Trials@uspto.gov
`571-272-7822
`
`Paper 16
`Date: June 16, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ALLERGAN, INC., ALLERGAN LIMITED, ALLERGAN USA, INC.,
`ZELTIQ AESTHETICS, INC., ZELTIQ IRELAND UNLIMITED
`COMPANY, AND REMED CO. LTD.,
`Petitioners,
`v.
`BTL HEALTHCARE TECHNOLOGIES A.S.,1
`Patent Owner.
`
`PGR2021-00020
`Patent 10,695,575 B1
`
`Before JOSIAH C. COCKS, BARBARA A. PARVIS, and DAVID COTTA,
`Administrative Patent Judges.
`
`COTTA, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Post-Grant Review
`35 U.S.C. § 324
`
`1 Further to Patent Owner’s request, we have changed the case caption to
`reflect that former patent owner BLT Medical Technologies S.R.O assigned
`the ’575 patent to BLT Healthcare Technologies A.S. Ex. 3002.
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`Patent 10,695,575 B1
`
`INTRODUCTION
`I.
`Allergan, Inc., Allergan Limited, Allergan USA, Inc., Zeltiq
`Aesthetics, Inc., Zeltiq Ireland Unlimited Company, and Remed Co. Ltd.
`(collectively, “Petitioner”) filed a Petition (Paper 1 (“Pet.”)) requesting post-
`grant review of claims 1–29 (“the challenged claims”) of U.S. Patent No.
`10,695,575 B1 (Ex. 1004, “the ’575 Patent”). The predecessor in interest of
`BLT Healthcare Technologies A.S. (“Patent Owner”), BTL Medical
`Technologies S.R.O., filed a Preliminary Response. Paper 8 (“Prelim.
`Resp.”). With our authorization (Paper 9), Petitioner filed a Reply to Patent
`Owner’s Preliminary Response (Paper 10) and Patent Owner filed a Sur-
`Reply to Petitioner’s Reply (Paper 13).
`After considering the Petition, the Preliminary Response, Petitioner’s
`Reply, and Patent Owner’s Sur-Reply, as well as all supporting evidence, we
`determine the Petition does not demonstrate that it is more likely than not
`that at least one of the challenged claims of the ’575 patent is unpatentable.
`35 U.S.C. § 324(a). Thus, we do not institute post-grant review of the
`challenged claims of the ’575 Patent.
`
`II.
`
`BACKGROUND
`Real Parties-in-Interest
`A.
`Petitioner identifies as the real parties-in-interest the following:
`AbbVie Inc., Allergan, Inc., Allergan Limited, Allergan USA, Inc., Zeltiq
`Aesthetics, Inc., Zeltiq Ireland Unlimited Company, and Remed Co. Ltd.
`Pet. 92. Patent Owner names itself, BTL Industries, Inc., and BLT Medical
`Technologies S.R.O. as the real parties-in-interest. Paper 15, 1.
`
`Related Matters
`B.
`As required by 37 C.F.R. § 42.8(b)(2), each party identifies a judicial
`matter that would affect, or be affected by, a decision in this proceeding. In
`
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`Patent 10,695,575 B1
`particular, the parties inform us that the ’575 Patent is asserted in the
`following district court case: BTL Industries, Inc. v. Allergen Ltd., Case No.
`1-20-cv-01046 (D. Del.) (“parallel district court proceeding”), which was
`filed August 5, 2020 and is stayed. Pet. 92–93; Paper 5, 2. The parties
`additionally identify the following proceeding as a related matter: Certain
`Non-Invasive Aesthetic Body Contouring Devices, Components Thereof,
`and Methods of Using the Same, Inv. No. 337-TA-1219 (ITC), filed August
`5, 2020 (“the ITC proceeding”). Pet. 92–93; Paper 5, 2.
`The ’575 Patent is also the subject of PGR2021-00021. Paper 3, 1;
`Paper 5, 1. The instant Petition is the first ranked Petition. Paper 3, 1.
`Petitioner also has filed contemporaneously petitions for inter partes
`review as follows: (1) a petition for inter partes review of U.S. Patent No.
`10,493,293 (IPR2021-00296); and (2) a petition for inter partes review of
`U.S. Patent No. 10,478,634 (IPR2021-00312). Petitioner further has filed
`contemporaneously petitions for post grant review of U.S. Patent No.
`10,709,895 (PGR2021-00015 and PGR2021-00016); U.S. Patent No.
`10,632,321 (PGR2021-00017 and PGR2021-00018); U.S. Patent No.
`10,709,894 (PGR2021-00022 and PGR2021-00023); and U.S. Patent No.
`10,695,576 (PGR2021-00024 and PGR2021-00025). Paper 5, 2.
`
`The ’575 Patent
`C.
`The ’575 Patent relates to “device[s] and methods using the influence
`of magnetic and induced electric field on biological structure.” Ex. 1004,
`1:53–55. A circuit for “providing high power pulses to the stimulating
`magnetic field generating device” is shown in Figure 5b, reproduced below.
`Id. at 14:31–33.
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`
`
`Figure 5b, above, shows a “circuit for providing high power pulses for
`improved function of a treatment device.” Id. at 15:8–9. Figure 5b includes
`“magnetic field generating device 28 and energy storage device 29 . . .
`connected in series and disposed in parallel to switch 30.” Id. at 15:9–12.
`“To provide an energy pulse, controlled shorting of energy source 31 takes
`place through the switch 30.” Id. at 15:12–15. “[E]nergy source 31” or
`“switch 30,” or alternately both, “may be regulated by control unit 115. Id. at
`15:23–26.
`An “exemplary embodiment” of a “magnetic treatment device
`including two independent magnetic field generating circuits” is shown in
`Figure 12, reproduced below. Id. at 20:48–50.
`
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`Figure 12, above, shows “an exemplary embodiment of the magnetic
`treatment device including two independent magnetic field generating
`circuits.” Id. at 20:48–50. The circuit shown in Figure 12 includes magnetic
`field generating circuit 52 and magnetic field generating circuit 57. Id. at
`Fig. 12, 20:47–56. Magnetic field generating circuit 52 includes “energy
`source 53, switching device 54, energy storage device 55, and magnetic field
`generating device 56.” Id. at 20:50–53. Magnetic field generating circuit 57
`includes “energy source 58, switching device 59, energy storage device 60,
`and magnetic field generating device 61.” Id. at 20:53–56. A control unit
`controls provides energy from the energy storage devices to the coils to
`generate magnetic impulses by the coils. Id. at 21:14–17.
`
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`Patent 10,695,575 B1
`
`Illustrative Claims
`D.
`Petitioner challenges claims 1–29 of the ’575 Patent. Pet. 4. Claims 1,
`9, 16, and 24 are the independent claims. Claims 2–8 depend, directly or
`indirectly, from claim 1. Claims 10–15 depend, directly or indirectly, from
`claim 9. Claims 17–23 depend, directly or indirectly, from claim 16.
`Claims 25–29 depend, directly or indirectly, from claim 24. Independent
`claim 1, reproduced below, is illustrative of the claimed subject matter.
`1.
`A method for toning muscles of a patient, comprising:
`positioning a first applicator on the patient, the first
`applicator housing a first magnetic field generating coil having
`an inductance;
`independently positioning a second applicator on the
`patient, the second applicator housing a second magnetic field
`generating coil having the same inductance as the first magnetic
`field generating coil;
`charging a first energy storage device and a second energy
`storage device;
`discharging the first energy storage device to the first
`magnetic field generating coil such that a first impulse of a first
`time-varying magnetic field is generated;
`discharging the second energy storage device to the
`second magnetic field generating coil such that a first impulse of
`a second time-varying magnetic field is generated,
`wherein the first impulse of the first time-varying
`magnetic field and the first impulse of the second time-varying
`magnetic field each have a magnetic flux density in a range
`between 0.1 Tesla and 7 Tesla, and wherein the first impulse of
`the first time-varying magnetic field and the first impulse of the
`second time-varying magnetic field each have an impulse
`duration in a range between 3 μs and 3 ms;
`establishing a first pulse duration beginning at the
`beginning of the first impulse generated by the first magnetic
`field generating coil and ending at the beginning of a second
`impulse generated by the first magnetic field generating coil,
`wherein the first impulse generated by the second magnetic field
`generating coil is generated during the first pulse duration;
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`cooling each of the first and the second magnetic field
`generating coils; and
`applying a first plurality of impulses generated by the first
`magnetic field generating coil and applying a second plurality of
`impulses generated by the second magnetic field generating coil,
`to muscle fibers, neuromuscular plates, or nerves innervating
`muscle fibers in a body region of the patient to cause muscles of
`the body region to contract such that the muscles are toned.
`Ex. 1004, 107:48–108:22.
`
`Evidence
`E.
`Petitioner relies on the patent document references summarized in
`Table 1 below.
`Name
`Anderson
`Errico
`
`Patent Document
`US 8,834,547 B2
`WO 2015/179571 Al
`
`Exhibit
`
`1021
`1090
`
`
`
`Petitioner relies on the non-patent literature references summarized in
`Table 2 below.
`Name
`Porcari
`
`Author
`John P. Porcari,
`et al.
`
`Exhibit
`1019
`
`Non-Patent Literature Title
`Effects of Electrical Muscle
`Stimulation on Body
`Composition, Muscle
`Strength, and Physical
`Appearance, Journal of
`Strength and Conditioning
`Research 165–172 (2002).
`
`
`In addition, Petitioner relies on the Salus Talent Pop device (“Pop”) as
`
`it was sold and used in 2012. Pet. 21. Petitioner relies on the testimony of
`Mr. Kyu Tai Joo (Ex. 1042) as well as a Korean Food and Drug
`Administration (“KFDA”) approval document (Ex. 1043), user manual (Ex.
`1046), and brochure (Ex. 1047) as describing the features of Pop and
`
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`corroborating Mr. Joo’s testimony regarding the presence of those features
`in Pop. Pet. 21.
`
`Finally, Petitioner relies on the Declaration of Dr. Pedro Irazoqui (Ex.
`1023, “Irazoqui Declaration” or “Irazoqui Decl.”) as supporting that the
`challenged claims are unpatentable.
`
`Asserted Grounds
`F.
`Petitioner asserts that the challenged claims of the ’575 Patent are
`unpatentable based on the grounds summarized in Table 3 below:
`35 U.S.C. §2
`Claims Challenged
`References/Basis
`13
`112(b)
`Indefiniteness
`1–29
`112(a)
`Lack of Written Description
`1–29
`112(a)
`Lack of Enablement
`1–13, 16–20, 22, 23
`103
`Pop, Porcari
`14, 15, 24–29
`103
`Pop, Porcari, Anderson
`21
`103
`Pop, Porcari, Errico
`
`Level of Skill in the Art
`G.
`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.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995)
`
`
`2 Because the challenged claims of the ’575 Patent have an apparent
`effective filing date on or after March 16, 2013, the 35 U.S.C. §§ 102 and
`103 provisions of the Leahy-Smith America Invents Act (“AIA”), Pub. L.
`No. 112-29, §§ 3(b)–3(c), 3(n)(1), 125 Stat. 284, 285–87, 293 (2011) apply
`and we apply the AIA versions of these statutes. The ’575 Patent’s filing
`date also is after the effective date set for the AIA’s changes to § 112 and we
`apply the AIA version of that statute. See AIA § 4(e). Our application of the
`AIA law is not an affirmative ruling on the actual effective filing date of this
`patent.
`
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`(citation omitted). The level of ordinary skill in the art is also reflected by
`the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed.
`Cir. 2001).
`Petitioner asserts that a person of ordinary skill in the art (“POSA”)
`the time of the invention would be a person or group of people “familiar
`with the design, development, and use of devices that apply electrical energy
`directly, or indirectly via magnetic fields, to the body to stimulate biological
`tissue (e.g., brains, spinal cords, nerves, or muscles).” Pet. 6. According to
`Petitioner, the POSA would include:
`(i) a person with at least a bachelor’s degree in electrical
`engineering, biomedical engineering, physics, or related field of
`study, and at least two years’ experience in academia or industry
`researching, designing, or developing such devices, and (ii) a
`medical doctor, healthcare provider, researcher, or other person
`having a degree
`in medicine, physiology, neuroscience,
`kinesiology, physical therapy, biomechanics, or a related
`discipline and two or more years of using, researching,
`designing, or developing such devices.
`Pet. 6–7. At this point in the proceeding, Patent Owner does not challenge
`Petitioner’s identification of the POSA. See generally, Prelim. Resp.
`
`We find that the phrases “at least” and “or more” in Petitioner's
`proposed identification of the POSA create a vague, open-ended upper
`bound for the level of ordinary skill, and we therefore do not adopt that
`aspect of the proposal. Accordingly, for purposes of this decision, and based
`on the current record, we adopt Petitioner's assessment of the level of skill
`for one of ordinary skill in the art, except without the “at least” and “or
`more” phrases. This definition is consistent with the level of skill reflected
`in the specification of the ’575 patent and the asserted prior art references.
`See Okajima, 261 F.3d at 1355.
`
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`H. Claim Construction
`We interpret claim terms in accordance with the standard used in
`federal district court in a civil action involving the validity or infringement
`of a patent. See 37 C.F.R. § 42.100(b) (2020). Petitioner proposes that the
`term “toning” means “an enhanced visual appearance of a body region or
`muscle caused by induced muscle contractions that strengthen, firm,
`volumize, or tighten the muscle.” Pet. 6 (citing Ex.1005, code (57), 2:1–4,
`3:18–28, 22:60–23:2, 25:1–3). In view of the issues we address below, we
`determine that it is not necessary to provide an express interpretation of this
`claim term. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co.,
`868 F.3d 1013, 1017 (Fed. Cir. 2017).
`Petitioner also provides arguments relating to claim construction for
`the term “control unit” in connection with its argument that “control unit” is
`indefinite. We address claim construction for “control unit” in our
`discussion of Petitioner’s indefiniteness argument.
`
`III. DISCRETIONARY DENIAL OF THE PETITION
`Patent Owner contends we should exercise our discretion under
`35 U.S.C. § 324(a) to deny post-grant review because the ’575 patent is
`involved in parallel district court and ITC proceedings involving the same
`parties, claims, grounds, arguments, and evidence as presented in the
`Petition. Prelim. Resp. 7–26 (citing, e.g., Apple Inc. v. Fintiv, Inc.,
`IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential, designated
`May 5, 2020) (“Fintiv”)). Because we determine that Petitioner fails to
`demonstrate that it is more likely than not that it will prevail in showing the
`challenged claims are unpatentable, we need not address Patent Owner’s
`contentions concerning discretionary denial.
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`INDEFINITENESS
`IV.
`Petitioner asserts that the term “control unit” in claim 13 is a means
`plus function claim term invoking 35 U.S.C. § 112(f) and that claim 13 is
`indefinite because the ’575 Patent Specification fails to disclose adequate
`structure for performing the claimed functions of the “control unit.” We
`begin our analysis by considering whether the term “control unit” invokes
`§ 112(f). We then consider whether the ’575 Patent Specification provides
`sufficient structure. We conclude that the term “control unit” does not
`invoke § 112(f), and further that, even if it had invoked § 112(f), the ’575
`Patent Specification provides sufficient structure to avoid indefiniteness.
`
`A. Does “control unit” invoke § 112(f)?
`Petitioner asserts that the term “control unit,” as recited in claim 13
`invokes § 112(f) because “the term ‘unit’ is a nonce word that triggers
`Section 112(f)” and “[t]he prefix ‘control’ does not alter this.” Pet. 14–15.
`Petitioner also asserts that during prosecution, “the Examiner advised Patent
`Owner that ‘control unit’ invoked Section 112(f).” Id. at 15 (citing Ex. 1012,
`24).
`
`Patent Owner argues that Petitioner’s analysis is conclusory and
`considers the terms “control” and “unit” in isolation from other recitations in
`the claim. Prelim. Resp. 28. Patent Owner also argues the following:
`
`In Samsung, . . . the Federal Circuit held that the term “digital
`processing unit” did not invoke § 112 ¶6 because the term
`“clearly serves as a stand-in for a ‘general purpose computer’ or
`a ‘central processing unit,’ each of which would be understood
`as a reference to structure [and] not simply any device that can
`perform a particular function.” See Samsung, 948 F.3d at 1354.3
`
`
`3 See Samsung Elec. Am., Inc. v. Prisua Eng’g Corp., 948 F.3d 1342, 1354
`(Fed. Cir. 2020).
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`And in Samsung, the court found it relevant that the “digital
`processing unit” was “operably connected to” other structural
`components in the claim. Id. So too here, the claimed “control
`unit” is operably connected to other structural components such
`as the claimed first and second “energy sources” and first and
`second “magnetic field generating coils.”
`Id. at 28–29.
`Patent Owner asserts that, as understood in light of the claims and the
`’575 Patent Specification, the term “control unit” comprises “the circuitry
`that controls or regulates the energy delivered to inductive coils” (id. at 30–
`31) and “circuitry that controls energy discharge in an RLC circuit” (id. at
`31). Patent Owner further asserts that “[t]o operate circuit components like
`the switch SW, control unit 115 must also be a physical circuit component.”
`Id. at 33.
`We start our inquiry with the rebuttable presumption that § 112(f)
`does not apply because “control unit” does not use the word “means.”
`Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015)
`(“[T]he use of the word ‘means’ in a claim element creates a rebuttable
`presumption that § 112[(f)] applies. . . . Applying the converse, [the Federal
`Circuit has] stated that the failure to use the word ‘means’ also creates a
`rebuttable presumption—this time that § 112[(f)] does not apply.”) (en banc
`in relevant part).
`Our inquiry does not end with the rebuttable presumption. The
`Federal Circuit emphasizes that “the essential inquiry is not merely the
`presence or absence of the word ‘means’ but whether the words of the claim
`are understood by persons of ordinary skill in the art to have a sufficiently
`definite meaning as the name for structure.” Williamson, 792 F.3d at 1348.
`To overcome the presumption that § 112(f) does not apply, the burden is on
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`Petitioner to “demonstrate[] that the claim term fails to ‘recite sufficiently
`definite structure’ or else recites ‘function without reciting sufficient
`structure for performing that function.” Id. at 1349; see Advanced Ground
`Info. Sys., Inc. v. Life360, Inc., 830 F.3d 1341, 1347 (Fed. Cir. 2016)
`(explaining that in determining whether the presumption has been rebutted,
`the challenger must establish that the claims are to be governed by § 112(f));
`see also Diebold Nixdorf, Inc. v. Int’l Trade Comm’n, 899 F.3d 1291, 1299–
`1300 (Fed. Cir. 2018) (“[I]n appropriate cases, a party advocating that a
`claim limitation that does not recite the word ‘means’ is subject to § 112[(f)]
`can overcome the presumption against its application solely by reference to
`evidence intrinsic to the patent.”).
`We agree with Patent Owner that Petitioner’s assertion is conclusory.
`Petitioner’s discussion of the claim language is limited to a sentence
`regarding the word “control” and a sentence regarding the word “unit,” with
`each word discussed in isolation of any other claim recitation. Pet. 14–16.
`Petitioner cursorily asserts that the term “unit” invokes § 112(f) and that
`“control” adds nothing. Id. Importantly, Petitioner’s assertion lacks
`meaningful discussion of the construction of “control unit” as understood in
`the context of the ’575 Patent Specification and claims. Id; Robert Bosch,
`LLC v. Snap-On Inc., 769 F.3d 1094, 1099 (Fed. Cir. 2014 (“In undertaking
`this analysis [of whether 112(f) applies], we ask if the claim language, read
`in light of the specification, recites sufficiently definite structure to avoid
`112 ¶ 6.”).
`Consistent with Patent Owner’s contentions, the specification does not
`treat the “control unit” as simply a black box recitation of any structure
`capable of performing the claimed function, but rather treats the term as
`referring to known structures such as a personal computer, a human machine
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`interface, or, alternatively, a “PD and/or PID controller.” Ex. 1004, 8:55–
`9:2, 14:38–45, 75:21–23; Samsung, 948 F.3d at 1354 (finding that claimed
`“digital processing unit” was not a means plus function limitation where the
`term referred to “a class of known structures – central processing units – that
`could be found in any general-purpose computer”). Consistent with this,
`Figures 5a and 5b depict control unit 115 as a physical structure positioned
`between the power supply and switch. Ex. 1004, Figs. 5a, 5b.
`Regarding Petitioner’s remaining assertion that the prosecution
`history supports that “control unit” invokes § 112(f), Applicant did not take
`a position on the Examiner’s statement during prosecution and did not
`necessarily agree with it. Ex. 1012, 23. We agree with Patent Owner
`(Prelim. Resp. 38) that it was not required argue against every potentially
`adverse statement made by the Examiner.
`For the reasons given, we determine that Petitioner has not shown that
`it is more likely than not that “control unit” is a means-plus-function term.
`
`B.
`
`If “control unit” invokes § 112 (f), does the ’575 Patent
`Specification discloses sufficient structure?
`We turn next to whether Petitioner has shown that it is more likely
`than not that the ’575 Patent Specification lacks disclosure of sufficient
`structure for “control unit” recited in claim 13, if that term were found to
`invoke § 112(f). Petitioner asserts that in claim 13 the “control unit”
`performs the function of “controlling . . . the discharge of energy to the first
`and second magnetic field generating coils.” Pet. 16. Petitioner asserts that
`the ’575 Patent Specification does not disclose corresponding structure for
`this function. Id. Petitioner acknowledges that the ’575 Patent Specification
`describes a control unit “CU” 115, but argues that the disclosure is deficient
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`because it describes “only” what the control unit does, “e.g., ‘regulating
`and/or adjusting,’ without disclosing any corresponding structure.” Id. at 17.
`Patent Owner asserts that even if “control unit” is interpreted under
`§ 112(f), the ’575 Patent Specification provides sufficient structure. Prelim.
`Resp. 39. Patent Owner points to the disclosure in the ’575 Patent
`Specification that the control unit’s regulation may be done using a human
`machine interface (“HMI”) including “a touchscreen, an audio-visual
`input/output device such as [a] PC including [a] display unit, an input unit
`and/or a graphical user interface.” Id. at 41 (quoting Ex. 1004, 8:67–9:2)
`(emphasis omitted). Patent Owner also points to the ’575 Patent
`Specification’s description of the control unit opening and closing the switch
`to control the discharge of energy from a capacitor to a magnetic coil to
`generate a magnetic field. Id. at 45–46 (citing Ex. 1004, 14:33–45). Patent
`Owner asserts that the ’575 Patent also describes a “trapezoidal envelope” as
`an example algorithm for how to control the magnetic field. Id. at 46 (citing
`Ex. 1004, 34:14-33, Fig. 13).
`Structure disclosed in the specification is sufficient if the specification
`“links or associates that structure to the function recited in the claim.”
`Williamson, 792 F.3d at 1352. Where there are multiple claimed functions,
`the specification must disclose adequate corresponding structure to perform
`all of the claimed functions. Id. at 1351–1352.
`For claim 13, Petitioner asserts that the function performed by the
`control unit is as follows: “controlling . . . the discharge of energy to the first
`and second magnetic field generating coils.” Pet. 16.
`The ’575 Patent Specification links the control unit to regulating the
`switching device and the energy source. Ex. 1004, 14:38–45. The ’575
`Patent Specification describes that “the switching devices may be
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`synchronized to generate the impulses at one fixed time within the pulse or
`both operation modes may be combined.” Id. at 19:64–67; see also id. at
`21:6–7 (“Both circuits may be set up individually or synchronously.”). The
`’575 Patent also illustrates an exemplary trapezoidal envelope, which is a
`train of pulses. Id. at 34:14–34, Fig. 13. The ’575 Patent discloses that the
`“treatment parameters”—which include the pulses—may be adjusted by a
`human machine interface. Id. at 8:63–9:2.
`Petitioner’s analysis of the alleged deficiencies in the ’575 Patent
`Specification’s disclosure is cursory. Petitioner quotes the portion of the
`’575 Patent that links the control unit to regulating the switching device and
`the energy source. Pet. 17 (citing Ex. 1004, 14:38–43). The Petition,
`however, lacks discussion of other pertinent disclosures, such as those
`identified by Patent Owner, including the description of exemplary human
`machine interfaces and of the exemplary trapezoidal envelope (Ex. 1004,
`8:63–9:2, 34:14–34, Fig. 13). Dr. Irazoqui’s testimony that the ’575 Patent
`Specification does not disclose components corresponding to the claimed
`function also does not take into account the disclosures identified by Patent
`Owner. Ex. 1023 ¶¶ 157–167.
`For the reasons given, we determine that Petitioner has not shown that
`it is more likely than not that the ’575 Patent Specification lacks disclosure
`of sufficient structure for “control unit.”
`
`V. WRITTEN DESCRIPTION—CLAIMS 1–29
`Petitioner asserts that claims 1–29 lack written description support in
`the ’575 Patent Specification. Pet. 67. Petitioner points to the recitation in
`each of the independent claims that “magnetic field generating coils”
`generate impulses having “a magnetic flux density in a range of 0.1 Tesla to
`7 Tesla.” Id. Petitioner also points to the recitation of a time-varying
`
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`magnetic field having “an impulse duration in a range of 3 μs to 3 ms” (as
`recited in independent claim 1) and having “an impulse duration in a range
`of 3 μs to 1 ms” (as recited in independent claims 16 and 24). Id. Petitioner
`asserts “for each method covered by the claims, the POSITA must select
`values from within claimed ranges—and further combine with other
`unclaimed but necessary operating parameters—to generate magnetic field
`pulses that will cause contractions in muscles for toning.” Id. at 68.
`Patent Owner asserts that “the specification expressly supports the
`exact claimed ranges of magnetic flux density (0.1 and 7 Tesla) and impulse
`duration (3 μs – 3 ms).” Prelim. Resp. 47–48 (citing Ex. 1004, 27:29–31,
`27:35–42). Patent Owner further asserts that the specification provides an
`example, stating “the pulsed magnetic field may induce [the] following
`effects: at least muscle contraction . . . [t]he treatment effect may be known
`as contouring, . . . muscle strengthening, muscle toning, muscle firming,
`muscle volumization, muscle tightening.” Id. at 48 (alterations in original);
`Ex. 1004, 23:1-20. Patent Owner contends that this disclosure is “legally
`sufficient to demonstrate possession of the claimed invention.
`To satisfy the written description requirement, a patent specification
`must describe the claimed invention in sufficient detail that one skilled in the
`art can reasonably conclude that the inventor had possession of the claimed
`invention at the time of the original filing. See, e.g., Moba, B.V. v. Diamond
`Automation, Inc., 325 F.3d 1306, 1319–1320 (Fed. Cir. 2003). The
`disclosure required to satisfy the written description requirement “varies
`with the nature and scope of the invention at issue, and with the scientific
`and technologic knowledge already in existence.” Capon v. Eshhar, 418
`F.3d 1349, 1357 (Fed. Cir. 2005). We agree with Patent Owner that
`Petitioner has not shown that the ’575 Patent Specification lacks sufficient
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`disclosure to reasonably convey to those skilled in the art that the inventor
`had possession of the claimed invention.
`We agree with Patent Owner that the ’575 Patent Specification
`describes using the disclosed method for toning. Ex. 1004, 23:15–20 (“The
`treatment effect may be known as contouring circumferential reduction, core
`strengthening, body shaping, body contouring, body sculpting, core shaping,
`muscle forming, muscle shaping skin laxity reduction, muscle strengthening,
`muscle toning, muscle firming, muscle volumization, muscle tightening, e.g.
`butt lifting.” (emphasis added)), 25:20–21 (“The effect may be known as
`muscle strengthening, muscle toning or muscle firming.” (emphasis added)),
`25:60–61 (“Hence effects such muscle volumization, toning, strengthening
`and/or remodeling may be caused.” (emphasis added)), 29:17–19 (“With the
`present method muscle contractions induced by the applied magnetic flux
`density may help to tone the muscle providing a more attractive
`appearance.” (emphasis added)). In addition, the ’575 Patent Specification
`expressly supports the exact claimed ranges of “magnetic flux density in a
`range of 0.1 Tesla to 7 Tesla,” an “impulse duration in a range of 3 μs to 3
`ms,” and an “impulse duration in a range of 3 μs to 1 ms.” Id. at 27:28–39.
`Petitioner asserts that “for each method covered by the claims, the
`POSITA must select values from within claimed ranges for the claimed
`operating parameters—and further combine with other unclaimed but
`necessary operating parameters—to generate magnetic field pulses that will
`cause contractions in muscles for toning.” Pet. 68. Petitioner also asserts
`that the ’575 patent fails to disclose “how to select a set of interrelated
`parameters that, when used together, will cause muscle contractions and
`achieve its claimed goal of toning.” Id. at 69. We do not find these
`arguments persuasive.
`
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`Petitioner concedes that, by 2016, using magnetic stimulation to
`induce muscle contraction was “well-known.” Pet. 9. According to
`Petitioner, magnetic stimulation devices used a number of parameters for
`stimulation, including: “the intensity of the energy stimulus . . . ; the
`duration of a pulse . . . ; the pulse repetition rate . . . ; the number of pulses
`in a group (‘train’); and the time from one train to the next.” Id. at 9–10.
`Petitioner concedes that “the artisan . . . understood that these parameters are
`interrelated, for example, shorter impulses require a higher magnetic field or
`current strength than longer pulses to induce muscle contractions, and that
`large muscles require more energy to stimulate than small muscles.” Id. at
`10.
`
`Not only was magnetic stimulation known, it was put into practice.
`Petitioner explains that “numerous prior art references discuss the use of
`magnetic . . . stimulation to contract muscles for a variety of clinical
`applications” including “muscle rehabilitation, strengthening of pelvic floor
`muscles . . . , strengthening of respiratory muscles, weight loss, . . . [and]
`prevention of muscle atrophy.” Id. More specifically, Petitioner admits that
`“[s]ince at least the 1990s, it also has been known to use magnetic
`stimulation for aesthetic purposes to tone muscles.” Id. at 12.
`The ’575 Patent Specif