New York University v. ResMed: Federal Circuit Affirms Patent Invalid
New York University asserted US9427539B2 — a patent covering systems and methods for diagnosing and treating patient breathing patterns — against ResMed, a dominant sleep and respiratory device maker. The Federal Circuit affirmed the patent’s unpatentability in a Rule 36 judgment, ending NYU’s challenge after 550 days.
NYU’s breathing-pattern patent fails Federal Circuit review
New York University filed appeal case 24-1434 at the Court of Appeals for the Federal Circuit on February 5, 2024, challenging a lower tribunal’s finding that US9427539B2 was unpatentable. The patent in dispute covers a system and method for the diagnosis and treatment of a breathing pattern of a patient — technology squarely relevant to ResMed’s core sleep-disordered breathing and respiratory care product portfolio. ResMed, Co. was represented by Paul Hastings LLP, while NYU retained Devlin Law Firm LLC.
The Federal Circuit resolved the appeal on August 8, 2025, issuing a per curiam affirmance under Federal Circuit Rule 36 — a summary judgment mechanism the court uses when it determines the lower tribunal’s decision is correct and a written opinion would add nothing of precedential value. The affirmance confirms that the unpatentability finding against US9427539B2 stands as the final word, leaving NYU without enforceable patent rights in this claim set against ResMed or any other party.
At 550 days, the timeline is consistent with an appeal that proceeded through full briefing rather than early dismissal, suggesting NYU mounted a substantive challenge before the court declined to disturb the lower ruling. A Rule 36 affirmance is deliberately terse and creates no new precedent, meaning the specific legal rationale for invalidity remains grounded in the record below. The public record does not disclose whether settlement discussions occurred in parallel or whether NYU holds continuation applications that may survive the cancellation.
Filing to Unpatentable in 550 days
550 days from filing to Federal Circuit judgment — typical Federal Circuit appeal runs 12–18 months
Federal Circuit affirms: what the Rule 36 judgment means for both parties
Rule 36 affirmance: the court found no reversible error below
A Federal Circuit Rule 36 judgment affirms the lower tribunal without a written opinion, signalling that the panel found the decision legally sound and that elaboration would add no precedential value. It is not a procedural shortcut — the court has reviewed the merits and concluded the unpatentability ruling was correct. For US9427539B2, this means the cancellation of the patent is judicially confirmed at the appellate level.
Appellate affirmance — no reversible errorNYU loses enforceability of US9427539B2 against the sector
With the Federal Circuit affirming unpatentability, NYU cannot enforce US9427539B2 against ResMed or any third party. The patent is cancelled on the merits. NYU’s remaining options are limited: petition for en banc rehearing (rarely granted) or seek certiorari at the Supreme Court. Any commercialisation strategy premised on this patent’s exclusivity is foreclosed unless NYU holds surviving continuation claims not at issue in this proceeding.
Patent cancelled — no further enforcementResMed secures freedom to operate without licensing exposure
ResMed successfully defended the unpatentability finding through appellate review, eliminating the licensing or injunction risk that US9427539B2 represented. The Rule 36 affirmance forecloses NYU from reviving this patent claim. For ResMed’s respiratory and sleep-therapy product lines, the decision removes a cloud on freedom to operate and strengthens its litigation track record defending IP challenges from research institutions.
FTO secured — challenge extinguishedBreathing-pattern IP landscape: university patents face higher scrutiny
This outcome suggests that broadly framed respiratory-diagnosis patents originating from academic institutions face meaningful patentability hurdles when challenged by well-resourced device makers. The Rule 36 affirmance, while non-precedential, consistently signals the Federal Circuit’s comfort with the lower tribunal’s invalidity analysis. Competitors and licensees in the sleep-therapy and respiratory monitoring sectors should review whether similar university-originated patents in their portfolios carry comparable validity risk.
University patent risk — sector-wide signalFull party and counsel information
| Role | Name | Type | Detail |
|---|---|---|---|
| Plaintiff | New York University | Individual | Research university and patent holder — asserting US9427539B2 on breathing-pattern diagnosis systemsSearch in Eureka ↗ |
| Defendant | Resmed, Co. | Company | ResMed, Co. — global manufacturer of sleep-disordered breathing and respiratory care devicesSearch 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 law firm | Devlin Law Firm LLC | Law Firm | Representing New York UniversitySearch in Eureka ↗ |
| Defendant counsel | David M. Tennant | Attorney | Counsel for Resmed, Co.Search in Eureka ↗ |
| Defendant counsel | Grace Wang | 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 Federal Circuit’s per curiam order — ‘PER CURIAM AFFIRMED. See Fed. Cir. R. 36’ — is the court’s most succinct form of merits disposition. Rule 36 affirmances are issued when the panel unanimously finds that the lower tribunal committed no reversible error and that a written opinion would be duplicative or non-precedential. For NYU, this closes the appellate path on US9427539B2’s patentability. For ResMed, the judgment is final and fully protective.
US9427539B2 — Breathing pattern diagnosis and treatment system
US9427539B2, filed under application number US15/015944, protects a system and method for the diagnosis and treatment of a breathing pattern of a patient. The patent sits at the intersection of medical device technology and clinical diagnostics, covering the detection, characterisation, and therapeutic response to abnormal breathing patterns — a domain directly relevant to sleep-disordered breathing conditions such as obstructive sleep apnoea. The application’s filing history places it in a technology generation where algorithmic and sensor-based respiratory monitoring was advancing rapidly.
For the respiratory device sector, US9427539B2 represented a potentially significant enforcement asset given that ResMed’s core product lines — CPAP devices, flow generators, and connected sleep therapy platforms — operate precisely within the clinical problem space the patent addresses. The Federal Circuit’s affirmance of unpatentability removes this specific threat but highlights a broader dynamic: university-originated respiratory patents are actively asserted against device manufacturers, and companies must maintain vigilance over academic institution filing activity in breathing-pattern diagnostics and adaptive therapy algorithms.
Should you run an FTO against US9427539B2’s patent family?
Although US9427539B2 has been affirmed unpatentable, product teams and IP counsel working on breathing-pattern diagnosis systems, adaptive CPAP therapy, or respiratory monitoring platforms should not treat this case as a complete clearance. The patent family stemming from the same inventors or NYU’s technology transfer office may include continuation or divisional applications with claim sets not addressed in this proceeding. Any company developing or commercialising patient breathing-pattern detection and treatment technology should commission a family-level FTO search before launch or licensing.
PatSnap Eureka’s FTO Search Agent enables R&D and IP teams to map the full patent family around US9427539B2, surface related applications by the same inventors and assignee, and flag claim language in pending continuations that may pose future infringement risk. Eureka’s litigation overlay also surfaces how courts have treated analogous claim constructions in the respiratory diagnostics space — giving your team the competitive intelligence needed to design around risk before it becomes a dispute.
Run a freedom-to-operate analysis on US9427539B2 to assess your product’s exposure
Run FTO in Eureka →Similar Federal Circuit appeals in respiratory and sleep-therapy patent disputes
Cases involving Federal Circuit appeals on breathing-pattern and respiratory diagnostic patents, including university-originated assertions against medical device companies.
What this case signals for the respiratory device IP landscape
NYU’s failed appeal reinforces key dynamics in how respiratory-tech patents from academic institutions fare at the Federal Circuit.
Rule 36 disposals signal Federal Circuit comfort with IPR-style invalidity findings
When the Federal Circuit disposes of a patent validity appeal under Rule 36, it indicates the panel saw no arguable error in the unpatentability ruling. Companies operating in the respiratory and sleep-therapy space should treat this as confirmation that the underlying invalidity rationale was robust — reducing the chance of revival through further proceedings.
ResMed’s defence model: challenge patent validity rather than design around
ResMed’s successful defence — retaining Paul Hastings through Federal Circuit level — reflects a litigation strategy of attacking patent validity at the root rather than seeking design-around or licensing accommodation. Competitors facing similar university-originated assertions in respiratory tech may find this approach instructive when assessing early case strategy.
University v Resmed — key questions answered
The Federal Circuit issued a per curiam affirmance under Rule 36 on August 8, 2025, confirming that US9427539B2 — NYU’s patent on a system and method for diagnosis and treatment of a patient breathing pattern — is unpatentable. The ruling leaves the lower tribunal’s invalidity finding intact and forecloses NYU from enforcing this patent against ResMed or any other party.
A Rule 36 affirmance means the Federal Circuit reviewed the merits and found no reversible error in the lower tribunal’s decision, but elected not to write a formal opinion because it would add no new legal precedent. For the patent at issue, it means cancellation is judicially confirmed at the highest patent appellate level short of the Supreme Court. It is a merits disposition, not a procedural dismissal.
No. The Federal Circuit’s affirmance of unpatentability means US9427539B2 is cancelled. NYU cannot assert this patent in future infringement proceedings. Potential enforcement could only resume if NYU successfully petitioned for en banc rehearing or Supreme Court certiorari — both of which are granted at an extremely low rate.
US9427539B2 covers a system and method for diagnosis and treatment of a breathing pattern of a patient. ResMed is a global leader in CPAP devices, adaptive servo-ventilation, and connected sleep therapy systems — all of which address abnormal breathing patterns during sleep. The patent’s scope placed it directly in ResMed’s core product territory, making the validity challenge commercially significant for both parties.
The cancellation of US9427539B2 clears this specific patent, but does not necessarily provide full FTO clearance. NYU or related inventors may hold continuation or divisional applications covering related subject matter that were not at issue in case 24-1434. Companies in the respiratory and sleep-therapy device space should conduct a patent family search around US9427539B2 and NYU’s broader respiratory diagnostic portfolio before concluding that FTO is established.
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