit into the D'Souza mask to make positioning the headgear easier for the user. Using slots for upper straps and clips for lower straps was a known design choice that simplified manufacturing, reduced parts, and improved user experience by allowing the user to easily secure the mask without forcing tensioned lower straps over their head.

• Additional Grounds: Petitioner asserted numerous additional obviousness challenges against various claims by combining D'Souza and Ultra Mirage with other references, including Barnett (Patent 6,412,488) for teaching interchangeable cushion modules of different sizes and a 360-degree rotating elbow; Lovell (Patent 6,631,718) for teaching a polycarbonate elbow; Jaffre (Patent 6,851,425) for teaching an anti-asphyxia valve; and Gunaratnam-II (Application # 2004/0226566) for teaching specific headgear features like a buckle for top straps. These grounds relied on the same core theory of combining known, conventional features from the prior art to arrive at the claimed "laundry list" of elements.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that institution would be appropriate and not redundant under §325(d). The petition stated it was one of four concurrently filed IPRs against the ’931 patent, but asserted they were not redundant as they challenged different claims and/or relied on different prior art combinations. Petitioner preemptively addressed potential arguments from the Patent Owner that D'Souza is not prior art to certain claims by filing parallel petitions (e.g., using Barnett) that rely on indisputable §102(b) prior art. This strategy was presented as a reason for the Board to institute proceedings on multiple petitions to ensure a complete and efficient review of patentability.

5. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1, 4-8, 10-22, 25, 26, 28-37, and 40-42 of the ’931 patent as unpatentable under §103.