Medtronic, Inc.

Patent Trials and Appeals Board

Sep 22, 2021

IPR2020-00712 (P.T.A.B. Sep. 22, 2021)

Trials@uspto.gov Paper No. 42
571-272-7822 Date: September 22, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

AXONICS, INC.,
Petitioner,
v.
MEDTRONIC, INC.,
Patent Owner.

IPR2020-00712
Patent 8,738,148 B2

Before JAMES A. TARTAL, ERIC C. JESCHKE, and
ALYSSA A. FINAMORE, Administrative Patent Judges.
TARTAL, Administrative Patent Judge.
JUDGMENT
Final Written Decision
Determining No Challenged Claims Unpatentable
35 U.S.C. § 318(a)

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Patent 8,738,148 B2
2
We have jurisdiction to conduct this inter partes review under
35 U.S.C. § 6. This Final Written Decision is issued pursuant to 35 U.S.C.
§ 318(a) (2018) and 37 C.F.R. § 42.73 (2019). For the reasons discussed
below, we determine Petitioner has not shown by a preponderance of the
evidence the unpatentability of any of claims 3–6, 9–12, and 15–18 of U.S.
Patent No. 8,738,148 B2 (Ex. 1001, “the ’148 patent”).
I. INTRODUCTION
A. Summary of Procedural History
Axonics, Inc. (“Petitioner”)1 filed a Petition pursuant to 35 U.S.C.
§§ 311–319 requesting an inter partes review of claims 1–18 (“the
Challenged Claims”) of the ’148 patent. Paper 1 (“Pet.”). We instituted an
inter partes review of the Challenged Claims on all grounds of
unpatentability asserted in the Petition. Paper 8 (“Inst. Dec.”).
Medtronic, Inc. (“Patent Owner”)2 filed a Patent Owner Response. Paper 15
(“PO Resp.”). In its Response, Patent Owner states that it has disclaimed
claims 1, 2, 7, 8, 13, and 14. PO Resp. 1 (citing Ex. 2007 (a copy of a
“Disclaimer in Patent Under 37 CFR 1.321(a)” providing that the patentee,
Medtronic, Inc., disclaims claims 1, 2, 7, 8, 13, and 14 of the ’148 patent,
dated December 22, 2020) (the “Disclaimer”)).

1 During the trial, the name of Petitioner when the Petition was filed,
Axonics Modulation Technologies, Inc., was changed to Axonics, Inc. See
Paper 32 (mislabeled as Paper 31). Petitioner identifies no additional real
parties in interest. Pet. 96.
2 Patent Owner states that it is the real party in interest, that “Medtronic plc
is the ultimate parent of Medtronic, Inc.,” and that “Medtronic, Inc. has
granted certain rights with respect to the patent-at-issue to Medtronic Puerto
Rico Operations Co., which in-turn has granted certain rights to Medtronic
Logistics, LLC, which in-turn has granted certain rights to Medtronic
USA, Inc.” Paper 4, 1 n.1.
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Petitioner filed a Reply to the Patent Owner Response (Paper 19, “Pet.
Reply”), and Patent Owner filed a Sur-reply (Paper 34, “PO Sur-reply”).
Patent Owner filed a list of allegedly improper arguments and evidence from
Petitioner’s Reply (Paper 23), to which Petitioner responded (Paper 26).
Oral argument was held and a transcript of the hearing appears in
the record. Paper 41 (“Tr.”). Petitioner bears the burden of proving
unpatentability of each claim challenged by a preponderance of the
evidence, and the burden of persuasion never shifts to Patent Owner.
See 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d); Dynamic Drinkware, LLC v.
Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015).
B. Related Proceedings
The parties identify the ’148 patent as a subject of Medtronic, Inc. v.
Axonics Modulation Technologies, Inc., Case No. 8:19-cv-02115-DOC-JDE
(C.D. Cal.). Pet. 97; Paper 4, 2. The parties also identify as related
matters IPR2020-00678, concerning U.S. Patent No. 7,774,069 B2
(“the ’069 patent”), and IPR2020-00680, concerning U.S. Patent
No. 8,457,758 B2 (“the ’758 patent”). Pet. 97; Paper 4, 2. The ’148 patent
issued from an application that was a continuation of an application that
issued as the ’758 patent. Ex. 1001, code (60). The ’758 patent issued from
an application that was a continuation of an application that was a division
of an application that issued as the ’069 patent. Id. The oral argument in
this proceeding was consolidated with oral argument in IPR2020-00678 and
IPR2020-00680. Tr. 4:9–15.
C. Effect of the Disclaimer
After institution of inter partes review, Patent Owner filed the
Disclaimer disclaiming claims 1, 2, 7, 8, 13, and 14 of the ’148 patent. PO
Resp. 1; Ex. 2007; see also 35 U.S.C. § 253(a) (providing that a patentee
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may “make disclaimer of any complete claim” in writing with the Patent and
Trademark Office, and such disclaimer “shall thereafter be considered as
part of the original patent”). Patent Owner asserts that in light of the
Disclaimer, claims 1, 2, 7, 8, 13, and 14 are to be “treated as though they
never existed.” PO Resp. 15 n.4 (citations omitted). Patent Owner further
argues that we should “not address the disclaimed claims in the Final
Written Decision.” Id. Petitioner does not dispute the effect of the
Disclaimer. See Pet. Reply 11–25 (arguing that the Challenged Claims not
disclaimed are unpatentable).
We agree with Patent Owner that we should not address the
patentability of claims 1, 2, 7, 8, 13, and 14 in this Decision. See PO
Resp. 15 n.4. Rather, we treat claims 1, 2, 7, 8, 13, and 14 as if they never
existed. See Gunn v. Kopf, 96 F.3d 1419, 1422 (Fed. Cir. 1996) (“A
statutory disclaimer under 35 U.S.C. § 253 has the effect of canceling the
claims from the patent and the patent is viewed as though the disclaimed
claims had never existed in the patent.”). We address the patentability only
of the Challenged Claims not disclaimed. See Intel Corp. v. VLSI
Tech. LLC, IPR2018-01040, Paper 36, 16 (PTAB Feb. 12, 2020)
(“Consistent with other Board decisions in which some, but not all,
challenged claims have been disclaimed after institution, we address the
patentability only of the remaining claims.” (collecting decisions)).
D. The ’148 Patent
The ’148 patent issued May 27, 2014, from an application filed on
March 15, 2013, and is directed to a “[s]ystem for transcutaneous energy
transfer.” Ex. 1001, codes (22), (45), (57). As background to the invention,
the ’148 patent explains that “[s]everal systems and methods have been used
for transcutaneously inductively recharging a rechargeable used in an
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implantable medical device,” including “the use of inductive coupling
involv[ing] the placement of two coils positioned in close proximity to each
other on opposite sides of the cutaneous boundary.” Id. at 2:1–3, 2:20–23.
According to the ’148 patent, “[f]or implanted medical devices, the
efficiency at which energy is transcutaneously transferred is crucial.” Id.
at 3:3–4. The ’148 patent further explains that inductive coupling “has a
tendency to heat surrounding components and tissue,” which limits “the
amount of energy transfer which can be accomplished per unit time”; that a
patient’s mobility is impaired during charging; and that the amount of
charging “can be limited by the amount of time required for charging,”
thereby limiting “the size of the internal power source.” Id. at 3:4–26.
The ’148 patent states that “[a]lignment of an external primary coil
with the internal secondary coil is important in achieving efficiency in
transcutaneous energy transfer,” and that “it is not always easy for the user
to know when the primary and secondary coils are properly aligned,”
Id. at 3:37–41. The ’148 patent further states that, even when aligned,
“the physical package containing the primary coil with the protrusion of the
implanted medical device may not result in optimum alignment of the
primary and secondary coils,” because the coils may not be centered in the
package and “even perfect alignment of the packages may result in actual
misalignment of the primary and secondary coils.” Id. at 3:41–52.
According to Patent Owner, the ’148 patent solved the problem of proper
alignment “through an inventive system including an external power source
that, among other things, automatically varies the power output of the
external charging device to generate a predetermined current through the
internal power source as a function of a value associated with the current
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passing through the internal power source.” PO Resp. 3–4 (citing Ex. 1001,
3:56–4:15, 20:65–22:18, Fig. 19).
Figure 3 of the ’148 patent is reproduced below.

Figure 3 illustrates implantable medical device 16 situated under cutaneous
boundary 38, and associated external charging device 48. Id. at 6:2–5, 7:57–
58, 8:21–23. Implantable medical device 16 includes rechargeable power
source 24, which powers electronics 26 and therapy module 28 “in a
conventional manner,” charging regulation module 42, and internal
telemetry coil 44. Id. at 7:33–36, 7:60–8:3. External charging device 48,
including external telemetry unit 46, charging unit 50, and external
antenna 52, is used to charge rechargeable power source 24 of implantable
medical device 16 while implantable medical device 16 is in place in a
patient. Id. at 7:63–8:3, 8:21–8:25. “[I]nternal telemetry coil 44 [is]
configured in [a] conventional manner to communicate through external
telemetry coil 46 to an external programming device (not shown), charging
unit 50 or other device in a conventional manner in order to both program
and control [the] implantable medical device and to externally obtain
information from implantable medical device 16 once implantable medical
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device has been implanted.” Id. at 7:63–8:3. “Charging unit 50 contains the
electronics necessary to drive primary coil 54 with an oscillating current in
order to induce current in secondary coil 34 when primary coil 54 is placed
in the proximity of secondary coil 34.” Id. at 8:25–28.
Figure 19 of the ’148 patent is reproduced below.

Figure 19 is a flow chart illustrating the operation of charging unit 50 to
charge an implantable medical device. Id. at 6:42–43, 21:27–28. The steps
shown in Figure 19 are described in the ’148 patent as follows:
● at step 310, charging unit 50 determines “whether external
antenna 52 is over the temperature limit set for charging operation,”
where the “temperature limit can help prevent patient 18 from being
exposed to temperatures that are higher than desired”;
● at steps 311 to 313, “[i]f external antenna 52 of charging unit 50 is
over temperature, an alert condition is indicated,” “[i]f external
antenna [52] is not over the temperature limit, charging unit 50 then
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checks . . . for a status problem with charging unit 50,” and “[i]f a status
problem is found, an alert condition is indicated”;
● at steps 314 and 316, “[i]f a status problem is not found, charging
unit 50 initially charges . . . rechargeable power source 24 of implantable
medical device 16 for 5.5 seconds,” and “[c]harging unit 50 then stops
charging and waits . . . one second to check for reception of a telemetry
signal from implantable medical device 16,” such as “the value of the
current flowing through secondary coil 34,” and “[i]f no telemetry signal
is detected, an alert condition is indicated,” returning the operation to
step 311;
● at step 318, “[i]f telemetry is received, charging unit 50 then
checks . . . for a status problem with implantable medical device 16,” and
“[i]f a status problem is detected, an alert condition is indicated,”
returning the operation to step 311;
● at step 322, “[i]f no status problem exists, charging unit 50
checks . . . to determine if the temperature is too high,” and “[i]f an over
temperature condition is detected, charging is stopped and a status
indication is displayed until the temperature drops below a predetermined
level”;
● at step 328, “[i]f no over temperature condition exists, charging
unit 50 checks . . . to determine if the voltage across rechargeable power
source 24 is over a voltage at which the charging rate should begin to
decrease, e.g., 4.05 volts”;
● at steps 330 and 332, “[i]f the voltage across rechargeable power 24
is greater than 4.05 volts, then charging unit 50 begins to taper charging
power,” but “[i]f the voltage across rechargeable power source 24 is not
over 4.05 volts, charging unit 50 checks . . . to determine whether the
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charging current through rechargeable power source 24 is over a current
rate that is not desirable, e.g., 50 milliamperes”;
● at step 334, “[i]f the charging current is over 50 milliamperes, then
the charging power level is decreased . . . by an appropriate [amount],
e.g., by 35 milliwatts”;
● at steps 336 and 338, “[i]f the charging current is not over 50
milliamperes, charging unit 50 checks . . . to determine if the charging
power level is less than [an] appropriate amount, e.g., 925 milliwatts,”
and “[i]f the power level is less than 925 milliwatts, the charging power
level is increased . . . by 35 milliwatts, up to a maximum of 925
milliwatts”;
● at steps 340 and 342, “[i]f the charge current is below . . . five (5)
milliamperes, then charging unit 50 stops . . . charging and indicates that
charging is complete, e.g., by lighting the charging complete indicator
light,” and “[i]f not, [operation returns to step 314 and] charging unit 50
then charges . . . rechargeable power source for one (1) minute and then
conducts the aforementioned tests, checks and actions as performed after
the initial 5.5 second charge.”
Id. at 21:28–22:17.
E. Illustrative Claim of the ’148 Patent
Each of claims 3, 6, 9, 12, 15, and 18 is independent. Ex. 1001,
22:50–23:3, 23:12–33, 23:55–24:6, 24:15–34, 24:52–65, 25:9–25. Claims 4
and 5 depend from claim 3, claims 10 and 11 depend from claim 9, and
claims 16 and 17 depend from claim 15. Id. at 23:4–11, 24:7–14, 25:1–8.
Claims 3–6 are directed to a “system for transcutaneous energy transfer,”
claims 9–12 are directed to an “external power source,” and claims 15–18
are directed to a “method of transcutaneous energy transfer.” Id. at 22:50–
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23:33, 23:55–24:34, 24:52–25:25. Claim 3 is illustrative of the claimed
subject matter and is reproduced below.
3. A system for transcutaneous energy transfer, comprising:
an implantable medical device having componentry for
providing a therapeutic output, said implantable medical
device having an internal battery and a secondary coil
operatively coupled to said internal battery, said
implantable medical device adapted to be implanted in a
patient; and
an external power source having a primary coil of said
external power source providing energy to said
implantable medical device when said primary coil said
external power source is placed in proximity of said
secondary coil of said implantable medical device and
thereby generating a current, having a value, passing
through said internal battery;
wherein said external power source automatically varies its
power output based on a value associated with said current
passing through said internal battery; and
wherein said external power source automatically varies its
power output based on a signal proportional to said current
passing through said internal battery.
Id. at 22:50–23:3.
F. References and Testimony
Below we provide an abbreviated summary of the qualifications of
Dr. Dorin Panescu, who provides testimony in support of Petitioner, and
Dr. Richard T. Mihran, who provides testimony in support of Patent Owner.
We also provide a table identifying the primary references relied upon by
Petitioner, as well as the exhibits corresponding to the declarations and
deposition testimony in the record for Dr. Panescu and Dr. Mihran.3

3 The table provided identifies only a select number of documents.
A complete identification of the papers and exhibits that form the record of
this case is available in the docket of this proceeding.
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Petitioner’s contentions are primarily supported by Dr. Panescu.4
Dr. Panescu has a Bachelor of Science degree in Electronics and
Telecommunications, as well as Master of Science and Doctorate degrees in
Electrical and Computer Engineering. Ex. 1003 ¶ 4; Ex. 1004 (curriculum
vitae of Dr. Panescu). Dr. Panescu is Chief Scientific Engineer at Biotronik
and indicates his work there concerns the “[d]evelopment of novel catheters
and systems for treatment of cardiac arrhythmias.” Ex. 1004, 1.
Dr. Panescu states that he has “over 25 years of direct technical experience
in electrical medical device technology including systems with implantable
medical devices”; that he is “an inventor on over 175 issued U.S. patents,”
including over 20 patents related to medical implants; and that he is “the
author of over 200 industry publications.” Ex. 1003 ¶¶ 4, 5; Ex. 1004, 1–9.
Patent Owner’s arguments are primarily supported by Dr. Mihran.
Dr. Mihran has a Bachelor of Science degree in Electrical Engineering and
Applied Physics, a Master of Science degree in Electrical and Computer
Engineering, and a Doctorate in Electrical Engineering. Ex. 2002 ¶ 8;
Ex. 2003 (curriculum vitae of Dr. Mihran). Dr. Mihran states that he is “a
Professor Adjunct in the Department of Electrical, Computer and Energy
Engineering at the University of Colorado at Boulder,” where he has “been
on the faculty since 1990.” Ex. 2002 ¶ 6. Dr. Mihran further states that he
has taught and performed research “pertaining to the development of
electronic, optical and ultrasonic devices and systems for medical and other
applications for over 35 years”; that he has “authored numerous publications
addressing cardiac and nerve cell electrophysiology”; and that he has

4 Petitioner also provides a Declaration of Rachel J. Watters (Ex. 1008)
concerning the availability of Exhibit 1006.
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“consulted extensively in the area of inductively-powered RFID devices and
networks for over twenty-five years.” Id. ¶¶ 6, 9, 13. Dr. Mihran also states
that he has “served as an expert witness in many patent litigation matters in
the areas of implantable medical devices, including spinal cord stimulation,
vagal nerve stimulation, pacemakers, implantable cardioverter/defibrillators
(ICDs), syringe-implantable RFID devices, orthopedic implants, RF tissue
ablation, and stereotactic medical imaging” as well as “other technology
areas, including wired and wireless telecommunications, radio frequency
identification systems, power management in portable devices, computers
and computer networks, and others.” Id. ¶ 14.
References and Witness Testimony Date Ex. No.
U.S. Patent No. 3,942,535 (“Schulman”) Mar. 9, 1976 Ex. 1005
Fischell et al., A Long-Lived, Reliable,
Rechargeable Cardiac Pacemaker,
Engineering in Medicine, 357 (Schaldach
et al. eds., 1975) (“Fischell Article”)
1975 Ex. 1006
U.S. Patent No. 3,888,260 (“Fischell ’260”) Jun. 10, 1975 Ex. 1007
Declaration of Dorin Panescu Mar. 2, 2020 Ex. 1003
Supplemental Declaration of Dorin Panescu Mar. 19, 2021 Ex. 1012
Deposition Transcript of Dorin Panescu Nov. 19, 2020 Ex. 2004
Declaration of Richard T. Mihran Dec. 22, 2020 Ex. 2002
Deposition Transcript of Richard T. Mihran Feb. 25, 2021 Ex. 2008

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G. Asserted Grounds of Unpatentability
Subsequent to the Disclaimer as applied to claims 1, 2, 7, 8, 13,
and 14, Petitioner alleges unpatentability of claims 3–6, 9–12, and 15–18 on
the following grounds:
Claim(s) Challenged 35 U.S.C. § Reference(s)/Basis
3–6, 9–12, 15–18 102 Schulman
3, 4, 9, 10, 15, 16 102 Fischell Article
5, 6, 11, 12, 17, 18 103 Fischell Article, Fischell ’260
Pet. 10–11.5
II. ANALYSIS OF PATENTABILITY
A. Principles of Law
Petitioner contends under two grounds that claims of the ’148 patent
are unpatentable based on anticipation. Pet. 10–11. A claim is anticipated if
a single prior art reference either expressly or inherently discloses every
limitation of the claim. Orion IP, LLC v. Hyundai Motor Am., 605 F.3d 967,
975 (Fed. Cir. 2010). “A single prior art reference may anticipate without
disclosing a feature of the claimed invention if such feature is necessarily
present, or inherent, in that reference.” Allergan, Inc. v. Apotex Inc.,
754 F.3d 952, 958 (Fed. Cir. 2014) (citing Schering Corp. v. Geneva
Pharm., 339 F.3d 1373, 1377 (Fed. Cir. 2003)).

5 The Leahy-Smith America Invents Act (“AIA”) included revisions to
35 U.S.C. §§ 102, 103 that became effective on March 16, 2013. Pub. L.
No. 112-29, §§ 3(b)–3(c), 3(n)(1), 125 Stat. 284, 285–87, 293 (2011).
Because there is no dispute that the ’148 patent claims have an effective
filing date before March 16, 2013, we apply the pre-AIA versions of these
statutes.
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Petitioner contends under one ground that claims of the ’148 patent
are unpatentable based on obviousness. Pet. 11. As set forth in 35 U.S.C.
§ 103(a),
[a] patent may not be obtained . . . if the differences between the
subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the
time the invention was made to a person having ordinary skill in
the art to which said subject matter pertains.
The question of obviousness is resolved on the basis of underlying factual
determinations including (1) the scope and content of the prior art; (2) any
differences between the claimed subject matter and the prior art; (3) the level
of ordinary skill in the art; and (4) when in evidence, objective evidence of
nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). An
obviousness analysis “need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can take account
of the inferences and creative steps that a person of ordinary skill in the art
would employ.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007);
accord In re Translogic Tech., Inc., 504 F.3d 1249, 1259 (Fed. Cir. 2007).
However, Petitioner cannot satisfy its burden of proving obviousness by
employing “mere conclusory statements.” In re Magnum Oil Tools
Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016). Instead, Petitioner must
articulate a reason why a person of ordinary skill in the art would have
combined the prior art references. In re NuVasive, 842 F.3d 1376, 1382
(Fed. Cir. 2016).
B. Level of Ordinary Skill in the Art
In determining whether an invention would have been obvious at the
time it was made, 35 U.S.C. § 103 requires us to resolve the level of
ordinary skill in the pertinent art at the time of the invention. Graham,
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383 U.S. at 17. The person of ordinary skill in the art is a hypothetical
person who is presumed to have known the relevant art at the time of the
invention. In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). In
determining the level of ordinary skill in the art, various factors may be
considered, including the “type of problems encountered in the art; prior art
solutions to those problems; rapidity with which innovations are made;
sophistication of the technology; and educational level of active workers in
the field.” Id. (citation omitted).
Petitioner contends that a person of ordinary skill in the art at the time
of the invention “would have had at least a bachelor’s degree in electrical
engineering or an equivalent as well as at least five years of experience in
the industry working with implantable medical devices such as cardiac
pacemakers or defibrillators.” Pet. 8. Patent Owner argues that a person of
ordinary skill “would have had at least a bachelor’s degree in a relevant field
(e.g., electrical, mechanical, or biomedical engineering) with at least two
years of experience with the design of components (e.g., circuitry) for
implantable medical devices and associated external devices (e.g.,
a charging unit),” and that “[m]ore education can substitute for practical
experience and vice versa.” PO Resp. 4–5 (citing Ex. 2002 ¶¶ 21–22).
Patent Owner further disagrees with Petitioner’s proposed level of skill
because it does not specify “experience and background with electronics and
circuitry.” Id. at 5. Patent Owner, however, further concedes that the result
of this proceeding “would not be different even if Petitioner’s level of skill
were to apply.” Id. (citing Ex. 2002 ¶¶ 23–24). The parties did not further
address this issue at trial. See generally Pet. Reply; PO Sur-reply.
Patent Owner fails to provide any rational explanation or support to
show that Petitioner’s proposed level of ordinary skill—a person having a
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“bachelor’s degree in electrical engineering or an equivalent as well as at
least five years of experience in the industry working with implantable
medical devices such as cardiac pacemakers or defibrillators” —corresponds
to a person who lacks “experience and background with electronics and
circuitry.” Further, we discern no substantial difference between the parties’
proposed definitions of a person of ordinary skill in the art that impacts our
determination in this Decision. We, therefore, agree with Patent Owner that
our analysis in this case does not turn on which of the parties’ competing
definitions of ordinary skill is applied and apply the level of ordinary skill in
the art proposed by Petitioner, consistent with the Decision on Institution.
See Inst. Dec. 11 (stating that “the ’148 patent and the cited prior art
references reflect the appropriate level of skill at the time of the claimed
invention and that the level of appropriate skill reflected in these references
is consistent with the definition of a person of ordinary skill in the art
proposed by Petitioner” (citing Okajima v. Bourdeau, 261 F.3d 1350, 1355
(Fed. Cir. 2001))).
C. Claim Construction
“In an inter partes review proceeding, a claim of a patent . . . shall be
construed 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). That standard “includ[es] construing the claim in accordance
with the ordinary and customary meaning of such claim as understood by
one of ordinary skill in the art and the prosecution history pertaining to the
patent.” Id.; see also Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005)
(en banc). “When a patentee explicitly defines a claim term in the
patent specification, the patentee’s definition controls.” Martek
Biosciences Corp. v. Nutrinova, Inc., 579 F.3d 1363, 1380 (Fed. Cir. 2009).
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In the Petition, Petitioner proposes no express construction for any
claim term. Pet. 7. Petitioner asserts that “all claim terms should be given
their plain and ordinary meaning, as would be understood by a person of
ordinary skill in the art, at the time of the invention, in light of the language
of the claims, the specification, and the prosecution history.” Id. In
response, Patent Owner argues that certain claims require “two separate
inputs to the external power source (or charging unit).” PO Resp. 6–9. We
agree with Patent Owner for the reasons provided in our detailed discussion
below. We further find no additional claim terms require express
construction.
1. “a value associated with said current;” “a signal proportional to
said current;” and “a measured voltage associated with said
current” (variously, claims 3, 6, 9, 12, 15, and 18)
Claim 3 is directed to “[a] system for transcutaneous energy transfer”
and recites, in relevant part, as follows:
an external power source . . .
wherein said external power source automatically varies its
power output based on a value associated with said
current passing through said internal battery [(the “Value
Limitation”)];
wherein said external power source automatically varies its
power output based on a signal proportional to said
current passing through said internal battery [(the “Signal
Limitation”)].
Ex. 1001, 22:50–23:2 (emphases added). Claim 9 is directed to “[a]n
external power source,” and includes the identical language of the Value
Limitation and the Signal Limitation. Id. at 23:55–24:6. Claim 15 is
directed to “[a] method of transcutaneous energy transfer,” and includes
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claim language substantively similar to the Value Limitation and the Signal
Limitation.6 Id. at 24:52–67.
Claim 6 is directed to “[a] system for transcutaneous energy transfer”
and recites, in relevant part, the Value Limitation followed by the following:
wherein said external power source automatically varies its
power source output based on a measured voltage
associated with said current passing through said internal
battery [(the “Measured Voltage Limitation”)].
Id. at 23:12–33 (emphases added). Claim 12 is directed to “[a]n external
power source,” and includes the identical language of the Value Limitation
and the Measured Voltage Limitation. Id. at 24:16–34. Claim 18 is
identical to claim 15, but for the recitation of claim language substantively

6 Specifically, claim 15 recites, in relevant part, the following steps:
driving said external primary coil with a charging signal from
said charging unit generating a current passing through
said internal battery; and
said charging unit automatically varying its power output
based on a value associated with said current passing
through said internal battery; and
wherein said automatically varying step automatically varies
its power output based on a signal proportional to said
current passing through said internal battery.
Ex. 1001 at 24:52–67 (emphasis added). Although claims 15 and 18 are
structured with a single “wherein” clause, whereas claims 3, 6, 9, and 12
each include two “wherein” clauses, neither party suggests that this is a
distinction that makes a difference to our analysis. See, e.g., PO Resp. 6–15;
Pet. Reply 8–14; see also Ex. 1003 ¶¶ 34, 35 (Dr. Panescu stating that “the
language in all ‘wherein’ clauses in all claims 13 through 18 . . . closely
parallels” the claim language of the other challenged claims such that “the
differences in ‘wherein’ clauses are essentially identical” across claims 3, 6,
9, 12, 15, and 18). Accordingly, our discussion of the Value Limitation and
the Signal Limitation applies to each claim that recites “a value associated
with said current” or “a signal proportional to said current,” respectively.
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similar to the Measured Voltage Limitation in place of the claim language
substantively similar to the Value Limitation of claim 15.7 Id. at 25:9–25.
We will generally refer to the dispute over the Value Limitation, the Signal
Limitation, and the Measured Voltage Limitation as corresponding to
whether the claims require “one input” or “two inputs.” See also PO Resp. 9
(stating that Patent Owner refers to these limitations collectively as the “two-
input claim limitations”). The Specification of the ’148 patent states that “an
alignment measurement may be made by measuring a value, e.g., current or
voltage, associated with, e.g., proportional to, the current passing through
[the] rechargeable power source.” Id. at 21:3–6. We therefore find that the
Specification expressly identifies “current or voltage” as examples of
“a value.” Id.
Patent Owner asserts that claims 3, 6, 9, 12, 15, and 18 should each be
construed to require “two separate inputs to the external power source (or
charging unit).” PO Resp. 9; see also id. at 6 (suggesting that it is unclear
from the Petition whether Petitioner contends claims 3, 6, 9, 12, 15, and 18
each require only a single input or multiple inputs). In short, according to
Patent Owner, “a value associated with said current” may not be one and the
same as either “a signal proportional to said current” or “a measured voltage
associated with said current.” Id. at 9–11 (citing, e.g., Ex. 2002 ¶¶ 33, 34).
Petitioner makes clear in its Reply that in the Petition it only contends
claims 3, 6, 9, 12, 15, and 18 do not require two inputs. Pet. Reply 1–2, 6
(contending that “the specific ‘value’ in question can be the measured
voltage, current, or signal,” and that “‘[a] value associated with said current,’

7 Our discussion of the Measured Voltage Limitation applies to each claim
that recites “a measured voltage associated with said current.”
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‘a measured voltage associated with said current,’ and ‘a signal proportional
to said current’ are not required to be separate inputs”); see also, e.g.,
Pet. 19–23 (purporting to show that the Value Limitation and the Signal
Limitation of claim 3 are both disclosed by Schulman in the same manner as
a single “wherein” limitation of claim 1). Further, in support of the Petition,
Dr. Panescu states that “any prior art publication that discloses varying the
power output of the external power source based on measuring a current
and/or voltage in the implanted device, that is proportional to or associated
with the current passing through the internal battery, teaches all different
permutations” of the Value Limitation, the Signal Limitation, and the
Measured Voltage Limitation across all Challenged Claims. Ex. 1003 ¶¶ 71,
72. There is no allegation in the Petition that any claim requires two inputs.
Although Petitioner provides no further explanation in the Petition in
support of the contention that claims 3, 6, 9, 12, 15, and 18 each only require
a single input, Petitioner offers various arguments in its Reply in support of
its interpretation of the claim language. Pet. Reply 1–11. Petitioner argues
that the Specification teaches “that a ‘value’ could be a current or a voltage,
though is not limited to these two species,” where “a ‘value’ represents a
collection or ‘genus’ of potential specific implementations.” Id. at 2. As
noted above, we agree that the Specification states that examples of
“a value” include “current or voltage.” Ex. 1001, 20:67–21:3. We do not
find that to be in dispute, but it does not resolve whether a single input may
satisfy both the Value Limitation and either the Signal Limitation or the
Measured Voltage Limitation.
Next, Petitioner reasons that “while there is a presumption that
different terms have different meanings, there is no presumption that
different terms require different features.” Id. at 3 (citing Applied Med.
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Res. Corp. v. U.S. Surgical Corp., 448 F.3d 1324, 1333 n.3 (Fed. Cir.
2006)). Thus, according to Petitioner, the claim construction issue presented
is “[w]hether a single feature taught in the prior art or found in an accused
product can satisfy separate claim limitations.” Pet. Reply 3 (citing Applied
Med., 448 F.3d at 1333 n.3).
We disagree with Petitioner’s framing of the issue, which fails to
reflect Petitioner’s argument that the limitations at issue are not “separate
claim limitations,” because a disclosure of one is necessarily a disclosure of
the other. Specifically, according to Petitioner, its “core premise” is that
“‘voltage’ and ‘signal proportional to said current’ are species of, and thus
narrower in meaning than, ‘value.’” Id. at 5. Petitioner concedes its
proposed construction renders the Value Limitation superfluous, because, as
Petitioner recognizes, under its proposal “when the external power source
(or charging unit) automatically varies its power output based on ‘a
measured voltage’ or ‘a signal proportional to said current’ it is also varying
its power output (or charging unit) based on ‘a value.’” Id. at 5–6; see also
id. at 6 (“[W]hen the second, species wherein limitation is met in any claim,
it necessarily meets the first, genus wherein limitation.” (citations omitted)).
Petitioner is not relying on a single disclosure to satisfy two “separate claim
limitations”; rather, Petitioner is asserting two separate claim limitations
should be construed as requiring only a single feature.
Next, in its Reply, Petitioner argues for the first time that “[t]he
prosecution history of the parent Patent No. 8,457,758 confirms Petitioner’s
construction,” because it purportedly shows that the Examiner rejected
independent claims with a “value” limitation, as well as dependent claims
with additional limitations “based on the same disclosure,” purportedly
suggesting that a single input could meet both limitations. Pet. Reply 7.
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According to Petitioner, Applicant “never distinguished” the reference relied
on by the Examiner “by suggesting that the claims required two inputs.” Id.
We agree with Patent Owner that the arguments raised by Petitioner in
its Reply based on the prosecution history fail to show a clear disavowal or
disclaimer and instead reflect unsupported speculation as to what the
Examiner and Applicant allegedly understood, premised on “what Applicant
did not do during prosecution,” not any affirmative position taken by the
Applicant. PO Sur-reply 5 (emphasis omitted). Petitioner fails to show that
arguments not made by the Applicant during prosecution support
Petitioner’s construction of the claims. See Schwing GmbH v. Putzmeister
Aktiengesellschaft, 305 F.3d 1318, 1324 (Fed. Cir. 2002) (“Although
prosecution history can be a useful tool for interpreting claim terms, it
cannot be used to limit the scope of a claim unless the applicant took a
position before the PTO that would lead a competitor to believe that the
applicant had disavowed coverage of the relevant subject matter.”). Patent
Owner further asserts that “the fact that Applicant did not merge the two
wherein clauses [(i.e., the Value Limitation and the Signal Limitation or the
Measured Voltage Limitation)] into a single wherein clause with only a
single input during prosecution supports the opposite of Petitioner’s
argument, i.e., it actually supports the conclusion that two separate inputs are
intentionally specified in the claims.” PO Sur-reply 5. We agree with Patent
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Owner that by including two limitations the Applicant is presumed to have
intended each to carry patentable weight, as discussed below.8
Patent Owner also shows how the Specification of the ’148 patent
supports its proposed construction, explaining as follows:
the [S]pecification teaches that the power source can
automatically vary its power output based on multiple inputs,
where each input is associated with or proportional to “said
current passing through said internal battery.” (Ex. 2002 at ¶ 35.)
In one example, two separate inputs are utilized in deciding how
to vary the power output of the external power source 50: (1) the
voltage across rechargeable power source 24; and (2) the
charging current through rechargeable power source 24:
If no over temperature condition exists, charging
unit 50 checks (328) to determine if the voltage
across rechargeable power source 24 is over a
voltage at which the charging rate should begin to
decrease, e.g., 4.05 volts. If the voltage across
rechargeable power 24 is greater than 4.05 volts,
then charging unit 50 begins to taper charging
power (330).
If the voltage across rechargeable power source 24
is not over 4.05 volts, charging unit 50 checks (332)
to determine whether the charging current through
rechargeable power source 24 is over a current rate
that is not desirable, e.g., 50 milliamperes. If the
charging current is over 50 milliamperes, then the
charging power level is decreased (334) by an
appropriate, e.g., by 35 milliwatts.
(Ex. 1001 at 21:58-22:3, emphasis added.) As described in the
passage above, both a voltage across the rechargeable power

8 Patent Owner’s additional citations to cases for the proposition that
different claim terms are presumed to have different meanings does not
support its arguments. PO Resp. 9–10 (citations omitted). As Petitioner
notes, there is no dispute that “value,” “measured voltage,” and “signal
proportional to said current” have different meanings. Pet. Reply 5. The
issue is whether a single input can satisfy both limitations at issue.
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source and a current through the rechargeable power source are
utilized to control the operation of the external charging device.
A POSITA would understand that each of these two inputs is
associated with or proportional to a current passing through the
internal power source. (See also Ex. 1001 at 20:65-21:6;
Ex. 2002 at ¶ 35.)
PO Resp. 11–12. Patent Owner’s argument is persuasively supported by
Dr. Mihran, who explains that a person of ordinary skill in the art would
have understood the claim language requires two inputs, in part, because the
Specification of the ’148 patent “provides support for the use of multiple
inputs as a basis to vary power output of the power source as claimed.”
Ex. 2002 ¶¶ 33, 35.
In its Reply, Petitioner states that it “does not dispute that there are
embodiments where two inputs associated with a current passing through the
internal battery would be used.” Pet. Reply 8. Thus, there is no dispute that
the Specification provides support, at least under some embodiments, for
Patent Owner’s interpretation that the Value Limitation and either the Signal
Limitation or the Measured Voltage Limitation each require two inputs.
Instead, according to Petitioner, Patent Owner seeks to improperly import a
two-input requirement from particular embodiments into the claim language
(Pet. Reply 8–9 (citing Superguide Corp. v. DirecTV Enters., Inc., 358 F.3d
870, 875 (Fed. Cir. 2004))), and Patent Owner’s proposed construction
would exclude a preferred embodiment that requires only a single input,
which is “rarely, if ever, correct” (id. at 9–10 (quoting PPC
Broadband, Inc. v. Corning Optical Commc’ns RF, LLC, 815 F.3d 747, 755
(Fed. Cir. 2016))). Contrary to Petitioner’s arguments, the claim language
expressly includes two limitations, such that there is no improper
importation of requirements from the Specification. We also find, as
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explained above, that the Specification expressly supports a two-input
embodiment, and Petitioner directs us to no persuasive support for the notion
that every claim must be construed to encompass every preferred
embodiment disclosed in the Specification.
Lastly, Petitioner argues that “although [Patent Owner] does not
advance this argument, if their linguistic interpretation is to be applied
consistently, the dependent claims that add yet a third wherein clause
[(i.e., claims 4, 5, 10, 11, 16, and 17)] must describe a system in which the
external power source varies the power based on three separate inputs.” Pet.
Reply 10–11. According to Petitioner, Patent Owner “nowhere suggests that
the [S]pecification teaches this.” Id. Patent Owner, however, shows that
Petitioner’s argument finds no support in the record. PO Sur-reply 10–11.
Patent Owner explains that during cross-examination “Dr. Mihran explained
that the ’148 patent describes an external charger which varies its power
output based on at least three inputs.” Id. (citing Ex. 2008, 114:10–120:8
(explaining variation of the power output being controlled based on “the
temperature measurement and the power level being dissipated by the
external primary coil during the recharging process” in addition to the
“battery voltage input” and the “charging current input”)). We agree with
Patent Owner that Petitioner offers no evidence to the contrary. See id.
In its Sur-reply, Patent Owner further identifies where we view the
focus of the dispute to be, explaining that “Petitioner’s argument that one
value that is a signal proportional to the current or a measured voltage
associated with the current can satisfy both limitations would render the first
wherein clause that recites the ‘value’ input superfluous.” PO Sur-reply 8
(citing Wasica Fin. GmbH v. Cont’l Auto. Sys., Inc., 853 F.3d 1272, 1288
(Fed. Cir. 2017) (“It is highly disfavored to construe terms in a way that
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renders them void, meaningless, or superfluous.”)); see also PO Resp. 10
(arguing that “[c]laims must be interpreted with an eye toward giving effect
to all terms in the claim” (quoting Becton, Dickinson & Co. v. Tyco
Healthcare Grp., LP, 616 F.3d 1249, 1257 (Fed. Cir. 2010))).
Although the ’148 patent makes clear that “a value” may include, for
example “voltage,” we agree with Patent Owner that the two independent
limitations should be construed such that the Value Limitation does not
render superfluous the Signal Limitation or the Measured Voltage
Limitation. Our determination is further supported, as explained above, by
Petitioner’s failure to show that its proposed construction is supported by the
Specification or the prosecution history. Patent Owner has shown that if the
Signal Limitation or the Measured Voltage Limitation do no more than
further limit the Value Limitation, as Petitioner contends, then the Value
Limitation is rendered superfluous. Accordingly, we conclude that
Petitioner has not sufficiently supported its proposed construction and
determine that the Value Limitation and the Signal Limitation, as well as the
Value Limitation and the Measured Voltage Limitation both require two
separate inputs to the external power source.
2. Additional Claim Terms
We find no additional claim term requires express construction. See
Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013,
1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in
controversy, and only to the extent necessary to resolve the controversy.’”
(quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803
(Fed. Cir. 1999))).
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D. Scope and Content of the Prior Art
To demonstrate the unpatentability of claims 3–6, 9–12, and 15–18 of
the ’148 patent, Petitioner relies on Schulman, the Fischell Article, and
Fischell ’260. Pet. 8–9. A brief summary of each of these references,
focused on the teachings relied upon by Petitioner, is provided below.
1. Summary of Schulman
Schulman, titled Rechargeable Tissue Stimulating System, generally
“relates to a rechargeable tissue stimulating system for providing a charge to
a voltage source implanted in a living being, and for regulating recharging of
the voltage source through the use of a telemetry circuit.” Ex. 1005, 1:7–11.
Schulman describes the use of an induction coil external to the patient that
“is used to induce current flow in a charging circuit located beneath the skin
of the patient” and “external means” that “modulate the strength of the
charging magnetic field, as well as provide visual or audio indication of
proper charging as well as the proper positioning of the external power
source with respect to the implanted charging circuit, completion of the
proper charging interval to restore the amount of current used, and improper
charging.” Id. at code (57).
Figure 1 of Schulman is reproduced below.

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Figure 1 is a block diagram of a rechargeable tissue stimulating system of
Schulman. Id. at 3:16–17, 3:42–46. The system includes charging
circuit 10, with telemetry circuit 12 and tissue stimulator 11, for
implantation in the body. Id. at 3:42–46. External to the patient, the system
further includes power source 13 with transducer 14 “in the form of a
detector circuit for recharging and for verifying the charging condition of the
implanted portions of the tissue stimulating system,” charge head 42, and
timing means 61. Id. at 3:47–53. “The output of transducer 14 is used to
control the power oscillator output energy and is used to drive the timing
means 61, which includes a timing and indicator circuit.” Id. at 3:55–58.
2. Summary of the Fischell Article
The Fischell Article, titled “A Long-lived, Reliable, Rechargeable
Cardiac Pacemaker,” describes a cardiac pacemaker system with a
“rechargeable cell specifically adapted for use at body temperature.”
Ex. 1006, 357. The system includes an external device with a charger head
that transfers energy to a pickup coil in the implant in order to recharge the
battery. Id. at 372 (disclosing “the external charger applies an alternating
magnetic field which is picked up through the intact skin by the pulse
generator’s pickup coil”), Fig. 8.
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Figure 8 of the Fischell Article is reproduced below.

Figure 8 of the Fischell Article is a block diagram of the rechargeable
cardiac pacemaker system described in the Fischell Article. Id. at 369.
Petitioner describes the system shown in Figure 8 as follows:
a block diagram of a rechargeable pacemaker system showing an
“external charger” and a hermetically sealed rechargeable
pacemaker or “pulse generator” that is implanted beneath the
skin of the patient. The implantable device includes a “pick-up
coil” that interfaces with an induction coil in the “charger head”
of the external device, circuitry to convert the magnetic energy
to current for charging an internal rechargeable battery, a “Ni-Cd
cell,” a block titled “telemetry sensing of charge current” that is
coupled between the battery and a “telemetry transmitter” that
transmits information back to the external charger. “When the
external charger applies an alternating magnetic field which is
picked up through the intact skin by the pulse generator’s pickup
coil, a telemetry system is powered whose output frequency from
the pacer is proportional to the charge current in the battery.”
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Ex. 1006 at 372–373. The charger head of the external charger
detects this frequency and “closed-loop controls the battery
charge current” to bring it to a desired value (e.g., 40 mA).
Ex. 1006 at 373.
Pet. 50–51.
A telemetry transmitter in the Fischell Article communicates back to
the external device the charge current in the battery. Ex. 1006, 370–373
(disclosing “a telemetry system is powered whose output frequency from the
pacer is proportional to the charge current in the battery”), Fig. 8 (noting a
box for telemetry sensing of charge current), Table 3 (noting a “Battery
charge current telemetry” item). If the battery is not charging properly due
to misalignment (i.e., the current level is too low), the user is made aware by
a beeping sound and flashing lights on the external device. Id. at 377–378.
If the battery is receiving too much current, a feedback control system
maintains charge at the appropriate level. Id. at 367 (“The charging circuit
for the rechargeable pacer limits the charge (and overcharge) current into the
battery to 40 mA.”), 372 (disclosing “telemetry . . . to measure and control
charge current into the battery”), 373 (“The external charg[ing] detects [the
telemetry] and closed-loop controls the battery charge current to a value
of 40 mA.”), 378 (“A feedback control system in the charger maintains the
battery charge current at the proper 40 mA level.”).
3. Summary of Fischell ’260
Fischell ’260, titled Rechargeable Demand Inhibited Cardiac Pacer
and Tissue Stimulator, generally relates to a “demand inhibited cardiac pacer
or human tissue stimulator” that uses a rechargeable battery and “provides
accurate telemetry indication as to when such recharging of the unit’s battery
is taking place.” Ex. 1007, codes (54), (57). The demand inhibited cardiac
pacer or human tissue stimulator of Fischell ’260 includes “double hermetic
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sealing” which provides an “effective electromagnetic shield for the internal
electronic components . . . without severely attenuating the alternating
magnetic field that is utilized to recharge the pacer or stimulator battery.”
Id. at 1:59–2:3.
Figure 1a of Fischell ’260 is reproduced below:

Fischell ’260 Figure 1a, together with Figure 1b (not reproduced), is a
schematic diagram of circuitry utilized in a rechargeable demand inhibited
cardiac pacer. Id. at 3:27–31. As shown in Figure 1a, electrical power for
the electronic circuitry of the proposed pacer unit is provided by single cell
rechargeable nickel-cadmium battery 19 and “is maintained in an acceptable
operating condition by recharging energy inductively coupled through the
patient’s skin from a suitable external source of recharging energy by means
of the ferrite core input transformer 20 and the illustrated recharge
head 20a.” Id. at 6:40–50. Petitioner identifies recharge head 20a as an
“external coil” and input transformer 20 as an “internal coil.” Pet. 79.
Fischell ’260 states that “[t]he input recharging energy developed across the
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illustrated upper secondary winding of the input transformer 20 is rectified at
the conventional full-wave diode bridge rectifier 30,” and that the “output
recharging current available at the diagonals of the rectifier 30 is applied to
the battery 19 through a series recharging circuit comprising a conventional
field effect transistor current limiter 31, current monitoring resistor 32, and a
small (e.g., 3 ohm) voltage drop resistor 33.” Ex. 1007, 6:50–59. “A
voltage controlled oscillator 35 . . . receive[s] operating supply voltage from
the output of the full wave rectifier bridge 30,” and is “also connected . . . to
receive a control voltage signal developed across the current monitoring
resistor 32.” Id. at 6:66–7:3. “As a result, the output frequency generated
by the oscillator 35 varies in accordance with the value of recharging current
being supplied to the battery 19.” Id. at 7:3–6. “The output frequency
telemetry signal from the oscillator 35, when detected by a suitable external
receiving unit (not shown) via the winding 20b, thus provides accurate
indications both that recharging is taking place and the precise value of the
recharging current.” Id. at 7:10–15.
E. Alleged Anticipation by Schulman
Petitioner contends that claims 3–6, 9–12, and 15–18 of the
’148 patent are anticipated by Schulman. Pet. 11–49. We focus our
discussion on Petitioner’s arguments with regard to the Value Limitation, the
Signal Limitation, and the Measured Voltage Limitation, because they are
dispositive.
1. Claims 3, 9, and 15
Each of claims 3, 9, and 15 includes the Value Limitation and the
Signal Limitation. Ex. 1001, 22:50–23:3, 23:55–24:6, 24:52–67. Petitioner
contends in the Petition that under its claim interpretation the Value
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Limitation and the Signal Limitation are disclosed by the same disclosure of
a single input in Schulman. Pet. 22, 23, 32, 33, 45, 46.
Petitioner does not contend in the Petition that Schulman discloses an
external power source that automatically varies its power output based on
two inputs, one corresponding to the Value Limitation and another to the
Signal Limitation. See id. In its Response, Patent Owner describes
Petitioner’s contentions in the Petition as “not entirely clear,” and then
proceeds to explain why “Petitioner does not identify anywhere in
Schulman’s teachings a second input used to regulate the external power
source.” PO Resp. 20–28 (addressing “to the extent Petitioner is relying on
a value related to resistor R8 (e.g., current through or voltage across
resistor R8) in Schulman for disclosing both inputs in the two-input claim
limitations,” as well as “to the extent Petitioner’s analysis of Schulman
includes a mapping of a value related to resistor R9 (e.g., current through or
voltage across resistor R9) to the first input and a value related to resistor R8
(e.g., current through or voltage across resistor R8) to the second input”).
We have considered Petitioner’s contentions in the Petition and find
Petitioner does not allege any claim requires two inputs, much less that
Schulman discloses two inputs. See Pet 2–6 (summarizing the ’148 patent
without suggesting it describes the use of two inputs); see also id. at 11–49
(explaining how Petitioner contends Schulman anticipates claims of the ’148
patent). In its Reply Petitioner does not purport to support or show how it
alleged in the Petition that Schulman disclosed two inputs. See generally
Pet. Reply. Likewise, Dr. Panescu did not suggest or explain in his
declaration supporting the Petition that any claim required two inputs or that
Schulman anticipated a claim because it disclosed two inputs. See, e.g.,
Ex. 1003 ¶ 70–71 (stating that “all ‘wherein’ clauses” at issue in the claims
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challenged “replicate the same feature: controlling the power output of the
external power source based variously on a ‘value’ or ‘signal (‘current’ or
“voltage’) ‘associated with’ or ‘proportional to’ the current passing through
the internal battery of the implantable medical device”); see also id. at ¶ 72
(stating that “any prior art publication that discloses varying the power
output of the external power source based on measuring a current and/or
voltage in the implanted device, that is proportional to or associated with the
current passing through the internal battery, teaches all different
permutations” of the “‘wherein’ clauses” of the claims challenged). This is
confirmed in Dr. Panescu’s Supplemental Declaration, in which he states
that he “understand[s] that Dr. Mihran’s opinion is that a person of ordinary
skill in the art would have understood each wherein clause . . . to require a
separate respective input . . . used by the external power source as a basis for
automatically varying its power output,” and that he “disagree[s], at least for
the reasons set forth in [his] prior declaration.).
For the reasons provided in our claim construction discussion above,
supra § II.C.1, we reject Petitioner’s contention that a single input disclosed
by Schulman may satisfy both the Value Limitation and the Signal
Limitation of claims 3, 9, and 15, which require two separate inputs to the
external power source (or charging unit). Thus, Petitioner fails to show by a
preponderance of the evidence that a single input taught by Schulman
discloses both the Value Limitation and the Signal Limitation, as required by
claims 3, 9, and 15.
Belatedly, Petitioner seeks to argue in its Reply that “[e]ven if the
Board adopts [Patent Owner’s] claim construction positions requiring two
“inputs,” and its assertions that the Petition’s mapping of the claimed
‘value,’ ‘measured voltage’ associated with a current, and ‘signal
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proportional to said current,’ do not meet its proffered claim construction,
Schulman still anticipates” claims 3, 9, and 15.9 Pet. Reply 12–14.
Petitioner then proceeds to argue for the first time that features of Schulman
correspond to a second input that automatically varies the power output of
the external power source. Id. In so doing, Petitioner fails to meet its
burden to show in the Petition “[h]ow the challenged claim is to be
construed,” but instead relies on Patent Owner to show in its Response to the
Petition the proper construction. 37 C.F.R. § 42.104(b)(3). Indeed,
Petitioner does not argue, much less show that its “mapping” of the claims to
Schulman in the Petition corresponds to two inputs that automatically vary
the power output. Petitioner’s Reply is not an opportunity to advance new
arguments based on new testimony in an effort to show that challenged
claims are unpatentable where the proper claim construction requires
additional features, such as two inputs instead of one input, contrary to the
position taken by Petitioner in the Petition. See SAS Inst., Inc. v. Iancu,
138 S. Ct. 1348, 1356 (2018) (stating in regard to inter partes review that
“petitioner’s petition . . . is supposed to guide the life of the litigation”); see
also Sirona Dental Sys. GmbH v. Institut Straumann AG, 892 F.3d 1349,
1356 (Fed. Cir. 2018) (stating that “[b]ecause an IPR must proceed ‘[i]n
accordance with’ or ‘in conformance to’ the petition,” it would “not be
proper for the Board to deviate from the grounds in the petition”) (quoting
SAS Inst., 138 S. Ct. at 1357)).
Patent Owner argues, and we agree, that consideration of arguments
raised improperly by Petitioner for the first time in its Reply is unwarranted.

9 Petitioner does not even attempt to explain in its Reply how its “mapping”
of claim limitations in the Petition meets Patent Owner’s claim construction,
requiring two inputs. See generally Pet. Reply.
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PO Sur-reply 11–12 (citing Consolidated Trial Practice Guide (November
2019) (“CTPG”) at 73 (“Petitioner may not submit new evidence or
argument in reply that it could have presented earlier, e.g. to make out a
prima facie case of unpatentability.”), 74 (“‘Respond’ in the context of 37
C.F.R. § 42.23(b) does not mean proceed in a new direction with a new
approach as compared to the positions taken in a prior filing. While replies
and sur-replies can help crystalize issues for decision, a reply or sur-reply
that raises a new issue or belatedly presents evidence may not be
considered.”) (citing Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd.,
821 F.3d 1359, 1369–70 (Fed. Cir. 2016))). Moreover, Patent Owner
identified the new arguments advanced by Petitioner, and Petitioner had the
opportunity to show where the arguments were raised prior to its Reply.
Paper 23, 1; Paper 26, 1–2. Petitioner directs us to claim charts in the
Petition that purport to show how Schulman discloses a single-input,
consistent with Petitioner’s claim construction. See Paper 26, 1. Petitioner
fails to direct us to any argument in the Petition that recognizes that
claims 3, 9, and 15 require a separate input for “a value” and “a signal,”
much less that Schulman discloses the same.
In considering whether Petitioner could have presented its arguments
earlier in its Petition, we find that Petitioner chose to interpret the claims as
requiring only a single input, notwithstanding the fact that the Specification
of the ’148 patent discloses embodiments where power output would vary
based on two inputs, as Petitioner later acknowledged. See Pet. Reply 8
(stating that “Petitioner does not dispute that there are embodiments [in the
’148 patent] where two inputs associated with a current passing through the
internal battery would be used”). Thus, Petitioner had an adequate
opportunity to assess the ’148 patent and to understand that it disclosed
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support for two separate inputs, but failed to do so. Petitioner’s apparent
misapprehension of what is disclosed in the ’148 patent as od the filing of its
Petition does not afford Petitioner the opportunity to present new arguments
in its Reply in an attempt to show for the first time that claimed features are
disclosed by other elements of the asserted references. Petitioner may
respond to arguments raised in the Patent Owner Response in its Reply,
however, that Reply may not offer an entirely new rationale based on a new
combination of elements in the asserted references to show unpatentability
based on what amounts to a new ground not set forth in the Petition. See
CTPG 73–74.
We further find Petitioner’s need to file a supplemental declaration
from Dr. Panescu, who maintains that two inputs are not required by the
claims, but further opines for the first time that if two inputs are required by
the claims, Schulman still anticipates claims 3, 9, and 15, supports our
determination that Petitioner improperly seeks to advance new arguments in
its Reply. Ex. 1012 ¶¶ 10–20. Such testimony is not offered in support of
the arguments advanced in the Petition, but to instead present a new
rationale based on new features that go well-beyond proper supplemental
testimony. See, e.g., id. ¶ 10 (Dr. Panescu maintaining “at least for the
reasons set forth” in his prior declaration in support of the Petition that two
inputs are not required before offering new testimony that two inputs would
have been obvious). Accordingly, we find Petitioner’s arguments that
Schulman discloses two inputs are improper reply arguments based on
improper reply testimony and do not give them weight. For the foregoing
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reasons, we conclude that Petitioner fails to show by a preponderance of the
evidence that any of claims 3, 9, and 15 are anticipated by Schulman.10
2. Claims 6, 12, and 18
Each of claims 6, 12, and 18 includes the Value Limitation and the
Measured Voltage Limitation. Ex. 1001, 23:12–33, 24:16–34, 25:9–25.
Petitioner contends in the Petition that under its claim interpretation the
Value Limitation and the Measured Voltage Limitation are disclosed by the
same disclosure of a single input. Pet. 25, 26, 34, 35, 48, 49. Petitioner does
not contend in the Petition that Schulman discloses an external power source
that automatically varies its power output based on two inputs, one
corresponding to the Value Limitation and another to the Measured Voltage
Limitation. See id. For the reasons provided in our claim construction

10 In its Sur-reply, Patent Owner further disputes the merits of Petitioner’s
Reply arguments, asserting that Schulman does not disclose that an external
power source automatically varies its power output based on two inputs,
where one input is a value associated with said current passing through the
internal battery and the other input is a signal proportional to the current.
PO Sur-reply 12–16. However, as Patent Owner states, the record is
incomplete because “allowing Petitioner to raise such new arguments and
evidence at this late stage is highly prejudicial to [Patent Owner] given it
does not get an opportunity to rebut such new allegations with its own
evidence (e.g., expert testimony), which [Patent Owner] would have
submitted if it were allowed to do so.” Id. at 12. To be clear, Patent Owner
did not seek leave to submit additional expert testimony. Nevertheless, we
agree with Patent Owner that new evidence is not typically permitted in
support of a sur-reply. See 37 C.F.R. § 42.23(b) (“A sur-reply . . . may not
be accompanied by new evidence other than deposition transcripts of the
cross-examination of any reply witness.”). Moreover, we agree with Patent
Owner that it would be prejudicial to Patent Owner to be required to refute
what amounts to a new ground of unpatentability not raised in the Petition,
but instead asserted for the first time by Petitioner in its Reply. Thus,
reaching the merits of the new arguments raised by Petitioner on an
incomplete record is unwarranted in this case.
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discussion above, supra § II.C.1, we reject Petitioner’s contention that a
single input disclosed by Schulman may satisfy both the Value Limitation
and the Measured Voltage Limitation of claims 6, 12, and 18, which require
two separate inputs to the external power source (or charging unit). Thus,
Petitioner fails to show by a preponderance of the evidence that a single
input taught by Schulman discloses both the Value Limitation and the
Measured Voltage Limitation, as required by claims 6, 12, and 18.
Belatedly, Petitioner seeks to argue in its Reply that “[e]ven if” the
claims require two inputs, “Schulman still anticipates” claims 6, 12, and 18.
Pet. Reply 12–14. The issue presented in regard to new arguments and
testimony purporting to show that claims 6, 12, and 18 are anticipated by
Schulman under the claim construction advanced by Patent Owner are the
same as those addressed above in regard to anticipation of claims 3, 9,
and 15 by Schulman. For the same reasons provided above, we determine
that consideration of arguments raised improperly by Petitioner for the first
time in its Reply is unwarranted. See supra § II.E.1. For the foregoing
reasons, we conclude that Petitioner fails to show by a preponderance of the
evidence that any of claims 6, 12, and 18 are anticipated by Schulman.
3. Claims 4, 5, 10, 11, 16, and 17
Claims 4 and 5 depend from claim 3, claims 10 and 11 depend from
claim 9, and claims 16 and 17 depend from claim 15. Ex. 1001, 23:4–11,
24:7–14, 25:1–8. Having determined above that Petitioner has not shown by
a preponderance of the evidence that Schulman anticipates claims 3, 9, and
15, for the same reasons Petitioner has not shown by a preponderance of the
evidence that Schulman anticipates any of claims 4, 5, 10, 11, 16, and 17,
which depend from one of claims 3, 9, and 15.
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F. Alleged Anticipation by the Fischell Article
Petitioner contends that claims 3, 4, 9, 10, 15, and 16 of the
’148 patent are anticipated by the Fischell Article. Pet. 49–76. We focus
our discussion on Petitioner’s arguments with regard to the Value Limitation
and the Signal Limitation, because they are dispositive.
1. Claims 3, 9, and 15
Each of claims 3, 9, and 15 includes the Value Limitation and the
Signal Limitation. Ex. 1001, 22:50–23:3, 23:55–24:6, 24:52–67. Petitioner
contends in the Petition that under its claim interpretation the Value
Limitation and the Signal Limitation are disclosed by the same disclosure of
a single input in the Fischell Article. Pet. 58, 59, 65, 66, 75, 76. Petitioner
does not contend in the Petition that the Fischell Article discloses an external
power source that automatically varies its power output based on two inputs,
one corresponding to the Value Limitation and another to the Signal
Limitation. See id. For the reasons provided in our claim construction
discussion above, supra § II.C.1, we reject Petitioner’s contention that a
single input disclosed by the Fischell Article may satisfy both the Value
Limitation and the Signal Limitation of claims 3, 9, and 15, which require
two separate inputs to the external power source (or charging unit). Thus,
Petitioner fails to show by a preponderance of the evidence that a single
input taught by the Fischell Article discloses both the Value Limitation and
the Signal Limitation, as required by claims 3, 9, and 15.
Belatedly, Petitioner seeks to argue in its Reply that “[e]ven if the
Board adopts [Patent Owner’s] understanding that the claims require a
separate input for ‘a value associated with said current’ and ‘a signal
proportional to said current,’ [the] Fischell [Article] still anticipates
claims 3, 9, and 15.” Pet. Reply 16 (citing Ex. 1012 ¶¶ 20–27 (the
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Supplemental Declaration of Dr. Panescu offered by Petitioner in support of
its Reply following Patent Owner’s Response)). Petitioner then proceeds to
argue for the first time that features disclosed in the Fischell Article
correspond to a second input that automatically varies the power output of
the external power source. Id. In so doing, Petitioner again fails to meet its
burden to show in the Petition “[h]ow the challenged claim is to be
construed,” but instead relies on Patent Owner to show in its Response to the
Petition the proper construction. 37 C.F.R. § 42.104(b)(3). Petitioner’s
Reply is not an opportunity to advance new arguments based on new
testimony in an effort to show that challenged claims are unpatentable where
the proper claim construction requires additional features, such as two inputs
instead of one input as Petitioner alleged.
The issue presented in regard to new arguments and testimony
purporting to show that claims 3, 9, and 15 are anticipated by the Fischell
Article under the claim construction advanced by Patent Owner are the same
as those addressed above in regard to anticipation of claims 3, 9, and 15 by
Schulman. For the same reasons provided above, we determine that
consideration of arguments raised improperly by Petitioner for the first time
in its Reply is unwarranted. See supra § II.E.1. For the foregoing reasons,
we conclude that Petitioner fails to show by a preponderance of the evidence
that any of claims 3, 9, and 15 are anticipated by the Fischell Article.
2. Claims 4, 10, and 16
Claim 4 depends from claim 3, claim 10 depends from claim 9, and
claim 16 depends from claim 15. Ex. 1001, 23:4–11, 24:7–14, 25:1–8.
Having determined above that Petitioner has not shown by a preponderance
of the evidence that the Fischell Article anticipates claims 3, 9, and 15, for
the same reasons Petitioner has not shown by a preponderance of the
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evidence that the Fischell Article anticipates any of claims 4, 10, and 16,
which depend from one of claims 3, 9, and 15.
G. Alleged Obviousness over the Combination of
the Fischell Article and Fischell ’260
Petitioner asserts the subject matter of claims 5, 6, 11, 12, 17, and 18
of the ’148 patent would have been obvious over the Fischell Article and
Fischell ’260. Pet. 77–96.
1. Claims 5, 11, and 17
Claim 5 depends from claim 3, claim 11 depends from claim 9, and
claim 17 depends from claim 15. Ex. 1001, 23:8–11, 24:7–10, 25:5–8. Each
of claims 5, 11, and 17 includes the Value Limitation and the Signal
Limitation of the independent claim from which each depends, and
Petitioner only contends in the Petition that these limitations are taught by
the Fischell Article based on the same arguments Petitioner advances in
support of its contention that the Fischell Article anticipates claims 3, 9,
and 15. Pet. 81–84, 88, 92. For the reasons provided above, Petitioner fails
to show that the Fischell Article teaches both the Value Limitation and the
Signal Limitation. See supra § II.F.1.
Belatedly, in its Reply, Petitioner seeks to argue that “if the Board
adopts [Patent Owner’s] claim construction, [the] Fischell [Article] and
Fischell ’260 still render[] obvious claims 5, 11, and 17 because the
combination discloses two separate inputs to vary the power output of the
external source.” Pet. Reply 20; see also id. at 18–19 (purporting to show
that the Fischell Article teaches two inputs). Patent Owner argues that
Petitioner’s new arguments in reply are improper and that the asserted
combination does not disclose two inputs. PO Sur-reply 18–23. For the
same reasons provided above, we determine that consideration of arguments
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raised improperly by Petitioner for the first time in its Reply is unwarranted.
See supra § II.E.1. Accordingly, Petitioner fails to show by a preponderance
of the evidence that any of claims 5, 11, or 17 would have been obvious over
the combination of the Fischell Article and Fischell ’260.
2. Claims 6, 12, and 18
Each of claims 6, 12, and 18 includes the Value Limitation and the
Measured Voltage Limitation. Ex. 1001, 23:12–33, 24:15–34, 25:9–25.
Petitioner relies only on the Fischell Article as disclosing both of these
limitations through a single input. See Pet. 77–82, 84–96. Specifically,
Petitioner contends as follows:
Claims 5, 6, 11, 12, 17, and 18 of the ’148 [p]atent are directed
at varying the power supplied by the external power source based
on “a voltage proportional to” or “a measured voltage associated
with” the current passing through the internal battery. [The]
Fischell Article does teach “telemetry sensing of charge current”
(i.e., the actual current passing through the battery) based on
which the power supplied by the external power source is varied.
Given that electrical current is commonly measured by
measuring the voltage drop across a known resistor, according to
Ohm’s law, [the] Fischell Article inherently also teaches varying
the power supplied by the external power source based on a
voltage associated with or proportional to the current passing
through the internal battery. Thus, even if it is argued that
Fischell Article does not inherently teach that limitation, it
certainly suggests it.
Id. at 82. Petitioner relies on Fischell ’260 only to the extent that the
Fischell Article is insufficiently detailed regarding control based on voltage.
See id. at 87 (stating that “Fischell ’260 teaches controlling the frequency
output of the telemetry circuit based on measuring a ‘voltage signal
developed across the current monitoring resistor.’”); see also PO Resp. 33–
34 (asserting that Fischell ’260 is not relied upon by Petitioner to teach a
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separate second input); Pet. Reply 18–19 (not disputing that Petitioner only
relies on the Fischell Article as teaching a single input in the Petition). For
the same reasons provided above on which we found that Petitioner fails to
show that the Fischell Article teaches two inputs corresponding to both the
Value Limitation and the Signal Limitation, we likewise conclude that
Petitioner fails to show by a preponderance of the evidence that the Fischell
Article, alone or in combination with Fischell ’260, teaches both the Value
Limitation and the Measured Voltage Limitation. See supra §§ II.C.1,
II.F.1.
Belatedly, in its Reply, Petitioner seeks to argue that “if the Board
adopts [Patent Owner’s] understanding that the claims require a separate
input for ‘a value associated with a current’ and ‘a measured voltage
associated with a current,’ [the] Fischell [Article] and Fischell ’260 still
render obvious claims 6, 12, and 18.” Pet. Reply 18–19 (purporting to show
that the Fischell Article teaches two inputs). Patent Owner argues that
Petitioner’s new arguments in reply are improper and that the asserted
combination does not disclose two inputs. PO Sur-reply 21–23. For the
same reasons provided above, we determine that consideration of arguments
raised improperly by Petitioner for the first time in its Reply is unwarranted.
See supra § II.E.1. Accordingly, Petitioner fails to show by a preponderance
of the evidence that any of claims 6, 12, or 18 would have been obvious over
the combination of the Fischell Article and Fischell ’260.
III. CONCLUSION
Claims 1–18 of the ’148 patent were challenged in the Petition,
however, claims 1, 2, 7, 8, 13, and 14 were subsequently disclaimed by
Patent Owner. The remaining claims challenged were not shown to be
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unpatentable by a preponderance of the evidence, as summarized in the table
below.
IV. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that claims 3–6, 9–12, and 15–18 of the ’148 patent have
not been proven by a preponderance of the evidence to be unpatentable; and
FURTHER ORDERED that, as this is a Final Written Decision, a
party seeking judicial review of the Decision must comply with the notice
and service requirements of 37 C.F.R. § 90.2.
Claim(s)
35
U.S.C.
§
Reference(s)
Claim(s)
Shown
Unpatentable
Claims
Not Shown
Unpatentable
3–6, 9–12,
15–18
102 Schulman 3–6, 9–12,
15–18
3, 4, 9, 10,
15, 16
102 Fischell Article 3, 4, 9, 10, 15,
16
5, 6, 11, 12,
17, 18
103 Fischell Article,
Fischell ’260
5, 6, 11, 12,
17, 18
Overall
Outcome
3–6, 9–12,
15–18
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FOR PETITIONER:
James Isbester
Matthew J. Meyer
KILPATRICK TOWNSEND & STOCKTON LLP
jisbester@kilpatricktownsend.com
mmeyer@kilpatricktownsend.com

FOR PATENT OWNER:

Naveen Modi
Chetan R. Bansal
Quadeer A. Ahmed
PAUL HASTINGS LLP
naveenmodi@paulhastings.com
chetanbansal@paulhastings.com
quadeerahmed@paulhastings.com