New York University v. ResMed: Federal Circuit Affirms Patent Unpatentable
New York University asserted US9168344B2 — covering a system and method for diagnosing and treating patient breathing patterns — against ResMed Co., a leading sleep and respiratory therapy device maker. The Federal Circuit affirmed the patent unpatentable after 549 days of appellate proceedings, leaving NYU’s core sleep-therapy IP claim extinguished.
Federal Circuit ends NYU’s breathing-therapy patent challenge against ResMed
New York University filed appeal No. 24-1442 at the Court of Appeals for the Federal Circuit on 6 February 2024, challenging a lower tribunal’s ruling that US9168344B2 — a patent covering a system and method for the diagnosis and treatment of a patient’s breathing pattern — was unpatentable. The patent, originating from application No. US12/983628, sits at the intersection of sleep medicine, respiratory diagnostics, and digital health device technology, a domain dominated commercially by ResMed Co.
The Federal Circuit closed the case on 8 August 2025, issuing an affirmance on the ground of unpatentability. An affirmance at this level means the appellate court found no reversible error in the lower tribunal’s invalidity or cancellation determination, leaving that ruling fully intact. For NYU, the affirmed finding means US9168344B2 cannot be enforced; for ResMed, its products in the breathing-diagnosis and CPAP space face no further liability under this specific patent.
The 549-day duration suggests the Federal Circuit gave the case substantive consideration rather than resolving it on procedural grounds alone, consistent with the complexity of patentability disputes in the medical-device and digital-health space. The public record does not disclose the specific invalidity grounds — whether obviousness, anticipation, or subject-matter eligibility — that drove the affirmance, nor the precise claim scope at issue. What remains clear is that a university-originated patent in a high-value respiratory therapy market has now been conclusively invalidated through appellate review.
Filing to Unpatentable in 549 days
549 days from filing to close — above the Federal Circuit average for patent validity appeals
Federal Circuit affirms: what the unpatentability ruling means for both parties
Affirmance means no reversible error found below
When the Federal Circuit affirms, it concludes the lower tribunal committed no reversible legal or factual error. In an invalidity/cancellation context, this means the unpatentability determination stands as a final, binding judgment. The patent’s claims are rendered unenforceable — NYU cannot relitigate the same validity questions in any subsequent proceeding involving the same claims.
Appellate affirmance — no further error foundNYU’s breathing-therapy patent is extinguished
The affirmance is dispositive for New York University. US9168344B2 is confirmed unpatentable, meaning NYU loses any exclusivity rights it sought to enforce against ResMed or any other market participant under this patent. Further challenge options at the Federal Circuit are exhausted; any further review would require a petition to the U.S. Supreme Court, which is a high bar and statistically uncommon in patent validity disputes.
Patent rights extinguishedResMed secures full clearance on this patent
For ResMed Co., the affirmance provides definitive freedom to operate its breathing-pattern diagnosis and treatment systems without liability exposure under US9168344B2. Given ResMed’s commercial scale in CPAP and respiratory therapy, eliminating this patent removes a potentially significant royalty or injunction risk. The ruling also raises the bar for any future patent holder seeking to assert substantially similar claims against ResMed’s product lines.
Freedom to operate confirmedStronger invalidation precedent in sleep-therapy IP
This outcome suggests the patentability bar for system-and-method claims in breathing-pattern diagnostics and treatment is being actively tested and enforced at the appellate level. Competitors and new entrants in the respiratory therapy and sleep medicine device market should audit similar portfolio claims for invalidity exposure. University-originated medical-device patents in this space may face heightened scrutiny in post-grant proceedings.
Post-grant risk elevatedFull party and counsel information
| Role | Name | Type | Detail |
|---|---|---|---|
| Plaintiff | New York University | Individual | Research university — holder of US9168344B2 covering breathing-pattern diagnosis and treatment systemsSearch in Eureka ↗ |
| Defendant | Resmed, Co. | Company | ResMed Co. — global leader in CPAP, ventilation, and respiratory care devices and softwareSearch in Eureka ↗ |
| Plaintiff counsel | Cedric Tan | Attorney | Counsel for New York UniversitySearch in Eureka ↗ |
| Plaintiff counsel | Michael A. Siem | Attorney | Counsel for New York UniversitySearch in Eureka ↗ |
| Plaintiff counsel | Robert J. Gajarsa | Attorney | Counsel for New York UniversitySearch in Eureka ↗ |
| Plaintiff law firm | Devlin Law Firm LLC | Law Firm | Representing New York UniversitySearch in Eureka ↗ |
| Defendant counsel | ALAN BILLHARZ | Attorney | Counsel for Resmed, Co.Search in Eureka ↗ |
| Defendant counsel | David M. Tennant | Attorney | Counsel for Resmed, Co.Search in Eureka ↗ |
| Defendant counsel | ERIC E. LANCASTER | Attorney | Counsel for Resmed, Co.Search in Eureka ↗ |
| Defendant counsel | Grace Wang | Attorney | Counsel for Resmed, Co.Search in Eureka ↗ |
| Defendant counsel | KAMILAH ALEXANDER | Attorney | Counsel for Resmed, Co.Search in Eureka ↗ |
| Defendant counsel | Lisa K. Nguyen | Attorney | Counsel for Resmed, Co.Search in Eureka ↗ |
| Defendant law firm | Paul Hastings, LLP | Law Firm | Representing Resmed, Co.Search in Eureka ↗ |
| Presiding judge | Judge N/A | Judge | Court of Appeals for the Federal CircuitSearch in Eureka ↗ |
Official order — verbatim text
The single-word verdict ‘AFFIRMED’ on a basis of ‘Unpatentable’ carries significant legal weight at the Federal Circuit. The court applies a deferential standard to factual findings underpinning patentability — such as prior-art scope and level of ordinary skill — while reviewing legal conclusions de novo. An affirmance on this basis means every challenged claim of US9168344B2 failed to meet patentability requirements as adjudicated below, and the Federal Circuit found no error sufficient to disturb that conclusion. The patent is now definitively unenforceable.
US9168344B2 — breathing pattern diagnosis and treatment system
US9168344B2, originating from application No. US12/983628, protects a system and method for the diagnosis and treatment of a breathing pattern of a patient. This class of patent sits at the convergence of respiratory medicine, digital health signal processing, and therapeutic device control — the core technical domain of CPAP, adaptive ventilation, and related sleep-disorder treatments. The application-number prefix suggests filing in the 2010s, a period of intensive patent activity in connected medical devices.
For the respiratory therapy industry, system-and-method patents covering breathing-pattern diagnosis represent high-stakes IP: they can theoretically read on both hardware device architectures and software-driven diagnostic algorithms. ResMed’s product portfolio — spanning CPAP machines, cloud-connected therapy platforms, and monitoring software — makes it a natural litigation target for such patents. The Federal Circuit’s affirmance of unpatentability now removes this specific IP risk, but organisations holding or monitoring adjacent claims in respiratory diagnostics should treat this outcome as a signal to reassess portfolio durability.
Should you run an FTO against US9168344B2 and related breathing-pattern patents?
Any company developing, manufacturing, or commercialising systems that diagnose or treat patient breathing patterns — including CPAP devices, adaptive ventilation platforms, sleep apnea monitoring tools, or respiratory health software — should track the claim landscape around US9168344B2 and its family. Although this specific patent has been affirmed unpatentable, related continuation or divisional applications, or patents with overlapping claim scope held by NYU or third parties, may still pose FTO concerns.
PatSnap Eureka’s FTO Search Agent enables R&D and IP teams to map the full claim landscape around breathing-pattern diagnosis and treatment technology — identifying surviving related patents, prosecution history, and forward citation networks. Running a targeted FTO against the US9168344B2 family and its technical neighbours gives product teams the confidence to develop and launch respiratory therapy products with a clear-eyed view of remaining IP exposure.
Run a freedom-to-operate analysis on US9168344B2 to assess your product’s exposure
Run FTO in Eureka →Similar Federal Circuit patent validity appeals in respiratory and sleep therapy
Cases involving Federal Circuit patentability challenges to medical-device and respiratory therapy system patents — comparable in technology domain and appellate posture to NYU v. ResMed.
What this case signals for the respiratory therapy IP landscape
The Federal Circuit’s affirmance in NYU v. ResMed carries real consequences for patent strategy in digital health and sleep medicine.
University patents in medical-device tech face tough appellate scrutiny
NYU’s loss at the Federal Circuit on a patentability ground signals that university-originated system-and-method patents in respiratory diagnostics are not insulated from cancellation. IP teams at research institutions should re-examine their CPAP and sleep-therapy portfolios for claim-drafting vulnerabilities before enforcement campaigns.
ResMed’s successful defence strengthens its competitive moat
With US9168344B2 affirmed unpatentable, ResMed removes a royalty or injunction overhang from its breathing-diagnosis product lines. Competitors monitoring ResMed’s litigation exposure should note that the company is willing and able to pursue full Federal Circuit invalidation of asserted patents rather than settle.
University v Resmed — key questions answered
The Federal Circuit affirmed the lower tribunal’s finding that US9168344B2 — NYU’s patent covering a system and method for diagnosis and treatment of a patient’s breathing pattern — was unpatentable. The case closed on 8 August 2025 after 549 days. The affirmance means the patent’s claims are definitively invalid and unenforceable.
US9168344B2 is a U.S. patent assigned to New York University, originating from application No. US12/983628. It covers a system and method for the diagnosis and treatment of a breathing pattern of a patient — technology relevant to CPAP devices, adaptive ventilation systems, and sleep-disorder diagnostic platforms. The Federal Circuit affirmed it unpatentable in Case No. 24-1442.
An affirmance on the ground of unpatentability means the Federal Circuit found no reversible error in the lower tribunal’s cancellation or invalidity determination. All challenged claims of the patent fail to meet patentability requirements. The patent cannot be enforced, and the patent holder’s options are limited to a petition for certiorari to the U.S. Supreme Court — a rare and high-bar avenue.
ResMed Co. obtains definitive freedom to operate its breathing-pattern diagnosis and treatment systems without liability exposure under US9168344B2. The Federal Circuit’s affirmance removes any royalty, injunction, or damages risk under this patent. It also signals ResMed’s willingness to pursue full appellate invalidation rather than settle university-originated patent assertions.
The public case record addresses only US9168344B2. Continuation applications, divisional patents, or related family members sharing similar claim scope held by NYU or third parties may still be active. Companies in the respiratory therapy, CPAP, or sleep medicine device space should conduct an FTO analysis against the full US12/983628 family and adjacent breathing-pattern diagnostic patent portfolios to assess residual risk.
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