Fisher & Paykel Healthcare Ltd v. ResMed Ltd

1. Case Identification

• Case #: IPR2017-01789
• Patent #: 8,960,196
• Filed: July 14, 2017
• Petitioner(s): Fisher & Paykel Healthcare Limited
• Patent Owner(s): ResMed Limited
• Challenged Claims: 1-22

2. Patent Overview

• Title: Mask System with Interchangeable Headgear Connectors
• Brief Description: The ’196 patent discloses a mask system for treating sleep-disordered breathing. The system features a common mask frame adapted to removably connect with at least two different headgear connectors, allowing for patient customization.

3. Grounds for Unpatentability

Ground 1: Obviousness over Ogden, Gunaratnam, and Amarasinghe - Claims 1-3, 6, 7, and 9-22 are obvious over Ogden in view of Gunaratnam and Amarasinghe.

• Prior Art Relied Upon: Ogden (Patent 5,662,101), Gunaratnam (Patent 6,796,308), and Amarasinghe (Application # 2004/0065328).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Ogden serves as the primary reference, disclosing a Continuous Positive Airway Pressure (CPAP) mask with nearly all limitations of independent claim 1. This included a mask frame (rigid shell) with no integral headgear attachment points, a sealing cushion, and a separate, removable headgear connector with a forehead support and strap anchors. Gunaratnam was cited to teach known alternatives not explicitly in Ogden, such as lower headgear clip anchors and a contoured, T-shaped forehead support. Amarasinghe was introduced to teach the key missing element: a mask frame adapted to removably connect to more than one different headgear connector.
  • Motivation to Combine: A POSITA would combine Ogden with Gunaratnam to substitute well-known, improved components (e.g., headgear clips for easier use) for predictable results. A POSITA would further incorporate Amarasinghe’s teaching of multiple interchangeable connectors to provide patients with different options for fit and comfort using a single mask frame, a known goal in the art.
  • Expectation of Success: Petitioner asserted that combining these features, all from the same field of CPAP mask design, would have been straightforward with a high expectation of success, as it involved the integration of known, compatible components.

Ground 2: Obviousness over Ogden, Gunaratnam, Amarasinghe, and Lovell - Claims 4, 5, and 8 are obvious over the combination of Ogden, Gunaratnam, Amarasinghe, and Lovell.

• Prior Art Relied Upon: Ogden (Patent 5,662,101), Gunaratnam (Patent 6,796,308), Amarasinghe (Application # 2004/0065328), and Lovell (Patent 6,631,718).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground builds on the combination in Ground 1, adding Lovell to address specific dependent claims. Petitioner contended that Lovell taught a headgear connector shaped to conform to the mask frame (claim 4) and a frame with a peripheral edge for engaging the connector (claim 5). Lovell also taught a non-movable connection between the frame and connector (claim 8), contrasting with Ogden’s pivoting design.
  • Motivation to Combine: A POSITA would have been motivated to add Lovell’s teachings to the base combination to improve the mask’s stability, create a lower profile, and provide a more secure, non-pivoting attachment. Petitioner argued that advances in cushion technology had made the pivoting connection of Ogden unnecessary, and a fixed connection as taught by Lovell was a known design choice to improve sealing and stability.
  • Expectation of Success: Modifying the Ogden design to incorporate the conforming, non-movable connection from Lovell was presented as a predictable design choice with known benefits.

Ground 3: Obviousness over Gunaratnam, Lovell, and Amarasinghe - Claims 1-22 are obvious over Gunaratnam in view of Lovell and Amarasinghe.

• Prior Art Relied Upon: Gunaratnam (Patent 6,796,308), Lovell (Patent 6,631,718), and Amarasinghe (Application # 2004/0065328).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground used Gunaratnam as the primary reference, which disclosed a mask assembly nearly identical to the ’196 patent but with a unitary frame and headgear connector. Petitioner argued that Gunaratnam taught most claimed elements, including the cushion, clip anchors, and T-shaped forehead support. The key difference was Gunaratnam’s single-piece construction.
  • Motivation to Combine: A POSITA would combine Gunaratnam with Lovell, which taught separating the frame and headgear connector into two distinct parts. This modification would be motivated by the desire to improve hygiene and convenience, as it allows the breathing chamber (frame and cushion) to be removed for cleaning without detaching the entire headgear. Amarasinghe was again cited for the motivation to provide multiple, different headgear connectors for the newly separated mask frame to enhance patient customization.
  • Expectation of Success: Petitioner asserted that dividing Gunaratnam’s unitary frame into two pieces as taught by Lovell was a well-understood design modification with predictable benefits, such as easier cleaning and simplified manufacturing.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that the Board should not exercise its discretion to deny institution under 35 U.S.C. §314(a) or §325(d). The petition asserted it was not redundant with prior petitions filed against the ’196 patent because it challenged a different set of claims (1-22) that had not been previously challenged or asserted against Petitioner. Furthermore, this petition relied on new prior art (Amarasinghe) specifically to address a limitation unique to claims 1-22 (multiple headgear connectors). Petitioner characterized this filing as its first attempt to challenge these specific claims, not an improper "follow-on" petition, and argued it should be permitted to make full use of the statutory filing window.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-22 of the ’196 patent as unpatentable under 35 U.S.C. §103.