Breathing masks

Resmed and Fisher & Paykel settle global patent disputes

Two medical device manufacturers, Resmed and Fisher & Paykel Healthcare, have settled all patent infringement disputes worldwide. The settlement, which comes into force immediately, does not include payments or an admission of liability for either company.

22 February 2019 by Konstanze Richter

Resmed, Fisher & Paykel ©Kudostudio/STOCK.ADOBE.COM

Each party is to pay its own legal costs for the proceedings conducted worldwide. Other aspects of the settlement are confidential. The companies also did not comment on whether the agreement includes the settlement of the parallel proceedings concerning the validity of the disputed patents.

Long fierce battle

Both the US company Resmed and its New Zealand competitor Fisher & Paykel Healthcare (F&P) sell equipment for the treatment of sleep-related breathing disorders. The settlement brings to an end a number of patent disputes which have been fiercely fought for years.

The parties have brought infringement and nullity suits against each other in various countries and for different patents. These included patents for breathing masks for the treatment of sleep apnoea, and the associated fastening mechanisms, ventilation and humidification devices.

Thure Schubert, Vossius & Partner

Thure Schubert

In Germany alone, several proceedings were recently pending before the Regional Court Munich, with the next hearing scheduled for mid-April 2019. In September 2018, F&P filed a patent suit for respiratory masks in the US and sought an exclusion order with the US International Trade Commission to prevent the import and distribution of Resmed products.

Shortly before, the US company had sued the New Zealand outfit for infringement at the US District Court for the Southern District of California. It also filed an exclusion order with the ITC for F&P’s competing products.

Commonwealth courts

The opponents fought in the New Zealand, Australian and British courts. After their settlement, the companies announced that they would discontinue all pending infringement proceedings. The exact reasons for the agreement were not given.

In the course of the global saga, each company had its share of hits and misses. It is therefore reasonable to assume that the effort began to outweigh the benefit and that this contributed to the decision to settle. According to Resmed, the company has around 5,000 patents in its portfolio, while F&P estimates that it holds and has applied for around 2,000 patents.

Front line

Resmed has relied on the mixed firm Vossius & Partner for years. In the current case, a team headed by Munich patent litigator Thure Schubert and patent attorney Elard Schenck zu Schweinsberg advised the US medical device manufacturer right from the start. They worked closely with Bristow’s partner Liz Cohen, who represented Resmed in the UK with her team.

Mike Rider, Vice President & General Counsel Americas at Resmed handled the coordination of the international law firms, including Vossius & Partner and Bristows as well as Fish & Richardson and DLA Piper (US), Jaws (New Zealand) and DLA Piper (Australia).

Oliver Jüngst, Bird & Bird

Oliver Jüngst

Fisher & Paykel was advised by Bird & Bird in Germany. The firm, whose patent practice combines patent litigators and patent attorneys, came to the case later as the initial injunction proceedings were led by two other IP firms.

At Bird & Bird in Germany, the patent litigator Oliver Jüngst was the lead lawyer. Patent attorneys Daniela Kinkeldey and Claus Becker provided technical advice. They worked closely with a team led by London-based Bird & Bird partner Morag Macdonald, who is joint head of the International Intellectual Property Group.

Jon Harwood, general manager of Intellectual Property at Fisher & Paykel Healthcare from Auckland, coordinated the patent disputes worldwide. Besides Bird & Bird, Harwood worked with Steve Jensen from Knobbe Martens in the US, Matthew Swinn from King & Wood Mallesons in Australia and Matt Sumpter from Chapman Tripp in New Zealand.