NYU v. ResMed: All Seven PAP Machine Patents Invalidated — Case Dismissed With Prejudice
New York University asserted seven patents against ResMed’s AirSense 10 AutoSet positive airway pressure machines in Delaware federal court. After a court-ordered stay, the Patent Trial and Appeal Board invalidated every asserted claim across seven IPR proceedings, the Federal Circuit affirmed, and the parties stipulated to dismissal with prejudice — ending 1,624 days of litigation with a total defeat for NYU.
Seven Patents, Seven IPRs, Zero Surviving Claims: NYU’s CPAP Enforcement Campaign Collapses
New York University filed suit against ResMed Co. in the District of Delaware on June 2, 2021, asserting infringement of seven United States patents — US9,867,955, US6,988,994, US9,168,344, US9,108,009, US9,427,539, US9,533,115, and US10,384,024 — by ResMed’s AirSense 10 AutoSet positive airway pressure machine series. The patents span a range of filing dates and collectively reflect NYU’s claimed foundational research in respiratory therapy and PAP device technology. The case was assigned to Judge Colm F. Connolly in the District of Delaware.
ResMed responded by filing seven parallel inter partes review petitions (IPR Nos. 2022-00988 through 2022-00994) at the Patent Trial and Appeal Board, one for each asserted patent. The district court stayed the litigation on April 10, 2023 pending resolution of those proceedings. The PTAB issued Final Written Decisions finding all asserted claims of all seven patents unpatentable. NYU appealed to the U.S. Court of Appeals for the Federal Circuit, which affirmed the PTAB’s judgments in a consolidated ruling issued August 8, 2025, with mandate issuing October 15, 2025. The parties then stipulated to dismissal of the district court action in its entirety with prejudice under Federal Rule of Civil Procedure 41(a)(1)(A)(ii), closing the case on November 12, 2025.
The 1,624-day duration reflects how patent cases that spawn parallel IPR proceedings can be substantially extended beyond the standard district court schedule, even while the court itself remains largely inactive during a stay. The near-total reliance on the IPR pathway — seven petitions filed in parallel, each succeeding — is consistent with a targeted, comprehensive invalidity campaign by a sophisticated respondent. What remains unknown from the public record is whether any licensing negotiations occurred during the stay period, whether NYU had already pursued or considered licensing ResMed prior to litigation, and whether the Federal Circuit’s consolidated affirmance was on written opinion or by summary disposition.
Filing to Dismissed with Prejudice in 1624 days
1,624 days — roughly 4.5 years, longer than the median patent case in Delaware
Dismissed with prejudice after total IPR invalidation: what this means for both parties
Dismissal with prejudice after Federal Circuit affirmance of IPR
Once the Federal Circuit affirmed the PTAB’s Final Written Decisions invalidating all asserted claims, NYU had no surviving patent rights to enforce. The stipulated dismissal with prejudice under Rule 41(a)(1)(A)(ii) is a formal acknowledgment of that reality: NYU cannot re-file this action or assert these same invalidated claims against ResMed. The dismissal is not a settlement — it is a terminal procedural step following merits-based patent cancellation.
Claims cancelled — no re-filing possibleNYU loses all seven patents — enforcement options exhausted
With all asserted claims found unpatentable by the PTAB and that ruling affirmed by the Federal Circuit, NYU’s patents are effectively dead as enforcement tools against ResMed and, critically, against any third party. PTAB invalidity rulings in IPR have estoppel and in rem effects that extend beyond the named respondent. NYU’s ability to license or assert these specific patents in future proceedings is severely curtailed, if not eliminated entirely.
Patents cancelled — no licensing leverage remainsResMed’s IPR strategy delivers a clean sweep across all seven patents
ResMed’s decision to file seven parallel IPR petitions proved strategically decisive. By invalidating every asserted claim at the PTAB level and defending that outcome at the Federal Circuit, ResMed avoided any district court merits ruling on infringement or damages while achieving permanent cancellation of the asserted patent portfolio. The dismissal with prejudice closes the litigation chapter entirely, leaving ResMed free to operate its AirSense 10 AutoSet line without threat from these specific patents.
Full invalidity — district case never reached meritsPTAB IPR remains the dominant weapon against university PAP therapy patents
This outcome reinforces that university-held respiratory therapy patents — even those with broad family coverage — are vulnerable to coordinated IPR campaigns by well-resourced manufacturers. For competitors in the PAP and sleep therapy device sector, the case signals that challenging patent validity at the PTAB before or alongside district court litigation can neutralise even large patent portfolios. It also suggests courts may be increasingly willing to grant stays pending IPR when the petitioner targets every asserted patent simultaneously.
IPR strategy validated for PAP sectorFull party and counsel information
| Role | Name | Type | Detail |
|---|---|---|---|
| Plaintiff | New York University | Individual | Research university — holder of 7 PAP therapy patents including US9,867,955Search in Eureka ↗ |
| Defendant | Resmed, Co. | Company | ResMed Co. — global manufacturer of the AirSense 10 AutoSet PAP machine seriesSearch in Eureka ↗ |
| Plaintiff counsel | Christopher J. Belter | Attorney | Counsel for New York UniversitySearch in Eureka ↗ |
| Plaintiff counsel | Laura A. Colca | Attorney | Counsel for New York UniversitySearch in Eureka ↗ |
| Plaintiff counsel | Lynn Lehnert | Attorney | Counsel for New York UniversitySearch in Eureka ↗ |
| Plaintiff counsel | Michael A. Siem | Attorney | Counsel for New York UniversitySearch in Eureka ↗ |
| Plaintiff counsel | Richard Charles Weinblatt | Attorney | Counsel for New York UniversitySearch in Eureka ↗ |
| Plaintiff counsel | Stamatios Stamoulis | Attorney | Counsel for New York UniversitySearch in Eureka ↗ |
| Plaintiff law firm | Stamoulis & Weinblatt LLC | Law Firm | Representing New York UniversitySearch in Eureka ↗ |
| Defendant counsel | Anthony David Raucci | Attorney | Counsel for Resmed, Co.Search in Eureka ↗ |
| Defendant counsel | Cameron Paul Clark | Attorney | Counsel for Resmed, Co.Search in Eureka ↗ |
| Defendant counsel | Jack B. Blumenfeld | Attorney | Counsel for Resmed, Co.Search in Eureka ↗ |
| Defendant counsel | Rodger Dallery Smith , II | Attorney | Counsel for Resmed, Co.Search in Eureka ↗ |
| Defendant law firm | Morris, Nichols, Arsht & Tunnell LLP | Law Firm | Representing Resmed, Co.Search in Eureka ↗ |
| Presiding judge | Judge Colm F. Connolly | Judge | Delaware District CourtSearch in Eureka ↗ |
Official order — verbatim text
The stipulated dismissal language confirms that all asserted claims across all seven patents were found unpatentable in PTAB Final Written Decisions, and that the Federal Circuit issued an affirming mandate on October 15, 2025. The use of Rule 41(a)(1)(A)(ii) — a voluntary stipulated dismissal — should not obscure what drove it: NYU had no viable appellate avenue remaining after the Federal Circuit’s consolidated affirmance. The with-prejudice designation ensures no revival of these specific claims against ResMed. For ResMed, the record is unambiguous: validity was contested and won at every level.
US9,867,955 and six further patents — positive airway pressure therapy technology
The seven asserted patents — US9,867,955, US6,988,994, US9,168,344, US9,108,009, US9,427,539, US9,533,115, and US10,384,024 — collectively cover a range of technologies in positive airway pressure therapy for conditions such as obstructive sleep apnoea. The portfolio spans application filings from as early as US10/642459 through to US15/667380, reflecting NYU’s claimed foundational and follow-on research in PAP device design, automated pressure titration, and respiratory therapy management systems. The breadth of the portfolio — seven patents asserted simultaneously — suggests NYU positioned these as covering core aspects of PAP device function rather than peripheral features.
The strategic significance of this portfolio lies in its targeting of ResMed’s flagship AirSense 10 AutoSet — one of the most commercially prominent automated CPAP platforms globally. A successful infringement verdict could have created substantial licensing leverage against the broader PAP device market. However, the PTAB’s unanimous unpatentability findings across all seven patents — upheld by the Federal Circuit — indicate that the prior art landscape in PAP therapy was sufficiently developed to undermine the novelty or non-obviousness of NYU’s claimed inventions. Competitors and licensees in the sleep therapy and respiratory device space can treat these seven patents as extinguished enforcement risks.
Should you run an FTO against NYU’s PAP therapy patent portfolio?
R&D teams and product counsel developing positive airway pressure devices, automated CPAP systems, or respiratory therapy platforms should note that the seven patents asserted in this case — US9,867,955, US6,988,994, US9,168,344, US9,108,009, US9,427,539, US9,533,115, and US10,384,024 — have had all asserted claims cancelled by the PTAB and affirmed by the Federal Circuit. While these specific claims no longer pose an enforcement threat, NYU or related entities may hold related patents, continuations, or divisionals in the PAP therapy space that have not been invalidated and warrant monitoring.
PatSnap Eureka’s FTO Search Agent can rapidly map NYU’s remaining patent family members, identify any continuation or continuation-in-part applications that share priority chains with the invalidated patents, and flag live claims that could present residual risk. For companies active in the AirSense-class PAP device segment or adjacent respiratory therapy markets, an Eureka-powered FTO analysis provides the patent landscape clarity needed to proceed with confidence — and to anticipate any future enforcement activity from the same academic portfolio.
Run a freedom-to-operate analysis on US9168344B2 to assess your product’s exposure
Run FTO in Eureka →Similar PAP device and respiratory therapy patent litigation in US federal courts
Explore related positive airway pressure and sleep therapy patent disputes litigated in the District of Delaware and before the PTAB and Federal Circuit.
What NYU v. ResMed signals for the PAP device IP landscape
Seven patents, seven IPRs, zero surviving claims. This case is a masterclass in defensive IPR strategy — and a warning for university patent enforcers.
Parallel IPR filings across an entire asserted portfolio can neutralise litigation
ResMed filed seven IPR petitions simultaneously — one per asserted patent. This saturated approach, combined with a stay of district court proceedings, allowed ResMed to resolve all patent validity questions before any infringement exposure was adjudicated. Companies facing multi-patent assertions in Delaware should evaluate whether a comprehensive IPR campaign is the most efficient path to case resolution.
University patent portfolios in medical device tech face heightened IPR risk
NYU’s patents, rooted in academic research on respiratory therapy, failed to survive PTAB scrutiny across all seven petitions. University licensors and enforcement vehicles should assess prior art exposure in biomedical device patents before initiating high-stakes litigation, particularly against respondents with resources to mount coordinated IPR campaigns.
University v Resmed — key questions answered
All asserted claims across all seven patents — US9,867,955, US6,988,994, US9,168,344, US9,108,009, US9,427,539, US9,533,115, and US10,384,024 — were found unpatentable by the PTAB in seven parallel IPR proceedings. The Federal Circuit affirmed those decisions in August 2025, and the district court case was subsequently dismissed with prejudice in November 2025.
The court stayed proceedings on April 10, 2023 pending resolution of ResMed’s seven inter partes review petitions at the Patent Trial and Appeal Board. This is consistent with Delaware courts’ practice of granting stays when IPR petitions cover the entire asserted patent portfolio, as a PTAB unpatentability finding can moot the need for district court proceedings entirely.
NYU accused ResMed’s AirSense 10 AutoSet series of positive airway pressure machines of infringing the seven asserted patents. The AirSense 10 AutoSet is one of ResMed’s flagship automated CPAP platforms used in the treatment of obstructive sleep apnoea.
The public case record confirms the Federal Circuit issued a consolidated decision affirming the PTAB’s Final Written Decisions on August 8, 2025, with mandate issuing October 15, 2025. Whether this was a precedential written opinion or a Rule 36 summary affirmance is not confirmed in the district court record available here.
Dismissal with prejudice under Rule 41(a)(1)(A)(ii) bars NYU from re-filing this specific action against ResMed on these patents. More significantly, PTAB Final Written Decisions cancelling patent claims have broad effect — cancelled claims cannot be enforced against any party, not just the IPR petitioner. NYU’s ability to assert the invalidated claims in any future proceeding is effectively eliminated.
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