Pharmaceutical & Life Sciences News

Patent Review Over ResMed Ltd.'s Sleep Mask Put to Bed (1)

Oct. 24, 2018, 7:41 PMUpdated: Oct. 24, 2018, 8:16 PM

Sleep apnea mask maker ResMed Ltd. is resting more easily after it scored a victory on one of its patents covering its sleep mask technology.

Fisher & Paykel Healthcare Ltd. challenged a key ResMed patent at the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board but the board upheld the majority of the patent’s claims.

The decision is a significant one for ResMed because it helps protect its growing franchise in medical equipment used to diagnose and treat respiratory disorders that occur during sleep. The San Diego-based company—whose most recent full fiscal year revenues reached $2.3 billion—has reaped the benefits of increasing awareness among medical practitioners of the dangers associated with sleep-disordered breathing.

The patent at issue, U.S. Patent No. 9,027,556 B2, is central to protecting the company’s ongoing innovation in continuous positive airway pressure (CPAP) masks, David Pendarvis, ResMed’s chief administrative officer and global general counsel, told Bloomberg Law Oct. 24.

CPAP therapy is a common treatment for obstructive sleep apnea. A CPAP machine uses a hose and mask or nosepiece to deliver constant and steady air pressure. Obstructive sleep apnea is the most common type of sleep apnea and is caused by complete or partial obstructions of the upper airway leading to episodes of decreased breathing.

Obstructive sleep apnea is seen in all age groups but its frequency increases with age and obesity. Symptoms include snoring and daytime sleepiness.

Separate Litigation

ResMed is asserting the same patent against Fisher & Paykel in patent infringement litigation pending in the U.S. District Court for the Southern District of California and in proceedings before the International Trade Commission.

“We believe that both the ITC and district court will agree that Fisher & Paykel is infringing this patent and must stop using ResMed’s technology,” Pendarvis said.

Fisher & Paykel is a New Zealand-based producer of respiratory and acute care products including sleep apnea products. ResMed claims Fisher & Paykel’s Simplus, Eson, and Eson 2 sleep masks infringe its patent.

ResMed is seeking an exclusion order at the ITC for the Eson and Simplus ranges of masks used to treat obstructive sleep apnea and is seeking damages and injunctive relief in the district court.

If granted, an order could prevent the import of Fisher & Paykel Healthcare’s products into the U.S.

Bloomberg Law contacted Fisher & Paykel’s counsel for comment but no one was available to respond.

Fisher & Paykel is contesting ResMed’s allegations at the ITC and in district court.

“Fisher & Paykel Healthcare respects the valid intellectual property rights of others, and we are confident in our position with respect to ResMed’s patents given the rigorous clearance we conduct before any product is released to market,” chief executive Lewis Gradon said in September.

Earlier, the company reduced its net profit outlook for 2019 to NZ$205 million-NZ$210million ($134 million to $137 million) from its previous estimate of NZ$215million ($141 million) due to the increased legal cost of contesting ResMed’s allegations.

Sleep technology devices are a hot field as almost 40 percent of those aged 25 to 54 get less than the seven hours of recommended sleep a night.

The case is Fisher & Paykel Healthcare Ltd. v. ResMed Ltd., P.T.A.B., No. IPR2017-00501, 10/23/18.

(Updated with case citation at end of story.)

To contact the reporter on this story: Dana A. Elfin in Washington at delfin@bloomberglaw.com

To contact the editor responsible for this story: Randy Kubetin at rkubetin@bloomberglaw.com

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