ResMed Ltd v. Fisher & Paykel Healthcare Ltd

1. Case Identification

• Case #: IPR2019-00172
• Patent #: 9,974,914
• Filed: November 7, 2018
• Petitioner(s): ResMed Limited, ResMed Inc., and ResMed Corp.
• Patent Owner(s): Fisher & Paykel Healthcare Limited
• Challenged Claims: 1-8

2. Patent Overview

• Title: Breathing Assistance Apparatus
• Brief Description: The ’914 patent discloses a nasal cannula for delivering pressurized gases, such as in continuous positive airway pressure (CPAP) therapy. The apparatus includes a "prong part" with two nasal prongs and a "body part" that connects to a gas supply conduit, with specific geometries for user comfort and fit.

3. Grounds for Unpatentability

Ground 1: Claims 1-8 are obvious over Thomlinson in view of Gunaratnam.

• Prior Art Relied Upon: Thomlinson (Application # 2005/0011524) and Gunaratnam (Application # 2004/0226566).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Thomlinson disclosed a nasal interface device with nearly all elements of the challenged claims, including a prong part, a body part, and headgear extensions. A central contention was that Thomlinson textually described an embodiment where the nasal prongs and proximal portion are integrally formed into a single piece, which Petitioner asserted directly maps to the claimed "prong part." Petitioner argued this explicit teaching was overlooked during prosecution in favor of a less-relevant figure showing a multi-piece assembly. Thomlinson was also argued to teach a prong part body with a curved segment on its user-facing side. Gunaratnam was introduced to supplement two key features: (1) a body part with a user-side portion that has a curved part curving inward toward its interior, and (2) prongs oriented such that their first sides (adjacent the user's face) are farther apart than their second sides.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Gunaratnam’s teachings with Thomlinson’s device to achieve known benefits. Petitioner argued a POSITA would apply the ergonomic body part curvature from the ’566 application to Thomlinson's device to predictably improve comfort and stability by better conforming to the patient's upper lip. Similarly, modifying Thomlinson’s prongs with Gunaratnam's asymmetric orientation was a known technique to improve the seal and achieve a more natural fit within the angled nares of a patient.
  • Expectation of Success: Petitioner contended a POSITA would have had a high expectation of success because the combination involved applying conventional, well-understood design features to an existing device to obtain the predictable results of improved comfort and sealing performance.

Ground 2: Claims 1-8 are obvious over Thomlinson in view of Gunaratnam and Sleeper.

• Prior Art Relied Upon: Thomlinson (Application # 2005/0011524), Gunaratnam (Application # 2004/0226566), and Sleeper (Application # 2005/0028822).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground was presented as an alternative, asserting that if the Thomlinson-Gunaratnam combination were found deficient, Sleeper provides further evidence for the obviousness of a key feature. The argument focused on claim element [1.7], which requires the body part to have a user-side portion with a curved part curving inward. Petitioner argued that Sleeper explicitly disclosed a nasal cannula with a bottom housing portion (body part) featuring a curved user-side portion that curves inward toward the interior of the body part. This teaching was presented to reinforce the common knowledge of this ergonomic feature in the art before the patent's critical date.
  • Motivation to Combine: The motivation remained consistent with Ground 1: to improve the comfort and stability of Thomlinson's device. Sleeper’s disclosure confirmed that curving the user-facing portion of the body part was a known method for improving the interface's fit on the patient’s upper lip. A POSITA would have been motivated to incorporate this known design improvement from Sleeper into the Thomlinson/Gunaratnam combination for its predictable ergonomic benefits.
  • Expectation of Success: The expectation of success was argued to be high, as this modification was a modest, predictable, and well-documented improvement to enhance user comfort and the stability of the nasal interface.

4. Key Technical Contentions

• Priority Date Argument: A central contention of the petition was that the challenged claims were not entitled to their earliest claimed priority date of February 23, 2004. Petitioner argued that the "curved segment" limitation, which was added to the independent claims during prosecution to secure allowance, was not disclosed in the earliest priority document. Instead, this feature was first introduced in a subsequent New Zealand application filed on August 6, 2004. Therefore, Petitioner asserted that the "Critical Date" for assessing prior art is August 6, 2004. This later date was crucial because it rendered Thomlinson (filed July 9, 2004) available as prior art under 35 U.S.C. §102(e).

5. Relief Requested

• Petitioner requested the institution of an inter partes review (IPR) and the cancellation of claims 1-8 of Patent 9,974,914 as unpatentable.