ResMed (NYSE:RMD) won an injunction from the International Trade Commission barring the importation and sale of sleep apnea masks made by Chinese rival BMC Medical , but lost a validity decision on a humidifier patent.
The ITC’s Dec. 23 ruling bars BMC Medical and its U.S. distributor, 3B Medical, from introducing 4 of its mask models into the U.S. market, after the commission upheld an administrative law judge’s decision that the masks infringe 5 ResMed patents.
But the ITC, the the final act of a probe it launched back in August 2013 at ResMed’s behest, ruled that the ResMed humidifier patent is invalid due to prior art. ResMed said it plans to appeal that portion of the ruling "and is considering further actions."
The ITC ruling means BMC and 3B are barred from importing and selling BMC’s iVolve and iVolve N2 nasal masks, the Willow nasal pillows mask and the iVolve full face masks.
As with prior mixed rulings in their spat, both ResMed and BMC claimed victory in the final ITC decision.
"Changing lives with every breath is the foundation of ResMed’s business. That focus drives our patient-centric approach to research and development. It’s why our products are the highest quality and the most comfortable, and it’s why we vigorously protect our patent portfolio," ResMed general counsel David Pendarvis said in prepared remarks. "We are pleased the court has validated ResMed’s intellectual property rights protecting those valuable innovations for the benefit of patients."
Alex Lucio, a vice president at 3B, went so far as to call the ruling a "monumental win" for his firm and BMC.
"We are very pleased with the ITC’s decision in this case. This victory for us supports the position that we have taken since the very beginning on the key patent in the case. ResMed chose a very expensive, high-profile battle, when this dispute could have easily been resolved with direct discussions between the parties."
Earlier this month BMC claimed a win in a related proceeding in Germany. Last August ResMed and BMC each declared victory after the International Trade Commission issued a mixed decision, ruling that 9 of BMC’s products each violated at least 1 of ResMed’s patents and that certain of ResMed’s patents were invalid.
ResMed in June 2013 filed a lawsuit against BMC and 3B for alleged infringement of patents pertaining to CPAP devices, a nasal mask and a nasal pillow interface.
ResMed is also entrenched in a long-running battle with another rival, APEX Medical, which took a hit in August when the ITC ruled that the company must prove that its products don’t infringe on ResMed’s patents.
Registration is open for DeviceTalks Boston! Join us on June 5-6, 2019, as we explore the trends and technology that are shaping the future of the medical device industry.