Fisher & Paykel Healthcare Ltd. v. ResMed Ltd.
Docket Nos. 2018-2262 (IPR2017-00504)
November 27, 2019
Brief Summary: ResMed’s motion to dismiss appeal of IPR decision after underlying litigation was settled granted because Fisher did “not provide any, let alone sufficient, detail regarding features of its future products to enable us to determine that its activities create a substantial risk of future infringement”.
Summary: ResMed moved to dismiss Fisher’s appeal of the Board IPR decision that the claims of ResMed’s US 9,027,556 relating to sleep disorder masks are not unpatentable. ResMed and Fisher settled the underlying litigation after Fisher appealed the Board’s decision to the FC. ResMed’s motion to dismiss argued Fisher lacks standing since the litigation was settled. In this order, the FC explained that “an appellant that is not facing a suit for infringement or immediate threat of suit for infringement may nonetheless have standing to appeal…if it is currently using claimed features of a patent or nonspeculatively planning to do so” (citing AVX, Fed. Cir. 2019), but also that “such plans must create a ‘substantial risk of future infringement’ or be likely to ‘cause the patentee to assert a claim of infringement’” (citing JTEKT, Fed. Cir. 2018). “Here”, the court wrote, “Fisher has not met this standard” as it did “not provide any, let alone sufficient, detail regarding features of its future products to enable us to determine that its activities create a substantial risk of future infringement”. ResMed’s motion to dismiss was therefore granted.