BMC Medical Co., Ltd. and 3B Medical, Inc. (“3B/BMC”) announced today victories in a first round of a global battle with ResMed .
“A high possibility, that the patent in suit is not valid,” the First District Court of Munich stated in a decision (official docket number 7 O 24459/13), referring to the German counterpart of ResMed’s European Patent No. 1 210 139 B1 relating to a CPAP system with detachable water tank. The Court removed the preliminary injunction based on that German counterpart, and stayed a parallel infringement proceeding until an opinion on validity in an ongoing invalidity proceeding.
Furthermore, another European patent asserted by ResMed against BMC, EP 0 661 071 relating to Auto On/Off function, has expired.
Mr. Xu, president of BMC Medical, confirmed that CPAP products with detachable water tank and Auto On/Off function will be soon available again in Germany. “We will continue to proceed with the ongoing legal proceedings, especially the invalidity actions against ResMed’s patent, while monitoring competitors’ patent portfolio. Our proactive approach has proved to be successful”, said Mr. Xu.
Meanwhile, in the U.S., the International Trade Commission (ITC) recently decided to review earlier determinations against BMC made in a 337 investigation by an Administrative Law Judge (ALJ) below. The ITC apparently believed the ALJ improperly defined the scope of ResMed’s patent protection and modified the ALJ’s interpretation of key claim terms, effectively forcing ResMed to withdraw one patent, U.S. Patent No. 7,926,487, and putting the validity of another patent, U.S. Reissue
Patent No. RE 44,453 (“’453 patent”) in jeopardy. In addition, the ITC raises the question of whether ResMed satisfies the domestic industry requirement, i.e., whether ResMed even had the right to a 337 investigation to begin with.
The ’453 patent is the only patent ResMed asserted against 3B/BMC’s CPAP devices. BMC has already 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 ’453 patent. The IPR is ongoing.
In China, ResMed also faces problems of overreaching patents. BMC challenged validity of seven (7) ResMed patents, and the SIPO has already declared four (4) invalid, while continuing to review the other three (3).
3B/BMC is a global leader in the development, manufacturing and marketing of medical products forthe treatmentandmanagementofsleepdisorderedbreathing.