Holding

The Patent Trial and Appeal Board (“the Board”) found claims 1-24 of U.S. Patent No. 9,002,460 (“the '460 patent”)—which describes a device for controlling spinal cord modulation for inhibiting pain—unpatentable based on obviousness determinations. Boston Scientific Corp. v. Nevro Corp., IPR2020-01562, Paper 50 (P.T.A.B. Mar. 14, 2022) (hereinafter “Boston 1”). That same day, the Board also found claims 1–7 and 9–21 of U.S. Patent No. 10,076,665 (“the '665 patent”)—which describes a similar device—unpatentable based on both anticipation and obviousness determinations. Boston Scientific Corp. v. Nevro Corp., IPR2020-01563, Paper 45 (P.T.A.B. Mar. 14, 2022) (hereinafter “Boston 2”).

Anticipation

The Board found that Petitioner showed claim 1 of the '665 patent to be anticipated by U.S. Pub. No. 2012/0083857 (“Bradley 857”). See Boston 2, at *47. The main dispute between Petitioner and Patent Owner regarding anticipation was whether Bradley 857  incorporated by reference U.S. Patent No. 6,516,227 (“Meadows”) to teach all the limitations of claim 1. Id. at *21–24.

Bradley 857  discloses tissue stimulation systems including implantable pulse generators (“IPGs”), an external control device, and a lead orientation screen. Id.at 18–22. Petitioner argued that Bradley 857 expressly incorporated Meadows' disclosure, citing Bradley 857's statement that “[f]urther details discussing the detailed structure and function of IPGs are described more fully in [Meadows] . . . , which [is] expressly incorporated herein by reference.” Id. at 22.

In contrast, Patent Owner argued that Bradley 857 did not incorporate Meadows in its entirety, but rather only “details discussing the detailed structure and function of IPGs.” Id. Patent Owner cited “nearly identical” language in Zenon Environmental, Inc. v. US Filter Corp., 506 F.3d 1370 (Fed. Cir. 2007) to argue that the Board should only incorporate the IPG-related information from Meadows because of the phrase “details discussing the detailed structure and function of IPGs” was limiting. Id. at 22–23.

The Board agreed with Petitioner, noting that while the incorporation language in Zenon limited its scope in stating “the relevant disclosures,” the language in Bradley 857 contained no such limiting language. Id. at 23. Thus, the Board concluded that Bradley 857 fully incorporated Meadows by reference.

Obviousness

The Board found that Petitioner showed claim 1 of the '665 patent to be obvious over the combined teachings of Bradley 857, U.S. Patent No. 6,993,384 (“Bradley 384”), and Meadows. Patent Owner argued that Petitioner's arguments regarding the motivation to combine the references only addressed how a person of ordinary skill in the art “could have,” and not how they “would have” been motivated to combine the references. Id. at *49. However, the Board—citing the entirety of Petitioner's argument—rebuked the Patent Owner's exclusion of important context and explained that Petitioner's argument stated that a person of ordinary skill in the art both “would have” and “could have combined the elements by known methods to yield a predictable result.” Id. Thus, the Board found claim 1 to be obvious over the cited references.

Petitioner argued that claim 1 of the '460 patent would have been obvious over U.S. Pub. No. 2011/0054551 (“Bradley”) and U.S. Pub. No. 2011/0093051 (“Davis”). Boston 1, at *58. Regarding how a person of ordinary skill in the art would have combined the two references, Petitioner advanced two alternative theories: (1) scaling Bradley's background image based on the teachings of Davis, and (2) scaling Davis's background image itself. Id. at *51. Patent Owner argued that Petitioner waived the first theory because Petitioner did not argue that Bradley's image is a computer-based image in the petition. Id. The Board disagreed, finding that the Petition sufficiently clear that Petitioner asserted that both Bradley and Davis taught a computer-based image, either of which could be changed based on DavisId. at *51–52. The Board did agree with Patent Owner, however, that Petitioner waived its hearing argument that “a person of ordinary skill in the art could have scaled Bradley's schematic vertebrae by looking at a picture of the fluoroscopy.” Id. at *52-53. “[T]his argument was not in Petitioner's briefing.” Id. at *53. The Board concluded that Petitioner showed claim 1 of the '460 patent would have been obvious over Bradley and Davis. Id. at *58.

Takeaways

These sister cases provide important lessons for Patent Owners in defending their patents against both anticipation and obviousness challenges. Here, the Board reinforced the importance of addressing the entirety of the Petition. The Board will not entertain attempts to selectively quote an opposing party's argument. Even if a petition states that a person of ordinary skill in the art “could have” been motivated to combine references, the Board will also add weight to other statements that a person of ordinary skill in the art “would have” been motivated to combine.

In considering whether a reference incorporates by reference a full or limited scope of another document, the words of the incorporation matter. The words “the relevant disclosures” may limit the scope of the incorporation, while merely stating “further details discussing” a structure (as in this case) may incorporate an entire document.

Additionally, Boston 1 provides a caution to petitioners about waiving arguments. New arguments and theories of unpatentability are not allowed after the initial petition.

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