Federal Circuit Affirms Invalidity of NYU Breathing Patent in ResMed Dispute

Case Overview

The Parties

The Patent at Issue

This dispute centered on a patent covering methods and systems for identifying and treating abnormal breathing patterns, a technology area with direct commercial relevance to sleep disorder diagnostics, respiratory monitoring, and automated CPAP therapy optimization.

• • US10384024B2 — System and method for diagnosis and treatment of a breathing pattern of a patient

Litigation Timeline & Procedural History

The case entered the Federal Circuit on February 6, 2024, as an appeal—meaning prior proceedings at the Patent Trial and Appeal Board (PTAB) or district court level preceded this filing. The 549-day duration from appellate filing to final disposition reflects a thorough review process rather than an expedited ruling.

The Federal Circuit, sitting as the exclusive appellate court for U.S. patent matters, reviewed the patentability determination below. The verdict cause — an **Invalidity/Cancellation Action** — strongly suggests this dispute traveled through an inter partes review (IPR) or post-grant review (PGR) proceeding at the USPTO before reaching the Federal Circuit.

The Verdict & Legal Analysis

Outcome

The Federal Circuit **affirmed** the lower tribunal’s finding that NYU’s US10384024B2 is **unpatentable**. No damages were awarded — consistent with a cancellation action where the patent itself is invalidated rather than a finding of non-infringement following an infringement trial. No injunctive relief was at issue given the nature of the cancellation proceeding.

Verdict Cause Analysis

The basis of termination — **Unpatentable** — indicates the court upheld a finding that the claims of US10384024B2 failed to satisfy the statutory requirements for patentability under 35 U.S.C. The most common grounds in medical device and diagnostic method patent cancellations are:

• **Obviousness (§103):** Prior art systems for breathing pattern analysis and treatment may have rendered the claimed methods obvious to a person of ordinary skill in respiratory medicine or biomedical engineering.
• **Lack of Written Description or Enablement (§112):** Diagnostic method patents covering broad claim language for “systems and methods” of breathing analysis have faced successful enablement challenges.

Legal Significance

This outcome carries **precedential weight** for university-held medical diagnostic patents. Several dimensions merit close attention:

• **Diagnostic Method Patent Vulnerability:** Patents claiming systems and methods for patient diagnosis continue to face validity challenges post-*Alice Corp. v. CLS Bank* (§101 abstractness) and traditional §103 obviousness attacks.
• **PTAB-to-Federal Circuit Pipeline:** The invalidity/cancellation action route remains a cost-effective and strategically powerful tool for well-funded defendants like ResMed.
• **University Patent Assertion Risks:** Research institution patents, often drafted with broad claims to maximize licensing potential, may lack the prosecution history depth needed to survive IPR challenges and subsequent Federal Circuit review.

Strategic Takeaways

For Patent Holders (Universities & Research Institutions):

• Draft claims with specificity that anticipates PTAB review, not just licensing negotiations.
• Build robust written description support for algorithmic and system-level diagnostic claims.
• Evaluate continuation strategy to preserve narrower, more defensible claim sets.

For Accused Infringers (Medical Device Companies):

• IPR/PGR petitions remain powerful first-line defenses against university patent assertions.
• A six-attorney defense team investment at the Federal Circuit level is justified when core product lines are threatened.
• Document prior art comprehensively at the petition stage — the Federal Circuit gives PTAB factual findings substantial deference.

For R&D Teams:

• Freedom-to-operate (FTO) analyses for breathing diagnosis and treatment systems should now account for the narrowed patent landscape.
• Prior art cited in successful PTAB proceedings becomes publicly available intelligence for competitive product development.