John Dragseth of Fish & Richardson.

A party that entered into a global settlement of its intellectual property disputes cannot maintain a Federal Circuit appeal aimed at stamping out the opponent's patent as an additional insurance policy.

The U.S. Court of Appeals for the Federal Circuit on Wednesday dismissed Fisher & Paykel Healthcare's validity challenge at the U.S. Patent and Trademark Office, saying the mere possibility that ResMed might sue Fisher again over future products did not give rise to Article III standing.

"Fisher has not provided any, let alone sufficient, detail regarding features of its future products to enable us to determine that its activities create a substantial risk of future infringement of the '556 patent," the Federal Circuit stated in a per curiam order.

The order hands a win to a Fish & Richardson team that included partner John Dragseth. Fisher & Paykel was represented by Knobbe Martens.

All seemed hunky-dory between the two companies in February when they announced a global settlement of patent litigation over masks and tubes used to treat sleep apnea and related disorders. "All ongoing infringement proceedings against named products will be dismissed, and each party will bear its own attorney fees and costs incurred in the global proceedings," the announcement stated.

That included Resmed actions in the Central District of California and the International Trade Commission, where the company was asserting U.S. Patent 9,027,556 on a sleep mask system. But the agreement didn't say anything specifically about Fisher & Paykel's Federal Circuit appeal of an unsuccessful attempt to invalidate the '556 at the PTO's Patent Trial and Appeal Board.

Although anyone can bring a validity challenge at the PTAB, Article III standing is required to maintain an appeal at the Federal Circuit. ResMed gave Fisher & Paykel a covenant not to assert the '556 "with respect to any product currently made or sold in the United States by FPH, or any product which was previously made or sold in the United States." ResMed then moved to dismiss the appeal for lack of jurisdiction pursuant to Super Sack Manufacturing v. Chase Packaging.

"The dispute has gone moot—there is no case or controversy," ResMed argued in its brief.

But, Fisher & Paykel argued, that covenant doesn't cover future products. And ResMed has a new mask in development that might be accused of infringing. (The company didn't spell out details of that mask, "given ResMed's history of targeting FPH's mask innovations" from its patent applications.)

What's more, Fisher & Paykel is time-barred "from initiating any future IPR petitions against the '556 patent, should ResMed assert an infringement claim in the future," Fisher stated in a brief signed by Knobbe partner John Sganga Jr.

The Federal Circuit's dismissal order noted that petitioners can maintain an appeal "if it is currently using claimed features of a patent or nonspeculatively planning to do so." The court ruled that Fisher & Paykel had not met that standard.