• Axonics, Inc. v. Medtronic, Inc.No claims unpatentable
  PTAB · May 30, 2024 · IPR2020-00712 · APJ James A Tartal · IPR · Remand

  Claims 3–6, 9–12, and 15–18 were not proven unpatentable because the petitioner failed to show the required two inputs in the asserted prior art.

  RulingsRemand decision

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionDecided for patent owner

    “The Specification of the ’148 patent states that “an alignment measurement may be made by measuring a value, e.g., current or voltage, associated with, e.g., proportional to, the current passing through [the] rechargeable power source.” Id. at 21:3–6. We therefore find that the Specification expressly identifies “current or voltage” as examples of “a value.” Id. In the FWD, we stated that “[a]lthough the ’148 patent makes clear that ‘a value’ may include, for example ‘voltage,’ we agree with Patent Owner that the two independent limitations should be construed such that the Value Limitation does not render superfluous the Signal Limitation or the Measured Voltage Limitation.” FWD 26. We further determined that “the Value Limitation and the Signal Limitation, as well as the Value Limitation and the Measured Voltage Limitation both require two separate inputs to the external power source.” Id. That determination is not at issue here. See Axonics, 75 F.4th at 1379–80 (stating that Petitioner did “not argue the Board erred in adopting the two-input claim construction”). 2. Additional Claim Terms We find no additional claim term requires express construction. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 22

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art The person of ordinary skill in the art is a hypothetical person who is presumed to have known the relevant art at the time of the invention. In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” Id. (citation omitted). Petitioner contends that a person of ordinary skill in the art at the time of the invention “would have had at least a bachelor’s degree in electrical the industry working with implantable medical devices such as cardiac pacemakers or defibrillators.” Pet. 8. Patent Owner argues that a person of ordinary skill “would have had at least a bachelor’s degree in a relevant field (e.g., electrical, mechanical, or biomedical engineering) with at least two years of experience with the design of components (e.g., circuitry) for implantable medical devices and associated external devices (e.g., a charging unit),” and that “[m]ore education can substitute for practical experience and vice versa.” PO Resp. 4–5 (citing Ex. 2002 ¶¶ 21–22). Our analysis here, as in the FWD, does not turn on which of the Parties’ competing definitions of ordinary skill is applied. See FWD 16. Moreover, the appropriate level of ordinary skill is not in dispute on remand. Consistent with the FWD and the Decision on Institution, we apply the level of ordinary skill in the art proposed by Petitioner. See Inst. Dec. 11 (stating that “the ’148 patent and the cited prior art references reflect the appropriate level of skill at the time of the claimed invention and that the level of appropriate skill reflected in these references . . . is consistent with the definition of a person of ordinary skill in the art proposed by Petitioner” (citing Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001))); FWD 16.” slip op. at 18

  • Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner

    “By contrast, in his Rebuttal Declaration, Dr. Mihran disputes Dr. Panescu’s new description of the operation of Schulman, noting that the current through R9 is not increased as a result of the current regulator R8/Q7 turning on, but that “[i]nstead, it is the increase in current through R9 in excess of the desired 40 mA operating current that causes the current regulator R8/Q7 to turn on, which acts to shunt this excess current through Q7, thereby diverting it away from the battery to maintain the desired operating condition during charging.” Ex. 2010 ¶ 6 n.3 (citing Ex. 1005, 5:2–7, 5:15–38, 9:57–68). We credit the testimony of Dr. Mihran, as supported by the cited portions of Schulman, over the unsupported testimony of Dr. Panescu in regard to how Schulman operates to measure current at R9. See id. However, whether Schulman discloses automatically varying the output power of the external power source based on a value associated with current passing through the internal battery, as required by the Value Limitation, is not in dispute. Dr. Mihran, for example, states that “Schulman discloses that the sole input provided to the external power” slip op. at 34

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “Patent Owner argues, and we agree, that the measured current through R9 is the only input to the external power source Schulman APO Sur-reply 14–15. Patent Owner further argues, and we further agree, that the voltage across output leads 51 and 52 of Schulman is not an input to the external power source separate from the measured current through R9 in Schulman. See APO Sur-reply 11–16 (citing, e.g., Ex. 1003 ¶ 75; Ex. 2002 ¶ 46; Ex. 1005, 6:35–38; Ex. 2010 ¶¶ 4–7). In support of Patent Owner, Dr. Mihran states that “[t]he voltage between nodes 51 and 52 is never provided to the external power source in Schulman.” Ex. 2010 ¶ 4. According to Dr. Mihran, “Schulman discloses that the sole input provided to the external power source that the external power source uses to automatically regulate its power output is the input that derives from the amount of current flowing through the current sampling resistor R9.” Id. ¶ 5 (emphasis omitted) (citing Ex. 1005, 4:45–53, 6:35–38; Ex. 2002 ¶ 46). Dr. Mihran further states as follows: My understanding of Dr. Panescu’s opinion is that he does not contend that the voltage between nodes 51 and 52 is ever sent to the external power source as an input, and instead simply asserts that if “the voltage across leads 51 and 52 exceeds a predetermined amount,” then the current through R9 increases, which in turn “causes the power supplied by the external power source to decrease.” (Ex. 1012 at ¶16.) This does not represent a separate input, however, because the input derived from the current flowing through the current sampling resistor R9 (i.e. the load modulation frequency of telemetry circuit 12, the components of which “form a free-running multivibrator”) is what Dr. Panescu also identifies as satisfying the first input, “a value associated with said current passing through said internal battery.” (Ex. 1012 at ¶14 (“when the current through the internal battery . . . increases above a predetermined target value, the current regulator turns on, increasing the current through current sampling resistor R9.”) operating conditions may influence the value” of the amount of current flowing through current sampling resistor R9, and the current through R9 is the “only value that is communicated to the external power source,” corresponding to a single input that “cannot satisfy both of the two inputs required by claims 3, 6, 9, 12, 15, and 18 of the ’148 patent.” Id. ¶ 6. Dr. Mihran further states as follows: I understand Dr. Panescu’s opinion to be that, because Schulman discloses that the current through R9 is used by the external charger to automatically vary its output, any “value” that influences the amount of current through resistor R9 is a “separate respective input[] used by the external power source as a basis for automatically varying its power output.” ([Ex. 1012 ¶14].) In other words, Dr. Panescu simply identifies a voltage across two points in the circuit that he claims affects the current through R9 and contends that that voltage satisfies one of the two required separate inputs based on its alleged indirect impact on the output of the external charger. This strained interpretation of the claims renders superfluous the two separate inputs to the external power source required by claims 3, 6, 9, 12, 15, and 18 of the ’148 patent: (1) “a value associated with said current passing through said internal battery” and (2) “a signal proportional to said current passing through said internal battery” (claims 3, 9, and 15) and “measured voltage associated with said current passing through said internal battery” (claims 6, 12, and 18). In any circuit, there may be multiple components (e.g., transistors, switches, diodes, etc.) that can influence the current through a particular resistor. For example, in Schulman the current drawn by the stimulation portion of the implant circuit will influence the amount of current through R9. Dr. Panescu’s interpretation that a voltage or current at these components represents a “separate input” in Schulman is incorrect, because the sole input that is telemetered back to the external charger is the input derived from the amount of current flowing through R9.” slip op. at 35

  Patent outcomesUS 8,738,148 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,738,148
• Axonics, Inc. v. Medtronic, Inc.No claims unpatentable
  PTAB · May 30, 2024 · IPR2020-00680 · APJ James A Tartal · IPR · Remand

  On remand, the Board determined that claims 1, 5, and 9 were not shown unpatentable as anticipated by Schulman, Fischell, or Baumann.

  RulingsRemand decision

  • BurdenNot shown unpatentable

    “consider for purposes of the FWD. We also consider Patent Owner’s Amended Sur-reply, as supported by the Rebuttal Declaration of Dr. Mihran, and the arguments and evidence advanced in the post remand briefs of the Parties. Based on the totality of the record in this case, we determine, for the reasons that follow, that Petitioner does not show by a preponderance of the evidence that any of claims 1, 5, or 9 is anticipated by Schulman, Fischell, or Baumann. A. Principles of Law A claim is anticipated if a single prior art reference either expressly or inherently discloses every limitation of the claim. Orion IP, LLC v. Hyundai Motor Am., 605 F.3d 967, 975 (Fed. Cir. 2010). “A single prior art reference may anticipate without disclosing a feature of the claimed invention if such feature is necessarily present, or inherent, in that reference.” Allergan, Inc. v. Apotex Inc., 754 F.3d 952, 958 (Fed. Cir. 2014) (citing Schering Corp. v. Geneva Pharm., 339 F.3d 1373, 1377 (Fed. Cir. 2003)).” slip op. at 17

  • Skill levelSkill level petitioner adoptedOther

    “B. Level of Ordinary Skill in the Art The person of ordinary skill in the art is a hypothetical person who is presumed to have known the relevant art at the time of the invention. In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” Id. (citation omitted). of the invention “would have had at least a bachelor’s degree in electrical engineering or an equivalent as well as at least five years of experience in the industry working with implantable medical devices such as cardiac pacemakers or defibrillators.” Pet. 7. Patent Owner argues that a person of ordinary skill “would have had at least a bachelor’s degree in a relevant field (e.g., electrical, mechanical, or biomedical engineering) with at least two years of experience with the design of components (e.g., circuitry) for implantable medical devices and associated external devices (e.g., a charging unit),” and that “[m]ore education can substitute for practical experience and vice versa.” PO Resp. 5 (citing Ex. 2002 ¶¶ 21, 22). Our analysis here, as in the FWD, does not turn on which of the Parties’ competing definitions of ordinary skill is applied. See FWD 16. Moreover, the appropriate level of ordinary skill is not in dispute on remand. Consistent with the FWD and the Decision on Institution, we apply the level of ordinary skill in the art proposed by Petitioner. See Inst. Dec. 11–12 (stating that “the ’758 patent and the cited prior art references reflect the appropriate level of skill at the time of the claimed invention and that the level of appropriate skill reflected in these references is consistent with the definition of a person of ordinary skill in the art proposed by Petitioner” (citing Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001))); FWD 16.” slip op. at 17

  • Expert testimonyPatent owner expert creditedPetitioner expert discountedOther

    “By contrast, in his Rebuttal Declaration, Dr. Mihran disputes Dr. Panescu’s new description of the operation of Schulman, noting that the current through R9 is not increased as a result of the current regulator R8/Q7 turning on, but that “[i]nstead, it is the increase in current through R9 in excess of the desired 40 mA operating current that causes the current regulator R8/Q7 to turn on, which acts to shunt this excess current through Q7, thereby diverting it away from the battery to maintain the desired operating condition during charging.” Ex. 2010 ¶ 6 n.2 (citing Ex. 1005, 5:2–7, 5:15–38, 9:57–68). We credit the testimony of Dr. Mihran, as supported by the cited portions of Schulman, over the unsupported testimony of Dr. Panescu in regard to how Schulman operates to measure current at R9. See id. However, whether Schulman discloses automatically varying the output power of the external power source based on a measured current, as required by the challenged claims, is not in dispute. Dr. Mihran,” slip op. at 32

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “We find that because it is largely unsupported and conclusory, the opinion of Dr. Panescu in his Supplemental Declaration that “Schulman teaches automatically varying the output power of the external power source based on a value, where the value is the voltage across the output leads 51 In his original declaration, Dr. Panescu made clear that, according to Schulman, the output of the external power source was lowered if the charging current, as measured at sampling resistor R9, “exceeds a maximum capacity,” not because of the voltage across output leads 51 and 52. See Ex. 1003 ¶ 127 (quoting Ex. 1005, 7:25–29). Petitioner does not allege that any measurement of voltage across output leads 51 and 52 in Schulman is conveyed to an external power source to automatically vary its power output. Instead, Petitioner’s argument is premised on the notion that if the voltage across leads 51 and 52 exceeds a predetermined amount, then it will affect the current sampled by resistor R9. We also find persuasive Dr. Mihran’s testimony that Petitioner’s strained interpretation renders the Value Limitation superfluous to the Measured Current Limitation because the voltage across leads 51 and 52 was not shown by Petitioner to be a separate input to the external power source. See Ex. 2010 ¶ 7 (explaining that “there may be multiple components (e.g., transistors, switches, diodes, etc.) that can influence the current through a particular resistor,” and that influencing the current measured at R9 does not constitute a separate input to the external charger from the measured current at R9). To be clear, we need not resolve whether the challenged claims require each separate input be separately conveyed to the external power source. Here, the burden to show anticipation is on Petitioner and Petitioner offers no persuasive evidence or explanation to establish by a preponderance of the evidence that a person of ordinary skill in the art would have understood the voltage across output leads 51 and 52 corresponds to “a value” based upon which the external power source “automatically” varies its power output, as required by the challenged claims. Nor does skill in the art would have understood the voltage across leads 51 and 52 in Schulman to be a separate input from the measured current at R9 when, at most, Petitioner alleges the voltage across leads 51 and 52 may, in certain circumstances, have some effect on the measured current at R9, itself. Thus, Petitioner does not show by a preponderance of the evidence that Schulman discloses to a person of ordinary skill in the art two separate inputs to the external power source, as Petitioner conceded is required by the Value Limitation and the Measured Current Limitation.” slip op. at 35

  Patent outcomesUS 8,457,758 not shown unpatentable
  Claim construction§ 102 anticipationcites Phillips
  Patents in suitUS 8,457,758
• Recor Medical, Inc. / Otsuka Medical Devices Co., Ltd. v. Medtronic Ireland Manufacturing Unlimited Co.No claims unpatentable
  PTAB · Jul 14, 2023 · IPR2022-00431 · APJ Eric C Jeschke · IPR · Final written decision

  Claims 1–4 and 8–12 were not shown unpatentable because Petitioner did not prove the asserted anticipation or obviousness grounds by a preponderance of the evidence.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends, with accompanying declaration testimony, that [t]he level of ordinary skill encompassed a team of people, having a person with a Ph.D. or M.D. and five years of clinical and/or research experience treating diseases of the kidneys and circulatory systems and a person with at least a Bachelor’s degree in biomedical engineering or a related field and at least five years of experience designing catheter-based ablation systems. Pet. 40 (emphasis omitted) (citing Daft Pet. Decl. ¶¶ 64–68). Patent Owner responds that, “[f]or purposes of this proceeding, [Patent Owner] does not object to the definition of a person of ordinary skill in the art (‘POSITA’) proffered by Petitioner[] and adopted by the Board at institution as the result remains the same regardless of the definition—the Challenged Claims are valid.” PO Resp. 16; see also Dec. Inst. 15–17 (adopting, for purposes of institution, Petitioner’s proposed definition of the person of ordinary skill in the art). In addition, however, Patent Owner proposes a different level of ordinary skill in the art “should the Board believe that the difference in definition impacts the outcome” of this proceeding.8 PO Resp. 16. Both Petitioner and Patent Owner discuss how” slip op. at 9

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached

    “to transmit ultrasound energy waves to target renal neural fibers” (claim 1, element 1d) and “configured to [perform certain functions] to the target neural fibers” (claims 3, 4, 8, and 9). See Pet. 23–25; PO Resp. 17–22; Pet. Reply 10; PO Sur-reply 1–2. Petitioner asserts that the phrase “configured to” should be construed as “able to.” Pet. 23; see Pet. 23–24 n.5 (discussing how “able to” has the same meaning as “capable of”). Patent Owner responds that “[t]he Board need not reach the construction of this term as Petitioner[’s] arguments fail under either construction, but to the extent a construction is required, ‘configured to’ should be construed as ‘designed to.’” PO Resp. 18. Based on the complete record, we do not discern a need to construe explicitly this phrase because doing so would not change the result of the analysis below. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 11

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable

    “the alleged motivation to use the device of Acker in Levin’s renal neuromodulation method. As noted by Patent Owner, after introducing Webster (by patent number), Levin states that “[s]imilar catheter based apparatus can be used to ablate the renal nerve with an intent to treat [Chronic Renal Failure].” Ex. 1004 ¶ 64 (emphasis added) (cited at PO Resp. 39 (discussing how “Levin explicitly qualif[ies] its statement by referring to ‘similar’ (not identical) catheters”)). But neither Petitioner nor its declarants have established that Acker’s ultrasound catheter is in fact “[s]imilar” to that in Webster in a manner that would support the view that one of ordinary skill in the art would have understood that Acker’s catheter could be used to “ablate the renal nerve with an intent to treat [Chronic Renal Failure]” as disclosed in paragraph 64 of Levin—i.e., to perform Levin’s renal neuromodulation method. See id. Dr. Mendelsohn states that Acker’s use of ultrasound-based ablation falls within the “any thermal means” disclosure in Webster (see Ex. 1052, 3:40–42), but Dr. Mendelsohn does not address why Acker’s ultrasound catheter is “[s]imilar” to the catheter in Webster (even after expressly noting the presence of that statement in Levin). See Mendelsohn Decl. ¶ 71 (“Moreover, Webster teaches transvascular nerve ablation using RF thermal ablation or ‘any thermal means’ and Levin teaches catheters similar to Webster’s can be used for renal denervation. Ultrasound ablation disclosed in Acker is a ‘thermal means’ of ablation.”).” slip op. at 21

  • Obviousness (§103) › Objective indicia / secondary considerationsNot reached

    “(2) Objective Indicia of Nonobviousness We next turn to Patent Owner’s objective evidence of nonobviousness. Patent Owner alleges (1) unexpected results and skepticism, (2) copying, (3) praise, and (4) long-felt but unsolved need and failure of others. See PO Resp. 60–68; PO Sur-reply 25–27. Petitioner responds. See Pet. Reply 36–37. We have considered the evidence and argument presented by both parties, but do not address the issues in detail. See Alza Corp. v. Mylan Labs., Inc., 391 F.3d 1365, 1373 n.9 (Fed. Cir. 2004) (“Because [patent challenger] has not made a prima facie case of obviousness, we need not address the parties’ assertions regarding the district court’s discussion of secondary considerations.”).” slip op. at 31

  Patent outcomesUS 8,845,629 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips
  Patents in suitUS 8,845,629
• MG Freesites Ltd v. Scorpcast, LLCNo claims unpatentable
  PTAB · Aug 3, 2022 · IPR2021-00512 · APJ Arthur M Peslak · IPR · Final written decision

  Claims 1, 5–8, 10, 11, 15–17, 20, 21, and 25–28 were not shown unpatentable because the asserted grounds failed to establish required claim limitations.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that a skilled artisan “would have had a Bachelor’s degree in Electrical Engineering, Computer Engineering, or Computer Science (or equivalent) plus approximately two years of work experience with technologies relating to content annotation and/or content sharing among multiple users.” Pet. 16–17 (citing Ex. 1002 ¶¶ 1–28). Patent Owner does not dispute Petitioner’s level of ordinary skill in the art. See PO Resp. 9. We apply Petitioner’s proposed level of ordinary skill in the art because it comports with the level of skill reflected in the ‘463 patent and the prior art of record.” slip op. at 9

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner

    “We agree with the determination in IPR2020-01697 that not all areas in the recited “scrubber area” must perform scrubbing functionality for the following reasons. First, claim 1 recites “the scrubber area comprising a scrubber that includes a draggable scrubber control that indicates video playback progress via a scrubber timeline . . . and which is manipulable to control playback of the first video file by dragging the scrubber control.” Ex. 1001, 50:61–67. The use of the open-ended transition “comprising” indicates the scrubber area may include more than the draggable scrubber control. Second, the Specification of the ’463 patent describes “scrubber area” as including a “scrubber bar” and optionally “an area adjacent to the scrubber bar.” Id. at 2:48–54. But, the description of the optional area the adjacent area must include scrubbing functionality. See id. Third, our determination that the area adjacent the scrubber control does not necessarily include scrubbing functionality is consistent with Figure 10 of the ’463 patent where the right-hand side of scrubber area 1002 includes items unrelated to scrubbing functionality, e.g., volume control.10 For the foregoing reasons, we do not adopt the EDTX construction of scrubber area because doing so would require us to read a limitation into “scrubber area” that, in our view, is not supported by the evidence.” slip op. at 32

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “Pet. 46. We note, however, that Roberts does not use the terms “scrubber” or “scrubber area.” See generally Ex. 1004. Dr. Porter testifies that the red rectangles added to Figures 9 and 13 represent a “scrubber area” but, he cites no persuasive evidence from Roberts to support his opinion concerning the size and shape of the alleged scrubber areas in Roberts’ Figures 9 and 13, nor does he explain why images 904 and 1004 are “adjacent” the timeline. Ex. 1002 ¶¶ 78–79. Therefore, his testimony is entitled to little, if any, weight. See 37 C.F.R. § 42.65(a). In order to satisfy this limitation, Petitioner creates different size scrubbing areas in Figures 9 and 13 of Roberts to fit its obviousness theory. Image 904 in Roberts’ Figure 9 is near the timeline but does not border the timeline. In addition, only one image, not the first plurality of images, is shown in the scrubber area Petitioner identifies in Figure 9. In Roberts’ Figure 13, images 904 and 1004 are shown within Petitioner’s larger proposed scrubbing area, but neither image borders the timeline. In Figure 13, image 904 is further from the timeline than image 1004 and further from the timeline than in Figure 9. Ex. 1004, Figs. 9, 13. Petitioner, however, fails to explain why image 904, which is positioned differently in Figure 9 and Figure 13, is adjacent the timeline in both. See Pet. 45–48.” slip op. at 34

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “Analysis The language of limitation 1.5 recites that “at least partly in response to detecting that a user . . . select[s] the first image . . . causing the playback of the first video file to jump to a segment of the first video file corresponding to the first image.” Ex. 1001, 51:1–11. Both parties agree that this language imposes a temporal requirement that the user selects the first image and, then after the user selection, the playback of the first video file jumps to a segment of the first video file corresponding to the first image. Tr. 58:8–18, 109:9–10.” slip op. at 48

  Patent outcomesUS 9,703,463 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,703,463
• Axonics, Inc. v. Medtronic, Inc.No claims unpatentable
  PTAB · Sep 22, 2021 · IPR2020-00712 · APJ James A Tartal · IPR · Final written decision

  Claims 3–6, 9–12, and 15–18 were not shown unpatentable over Schulman, the Fischell Article, or the Fischell Article combined with Fischell ’260.

  RulingsFinal written decision

  • Adverse judgmentAdverse judgmentOther

    “We agree with Patent Owner that we should not address the patentability of claims 1, 2, 7, 8, 13, and 14 in this Decision. See PO Resp. 15 n.4. Rather, we treat claims 1, 2, 7, 8, 13, and 14 as if they never existed. See Gunn v. Kopf, 96 F.3d 1419, 1422 (Fed. Cir. 1996) (“A statutory disclaimer under 35 U.S.C. § 253 has the effect of canceling the claims from the patent and the patent is viewed as though the disclaimed claims had never existed in the patent.”). We address the patentability only of the Challenged Claims not disclaimed. See Intel Corp. v. VLSI Tech. LLC, IPR2018-01040, Paper 36, 16 (PTAB Feb. 12, 2020) (“Consistent with other Board decisions in which some, but not all, challenged claims have been disclaimed after institution, we address the patentability only of the remaining claims.” (collecting decisions)).” slip op. at 4

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “of the invention “would have had at least a bachelor’s degree in electrical engineering or an equivalent as well as at least five years of experience in the industry working with implantable medical devices such as cardiac pacemakers or defibrillators.” Pet. 8. Patent Owner argues that a person of ordinary skill “would have had at least a bachelor’s degree in a relevant field (e.g., electrical, mechanical, or biomedical engineering) with at least two years of experience with the design of components (e.g., circuitry) for implantable medical devices and associated external devices (e.g., a charging unit),” and that “[m]ore education can substitute for practical experience and vice versa.” PO Resp. 4–5 (citing Ex. 2002 ¶¶ 21–22). Patent Owner further disagrees with Petitioner’s proposed level of skill because it does not specify “experience and background with electronics and circuitry.” Id. at 5. Patent Owner, however, further concedes that the result of this proceeding “would not be different even if Petitioner’s level of skill were to apply.” Id. (citing Ex. 2002 ¶¶ 23–24). The parties did not further address this issue at trial. See generally Pet. Reply; PO Sur-reply. Patent Owner fails to provide any rational explanation or support to show that Petitioner’s proposed level of ordinary skill—a person having a least five years of experience in the industry working with implantable medical devices such as cardiac pacemakers or defibrillators” —corresponds to a person who lacks “experience and background with electronics and circuitry.” Further, we discern no substantial difference between the parties’ proposed definitions of a person of ordinary skill in the art that impacts our determination in this Decision. We, therefore, agree with Patent Owner that our analysis in this case does not turn on which of the parties’ competing definitions of ordinary skill is applied and apply the level of ordinary skill in the art proposed by Petitioner, consistent with the Decision on Institution. See Inst. Dec. 11 (stating that “the ’148 patent and the cited prior art references reflect the appropriate level of skill at the time of the claimed invention and that the level of appropriate skill reflected in these references is consistent with the definition of a person of ordinary skill in the art proposed by Petitioner” (citing Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001))).” slip op. at 15

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner

    “the [S]pecification teaches that the power source can automatically vary its power output based on multiple inputs, where each input is associated with or proportional to “said current passing through said internal battery.” (Ex. 2002 at ¶ 35.) In one example, two separate inputs are utilized in deciding how to vary the power output of the external power source 50: (1) the voltage across rechargeable power source 24; and (2) the charging current through rechargeable power source 24: If no over temperature condition exists, charging unit 50 checks (328) to determine if the voltage across rechargeable power source 24 is over a voltage at which the charging rate should begin to decrease, e.g., 4.05 volts. If the voltage across rechargeable power 24 is greater than 4.05 volts, then charging unit 50 begins to taper charging power (330). If the voltage across rechargeable power source 24 is not over 4.05 volts, charging unit 50 checks (332) to determine whether the charging current through rechargeable power source 24 is over a current rate that is not desirable, e.g., 50 milliamperes. If the charging current is over 50 milliamperes, then the charging power level is decreased (334) by an appropriate, e.g., by 35 milliwatts. (Ex. 1001 at 21:58-22:3, emphasis added.) As described in the passage above, both a voltage across the rechargeable power 8 Patent Owner’s additional citations to cases for the proposition that different claim terms are presumed to have different meanings does not support its arguments. PO Resp. 9–10 (citations omitted). As Petitioner notes, there is no dispute that “value,” “measured voltage,” and “signal proportional to said current” have different meanings. Pet. Reply 5. The issue is whether a single input can satisfy both limitations at issue. utilized to control the operation of the external charging device. A POSITA would understand that each of these two inputs is associated with or proportional to a current passing through the internal power source. (See also Ex. 1001 at 20:65-21:6; Ex. 2002 at ¶ 35.) PO Resp. 11–12. Patent Owner’s argument is persuasively supported by Dr. Mihran, who explains that a person of ordinary skill in the art would have understood the claim language requires two inputs, in part, because the Specification of the ’148 patent “provides support for the use of multiple inputs as a basis to vary power output of the power source as claimed.” Ex. 2002 ¶¶ 33, 35.” slip op. at 23

  • Strike new argumentNew argument disregardedDecided for patent owner

    “Schulman still anticipates” claims 3, 9, and 15.9 Pet. Reply 12–14. Petitioner then proceeds to argue for the first time that features of Schulman correspond to a second input that automatically varies the power output of the external power source. Id. In so doing, Petitioner fails to meet its burden to show in the Petition “[h]ow the challenged claim is to be construed,” but instead relies on Patent Owner to show in its Response to the Petition the proper construction. 37 C.F.R. § 42.104(b)(3). Indeed, Petitioner does not argue, much less show that its “mapping” of the claims to Schulman in the Petition corresponds to two inputs that automatically vary the power output. Petitioner’s Reply is not an opportunity to advance new arguments based on new testimony in an effort to show that challenged claims are unpatentable where the proper claim construction requires additional features, such as two inputs instead of one input, contrary to the position taken by Petitioner in the Petition. See SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1356 (2018) (stating in regard to inter partes review that “petitioner’s petition . . . is supposed to guide the life of the litigation”); see also Sirona Dental Sys. GmbH v. Institut Straumann AG, 892 F.3d 1349, 1356 (Fed. Cir. 2018) (stating that “[b]ecause an IPR must proceed ‘[i]n accordance with’ or ‘in conformance to’ the petition,” it would “not be proper for the Board to deviate from the grounds in the petition”) (quoting SAS Inst., 138 S. Ct. at 1357)). Patent Owner argues, and we agree, that consideration of arguments raised improperly by Petitioner for the first time in its Reply is unwarranted.” slip op. at 35

  Patent outcomesUS 8,738,148 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,738,148
• Axonics, Inc. v. Medtronic, Inc.No claims unpatentable
  PTAB · Sep 22, 2021 · IPR2020-00680 · APJ James A Tartal · IPR · Final written decision

  Claims 1, 2, 4–6, 8–10, and 12 were not shown unpatentable because the references failed to disclose the separately required inputs or other limitations.

  RulingsFinal written decision

  • Adverse judgmentAdverse judgmentOther

    “Disclaimer disclaiming claims 3, 7, and 11 of the ’758 patent. PO Resp. 1; Ex. 2007; see also 35 U.S.C. § 253(a) (providing that a patentee may “make disclaimer of any complete claim” in writing with the Patent and Trademark Office, and such disclaimer “shall thereafter be considered as part of the original patent”). Patent Owner asserts that in light of the Disclaimer, claims 3, 7, and 11 are to be “treated as though they never existed.” PO Resp. 14 n.4 (citations omitted). Patent Owner further argues that we should “not address the disclaimed claims in the Final Written Decision.” Id. Petitioner does not dispute the effect of the Disclaimer. See Pet. Reply 13– 26 (arguing that the Challenged Claims not disclaimed are unpatentable). We agree with Patent Owner that we should not address the patentability of claims 3, 7, and 11 in this Decision. See PO Resp. 14 n.4. Rather, we treat claims 3, 7, and 11 as if they never existed. See Gunn v. Kopf, 96 F.3d 1419, 1422 (Fed. Cir. 1996) (“A statutory disclaimer under 35 U.S.C. § 253 has the effect of canceling the claims from the patent and the patent is viewed as though the disclaimed claims had never existed in the patent.”). We address the patentability only of the Challenged Claims not disclaimed. See Intel Corp. v. VLSI Tech. LLC, IPR2018-01040, Paper 36, 16 (PTAB Feb. 12, 2020) (“Consistent with other Board decisions in which some, but not all, challenged claims have been disclaimed after institution, we address the patentability only of the remaining claims.” (collecting decisions)).” slip op. at 4

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “of the invention “would have had at least a bachelor’s degree in electrical engineering or an equivalent as well as at least five years of experience in the industry working with implantable medical devices such as cardiac pacemakers or defibrillators.” Pet. 7. Patent Owner argues that a person of ordinary skill “would have had at least a bachelor’s degree in a relevant field (e.g., electrical, mechanical, or biomedical engineering) with at least two years of experience with the design of components (e.g., circuitry) for implantable medical devices and associated external devices (e.g., a charging unit),” and that “[m]ore education can substitute for practical experience and vice versa.” PO Resp. 5 (citing Ex. 2002 ¶¶ 21, 22). Patent Owner further disagrees with Petitioner’s proposed level of skill because it does not specify “experience and background with electronics and circuitry.” Id. at 6. Patent Owner, however, further concedes that the result of this proceeding “would not be different even if Petitioner’s level of skill were to” slip op. at 15

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner

    “We disagree with Petitioner’s framing of the issue, which fails to reflect Petitioner’s argument that the limitations at issue are not “separate claim limitations,” because a disclosure of one is necessarily a disclosure of the other. Specifically, according to Petitioner, the Value Limitation merely recites “value” as a genus, and the Measured Current Limitation recites “current” as a species. Pet. Reply 2, 4. Thus, Petitioner concedes its proposed construction renders the Value Limitation superfluous, because, as Petitioner recognizes, under its proposal “when the external power source automatically varies its power output based on ‘a measured current,’ it is also varying its power output based on ‘a value.’” Id. at 4–6. Petitioner is not relying on a single disclosure to satisfy two “separate claim limitations;”” slip op. at 24

  • Strike new argumentNew argument disregardedDecided for patent owner

    “Patent Owner argues, and we agree, that consideration of arguments raised improperly by Petitioner for the first time in its Reply is unwarranted. PO Sur-reply 9–11 (citing Consolidated Trial Practice Guide (November 2019) (“CTPG”) 73 (“Petitioner may not submit new evidence or argument in reply that it could have presented earlier, e.g. to make out a prima facie case of unpatentability.”), 74 (“‘Respond,’ in the context of 37 C.F.R. § 42.23(b), does not mean proceed in a new direction with a new approach as compared to the positions taken in a prior filing. While replies and sur-replies can help crystalize issues for decision, a reply or sur-reply that raises a new issue or belatedly presents evidence may not be considered.”) (citing Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369– 70 (Fed. Cir. 2016))). Moreover, Patent Owner identified the new arguments advanced by Petitioner, and Petitioner had the opportunity to show where the arguments were raised prior to its Reply. Paper 23, 2; Paper 26, 1–2. Instead of identifying a specific location where the argument was raised in the Petition, Petitioner broadly cites to fifty-five pages of the Petition, none of which suggest in any way that Petitioner contended that claims 1, 5, and 9 required a separate input for “a value” and “a measured current,” much less that any of the asserted references disclosed the same.” slip op. at 35

  Patent outcomesUS 8,457,758 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,457,758
• Haag-Streit AG v. Eidolon Optical, LLCNo claims unpatentable
  PTAB · Dec 19, 2019 · IPR2018-01311 · APJ Eric C Jeschke · IPR · Final written decision

  Claims 1, 5, 6, 8–10, 14–16, and 19 were not shown unpatentable because the cited references did not disclose an LED itself generating blue light energy.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In the Decision on Institution, we adopted Petitioner’s proposed level of ordinary skill in the art, stating that it “appear[ed] consistent with the record at th[at] stage of the proceeding.” Dec. Inst. 6. Patent Owner does not address or dispute Petitioner’s proposed definition of the level of ordinary skill in the art. See generally PO Resp.; Sur-reply. Petitioner did not further address this issue in the Reply. See generally Pet. Reply. We continue to apply Petitioner’s proposed level of ordinary skill in the art in the analysis below.” slip op. at 7

  • ExcludeOther

    “As discussed above (see supra § II.C.3.a), to resolve the dispute between the parties here, we need not make a determination one way or the other regarding Patent Owner’s assertion as to the specific amount of power necessary to cause sodium fluorescein to fluoresce. Instead, the outcome here follows from the determination that Petitioner (who has the overall burden of persuasion as to unpatentability) has not persuasively established the existence, as of February 5, 1992, of a blue LED having sufficient power output to cause sodium fluorescein to fluoresce. Accordingly, we dismiss Petitioner’s motion as to Exhibit 2014 as moot because we need not rely on that exhibit (or the specific statement highlighted by Petitioner) in this Decision. See TPG 79–80.” slip op. at 43

  • Strike new argumentNew argument disregardedDecided for patent owner

    “commercially available by CREE, Inc. in 1992” and asserts that “Patent Owner’s arguments are wrong in that blue LEDs having sufficient output power to cause sodium fluorescein to fluoresce existed in 1992 at the time of Longobardi.” Pet. Reply 28, 32. When asked, during the oral hearing, for evidentiary support for these statements, Petitioner attempted to rely on Exhibit 2024. See Tr. 13:14–14:18 (counsel for Petitioner generally discussing Exhibit 2024 as potential support). That exhibit, however, was not discussed or relied on in either of Petitioner’s briefs. Id. at 38:22–39:20 (counsel for Petitioner discussing Exhibit 2024, but also acknowledging that it was not cited in either brief). We will not further consider Petitioner’s untimely argument as to Exhibit 2024. See Dell Inc. v. Acceleron, LLC, 884 F.3d 1364, 1369 (Fed. Cir. 2018) (noting that the “Board was obligated to dismiss [the petitioner’s] untimely argument . . . raised for the first time during oral argument”); Patent Trial and Appeal Board Consolidated Trial Practice Guide (“TPG”) 85–86 (Nov. 2019) (discussing how, at the oral hearing, a party “may only present arguments relied upon in the papers previously submitted”), available at https://www.uspto.gov/sites/default/ files/documents/tpgnov.pdf. Petitioner did not identify any other record support for the two assertions as to the alleged state of the art in 1992.” slip op. at 30

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “one of ordinary skill in the art would have understood Longobardi as implicitly disclosing the presence of a blue LED is that, as argued by Patent Owner, none of the declaration testimony of Dr. Jiao supports that position. See PO Sur-reply 5 (“Petitioner lacks evidence that Longobardi implicitly or inherently teaches an LED sufficient to generate blue light energy itself as required by claim 1. Petitioner’s expert does not testify as to this fact.” (emphasis added)), 7 (“Petitioner fails to provide any expert testimony . . . that Longobardi teaches a blue light energy created by the LED.”). Indeed, in the entire section of the Reply Brief discussing why Longobardi allegedly implicitly discloses a blue LED, Petitioner never cites to Dr. Jiao’s testimony as evidence of how one of ordinary skill in the art would have understood the highlighted passages. See Pet. Reply 18–22; see also PO Sur-reply 14 (“Petitioner’s attorney arguments that Longobardi implicitly discloses the limitation of at least one LED sufficient to generate blue light energy itself as required by claim 1 are unreasonable.”). “Attorney argument is not evidence.” Icon Health & Fitness, Inc. v. Strava, Inc., 849 F.3d 1034, 1043 (Fed. Cir. 2017); see also Elbit Sys. of Am., LLC v. Thales Visionix, Inc., 881 F.3d 1354, 1359 (Fed. Cir. 2018) (citing this aspect of Icon Health in the context of an appeal from an inter partes review). In addition, the testimony in Dr. Jiao’s Reply Declaration that is cited in Petitioner’s Reply (in the part discussing the state of the art of blue LEDs “[i]n 1992” (Pet. Reply 26)) does not actually support Petitioner on the ultimate factual issue here. See Pet. Reply 26–32 (citing Jiao Reply. Decl. ¶¶ 11–21). Instead, most of Dr. Jiao’s testimony in these paragraphs summarizes and addresses Dr. Lebby’s position on the 1-milliwatt issue (discussing Exhibits 1021 and 1022). See Jiao Reply Decl. ¶¶ 11–20. After that discussion, Dr. Jiao concludes with a paragraph taking the position that one of ordinary skill in the art “at the time of the invention would have found that Longobardi teaches and suggests the use of a blue LED having sufficient power to cause sodium fluorescein to fluoresce.” Id. ¶ 21. None of Dr. Jiao’s testimony, however, actually addresses the state of the art of blue LEDs in 1992, which, as acknowledged by Petitioner, is the relevant point in time to assess the alleged implicit disclosures in Longobardi.” slip op. at 27

  Patent outcomesUS 6,547,394 not shown unpatentable
  § 102 anticipation§ 103 obviousnesscites Phillips
  Patents in suitUS 6,547,394

Holdings, summaries, rulings, issues, outcomes, winners and claim constructions shown for a decision were generated by a large language model reading the opinion. They are a guide to the decision, not the decision. Confirm every one against the court's own text before relying on it. Outcomes read from the patent owner’s side. Party names are extracted from the decision and are missing on about 900 short Director denials and scans, which carry the trial number instead.