Cook Medical Petitions for Inter Partes Review (IPR) of Medtronic “Jervis” Patent
On November 9, 2018, Cook Medical LLC filed a petition with the Patent Trial and Appeal Board requesting inter partes review (IPR) of U.S. Patent No. 6,306,141, assigned to Medtronic Vascular, Inc. The ‘141 Patent is entitled “Medical Devices Incorporating SIM Alloy Elements.” The ‘141 Patent states that it relates to “a medical device containing a shape memory alloy element.”
The ‘141 patent discloses using stress and temperatures below body temperature to restrain a metal alloy. The alloy expands to its original shape after being released from its restraint and exposed to body temperature. In one example, the ‘141 Patent describes that the disclosed device enables doctors to treat damaged or diseased heart valves with a less invasive transcatheter heart valve procedure. Figures 3 and 4 of the ‘141 Patent, shown below, illustrate a “side elevation view of a partial section of a catheter” in stressed (Figure 3) and unstressed (Figure 4) configurations.
The petition seeks to review all claims of the ‘141 Patent. Cook Medical’s petition submits two grounds on which the claims of the ‘141 Patent should be found invalid due to obviousness. The status of the proceeding can be examined by searching for the patent on the Patent Trial and Appeal Board website.
This is not the first time that the ‘141 patent has been subject to a petition for inter partes review. On January 17, 2014, Edwards Lifesciences Corporation filed a petition with the Patent Trial and Appeal Board requesting inter partes review of the patent for review of all claims of the ‘141 Patent. According to a Medtronic press release, on May 20, 2014, Medtronic and Edwards reached a “global settlement agreement” to “dismiss all of the pending litigation matters and patent office actions between them.”
In May 2013, Lombard Medical filed a petition for inter partes review of Claims 1-10 and 18-22 of the ‘141 Patent. Lombard Medical’s products, according to its website, include the AORFIX™ endovascular stent graft. According to a Lombard press release, on October 17, 2013, Lombard was granted a non-exclusive license by Medtronic to the ‘141 Patent, and Lombard formally requested a withdrawal of its inter partes review petition with the USPTO.
The ‘141 Patent has also been previously litigated. The ’141 Patent, among others, was previously asserted by Medtronic against W.L. Gore & Associates, Inc. in 2006; Gore’s EXCLUDER® AAA, TAG, and VIABAHN SFA® endoprosthesis devices were at issue. The parties entered into a confidential settlement in 2009.
Medtronic also previously asserted the ’141 Patent, among others, against AGA Medical in 2007. AGA’s AMPLATZER® Septal Occluder, Duct Occluder, and Vascular Plug devices were at issue. The parties entered into a settlement in 2010 in which AGA received a non-exclusive license to patents including the ’141 Patent in exchange for $35 million. AGA Medical was subsequently purchased by St. Jude Medical in October 2010 for $1 billion.
Sportbrain Sues Smartwatch Manufacturers, PTAB institutes IPR against Patent-in-Suit
Sportbrain Holdings LLC (“Sportbrain”) is a company that was previously engaged in the business of selling fitness trackers. Sportbrain recently sued eight smartwatch manufacturers for alleged infringement of its U.S. Patent No. 7,454,002 (“the ’002 patent”), which describes a method of capturing and analyzing personal data of a user and providing feedback to the user based on the analysis. FIGS. 1B and 3 of the ’002 patent are reproduced below. These defendants included Jawbone, Frédérique Constant, Apple, Michael Kors, HP, BLOCKS Wearables, Razer, and New Balance. The complaint in each case identified a smartwatch or fitness tracker (having an accelerometer, motion sensor, pedometer, calorie counter, and/or gyroscope) and its companion app as the accused product.
A day after Sportbrain filed its most recent lawsuit, the Patent Trial and Appeal Board (PTAB) granted a petition for inter partes review (IPR) of the ’002 patent. The IPR petition had been filed on July 22, 2016 by Unified Patents. According to its website, Unified Patents is a member-based organization seeking to deter non-practicing entity activity in specific technology areas. Unified Patents argued in its petition that the claims of the ’002 patent were obvious over four different combinations of prior art references.
In instituting the IPR proceeding, the PTAB concluded that the petitioner’s evidence established a reasonable likelihood that the combinations of prior art references would render all of the claims of the ’002 patent obvious.
The ’002 patent is now the subject of over 40 active cases brought by Sportbrain.
Boston Scientific Files IPR Petitions Against Nevro
Boston Scientific filed two petitions with the Patent Trial and Appeal Board on May 14, 2015 requesting inter partes review of Nevro’s U.S. Patent No. 8,359,102. The petitions were assigned Case Nos. IPR2015-01203 and IPR2015-01204. The ‘102 Patent, which is entitled “Selective High Frequency Spinal Cord Modulation for Inhibiting Pain with Reduced Side Effects, and Associated Systems and Methods,” issued on January 22, 2013. Figure 1 of the ‘102 Patent is shown below.
The first petition seeks review of Claims 1, 2, 11-15, 17-23, 25, and 26 of the ‘102 Patent as obvious based on six different grounds: 1) Claims 1, 2, 11-14, 17-22, 25, and 26 were challenged as being anticipated by MacDonald (U.S. Pat. No. 5,776,170); 2) Claims 1, 2, 15, 17-18, and 25-26 were challenged as being anticipated by Sluijter (U.S. Pat. No. 6,246,912); 3) Claims 1, 2, 17-23, 25 and 26 were challenged as being anticipated by Royle (U.S. Pat. Pub. No. 2006/0009820); 4) Claims 1, 2, 11-15, 17-23, 25, and 26 were challenged as being obvious over MacDonald, either alone or in view of De Ridder (U.S. Pat. Pub. No. 2011/0184488), Sluijter, and/or Royle; 5) Claims 1, 2, 11-15, 17-23, 25, and 26 were challenged as being obvious over Sluijter, either alone or in view of De Ridder, MacDonald and/or Royle; and 6) Claims 1, 2, 11-15, 17-23, 25, and 26 were challenged as being obvious over Royle, either alone or in view of De Ridder, MacDonald and/or Sluijter.
The second petition seeks review of the same claims, though on only two different grounds: 1) Claims 1, 2, 17-22, 25, and 26 were challenged as being anticipated by Knudson (U.S. Pat. Pub. No. 2007/0073354); and 2) Claims 1, 2, 11-15, 17-23, 25, and 26 were challenged as being obvious over Knudson either alone or in view of De Ridder and/or MacDonald.
The petitions state that there is no related litigation.
Days before Boston Scientific filed the petitions, Nevro announced that its Senza spinal cord stimulation system received FDA approval. Nevro states that it “intends to vigorously defend its intellectual property in this matter.”
Boston Scientific Files Second IPR Petition Against UAB Patent
Boston Scientific Corporation (“Boston Scientific”) filed a petition with the Patent Trial and Appeal Board on April 10, 2015 requesting inter partes review of U.S. Patent No. 6,266,563 (“the ’563 Patent”). The petition states that the ’563 Patent is owned by the UAB Research Foundation. The petition has been assigned Case No. IPR2015-01038.
The ’563 Patent is entitled “Method and Apparatus for Treating Cardiac Arrhythmia,” and lists as inventors Bruce H. KenKnight, Raymond E. Ideker, Robert S. Booker, III, and Stephen J. Hahn. The ’563 Patent states that it “relates to methods and an implantable apparatus for treating cardiac arrhythmia, particularly ventricular fibrillation.” Figure 1 from the ’563 Patent is shown below.
The petition seeks review of all twenty of the ’563 Patent’s claims “as obvious under 35 U.S.C. § 103 based on U.S. Patent No. 5,181,511 (‘Nickolls’), U.S. Patent No. 5,433,729 (‘Adams’), and the knowledge of a person of ordinary skill in the art.”
The petition states that the ’563 Patent has been asserted by the Board of Trustees of the University of Alabama at Birmingham and the UAB Research Foundation against Boston Scientific and Cardiac Pacemakers, Inc. in a lawsuit filed on September 22, 2014 in the U.S. District Court for the Northern District of Alabama. The complaint alleges that Boston Scientific and Cardiac Pacemakers, Inc., a wholly owned subsidiary of Boston Scientific, infringe the ’563 Patent by making, using, offering to sell or selling cardiac resynchronization therapy defibrillators (“CRT-Ds”), “including but not limited to the Incepta, Enrgen, Cognis, and Livian CRT-Ds . . . .”
The petition also states that Boston Scientific previously filed a petition requesting inter partes review of the ’563 Patent, alleging that all twenty claims were invalid as anticipated under 35 U.S.C. § 102(b) by U.S. Patent No. 5,797,967 to KenKnight. The prior petition was filed on March 23, 2015, and was assigned Case No. IPR2015-00918.
Inter Partes Review Requested for MiMedx Tissue Graft Patent
Tissue Transplant Technology Ltd. and Human Biologics of Texas Ltd. (“the Petitioners”) recently filed a petition with the Patent Trial and Appeal Board requesting inter partes review of U.S. Patent No. 8,597,687 (“the ’687 Patent”). The petition states that the ’687 Patent is owned by MiMedx Group, Inc. (“MiMedx”). According to the USPTO Assignment Database, the ’687 Patent was assigned to MiMedx by Surgical Biologics, LLC. on May 10, 2013.
The ’687 Patent is entitled “Methods For Determining The Orientation Of A Tissue Graft,” and the sole listed inventor is John Daniel. The ’687 Patent states that it “relates generally to tissue allografts and, in particular, to placental membrane tissue grafts (amnion and chorion) and methods of preparing, preserving, and medical uses for the same.” Figure 5 from the ’687 Patent is shown to the right.
The petition seeks review of all seven of the ’687 Patent’s claims. The petition discloses that the ’687 Patent has been asserted by MiMedx against the Petitioners in a lawsuit filed on May 16, 2014 in the U.S. District Court for the Western District of Texas. The first amended complaint, filed on June 26, 2014, alleges that the Petitioners infringe the ’687 Patent, as well as U.S. Pat. No. 8,709,494 by making, using, offering to sell or selling the SteriShield™ and/or Cygnus Solo™ tissue graft products.
Respironics Files for Inter Partes Review of ZOLL Medical’s Patient Monitoring Patent
Respironics, Inc., a subsidiary of Koninklijke Philips N.V., filed a petition last Friday with the Patent Trial and Appeal Board requesting inter partes review of ZOLL Medical Corporation’s U.S. Patent No. 6,681,003 to Linder et. al. The petition identifies Koninklijke Philips as a real party-in-interest.
The ‘003 patent is entitled “Data Collection and System Management for Patient-Word Medical Devices.” The ‘003 patent relates to “a method and system of monitoring information received from a patient-word medical device.”
The petition seeks review of nine of the patent’s 35 issued claims. Eight of these nine claims identified in the petition have been asserted by ZOLL Medical against Respironics in a lawsuit filed in the U.S. District Court of Delaware. The amended complaint, filed on January 9, 2013, alleges that Respironics’s “patient medical monitoring and treatment systems and methods” including positive airway pressure devices, infringe the ‘003 patent.
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