Boston Scientific Neuromodulation Corp. v. Nevro Corp., Andrei Iancu (USPTO, intervenor)
Docket No. 2019-1582, -1635 (IPR2017-01812, -01920)
LOURIE, MOORE, O’MALLEY
May 29, 2020
Brief Summary: Board IPR final written decisions finding certain of Boston’s claim unpatentable for obviousness and others patentable affirmed.
Summary: Boston appealed Board IPR decision finding certain claims of US 6,895,280 relating to “[a] spinal cord stimulation system”, methods for using, and recharging a battery used in the same unpatentable as obvious. Nevro cross-appealed Board IPR decision that certain ‘280 method claims are not unpatentable as obvious. The FC panel first concluded that the Board’s findings that the cited prior art discloses “detachable leads” are supported by substantial evidence (e.g., inventor testimony that “all SCS systems known to them employed detachable leads”, similar expert testimony, and the Board “explained why”). FN1 explains that while the Board’s conclusion did not “rest on a conclusion” of inherent disclosure in its obviousness conclusions, but noted that, even if it did, “substantial evidence supports such a finding” (Finnigan, FC 1999). The FC panel also reviewed the Board’s construction of “aligning” and “alignment” under the broadest reasonable interpretation standard (“applies in this IPR proceeding” (Personalized Media, FC 2020; “Changes to Claim Construction Standard…”, 83 Fed. Reg. 51,340 (Oct. 11, 2018; 37 CFR 42.100(b)) “in light of the specification, prosecution history, and the understanding of one skilled in the art” (Microsoft, FC 2015). The FC panel found no error in the Board’s construction since it is supported by intrinsic evidence, e.g., “[t]he plain language of the claims does not require positioning that achieves optimal charging efficiency” which is supported by the specification, as well as extrinsic evidence (“dictionary definitions”). The FC panel also found no error with the Board’s construction of “back telemetry receiver” as it is supported by the claim language and the specification. The FC panel also concluded that substantial evidence supports the Board’s finding of a motivation to combine the cited prior art “based on the disclosures in those references” and expert testimony. The Board’s exclusion of an exhibit from an expert declaration was found not be an abuse of discretion since 37 CFR 42.6(a)(3) does not allow arguments to be “incorporated by reference from one document into another document” (e.g., “certain elements of claims 8, 18, and 22-24 that are not present in exemplary claim 27” are “only address in Exhibit C” and not the Patent Owner’s Response). Regarding Nevro’s cross-appeal, the FC panel agreed with the Board’s construction requiring that “the ‘waiting’ limitation must occur after the first programming step (e) and before the second ‘re-programming’ step (f)” because, e.g., holding “otherwise would render the ‘waiting’ element superfluous and effectively obviate the need to ‘re-program’ the stimulation parameters”. The Board decisions were therefore affirmed.