Boston Scientific Neuromodulation Corp. v. Nevro Corp., USPTO as Intervenor
Docket No. 2019-1584 (IPR2017-01899)
LOURIE, MOORE, O’MALLEY
May 18, 2020
Brief Summary: Board IPR FWD finding BSN’s claims obvious affirmed (e.g., BSN “waived any claim construction argument…by failing to raise it before the Board”, obviousness decision supported by substantial evidence).
Summary: BSN appealed the Board’s final written decision (FWD) holding claims 1-20 of US 7,587,241 claiming “[a] method for controlling an implantable medical device” by “monitoring a voltage of a power source” and, “if…above a first threshold…listening for a first type of telemetry” and a second type and discontinuing listening for the first but not the second “if the voltage falls below the first threshold”. The Board found two sets of claims unpatentable in view of two different combinations of references, respectively. Regarding the first set of claims, BSN argued that the Board incorrectly construed “telemetry’ and what it means to ‘listen for…telemetry’” but Nevro argued BSN “waived any claim construction argument…by failing to raise it before the Board”, and the FC panel agreed (explaining that BSN had “amply opportunity to offer a construction for the ‘listening for’ term in its patent owner response”). The Board also found the “Torgerson ‘756” patent “covers the use of a second type of telemetry” but BSN argued the reference “discloses only one type of telemetry”. The FC panel found “nothing in the ‘241 patent specification that precludes” the type of telemetry described by Torgerson ‘756 “from constituting a second ‘type of telemetry’ merely because it is not a different type of energy transfer modality” and support for this point in BSN’s expert testimony. The FC panel, therefore, found the Board’s conclusion to be supported by substantial evidence. BSN also argued “that substantial evidence does not support” the motivation to combine the cited references, but the FC panel disagreed (e.g., “adequate motivation has been provided for a POSA to look to Torgerson ‘883” (another reference) “for another technique (involving telemetry)”). The FC panel similarly found the second set of claims (dependent claims) requiring a particular “first telemetry type” were also properly found to be invalid for obviousness (e.g., “Substantial evidence supports the Board’s finding that it would have been obvious to use FSK for the first type of telemetry and OOK for the second type of telemetry.”) The Board decision was therefore affirmed.