More Decisions in Favor of BMC Medical Co., Ltd. in its Ongoing Patent War Against ResMed

2016-04-13 22:00 2068

BEIJING, April 13, 2016 /PRNewswire/ -- In the United States, the ITC's decision in the investigation that was initiated based on ResMed's Complaint is currently on review by the Federal Circuit Court of Appeals. The ITC found that the asserted claims of U.S. Patent No. RE 44,453, covering a humidifier used with a CPAP apparatus, were invalid based on prior art. ResMed appealed that decision to the Federal Circuit. On March 16, 2016, the parties filed a joint motion to voluntarily dismiss ResMed's appeal. The Federal Circuit issued an Order of dismissal in favor of BMC on March 29, 2016, terminating ResMed's appeal.

BMC cross-appealed the ITC's orders as to certain ResMed patents relating to masks used with CPAP products. On March 17, 2016, the ITC, as one of the parties to the appeal, moved to remand the case to the ITC to determine whether ResMed's activities and investments in the United States qualify as a "domestic industry." In its motion, the ITC noted that a key recent decision of the Federal Circuit "would appear to stand as an obstacle to ResMed's proof of the existence of a domestic industry related to the mask patents." The ITC further noted that it "will suspend its remedial orders, which are directed to the mask patents, as it considers the issue." The Federal Circuit has not yet ruled on the ITC's remand motion. A finding that ResMed failed to meet the domestic industry requirement would mean that BMC prevailed in demonstrating no violation of Section 337 with respect to the mask patents.

In Germany, the Federal Patent Court has accepted all requests of BMC and nullified the German part of the European Patent 1 210 139 of ResMed R&D Germany GmbH relating to a CPAP system with detachable water tank in the attacked scope, i.e. patent claims 1-6 and claims 8-12 depending directly or indirectly on the claims 1-6. Claim 7 was not attacked by BMC as it is irrelevant to its products and was maintained. The court found all attacked patent claims as well as auxiliary requests with amended claims filed by ResMed during the proceeding were invalid based on prior art. The decision can be appealed by ResMed to the German Federal Court of Justice. This is a new decision in favor of BMC following a series of decisions in favor of BMC in parallel cases including the removal of the preliminary injunction (official docket number 7 O 24459/13), stay of the parallel infringement proceeding (official docket number 7 O 24817/13) and dismissal of the appeal of ResMed against the decision to remove the preliminary injunction (Court of Appeal Munich, official docket number: 6 U 4842/14) in the last two years.

On April 5, 2016, ResMed and BMC reached a settlement for Germany during the oral hearing of the nullity action 4 Ni 23/14 (EP) against the German part of the European Patent 1 356 842 B1 of ResMed. ResMed agrees to withdraw the infringement and preliminary injunction proceedings 7 O 24813/13 and 7 O 24458/13 pending at the Regional Court of Munich I (Landgericht Munchen I). BMC agrees to cease and desist to provide masks in Germany according to a limited scope comparing to the granted patent claim 1. Both parties agree to bear their own costs.

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Source: BMC Medical Co., Ltd.