PTAB

IPR2019-00172

ResMed Ltd. v. Fisher & Paykel Healthcare Ltd.

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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 describes a nasal cannula for delivering positive pressure gases, such as in continuous positive airway pressure (CPAP) therapy. The apparatus generally comprises a prong part with nasal prongs, a body part, and a connector for coupling to a gas supply conduit.

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 discloses all major components of the nasal cannula recited in independent claim 1. This includes a "prong part" with a body, two prongs, and specific end openings; a "body part" for connection; and features like headgear extensions and exhalation vents. Petitioner contended the examiner, during prosecution, overlooked explicit teachings in Thomlinson's text describing an embodiment where the prongs and prong body are integrally formed, which directly maps to the claims. Instead, the examiner focused on a different, less relevant embodiment. While Thomlinson taught most limitations, Petitioner asserted that Gunaratnam supplied teachings for two key features: a body part with a curved user-side portion (for comfort) and a specific prong orientation where the first sides (near the user's face) are spaced further apart than the second sides.
    • Motivation to Combine: A person of ordinary skill in the art (POSITA) would combine the primary Thomlinson device with features from Gunaratnam to achieve predictable improvements. A POSITA would incorporate Gunaratnam’s curved body part geometry into Thomlinson’s device to improve comfort and stability by better conforming to the user’s upper lip. Similarly, a POSITA would adopt Gunaratnam’s asymmetric prong orientation to better align with the natural angle of human nares, which was known to improve both patient comfort and the sealing performance of the cannula.
    • Expectation of Success: Petitioner asserted a POSITA would have a high expectation of success, as the combination involves applying known, conventional design improvements (from Gunaratnam) to a known system (Thomlinson) to yield the predictable results of enhanced comfort and a more effective seal.

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 to Ground 1, specifically addressing the limitation of a body part with a "curved part, curving inward toward an interior of the body part." Petitioner argued that if the combination of Thomlinson and Gunaratnam were deemed insufficient to teach this feature, Sleeper explicitly discloses it. Sleeper described a nasal cannula with a bottom housing portion that functions as the body part and includes an outer surface with a curved, user-side portion that curves inward toward the interior, matching the claim language. The remaining claim limitations were met by the Thomlinson and Gunaratnam combination as detailed in Ground 1.
    • Motivation to Combine: The motivation to add Sleeper’s teaching to the Thomlinson/Gunaratnam combination was to further improve user comfort and stability. Petitioner contended a POSITA would recognize that incorporating the curved surface from Sleeper would allow the cannula body to rest more naturally over a wider area of the user's upper lip, a known method for enhancing fit and comfort. This modification was presented as a modest and predictable design choice.
    • Expectation of Success: Petitioner argued success would be highly expected, as implementing Sleeper's well-understood curved surface feature onto Thomlinson's device is a straightforward application of a known technique to achieve a predictable benefit.

4. Key Technical Contentions (Beyond Claim Construction)

  • Establishment of Critical Date: A central contention of the petition was that the correct critical date for the challenged claims is August 6, 2004, not an earlier claimed priority date of February 23, 2004. Petitioner argued that claim limitations central to patentability, specifically the "curved segment" of the prong part body, were added during prosecution and lacked written description support in the earliest priority document. This feature was first disclosed in a later-filed New Zealand application on August 6, 2004. Establishing this later critical date is crucial to the petition, as it qualifies Thomlinson (filed July 9, 2004) and Sleeper (filed July 26, 2004) as prior art under §102.

5. Relief Requested

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