BTL Healthcare Technologies A.S.

Patent Trials and Appeals Board

Mar 11, 2022

IPR2021-01273 (P.T.A.B. Mar. 11, 2022)

Trials@uspto.gov 571-272-7822 Paper 8 Date: March 11, 2022 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ LUMENIS BE LTD.,1 Petitioner, v. BTL HEALTHCARE TECHNOLOGIES A.S., Patent Owner. IPR2021-01273 Patent 10,478,634 B2 Before BARBARA A. PARVIS, ZHENYU YANG, and DAVID COTTA, Administrative Patent Judges. PER CURIAM DECISION Denying Institution of Inter Partes Review 35 U.S.C. § 314 1 We have changed the case caption to reflect that Lumenis Be Ltd. is the successor-in-interest of Lumenis Ltd. Paper 4, 1. IPR2021-01273 Patent 10,478,634 B2 2 I. INTRODUCTION Lumenis Be Ltd. (“Petitioner”) filed a Petition (Paper 2 (“Pet.”)), seeking an inter partes review of claims 1-8 and 23-30 of U.S. Patent No. 10,478,634 B2 (Ex. 1001, “the ’634 Patent”). BTL Healthcare Technologies A.S. (“Patent Owner”) filed a Preliminary Response. Paper 7 (“Prelim. Resp.”). We have authority under 35 U.S.C. § 314, which provides that an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons provided below, we determine Petitioner has not demonstrated a reasonable likelihood that it would prevail with respect to at least one claim challenged in the Petition. Accordingly, we deny institution of an inter partes review. A. Related Matters According to the parties, the ’634 patent was the subject of BTL Industries, Inc. v. Allergen Ltd., Case No. 1-19-cv-02356 (D. Del.) and Certain Non-Invasive Aesthetic Body Contouring Devices, Components Thereof, and Methods of Using the Same, Inv. No. 337-TA-1219 (ITC). Pet. 3; Paper 3, 1-2. The parties inform us that those cases have been stayed or closed due to settlement. Pet. 3; Paper 3, 1-2. The ’634 patent was also the subject of Allergan, Inc. et al v. BTL Medical Technologies SRO et al, IPR2021-00312 (settled prior to institution decision). Pet. 3. IPR2021-01273 Patent 10,478,634 B2 3 Petitioner has concurrently filed a petition in IPR2021-01280, challenging claims 9-22 of the ’634 patent. Pet. 3; Paper 3, 1. Petitioner also filed petitions for inter partes review of several related patents. Paper 3, 1. B. The ’634 Patent and Related Background The ’634 patent relates to “methods using the influence of magnetic and induced electric field on biological structure.” Ex. 1001, 1:53-55. The ’634 patent states that “[t]he magnetic field is time-varying and high powered[, and] therefore the method is based on a value of magnetic flux density sufficient to induce at least muscle contraction.” Id. at 1:55-58. The ’634 patent describes aesthetic medicine as including “all treatments resulting in enhancing a visual appearance and satisfaction of the patient.” Id. at 1:65-67. According to the ’634 patent, prior art magnetic methods were limited in key parameters, and thus, did not achieve satisfactory results. Id. at 2:32-3:7. The ’634 patent discloses a need for “new aesthetic treatment methods providing improved results in shorter time periods.” Id. at 3:8-9. The ’634 patent discloses methods and devices that “produce a time varying magnetic field for patient treatment which better optimizes energy use, increases the effectiveness of the treatments and provide a new treatment.” Id. at 3:13-16. A circuit for providing high power pulses to the stimulating magnetic field generating device is shown in Figure 5b, reproduced below. IPR2021-01273 Patent 10,478,634 B2 4 Figure 5b, above, shows a circuit for providing high power pulses for improved function of a treatment device. Id. at 12:35-36. It includes magnetic field generating device 28 and energy storage device 29 connected in series and disposed in parallel to switch 30. Id. at 12:36-39. To provide an energy pulse, controlled shorting of energy source 31 takes place through the switch 30. Id. at 13:40-42. Energy source 31 or switch 30, or alternately both, may be regulated by control 25 unit 115. Id. at 12:47-50. An exemplary embodiment of a magnetic treatment device including two independent magnetic field generating circuits is shown in Figure 12, reproduced below. IPR2021-01273 Patent 10,478,634 B2 5 Figure 12, above, shows an embodiment of the magnetic treatment device including two independent magnetic field generating circuits, 52 and 57. Id. at 16:7-24. Magnetic field generating circuit 52 includes energy source 53, switching device 54, energy storage device 55, and magnetic field generating device 56. Id. at 16:9-12. Magnetic field generating circuit 57 includes energy source 58, switching device 59, energy storage device 60, and magnetic field generating device 61. Id. at 16:12-14. The ’634 patent discloses methods for applying a magnetic field to the buttocks or abdomen. See id. at 33:14-27, 53-62, Figs. 15, 16. C. Illustrative Claims Among the challenged claims, claims 1 and 23 are independent. They are illustrative of the claimed subject matter and are reproduced below.2 1. [1.pre] A method for toning muscles in a patient using time- varying magnetic fields, the method comprising: [1.a] placing a first applicator comprising a magnetic field generating coil in contact with a patient’s skin or clothing at a body region of the patient, wherein the body region is an abdomen or a buttock; [1.b] coupling the first applicator to the patient with an adjustable flexible belt so that the belt holds the first applicator to the patient’s skin or clothing; [1.c] providing energy to the magnetic field generating coil in order to generate a time-varying magnetic field; and [1.d] applying a magnetic fluence of 50 T cm2 to 1,500 T cm2 to the body region; 2 For ease of reference, Petitioner’s designations to reference the claim limitations are set forth in brackets. Herein, we refer to the claim limitations using Petitioner’s designations. IPR2021-01273 Patent 10,478,634 B2 6 [1.e] wherein the time-varying magnetic field is applied to the body region with a magnetic flux density sufficient to cause a muscle contraction in the body region. Ex. 1001, 95:52-67. 23. [23.pre] A method for body shaping via a contraction of a muscle using time-varying magnetic fields applied to a patient, the method comprising: [23.a] placing a first applicator including a first magnetic field generating coil in contact with the patient’s skin or clothing at a first body region; placing a second applicator including a second magnetic field generating coil in contact with the patient's skin or clothing at a second body region; [23.b] charging at least one energy storage device having a capacitance in a range of 5 nF to 100 mF; [23.c] switching at least one switching device in order to enable discharging the at least one energy storage device to the first and the second magnetic field generating coils, wherein each magnetic field generating coil has an inductance in a range of 500 nH to 1 mH; [23.d] generating a first time-varying magnetic field by the first magnetic field generating coil and generating a second time- varying magnetic field by the second magnetic field generating coil; [23.e] assembling a plurality of magnetic pulses generated by the first and the second magnetic field generating coils into respective bursts comprising a first time period comprising a train of subsequent magnetic pulses, and a second time period in which no time-varying magnetic field is generated, and [23.f] applying the bursts to the first and second body region of the patient including a buttock or abdomen with a repetition rate in a range of 0.1 Hz to 700 Hz such that a muscle contraction is caused. Id. at 98:7-38. IPR2021-01273 Patent 10,478,634 B2 7 D. Asserted Challenges to Patentability Petitioner asserts the following challenges to patentability: Claims Challenged 35 U.S.C. §3 Reference(s) 1-8, 23-30 103 Simon4 1-8, 23-30 103 Burnett ’870,5 Magstim6 1-8, 23-30 103 Simon, Burnett ’870 Petitioner relies on the declaration of Dr. Marom Bikson as support for its Petition. Ex. 1002. II. ANALYSIS A. Claim Construction In an inter partes review, we construe a claim term “using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. [§] 282(b).” 37 C.F.R. § 42.100(b) (2020). Under that standard, the words of a claim “are generally given their ordinary and customary meaning,” which is “the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention, i.e., as of the effective filing date of the patent application.” Phillips v. AWH Corp., 415 F.3d 1303, 1312-13 (Fed. Cir. 2005) (en banc). 3 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125 Stat. 284, 287-88 (2011), amended 35 U.S.C. § 103, effective March 16, 2013. Because the ’634 patent has an effective filing date after March 16, 2013, the AIA version of § 103 applies. 4 U.S. 2015/0165226 A1, published June 18, 2015 (Ex. 1004, “Simon”). 5 U.S. 2014/0148870 A1, published May 29, 2014 (Ex. 1005, “Burnett ’870”). 6 Hovey, Chris and Jalinous, Reza, The Guide to Magnetic Stimulation, The Magstim Company Limited (July 21, 2006) (Ex. 1006, “Magstim”). IPR2021-01273 Patent 10,478,634 B2 8 Claim terms need only be construed to the extent necessary to resolve the controversy. Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011). The parties do not propose any claim construction. Pet. 9; see generally, Prelim. Resp. On this record and for purposes of this Decision, we see no need to construe any term expressly. B. Alleged Obviousness over Simon Petitioner asserts that claims 1-8 and 23-30 of the ’634 patent would have been obvious over Simon. Pet. 9-30. Based on this record, and for at least the following reasons, we determine Petitioner has not established a reasonable likelihood that it would prevail in this assertion. 1. Simon Simon relates to delivery of energy impulses (and/or fields) to bodily tissues for therapeutic purposes. Ex. 1004 ¶ 2. Simon describes toroidal magnetic stimulation devices, as well as to non-invasive methods for treating medical conditions using energy that is delivered by such devices. Id. Simon’s device is shown in Figure 1, reproduced below. Figure 1 is a schematic diagram of nerve stimulating/modulating device 300 for delivering impulses of energy to nerves for the treatment of IPR2021-01273 Patent 10,478,634 B2 9 medical conditions. Id. ¶ 54. It shows that stimulating device 300 includes impulse generator 310, power source 320, and control unit 330, respectively. Id. Impulse generator 310 is connected by wires to toroidal-shaped magnetic stimulator coil 340 located within electrically conducting medium 350. Id. ¶¶ 54, 56. 2. Analysis Both claims 1 and 23, the only independent claims challenged, require applying magnetic fields to a patient’s body. See Ex. 1001, 95:63-67 (claim limitations [1.d] and [1.e]), 98:28-38 (claim limitations [23.e] and [23.f]). Petitioner asserts that Simon teaches “[m]agnetic stimulation devices and methods.” Pet. 14 (citing Ex. 1004, Title, Abstract, ¶ 197); see also id. (“Simon discloses an ‘apparatus’ that induces a ‘time-varying magnetic field’ to apply ‘energy’ to a target region within a ‘patient.’”) (citing Ex. 1004, Abstract, ¶¶ 15, 23-24, 53). We are not persuaded. Although Simon designates its devices as magnetic stimulation devices (Ex. 1004, Title, ¶ 2), it explains that the magnetic field of a toroidal magnetic stimulator remains essentially within the toroid, and that when referring to this device as a magnetic stimulator, it is in fact the electric fields and/or currents that are induced outside the stimulator that produce an effect in the patient, not the magnetic field. Id. ¶ 37 (emphasis added). Indeed, Simon emphasizes that “the magnetic stimulation device disclosed herein is not intended to generate a magnetic field within bodily tissue, so it would produce its effect through a different mechanism than conventional magnetic stimulation.” Id. ¶¶ 122, 140. Simon teaches that the magnetic field of its device may be produced by a coil other than a toroid. Id. ¶ 82. The magnetic field outside the coil, IPR2021-01273 Patent 10,478,634 B2 10 however, falls rapidly as a function of distance from the coil. Id.; see also id. ¶ 25 (“[E]ach coil being housed within an enclosure [is] configured to substantially confine the magnetic field therein.”). According to Simon, “[s]uch non-toroidal windings may be used in the present invention if they are backed away and/or oriented relative to the patient’s skin in such a way that the magnetic field that is produced by the device does not effectively penetrate the patient’s tissue.” Id. ¶ 82. Alternatively, Simon teaches “magnetic shielding . . . may be interposed between the patient and coil of its device in such a way that the magnetic field that is produced by the device does not effectively penetrate the patient’s tissue.” Id.; see also id. ¶ 24 (stating the magnetic field “is located essentially entirely exterior to an outer skin surface of the patient”); ¶ 27 (the same). Because Simon does not teach applying magnetic fields to a patient’s body, which is required in independent claims 1 and 23, we determine that Petitioner has not demonstrated a reasonable likelihood that it would prevail in showing that claims 1 and 23 would have been obvious over Simon. Each of claims 2-8 depends from claim 1, and each of claims 24-30 depends from claim 9. Petitioner’s arguments and evidence for dependent claims 2-8 and 24-30 do not remedy the deficiencies discussed with respect to claims 1 and 23. See Pet. 23-30. Thus, we determine that Petitioner has not demonstrated a reasonable likelihood that it would prevail in showing that claims 2-8 and 24-30 would have been obvious over Simon either. C. Alleged Obviousness over Burnett ’870 and Magstim Petitioner asserts that claim claims 1-8 and 23-30 of the ’634 patent would have been obvious over the combination of Burnett ’870 and IPR2021-01273 Patent 10,478,634 B2 11 Magstim. Pet. 30-56. Based on this record, and for at least the following reasons, we determine that Petitioner has not established a reasonable likelihood that it would prevail in this assertion. 1. Prior Art Disclosures a. Burnett ’870 Burnett ’870 relates to a system for electromagnetic induction therapy that generates a magnetic field focused on a target nerve, muscle, or other body tissue. Ex. 1005 ¶ 21. An embodiment of Burnett ’870’s system is shown in Figure 34 reproduced below. Figure 34 is a profile view of the upper half of a human body with multiple back applicators 350, a sensor 352, and a logic controller 354. Id. ¶ 209. Burnett ’870 teaches that applicators 350 may include multiple coils that are fired sequentially. Id. ¶ 209. In another embodiment, Burnett ’870 teaches the applicator may include several coils that are pulsed intermittently. Id. ¶ 210. Burnett ’870 also teaches its device may be shaped as various body worn ergonomic applicator garments, as shown in Figures 9A-9D. Id. ¶ 113. IPR2021-01273 Patent 10,478,634 B2 12 b. Magstim Magstim describes techniques of magnetic stimulation for clinical applications. Ex. 1006, 1.7 Magstim illustrates its magnetic stimulator in Figure 2, reproduced below. Figure 2 above is a block diagram of the Magstim Model 200 monophasic stimulator. Id. at 4. Magstim teaches that the transformer charges the capacitor under the control of a microprocessor. Id. The capacitor is connected to the coil via an electronic switch when the user wishes to apply the stimulus. Id. Magstim’s coil is illustrated in Figure 3, reproduced below. 7 We cite to the original page numbers in Magstim, and not page numbers added by Petitioner. IPR2021-01273 Patent 10,478,634 B2 13 Figure 3 above illustrates a circular coil winding showing the lines of force generated when current flows through the winding. Id. at 5. Magstim teaches that the Magstim 200 is supplied with a single circular coil or a double coil shaped as a butterfly or figure of eight. Id. at 5, 9. Double coils use two windings, normally placed side by side. Id. 2. Analysis a. Claims 1-8 Independent claim 1 recites applying the time-varying magnetic field to a body region “with a magnetic flux density sufficient to cause a muscle contraction in the body region.” Ex. 1001, 95:65-67 (limitation [1.e]). Claim 1 specifies that “the body region is an abdomen or a buttock.” Id. at 95:56-57. Petitioner argues that Burnett ’870 teaches limitation [1.e]. Pet. 38-39, 43. Specifically, according to Petitioner, in Burnett ’870, Figure 9B shows coils 106, “disposed within an ‘abdominal garment’ covering and treating left and right sides of a patient’s buttocks/abdomen.” Id. at 38-39 (citing Ex. 1005 ¶ 114). Petitioner asserts that Burnett ’870’s device “may stimulate regions of the body to treat conditions requiring [] maximal stimulation (i.e., sufficient to cause contraction of muscle fibers IPR2021-01273 Patent 10,478,634 B2 14 and firing of nerves).” Id. at 43 (citing Ex. 1005 ¶ 227). We are not persuaded that Burnett ’870’s device in Figure 9B would be sufficient to cause a muscle contraction in a patient’s buttocks/abdomen, as limitation [1.e] requires. Figure 9B of Burnett ’870 is reproduced below. Figure 9B above illustrates shorts 108, which is “an abdominal garment” with coils 106 disposed therein. Id. ¶ 114. According to Burnett ’870, a marking 112 may be added to one side of shorts 108 to indicate wrap orientation. Id. Patent Owner argues that marking 112 indicates the front of shorts 108, and thus, coils 106 in Figure 9B are positioned over the front of a patient’s thigh, away from the patient’s buttocks and abdomen. Prelim. Resp. 45 (citing Ex. 1023, 9-10, Fig. 9B). And even if marking 112 indicates the back of shorts 108, Patent Owner continues, coils 106 are still below the patient’s buttocks. Id. Patent Owner also contends that “none of the garment-wrapped coils shown in Burnett’s Figures 9A-9D are positioned over a patient’s buttocks or abdomen.” Id. at 45-46 (citing Ex. 1005 ¶ 114, Figs. 9A-9D). We agree with Patent Owner that as shown in Figures 9A-9D, and specifically in Figure 9B, which Petitioner relies on, coils are not positioned over a patient’s buttocks or abdomen. IPR2021-01273 Patent 10,478,634 B2 15 Petitioner does not argue that it would have been obvious to place the coils over a patient’s buttocks or abdomen. Nor does Petitioner contend that the magnetic field generated by a coil placed over one body part would cause the contraction of a muscle somewhere else. Instead, Petitioner asserts that coils 106 in shorts 108 are “covering and treating left and right sides of a patient’s buttocks/abdomen,” and thus, stimulate the muscles thereof. Pet. 38-39 (citing Ex. 1005 ¶ 114, Fig. 9B), 43 (citing Ex. 1005 ¶ 227). Because in Figure 9B (or any embodiment of Figures 9A-9D), the coils are not placed over a patient’s buttocks or abdomen, we find Petitioner has not shown sufficiently that the magnetic field generated by those coils would be sufficient to cause a muscle contraction in a patient’s buttocks or abdomen, as limitation [1.e] requires. Thus, we conclude that Petitioner has not demonstrated a reasonable likelihood that it would prevail in showing that claims 1 would have been obvious over the combination of Burnett ’870 and Magstim. Each of claims 2-8 depends from claim 1. Petitioner’s arguments and evidence for dependent claims 2-8 do not remedy the deficiencies discussed with respect to claim 1. See Pet. 48-52. Thus, we determine that Petitioner has not demonstrated a reasonable likelihood that it would prevail in showing that claims 2-8 would have been obvious over Simon either.8 8 Patent Owner contends that the fact that Burnett ’870 does not teach placing the coils over a patient’s buttocks or abdomen is also fatal to Petitioner’s challenge of claims 23-30. See Prelim. Resp. 42 (applying this argument to “all claims”). We do not address this aspect of Patent Owner’s contention, other than to note that, unlike claim 1, which recites “the body IPR2021-01273 Patent 10,478,634 B2 16 b. Claims 6, 7, and 23-30 Each of claims 6, 7, and 23-30 requires two applicators. Ex. 1001, 96:29-39, 98:10-15. Petitioner asserts that Burnett ’870 teaches multiple applicators. Pet. 38-39 (citing Ex. 1005, Abstract, ¶ 114, Fig. 9B). Specifically, Petitioner argues “Figure 9B illustrates two applicators, each with a set of coils 106, disposed within an ‘abdominal garment’ covering and treating left and right sides of a patient’s buttocks/abdomen.” Id. For ease of reference, Figure 9B of Burnett ’870 is, again, reproduced below. Figure 9B above illustrates shorts 108, which is “an abdominal garment” with coils 106 disposed therein. Id. ¶ 114. Coils 106 are connected to a logic controller (not shown) by a connector 110. Id. On this record, it is not clear what Petitioner regards as an applicator in Burnett ’870’s Figure 9B. According to Petitioner, the applicators are “disposed within” the abdominal garment, and thus, are not the garment itself. Pet. 38. region is an abdomen or a buttock,” claim 23 recites that “the first and second body region of the patient including a buttock or abdomen.” Compare Ex. 1001, 95:56-57, with id. at 98:35-36 (emphases added). IPR2021-01273 Patent 10,478,634 B2 17 In addition, the Petition makes clear that the applicators are not the coils themselves either. In particular, the Petition separately identifies a “coil” and an “applicator” as exemplary structure in Burnett ’870 corresponding to the claimed structures. Id. at 38 (“Burnett-ʼ870 discloses placing a first applicator (e.g., ‘applicator’) comprising a magnetic field generating coil (e.g., ‘coil’) in contact with a patient’s skin or clothing at a body region of the patient.”); see also id. (“Figure 9B illustrates two applicators, each with a set of coils 106”) (emphasis added). Petitioner’s expert, Dr. Bikson, also suggests that the coils are not themselves the applicator. Ex.1002 ¶ 199 (testifying that adjustable attachment components “permit the applicators (and their corresponding coils) to be independently positioned”) (emphasis added); ¶ 226 (testifying that Burnett ’870 discloses that “‘[o]ne or more ergonomic or body contoured applicators’ are used, and ‘[t]he applicators include one or more conductive coils’”); ¶ 227 (testifying that “Figure 9B . . . illustrates two applicators with two set[s] of coils”). The ambiguity as to what structure in Burnett ’870 Petitioner identifies as corresponding to the claimed applicators is problematic because, in this inter partes review, Petitioner “has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016). On this record, Petitioner has not met that burden. Moreover, for the reasons explained below, we find persuasive Patent Owner’s argument that shorts 108 is a single applicator garment. See Prelim. Resp. 50. IPR2021-01273 Patent 10,478,634 B2 18 According to Burnett ’870, Each of the wraps of FIGS. 9A-9D corresponds to a coil wrap, into which a body part may be placed. These garments contain one or more sensors (not shown) that provide feedback to a logic controller (also not shown), or sensors may be applied separately from those garments. Systems may also be included for reversibly or irreversibly locking the coils within the applicator. Id. ¶ 113 (emphasis added). In view of this teaching, as well as others discussed below, we agree with Patent Owner that Burnett ’870 “describes each of its body applicator garments-including shorts 108-as a single applicator.” Prelim. Resp. 50 (citing Ex. 1005 ¶ 113). Patent Owner’s argument is supported by Burnett ’870’s other disclosures. For example, when describing other garment variations with embedded coils, Burnett ’870 states that “[e]ach garment and applicator may also utilize the locking, targeting coil feature described previously, without requiring the use of the any sensing components after a proper positioning of the coils in relation to the target nerve or nerves has been established.” Ex. 1005 ¶ 115 (emphases added). Thus, we agree with Patent Owner that Burnett ’870’s single applicator garment can concurrently target multiple nerves or body regions. Prelim. Resp. 51. This supports Patent Owner’s argument that shorts 108, although having two sets of coils 106, is a single applicator targeting a patient’s right and left thigh areas. Id. In addition, Burnett ’870 teaches that in shorts 108, coils 106 are “connected to a logic controller (not shown) by a connector 110.” Ex. 1005 ¶ 114. It also teaches “[a] marking 112 may be added on one side of shorts 108 to indicate wrap orientation.” Id. Patent Owner emphasizes that shorts 108 has a single controller and a single current, as well as a single IPR2021-01273 Patent 10,478,634 B2 19 marking used to guide a patient when wearing shorts 108. Prelim. Resp. 51. In view of the additional evidence of common structural and operational features, we agree with Patent Owner shorts 108 is a single applicator. Because each of claims 6, 7, and 23-30 requires two applicators, but the embodiment in Burnett ’870 that Petitioner relies on as teaching this limitation (shorts 108 shown in Figure 9B) only has a single applicator, we conclude that Petitioner has not demonstrated a reasonable likelihood that it would prevail in showing that claims 6, 7, and 23-30 would have been obvious over the combination of Burnett ’870 and Magstim. D. Alleged Obviousness over Simon and Burnett ’870 Petitioner asserts that claim claims 1-8 and 23-30 of the ’634 patent would have been obvious over the combination of Simon and Burnett ’870. Pet. 57-59. Based on this record, and for at least the following reasons, we determine Petitioner has not established a reasonable likelihood that it would prevail in this assertion. Petitioner reiterates that Claims 1-8, 23-30 would have been obvious over Simon. Id. at 57. But, “[t]o the extent argued that applying magnetic fluence between 50-1,500 T cm2 (e.g., [1.d]) was not well-known or obvious to a POSITA,” Petitioner contends “claim 1 (and dependents) are rendered obvious by Simon in view of Burnett-’870.”9 Id. (citing Ex. 1002 ¶ 331). Patent Owner counters that an ordinarily skilled artisan would not have had a reason to combine the teachings of Simon and Burnett ’870, nor a 9 In the heading for this ground, Petitioner also challenges independent claim 23 and its dependent claims as obvious over Simon and Burnett ’870. See Pet. 57 (heading for Ground 3). IPR2021-01273 Patent 10,478,634 B2 20 reasonable expectation of success when doing so. Prelim. Resp. 24-25. We find Patent Owner’s argument more persuasive. As explained above, because the magnetic field produced by Simon’s device does not effectively penetrate the patient’s tissue (Ex. 1004 ¶ 82), we determine Simon does not teach applying magnetic fields to a patient’s body, which is required in independent claims 1 and 23. See supra Section II.B.2. In contrast, Burnett ’870 teaches configuring the coils “to generate a magnetic field focused on a target nerve, muscle or other body tissues.” Ex. 1005 ¶ 21. Simon also describes the Burnett family of patent applications10 as disclosing “an unconventional adjustable coil that neither passes high current through the coil nor uses a core to increase the stimulus.” Ex. 1004 ¶¶ 166, 180. According to Simon, [Burnett] is therefore not designed to stimulate nerves or tissue as deeply or as powerfully as the device disclosed herein. Furthermore, as described above, the device disclosed herein is not intended to generate a magnetic field within bodily tissue, so use of the present invention would function differently than the one disclosed by BURNETT et al. Id. ¶ 180. Based on Simon’s teaching “highlight[ing] the fundamental differences between the devices disclosed in Simon and Burnett,” we agree with Patent Owner that an ordinarily skilled artisan “would not have looked to Burnett to modify Simon because their respective devices are different in structure and operation.” See Prelim. Resp. 54. Thus, we determine that 10 Simon specifically refers to Patent Application Publication No. 2010/0222629 A1 (Ex. 2010). IPR2021-01273 Patent 10,478,634 B2 21 Petitioner has not demonstrated a reasonable likelihood that it would prevail in showing that the challenged claims would have been obvious over the combination of Simon and Burnett ’870. III. CONCLUSION For the reasons explained above, we determine that Petitioner has not established a reasonable likelihood that it would prevail in showing that at least one of the challenged claims is unpatentable.11 IV. ORDER In consideration of the foregoing, it is hereby: ORDERED that the Petition is denied, and we do not institute inter partes review of any claim of the ’634 patent based on the grounds asserted in the Petition. 11 Patent Owner also argues that we should exercise our discretion under 35 U.S.C. §§ 314(a) and 325(d) to deny inter partes review. Prelim. Resp. 56-66. We do not address Patent Owner’s contentions concerning discretionary denial because we deny the Petition for reasons explained above. IPR2021-01273 Patent 10,478,634 B2 22 PETITIONER: Scott McKeown James L. David Jr. Keyna Chow ROPES & GRAY LLP Scott.mckeown@ropesgray.com James.I.davis@ropesgray.com Keyna.chow@ropesgray.com PATENT OWNER: Richard D. Coller Jon Wright Richard Bemben Lestin Kenton Cristian Camarce STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C. Rcoller-ptab@sternekessler.com Jwright-ptab@sternekessler.com Rbemben-ptab@sternekessler.com Lkenton-ptab@sternekessler.com Ccamarce-ptab@sternekessler.com