Medtronic, Inc. et al. v. Axonics, Inc.
`Central District of California, No. 8:19-cv-02115-DOC-JDE
`EXHIBIT E
`Infringement Chart for U.S. Patent No. 8,738,148 based on the Axonics r-SNM System
`
`
`
`EXHIBIT E:
`Infringement Chart for U.S. Patent No. 8,738,148 based on the Axonics r-SNM System
`
`
`Plaintiffs Medtronic, Inc., Medtronic Puerto Rico Operations Co., Medtronic Logistics, LLC, and Medtronic USA, Inc. (“Medtronic”
`or “Plaintiffs”) provide this preliminary infringement claim chart subject to all reservations, objections, statements, and disclaimers set
`forth herein and in Medtronic’s Preliminary Infringement Contentions Cover Pleading, as well as any amendment, supplement, or
`modification thereof, which are incorporated herein by reference in their entirety. This claim chart also incorporates by reference
`Medtronic’s Amended Complaint.
`
`Medtronic has prepared this infringement claim chart identifying, as specifically as possible with limited discovery, where each element
`of each asserted claim is found within the Accused Products. Medtronic contends that each element of the asserted claims is practiced
`literally by the Accused Products. To the extent Axonics disputes literal infringement, Medtronic contends that any such disputed
`element is practiced by the Accused Products under the doctrine of equivalents. Medtronic will update this chart, upon confirmation
`through discovery of how the Accused Products operate. Some of the limitations are software limitations and will be supplemented
`with additional evidence after inspection of the relevant source code.
`
`This claim chart is not intended to and does not construe the claims of the ’148 patent and does not limit Medtronic’s infringement
`contentions. Medtronic specifically reserves the right to further investigate the ’148 patent, to test and evaluate the products that may
`infringe the ’148 patent, and to modify and supplement this claim chart. This preliminary claim chart is provided to illustrate information
`practically available prior to discovery.
`
`Medtronic reserves the right to rely on all documents produced in discovery relevant to the below infringement allegations, including
`all documents cited herein, all design history files, and all source code, for example: AX0010381, AX0022930, AX0912833,
`AX0945420, AX0943588, AX0052787, AX0000416, AX0234644, AX004189, AX0043022, AX0607916, AX075143, AX0009292,
`AX0000439, AX0000624, AX0204825, AX0261354, AX0524856, AX0525101, AX1055323, AX0027649, AX0024326, AX0022930,
`AX1172294, AX0207488, AX0122809, AX1065708, AX1074249, AX0204887, AX0002900, AX1071326, AX0164368, MDT-
`00813004, AX0098792, AX1068138, AX1083415, AX1083487, AX1172706, AX1172714, AX0056137, AX-SC0000001-186, and
` Native Excel Document Produced by Axonics. Medtronic also reserves the right to rely on all deposition testimony and
`exhibits, including without limitation 30(b)(6) testimony of Axonics corporate representatives, for example, Abdeen, Mathur, Sama,
`and Jiang.
`
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`AmericasActive:17741044.1
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`1
`HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY
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`EXHIBIT
`Mihran 4
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`Axonics Exhibit 1021
`Axonics, Inc. v. Medtronic, Inc.
`IPR2020-00712
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`Page 1 of 5
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`Medtronic, Inc. et al. v. Axonics, Inc.
`Central District of California, No. 8:19-cv-02115-DOC-JDE
`EXHIBIT E
`Infringement Chart for U.S. Patent No. 8,738,148 based on the Axonics r-SNM System
`
`Exemplary Citations to the Axonics r-SNM System
`
`
`
`Claim
`3
`
`Claim
`Recitation
`
`3[c]
`
`wherein said
`external
`power source
`automatically
`varies its
`power output
`based on a
`
`AmericasActive:17741044.1
`
`IPG Schematic – Document No. 120-0203 (AX0000439), at AX0000441.
`
`The Axonics r-SNM System includes an external power source automatically varies its power output based
`on a value associated with said current passing through said internal battery. For example, the excerpts
`below and herein show that, under the Special Master’s construction of “value associated with said current”
`(Dkt. 163-1 at 74), Axonics’ charging device (or “CD”) has a power source that automatically varies its
`power output based on a number of values associated with the current passing through the battery of the
`IPG, including, by way of example and without limitation, the
`
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`
`
`Claim
`3
`
`Claim
`Recitation
`value
`associated
`with said
`current
`passing
`through said
`internal
`battery; and
`
`Medtronic, Inc. et al. v. Axonics, Inc.
`Central District of California, No. 8:19-cv-02115-DOC-JDE
`EXHIBIT E
`Infringement Chart for U.S. Patent No. 8,738,148 based on the Axonics r-SNM System
`
`Exemplary Citations to the Axonics r-SNM System
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
` including source code variables used to derive, or derived from, the
`aforementioned parameters, e.g., without limitation:
`
`
`
`
`
`
`
`
`
`. To the extent Axonics contends that
`these values are not values associated with a current passing through the internal battery of the IPG, this
`element is satisfied under the doctrine of equivalents. For example, these values are associated with a
`current which (if Axonics contends this is not the case) would be understood by a POSITA at the time of
`Axonics’ infringement to be insubstantially different from, and would have been interchangeable with,
`values associated with the current passing through the internal battery of the IPG. Thus, at the time of
`Axonics’ infringement, varying a power output based on a value associated with such an interchangeable
`current (if Axonics contends this is not a value associated with the current through the internal battery of
`the IPG) performs substantially the same function, in substantially the same way, to obtain the same result
`as varying a power output based on a value associated with a current through the internal battery of the IPG.
`
`Discovery is ongoing and Axonics’ technical productions are highly deficient (including Axonics’ refusal
`to date to produce samples of the Accused Products, source code, and complete technical documents).
`Axonics has also refused to provide adequate non-infringement contentions. Medtronic reserves the right
`to revise these contentions once Axonics satisfies its discovery obligations.
`
`See, e.g.,:
`
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`Page 3 of 5
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`
`
`Claim
`6
`
`6[c]
`
`Medtronic, Inc. et al. v. Axonics, Inc.
`Central District of California, No. 8:19-cv-02115-DOC-JDE
`EXHIBIT E
`Infringement Chart for U.S. Patent No. 8,738,148 based on the Axonics r-SNM System
`
`Exemplary Citations to the Axonics r-SNM System
`
`The Axonics r-SNM System includes an external power source automatically varies its power output based
`on a value associated with said current passing through said internal battery.
`
`See, e.g,: exemplary citations to the Axonics r-SNM System at ’148 patent, claim recitation 3[c] and
`discussion therein; furthermore, for the reasons set forth with respect to claim recitation 3[c], to the extent
`Axonics contends this element is not literally present, it is present under the doctrine of equivalents.
`
`
`Claim
`Recitation
`primary coil of
`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
`
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`
`
`Claim
`6
`
`6[d]
`
`Medtronic, Inc. et al. v. Axonics, Inc.
`Central District of California, No. 8:19-cv-02115-DOC-JDE
`EXHIBIT E
`Infringement Chart for U.S. Patent No. 8,738,148 based on the Axonics r-SNM System
`
`Claim
`Recitation
`through said
`internal
`battery; and
`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.
`
`Exemplary Citations to the Axonics r-SNM System
`
`The Axonics r-SNM System includes an external power source automatically varies its power output based
`on a measured voltage associated with said current passing through said internal battery. For example, the
`excerpts below and herein show that Axonics’ charging device (or “CD”) has a power source that
`automatically varies its power output based on a number of measured values associated with the current
`passing through the battery of the IPG, including, by way of example and without limitation,
`
`
`. To the extent Axonics contends that these are not a measured voltage associated with a current
`passing through the internal battery of the IPG, this element is satisfied under the doctrine of equivalents.
`These signals involve measuring a voltage associated with a current which (if Axonics contends this is not
`the case) would be understood by a POSITA at the time of Axonics’ infringement to be insubstantially
`different from, and would have been interchangeable with, a measured voltage associated with the current
`passing through the internal battery of the IPG. Thus, at the time of Axonics’ infringement, varying a
`power output based on a measured voltage associated with such an interchangeable current (if Axonics
`contends this is not a measured voltage associated with a current through the internal battery of the IPG)
`performs substantially the same function, in substantially the same way, to obtain the same result as varying
`a power output based on a measured voltage associated with a current through the internal battery of the
`IPG.
`
`Discovery is ongoing and Axonics’ technical productions are highly deficient (including Axonics’ refusal
`to date to produce samples of the Accused Products, source code, and complete technical documents).
`Medtronic reserves the right to revise these contentions once Axonics satisfies its discovery obligations.
`
`See also:
`
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