Medical devices

UK win for Fisher & Paykel against Flexicare over ventilator technology

The UK High Court has ruled that a patent held by medical device manufacturer Fisher & Paykel is valid and infringed by Flexicare. The decision follows a similar ruling against the infringing party in Germany. Given the current coronavirus pandemic, the medical device market and its corresponding litigation is of public interest.

16 December 2020 by Amy Sandys

Fisher & Paykel The UK High Court has found that Flexicare's ventilator technology infringes a valid patent owned by Fisher & Paykel ©sudok1/ADOBE STOCK .

New Zealand-based Fisher & Paykel manufactures accessories for respiratory machines, including hoses and humidifiers. The medical device manufacturer claimed a competing product sold by UK-based Flexicare Group infringed its patent EP 2 025 359 B1, which protects a hose system used in products for ventilators. In particular, the patent covers the use of breathable materials to reduce or eliminate condensation.

The UK High Court has upheld this claim, with presiding judge Richard Meade finding the patent valid and infringed by Flexicare. A form of order hearing regarding the stay of injunction and permission to appeal has also taken place, although the result is not yet public.

In the proceedings, defendant Flexicare admitted its ventilator products fell within the scope of EP 359 B1, but argued that the patent is invalid. It also counterclaimed for revocation. However, the court rejected all arguments against the obviousness of the patent and decided EP 359 B1 was novel over the prior art.

Germany goes first

Furthermore, Flexicare has already been unsuccessful in parallel proceedings against Fisher & Paykel in Germany. In August 2020, the Düsseldorf Regional Court found Flexicare’s German distributor Medisize had infringed the Fisher & Paykel patent.

In summer 2019, Fisher & Paykel filed a suit against German Flexicare subsidiary and distributor Medisize at the Regional Court Düsseldorf for cease and desist, information, rendering of accounts and damages, as well as recall and destruction (case ID: 4c O 43/19).

Then, the defendant filed a nullity suit at the Federal Patent Court in Munich (6 Ni 62/19). However, the patent had already survived an EPO opposition suit filed by Swiss company Intersurgical in 2014 .

In the main trial, Medisize argued that COVID-19 had created an acute need for ventilators. Thus, the suit was disproportionate. However, the German judges reasoned there were no backlogs for ventilators; the market had alternative products available which did not infringe patent EP 359 B1. As a result, the court granted the infringement suit against Medisize. It also granted the application for an injunction against Flexicare. However, the parties have not yet heard the nullity proceedings.

Bird & Bird in the frame

The London office of Bird & Bird represents Fisher & Paykel in the UK, with a team led by partner and head of global IP Morag Macdonald. The firm cooperates closely with Fisher & Paykel Healthcare’s general manager of intellectual property in Auckland, Jon Harwood, who coordinates the company’s patent disputes worldwide.

In Germany, Düsseldorf partner Oliver Jüngst was the lead lawyer. Munich partner and patent attorney Daniela Kinkeldey advised on the technical side.

Flexicare retained DAC Beachcroft in the UK, and UK firm King & Spalding in the US. In Germany, the company relied on the Düsseldorf office of Hogan Lovells, in a team led by partner Henrik Lehment. Flexicare Group has relied on Hogan Lovells for some time in German litigation proceedings.

For Fisher & Paykel
11 South Square (London): Benet Brandreth, David Ivison
Bird & Bird (London): Morag Macdonald (lead); Eleanor Root (both partners)
In-house (Auckland): Jon Harwood

For Flexicare
8 New Square (London): Charlotte May
11 South Square (London): Tom Alkin
DAC Beachcroft: No information

UK High Court, London
Richard Meade (presiding judge)