No Elbow Room Given for Resmed’s Broad Nasal Mask System Claims
In Resmed Pty Ltd v Commissioner of Patents [2024] NZHC 1881 Resmed’s appeal concerning the claims of its nasal mask system was unsuccessful. The High Court of New Zealand upheld the Assistant Commissioner’s finding that the claims were not fairly based on the patent specification.
Background
The patent application in question (New Zealand Patent Application No. 786047) was filed on 10th March 2022. However, through a series of divisional filings, it was requested that the date of filing of this patent application be antedated to the date of filing of the PCT application. The PCT application had a deemed filing date that preceded the commencement of the Patents Act 2013, and so the provisions of the Patents Act 1953 applied.
Under the Patents Act 1953 the determination of whether the claims go beyond the disclosure in the specification is assessed on the basis of whether the claims are fairly based on the matter disclosed in the specification. In comparison, the Patents Act 2013 requires the claims to be supported by the matter disclosed in the complete specification, which is a higher hurdle to clear.
The classic test for fair basis is the test that was formulated in the UK Patents Appeal Tribunal decision Mond Nickel Co Ltd’s Application [1956] RPC 189. The test expounded therein involves considering whether the complete specification is fairly based on the provisional specification. However, it is accepted that with some rewording the Mond Nickel test also applies for considering whether the claims are fairly based on the complete specification. This involves answering the following three sequential questions:
(a) Is the alleged invention as claimed broadly described in the body of the specification?
(b) Is there anything in the body of the specification which is inconsistent with the alleged invention as claimed?
(c) Does the claim include as a characteristic of the invention a feature as to which the body of the specification is wholly silent?
New Zealand Patent Application No. 786047 concerned a nasal mask system for treating and/or preventing respiratory disorders, including sleep disordered breathing. See example embodiment here. The complete specification described a part between the air delivery tube and the patient interface as an ‘elbow’, but in the claims it was referred to as a “connector”. The part is referred to by number 125 in the above example embodiment.
The glossary section of the complete specification defined elbow as:
A conduit that directs an axis of flow or air to change direction through an angle. In one form, the angle may be approximately 90 degrees. In another form, the angle may be less than 90 degrees. The conduit may have an approximately circular cross-section. In another form the conduit may have an oval or rectangular cross-section.
During examination Resmed asserted that fair basis for the use of the term “connector” in the claims could be found in paragraph [000248] of the complete specification, which stated:
[000248] The elbow may be referred to as an adaptor, connector or may be described as any element attach [sic] an air delivery tube to a patient interface.
The examiner maintained the fair basis objection finding that paragraph [000248] merely shows that the elbow may be referred to, in a functional sense, as an adaptor, connector or element for attachment, but it is still an elbow shape. The examiner found that the complete specification requires the part in question to have an inherent bend and so use of the term “connector” would be too broad as connectors can be straight and so are not synonymous with the term “elbow”.
Assistant Commissioner’s Decision
In the subsequent (unpublished) Assistant Commissioner (AC) decision the AC applied the modified Mond Nickel test. Regarding the first step the AC agreed with Resmed that the invention as claimed broadly described in the body of the complete specification, accepting that an elbow has the functional characteristics of a connector. However, in considering the second step of whether there is anything in the body of the specification which is inconsistent with the alleged invention as claimed, the AC found that there is an inconsistency between the complete specification’s use of the term “elbow” and the claim’s use of the term “connector”. In arriving at that conclusion the AC considered both the noted glossary definition of “elbow” along with the ordinary dictionary definitions and found that the connector referred to in paragraph [000248] can only be in the shape of an elbow and that the paragraph is only specifying what function the elbow must perform. The AC also noted that there are numerous references in the complete specification to the purpose of the elbow shape being to decouple drag forces from the patient interface, which assists in maintaining the seal of the mask to the patient. Having answered step of the modified Mond Nickel test in the affirmative it was not necessary to consider the third step and the AC held that claim one and all dependent claims were not fairly based on the original complete specification.
High Court Appeal
Resmed’s appeal to the High Court centred around the AC’s assessment of step two of the modified Mond Nickel test. Resmed sought to downplay the importance of an angled elbow shape submitting that it is unnecessary to use that shape to realise or attain the invention, with the venting arrangement being the inventive concept of the claims. Resmed submitted that the references to “elbow” in the complete specification including the drawings contained in it, should be regarded as merely illustrative and not limiting. Resmed also submitted that the fair basis test should only be applied to the entire claim, not its constituent parts and that the fair basis test needs to be applied in a way that acknowledges that there does not need to be identity of language between the body of the complete specification and the claims since otherwise there would be no need for a fair basis test at all.
The Judge rejected Resmed’s submissions, finding that it would be clear to a person skilled in the art that the complete specification discloses the use of an elbow, rather than a more generic form of connector, and indicates the advantages of using an elbow and the disadvantages of not using an elbow. The Judge agreed with the AC’s conclusion that the element coupling the air delivery device to the mask was only disclosed and contemplated as being in the form of an elbow, with the result of the complete specification being inconsistent with a claim extending to any and all forms of connector. While two of the preceding divisional applications had been granted in this New Zealand patent family , neither of the claims of those granted patents use the broader term “connector” to define the component connecting the mask to the air delivery tube.
Accordingly, that was sufficient for the Judge to make a finding of lack of fair basis due to the claims going beyond the disclosure in the complete specification. However, the Judge further reinforced that conclusion by finding that the complete specification is silent on whether a general connector may be used to form the flow path of gases from the air delivery tube to the mask. As with the examiner and the AC, the Judge found paragraph [000248] only related to different words that can be used to describe an elbow.
Concluding Remarks
The Judge’s decision noted the public interest factors underpinning the fair basis requirement, including fairness to competitors who make decisions based on what is contained in the patent specification. Such public interest factors were further prioritised under the Patents Act 2013, which has the higher hurdle of requiring the claims to be supported by the disclosure in the patent specification.
This case highlights the importance of using consistent and precise terminology in patent specifications. Ensuring that the terms used in the claims align with those in the specification is essential for avoiding potential challenges.
Initial steps such as reviewing your patent specifications for consistent terminology, ensuring alignment between the claims and the body of the patent specification, and conducting initial searches for relevant patent publications in your field can all be highly valuable. Focusing on clarity and precision to secure robust and defensible patents can ultimately save time and money in the long run.
Authors: Quinn Miller and Pritesh Lohani
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