Sleep therapy equipment maker BMC Medical Co. Ltd. notched two wins, one in German court and other with the ITC, in its ongoing patent dispute with rival sleep equipment company ResMed.
The First District Court of Munich removed a preliminary injunction against BMC CPAP systems with detachable water tank. ResMed had claimed the device infringed on the German counterpart of its European Patent No. 1 210 139 B1 for a CPAP with a detachable tank, but the court cast doubt on the patent.
“[There is] a high possibility, that the patent in suit is not valid,” the First District Court of stated in a decision (official docket number 7 O 24459/13) in regard to ResMed’s patent. The also court stayed a parallel infringement proceeding until an opinion on validity in an ongoing invalidity proceeding.
Also, another European patent asserted by ResMed against BMC, EP 0 661 071, which relates to an automatic on/off function, has expired.
Based on these developments, BMC CPAP products with detachable water tank and automatic on/off function will be soon available again in Germany, according to James Xu, president of BMC Medical.
“We will continue to proceed with the ongoing legal proceedings, especially the invalidity actions against ResMed’s patent, while monitoring competitors’ patent portfolio,” Xu said. “Our proactive approach has proved to be successful.”
In the United States, the International Trade Commission (ITC) decided to review earlier determinations against BMC made in a 337 investigation by an Administrative Law Judge (ALJ).
According to BMC, the ITC apparently believed the ALJ improperly defined the scope of ResMed’s patent protection and modified the its interpretation of key claim terms. This effectively forced ResMed to withdraw one patent, U.S. Patent No. 7,926,487, and put the validity of another patent, U.S. Reissue Patent No. RE 44,453 in jeopardy.
Additionally, the ITC raised the question of whether ResMed satisfied the domestic industry requirement, which put into question whether ResMed had the right to a 337 investigation.
The 44,453 patent is the only patent ResMed asserted against 3B/BMC’s CPAP devices. A BMC statement said the company has brought the validity problems to the attention of the U.S. Patent and Trademark Office and asked for an inter partes review (IPR) of the 44,453 patent. The IPR process is ongoing.