ResMed Ltd. v. Fisher & Paykel Healthcare Ltd

1. Case Identification

• Case #: IPR2019-00177
• 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: 1-10 and 22-28

2. Patent Overview

• Title: Breathing Assistance Apparatus
• Brief Description: The ’914 patent describes a nasal cannula for delivering positive pressure gases, such as for continuous positive airway pressure (CPAP) therapy. The apparatus is designed to fit within a user's nares and generally comprises a prong part, a body part, and a ball-jointed connector.

3. Grounds for Unpatentability

Ground 1: Obviousness over Sleeper and Wood - Claims 1-10 and 25-27 are obvious over Sleeper in view of Wood.

• Prior Art Relied Upon: Sleeper (Application # 2005/0028822) and Wood (Patent 6,478,026).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Sleeper discloses a nasal cannula with most of the claimed features, including a "prong part" (Sleeper's top housing) and a "body part" (Sleeper's bottom housing), each with user-facing curved portions. However, Petitioner contended Sleeper does not expressly teach the specific prong orientation recited in claims 1 and 9, where the "first sides of the two prongs" are "disposed further apart than the second sides." To remedy this, Petitioner asserted that Wood teaches using oval-shaped nasal apertures arranged at an angle to match the natural orientation of a patient's nostrils. This orientation, taught by Wood for improved comfort and better sealing, allegedly corresponds directly to the claimed prong geometry.
  • Motivation to Combine: A person of ordinary skill in the art (POSITA) would combine Wood's teaching of angled, oval-shaped prongs with Sleeper's nasal cannula design. The motivation was to achieve the predictable benefits of improved patient comfort for extended use and a more effective seal with minimal gas leakage, both of which were explicitly taught by Wood as advantages of its design. Petitioner asserted this was a straightforward application of a known technique to improve a known device.
  • Expectation of Success: A POSITA would have had a reasonable expectation of success because combining the references involved a minor mechanical modification to Sleeper's device to incorporate a known orientation for nasal prongs from Wood, yielding only predictable results.

Ground 2: Obviousness over Sleeper, Wood, and Gunaratnam - Claims 7 and 10 are obvious over Sleeper in view of Wood and Gunaratnam.

• Prior Art Relied Upon: Sleeper (Application # 2005/0028822), Wood (Patent 6,478,026), and Gunaratnam (Application # 2004/0226566).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground builds upon Ground 1 and specifically addresses the material limitations of claims 7 and 10 (a rigid plastic body part and a flexible silicone prong part). Petitioner argued that even if the combination of Sleeper and Wood does not teach these specific materials, Gunaratnam does. Gunaratnam allegedly describes the ordinary practice for similar devices: using a rigid or semi-rigid polymer for the frame (body part) and a one-part molded silicone piece for the nozzle part (prong part) that attaches to the frame.
  • Motivation to Combine: A POSITA would combine Gunaratnam's material teachings with the Sleeper/Wood device to achieve well-known benefits. Using a rigid plastic for the body part provides mechanical stability, while using flexible silicone for the patient-contacting prong part enhances comfort and sealing. This combination of materials was a conventional and predictable design choice for such devices.

Ground 3: Obviousness over Sleeper, Wood, and Thomlinson - Claims 22-24 and 28 are obvious over Sleeper in view of Wood and Thomlinson.

• Prior Art Relied Upon: Sleeper (Application # 2005/0028822), Wood (Patent 6,478,026), and Thomlinson (Application # 2005/0011524).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground addresses dependent claims reciting additional structural features, such as a rigid body part with an "extension" for sealing (claim 22) and a "ball jointed connector" with a "partial spherical opening" (claims 23 and 28). Petitioner argued that if these features are not found in the Sleeper/Wood combination, they are taught by Thomlinson. Thomlinson allegedly discloses a nasal device with a rigid body part that includes flange extensions to ensure a firm seal with the prong part. Furthermore, Thomlinson teaches a ball joint connector to permit free movement of the supply tubing, which increases user mobility.
  • Motivation to Combine: A POSITA would incorporate Thomlinson's features into the Sleeper/Wood device to achieve predictable improvements. The motivation was to provide a more robust seal between the body and prong parts (using the extension) and to increase user comfort and freedom of movement (using the ball joint), both of which were known benefits of such features.

4. Key Technical Contentions (Beyond Claim Construction)

• Priority Date Argument: A central contention of the petition is that the challenged claims are only entitled to a priority date of August 6, 2004, not an earlier claimed date of February 23, 2004. Petitioner argued that the key "curved segment" limitation, which was added during prosecution to overcome prior art, was not disclosed in the earlier priority document. The feature allegedly first appeared in drawings filed with the later August 2004 application. This later "Critical Date" is crucial because it allows Sleeper, Gunaratnam, and Thomlinson to qualify as prior art under 35 U.S.C. §102(e).

5. Arguments Regarding Discretionary Denial

• Petitioner argued that institution is proper and not subject to discretionary denial under §325(d) because the specific prior art combinations and arguments presented in the petition were never considered by the Patent Office during prosecution. While some of the references were cited on the face of the patent, they were not applied in the combinations asserted by the Petitioner to reject the claims.

6. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 1-10 and 22-28 of the ’914 patent as unpatentable.