Fisher & Paykel Healthcare Limited v. ResMed Limited

1. Case Identification

• Case #: IPR2017-00504
• Patent #: 9,027,556
• Filed: December 16, 2016
• Petitioner(s): Fisher & Paykel Healthcare Limited
• Patent Owner(s): Resmed Limited
• Challenged Claims: 1-66

2. Patent Overview

• Title: Patient Interface
• Brief Description: The ’556 patent describes a modular respiratory mask system, such as for Continuous Positive Airway Pressure (CPAP) therapy. The system consists of a frame module, a cushion module that seals against the patient's face, and a rotatable elbow module that connects to an air delivery tube.

3. Grounds for Unpatentability

Ground 1: Claims 1, 2, and 4 are obvious over Matula

• Prior Art Relied Upon: Matula (Application # 2007/0044804).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Matula, which discloses a CPAP mask with a frame, cushion, and rotatable elbow, teaches nearly all limitations of independent claim 1. For example, Matula’s cushion module has a main body and a cushion made of different materials, and its frame includes headgear connectors. Petitioner asserted that any minor differences, such as the precise degree of elbow rotation or the specific shapes used to prevent rotation between the frame and cushion, were obvious modifications.
  • Motivation to Combine: For the limitation of a 360° rotating elbow, Petitioner argued a person of ordinary skill in the art (POSITA) would have understood Matula’s design allowed for full rotation and would have been motivated to ensure this capability to provide user convenience and reduce tube drag. Similarly, a POSITA would have used known anti-rotation features, like the alignment notch taught by Matula, to ensure proper alignment and a secure seal.
  • Expectation of Success: A POSITA would have had a high expectation of success in making these simple modifications, as they involved applying known principles to achieve predictable results.

Ground 2: Claims 3, 5, 7, 14–16, 19, 22–26, 29, 32–33, 36, 43, 45–52, 54–55, 57–58, 61–64, and 66 are obvious over Matula in view of Ging

• Prior Art Relied Upon: Matula (Application # 2007/0044804), Ging (Application # 2005/0155604), and Jaffre (Patent 6,851,425), which Petitioner noted is incorporated by reference in Matula.
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Ging teaches numerous features claimed in the dependent claims which are not explicitly found in Matula. These features include an anti-asphyxia valve (AAV) on the elbow (taught by Jaffre), a swivel joint on the air delivery tube connection, removable semi-rigid frame arms with clip structures for attaching headgear, and providing a set of differently-sized cushion modules with a universal interface to fit the same frame. For example, claim 5’s removable arms with clip structures were taught by Ging's removable side frame members with a clip structure. Claim 7’s modular, differently-sized cushions were taught by Ging's disclosure of providing cushions in small, medium, and large sizes with a universal interface.
  • Motivation to Combine: A POSITA would combine the teachings of Ging with Matula to improve the base design. For instance, adding an AAV is a known safety feature. Incorporating a swivel joint and removable headgear clips enhances user freedom of movement and simplifies cleaning. Providing modular, different-sized cushions allows a single frame to fit a wider range of patients, improving usability and reducing inventory.
  • Expectation of Success: As Matula and Ging both describe similar modular CPAP masks, a POSITA would have readily incorporated Ging's features into Matula's mask with a high expectation of success, as it was a combination of familiar elements to yield predictable results.

Ground 3: Claims 9–13 would have been obvious over Matula in view of Namey and Gunaratnam

• Prior Art Relied Upon: Matula (Application # 2007/0044804), Namey (Application # 2002/0020416), and Gunaratnam (Patent 6,796,308).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground addressed claims requiring a "co-molded" connection and the use of "polycarbonate." Petitioner argued that while Matula teaches two-shot molding, Namey explicitly discloses a co-molded connection between a rigid mask body and a soft seal member that forms a molecular bond without a mechanical interlock. Furthermore, Gunaratnam teaches that the rigid frame of a CPAP mask can be made from polycarbonate. These references allegedly supply the "co-molded" and "polycarbonate" limitations of claims 9-13.
  • Motivation to Combine: A POSITA would combine these teachings for known benefits. Namey’s co-molding process would be used to reduce materials (e.g., adhesives) and eliminate manual assembly steps, creating a more robust and cost-effective cushion module. A POSITA would have been motivated to use polycarbonate, as taught by Gunaratnam, as it was a well-known material choice for CPAP mask components, providing a desirable combination of strength, rigidity, and toughness.
  • Expectation of Success: Combining these known manufacturing techniques and material choices with the Matula mask design would have been straightforward for a POSITA and would have predictably resulted in a durable, well-sealed mask.

• Additional Grounds: Petitioner asserted numerous other obviousness challenges against the remaining claims by combining Matula and Ging with additional references. These included using Melidis (Patent 7,827,990) for its teaching of a "concertina section" in the nasal bridge region of the cushion to improve flexibility (Grounds 3, 4, 8, 9) and Lithgow (Application # 2004/0118406) for its teaching of varying the flexibility of the concertina section by adjusting fold thickness (Ground 8).

4. Arguments Regarding Discretionary Denial

• Petitioner argued that review should not be denied under §325(d) as redundant. The petition asserted that it was not redundant with another concurrently filed IPR petition because the other petition was based on a different primary reference (Barnett, Patent 6,412,488). Petitioner contended that although both Matula and Barnett describe CPAP masks, their different structural designs and features necessitate distinct obviousness analyses and prior art combinations.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-66 of Patent 9,027,556 as unpatentable.