Case: 24-2171 Document: 12 Page: 1 Filed: 09/19/2024
`
`UNITED STATES COURT OF APPEALS
`FOR THE FEDERAL CIRCUIT
`
`AXONICS, INC.,
`Petitioner/Appellant,
`v.
`
`
`
`MEDTRONIC, INC.,
`Patent Owner/Appellee.
`
`
`
`
` Appeal Nos. 2024-21711
`
`
`
` 2024-2172
`
`
`
`
`
`
`
`
`
`
`
`Proceeding Nos.: IPR2020-00680 and IPR2020-00712
`
`NOTICE FORWARDING CERTIFIED LISTS
`
`
`
`Notices of Appeal to the United States Court of Appeals for the Federal
`
`Circuit were timely filed by Petitioner on July 31, 2024, in the United States Patent
`
`and Trademark Office in connection with the above identified Inter Partes Review
`
`proceedings. Pursuant to 35 U.S.C. § 143, Certified Lists are this day being
`
`forwarded to the Federal Circuit.
`
`Respectfully submitted,
`
`Under Secretary of Commerce for
`Intellectual Property and Director of the
`United States Patent and Trademark Office
`
`
`
`By:
`Huyen H. Nguyen
`Paralegal Specialist
`Mail Stop 8; P.O. Box 1450
`Alexandria, VA 22313-1450
`Huyen.Nguyen1@uspto.gov
`571-272-9035
`
`Date: September 16, 2024
`
`
`
`
`
`
`
`1 Appeal No. 2024-2171 (Lead) is consolidated with Appeal No. 2024-2172
`(Consolidated Member) pursuant to Court’s Order and Note to File dated August
`14, 2024. ECF Nos. 2-3.
`
`1
`
`

`

`Case: 24-2171 Document: 12 Page: 2 Filed: 09/19/2024
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a true and correct copy of the
`
`foregoing NOTICE FORWARDING CERTIFIED LISTS has been served, by
`
`electronic mail, on counsel for the Appellant and Appellee on this 16th day of
`
`September, 2024, as follows:
`
`FOR APPELLANT
`Matthew D. Powers
`Azra Hadzimehmedovic
`Samantha A. Jameson
`Aaron M. Nathan
`William P. Nelson
`TENSEGRITY LAW GROUP LLP
`matthew.powers@tensegritylawgroup.com
`azra@tensegritylawgroup.com
`samantha.jameson@tensegritylawgroup.com
`aaron.nathan@tensegritylawgroup.com
`william.nelson@tensegritylawgroup.com
`
`FOR APPELLEE
`Naveen Modi
`Quadeer Ahmed
`Chetan Bansal
`PAUL HASTINGS LLP
`naveenmodi@paulhastings.com
`quadeerahmed@paulhastings.com
`chetanbansal@paulhastings.com
`
`
`
`
`
`
`
`
`
`
`By:
`Huyen H. Nguyen
`Paralegal Specialist
`Mail Stop 8
`P.O. Box 1450
`Alexandria, VA 22313-1450
`Huyen.Nguyen1@uspto.gov
` 571-272-9035
`
`2
`
`

`

`Case: 24-2171 Document: 12 Page: 3 Filed: 09/19/2024
`
`U.S. DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`
`September 16, 2024
`
`(Date)
`
`THIS IS TO CERTIFY that the attached document is a list of the papers that comprise the
`record before the Patent Trial and Appeal Board (PTAB) for the Inter Partes Review proceeding
`identified below.
`
`AXONICS, INC.,
`Petitioner,
`
`v.
`
`MEDTRONIC, INC.,
`Patent Owner.
`____________
`
`Case IPR2020-00680
`U. S. Patent No. 8,457,758 B2
`____________
`
` By authority of the
` DIRECTOR OF THE UNITED STATES
`PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`Certifying Officer
`
`
`
`
`
`
`
`

`

`Case: 24-2171 Document: 12 Page: 4 Filed: 09/19/2024
`
`Prosecution History for IPR2020-00680
`
`Date
`
`Document
`
`03/16/2020
`
`Petition for Inter Partes Review of U.S. Patent No. 8,457,758
`
`03/16/2020
`
`Petitioner’s Power of Attorney
`
`03/24/2020
`
`Notice of Filing Date Accorded to Petition and Time for Filing Patent Owner’s
`Preliminary Response
`
`04/06/2020
`
`Patent Owner’s Mandatory Notices
`
`04/06/2020
`
`Patent Owner’s Power of Attorney
`
`06/24/2020
`
`Patent Owner’s Preliminary Response
`
`06/24/2020
`
`Patent Owne’'s Updated Mandatory Notices
`
`09/23/2020 Decision - Institution of Inter Partes Review
`
`09/23/2020
`
`Scheduling Order
`
`11/02/2020
`
`Patent Owner’s Notice of Deposition of Dr. Dorin Panescu
`
`11/04/2020
`
`Patent Owner’s Notice of Deposition of Rachel J. Watters
`
`11/12/2020
`
`Petitioner’s Motion for Pro Hac Vice Admission of Megan Chung
`
`11/23/2020 Order Granting Petitioner’s Motion for Pro Hac Vice Admission of Megan Chung
`
`12/03/2020
`
`Joint Stipulation to Revise Scheduling Order
`
`12/22/2020
`
`Patent Owner’s Response
`
`12/22/2020
`
`Patent Owner’s Exhibit List
`
`02/10/2021
`
`Petitioner’s Notice of Deposition of Richard T. Mihran, Ph.D.
`
`03/02/2021 Order - Panel Change
`
`03/19/2021
`
`Petitioner’s Reply to Patent Owner’s Response
`
`04/07/2021
`
`Petitioner’s Updated Mandatory Notices
`
`04/07/2021
`
`Petitioner’s Updated Power of Attorney
`
`04/09/2021
`
`Order Regarding Admission of Cross-Examination Testimony and Arguments and
`Evidence Purportedly Outside the Scope of a Reply
`
`04/16/2021
`
`Patent Owner’s List of Improper Reply Arguments and Evidence
`
`04/22/2021
`
`Joint Stipulation to Revise Scheduling Order
`
`04/23/2021
`
`Patent Owner’s Request for Rehearing
`
`04/23/2021
`
`Petitioner’s Response to Patent Owner’s List of Improper Reply Arguments and
`Evidence
`
`05/07/2021
`
`Petitioner’s Request for Oral Argument
`
`1
`
`

`

`Case: 24-2171 Document: 12 Page: 5 Filed: 09/19/2024
`
`Date
`
`Document
`
`05/07/2021
`
`Patent Owner’s Request for Oral Argument
`
`05/13/2021
`
`Petitioner’s Response to Request for Rehearing
`
`05/14/2021 Order Setting Oral Argument
`
`05/14/2021 Decision Granting Patent Owner’s Request on Rehearing
`
`05/14/2021
`
`Petitioner’s Updated Mandatory Notices
`
`05/18/2021
`
`Joint Stipulation to Revise Scheduling Order
`
`05/21/2021
`
`Patent Owner’s Sur-Reply
`
`05/21/2021
`
`Patent Owner’s Current List of Exhibits
`
`06/01/2021
`
`Order Regarding Petitioner’s Request to File a Motion to Strike Portions of Patent
`Owner’s Sur-Reply
`
`06/04/2021
`
`Petitioner’s List of Improper Sur-Reply Arguments
`
`06/09/2021
`
`Patent Owner’s Response to Petitioner’s List of Improper Sur-Reply Arguments
`
`06/14/2021
`
`Patent Owner’s Current List of Exhibits
`
`06/14/2021
`
`Petitioner’s Updated Exhibit List
`
`06/15/2021
`
`Joint List of Objections to Demonstratives
`
`06/16/2021
`
`Patent Owner’s Updated Mandatory Notices
`
`06/16/2021
`
`Petitioner’s Updated Mandatory Notices
`
`07/28/2021 Oral Hearing Transcript
`
`09/22/2021
`
`Final Written Decision
`
`10/22/2021
`
`Petitioner’s Request for Rehearing By The Director
`
`01/07/2022 Order Denying Request for Director Review
`
`03/11/2022
`
`Petitioner’s Notice of Appeal to the U.S. Court of Appeals for the Federal Circuit
`
`09/14/2023 Order - Panel Change
`
`09/26/2023
`
`Petitioner’s Updated Power of Attorney
`
`09/26/2023
`
`Petitioner’s Amended Mandatory Notices
`
`09/26/2023
`
`Petitioner’s Motion to Withdraw Counsel and Substitute New Counsel
`
`09/28/2023
`
`Petitioner’s Unopposed Motion for Pro Hac Vice Admission of Azra
`Hadzimehmedovic
`
`09/28/2023
`
`Petitioner’s Unopposed Motion for Pro Hac Vice Admission of Aaron M. Nathan
`
`09/28/2023
`
`Petitioner's Unopposed Motion for Pro Hac Vice Admission of William P. Nelson
`
`2
`
`

`

`Case: 24-2171 Document: 12 Page: 6 Filed: 09/19/2024
`
`Date
`
`Document
`
`09/28/2023
`
`Petitioner's Unopposed Motion for Pro Hac Vice Admission of Matthew D.
`Powers
`
`09/28/2023 Declaration of Azra Hadzimehmedovic ISO Unopposed Pro Hac Vice Motion
`
`09/28/2023 Declaration of Aaron M. Nathan ISO Unopposed Pro Hac Vice Motion
`
`09/28/2023 Declaration of William P. Nelson ISO Unopposed Pro Hac Vice Motion
`
`09/28/2023 Declaration of Matthew D. Powers ISO Unopposed Pro Hac Vice Motion
`
`10/02/2023 Order Granting Petitioner’s Motions for Withdrawal and Substitution of Counsel
`
`10/03/2023
`
`Order Authorizing Joint Brief of Proposed Procedures Following Remand from the
`U.S. Court of Appeals for the Federal Circuit
`
`10/04/2023 Decision from the U.S. Court of Appeals for the Federal Circuit
`
`10/04/2023 Mandate from the U.S. Court of Appeals for the Federal Circuit
`
`10/09/2023
`
`Joint Brief Regarding Post-Remand Procedures
`
`10/12/2023
`
`10/18/2023
`
`Order Granting Petitioner’s Motions for Pro Hac Vice Admission of Azra
`Hadzimehmedovic, Aaron M. Nathan, William P. Nelson, and Matthew D. Powers
`
`Order Regarding Procedures on Remand from the U.S. Court of Appeals for the
`Federal Circuit
`
`10/31/2023
`
`Patent Owner’s Amended Sur-Reply
`
`11/08/2023
`
`Petitioner’s Motion for Entry of a Proposed Protective Order
`
`11/08/2023
`
`Petitioner’s Notice of Deposition of Richard T. Mihran, Ph.D.
`
`11/10/2023
`
`Patent Owner’s Opposition to Petitioner’s Motion for Entry of a Proposed
`Protective Order
`
`11/14/2023 Order Granting Protective Order
`
`11/21/2023
`
`Petitioner’s Motion To Seal Ex. 1019
`
`11/28/2023 Order Denying Petitioner’s Motion to Seal Ex. 1019
`
`12/04/2023
`
`Petitioner’s Motion To Seal Deposition Exhibits
`
`12/05/2023
`
`Petitioner’s Renewed Motion To Seal The Deposition Transcript Of Dr. Mihran
`
`12/05/2023
`
`Petitioner’s Post Remand Brief [PUBLIC]
`
`12/05/2023
`
`Petitioner’s Motion To Seal Supplemental Information And Post-Remand Brief
`
`12/05/2023
`
`Petitioner Post Remand Brief [CONFIDENTIAL]
`
`12/19/2023
`
`Patent Owner’s Post-Remand Brief
`
`12/26/2023
`
`Petitioner’s Request for Oral Argument
`
`12/26/2023
`
`Patent Owner’s Notice Regarding Oral Argument
`
`3
`
`

`

`Case: 24-2171 Document: 12 Page: 7 Filed: 09/19/2024
`
`Date
`
`Document
`
`01/03/2024
`
`Petitioner’s Amended Mandatory Notices
`
`01/23/2024 Order Setting Oral Argument
`
`02/05/2024
`
`Patent Owner’s Current List of Exhibits
`
`02/05/2024
`
`Joint List of Objections to Demonstratives
`
`02/05/2024
`
`Petitioner’s Motion to Seal Oral Argument Demonstratives
`
`02/29/2024 Oral Hearing Transcript
`
`03/08/2024 Order Regarding Target Date for Final Written Decisions on Remand
`
`05/30/2024
`
`Final Written Decision on Remand
`
`06/12/2024 Order Granting Petitioner’s Motions to Seal
`
`07/31/2024
`
`Petitioner’s Notice of Appeal to the U.S. Court of Appeals for the Federal Circuit
`
`08/06/2024 Notice of Appeal as Served on the U.S. Patent and Trademark Office
`
`4
`
`

`

`Case: 24-2171 Document: 12 Page: 8 Filed: 09/19/2024
`
`U.S. DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`
`
`
`
`
`
`
`
`
`
`
`
`September 16, 2024
`
`
`
`
`
`
`
`
`
`
`(Date)
`
`THIS IS TO CERTIFY that the attached document is a list of the papers that comprise the
`record before the Patent Trial and Appeal Board (PTAB) for the Inter Partes Review proceeding
`identified below.
`
`AXONICS, INC.,
`Petitioner,
`
`v.
`
`MEDTRONIC, INC.,
`Patent Owner.
`____________
`
`Case IPR2020-00712
`U. S. Patent No. 8,738,148 B2
`____________
`
` By authority of the
` DIRECTOR OF THE UNITED STATES
`PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`Certifying Officer
`
`
`
`
`
`
`
`

`

`Case: 24-2171 Document: 12 Page: 9 Filed: 09/19/2024
`
`Prosecution History for IPR2020-00712
`
`Date
`
`Document
`
`03/16/2020
`
`Petition for Inter Partes Review of U.S. Patent No. 8,738,148
`
`03/16/2020
`
`Petitioner’s Power of Attorney
`
`03/24/2020
`
`Notice of Filing Date Accorded to Petition and Time for Filing Patent Owner’s
`Preliminary Response
`
`04/06/2020
`
`Patent Owner’s Mandatory Notices
`
`04/06/2020
`
`Patent Owner’s Power of Attorney
`
`06/24/2020
`
`Patent Owner’s Preliminary Response
`
`06/24/2020
`
`Patent Owner’s Updated Mandatory Notices
`
`09/23/2020 Decision - Institution of Inter Partes Review
`
`09/23/2020
`
`Scheduling Order
`
`11/02/2020
`
`Patent Owner’s Notice of Deposition of Dr. Dorin Panescu
`
`11/04/2020
`
`Patent Owner’s Notice of Deposition of Rachel J. Watters
`
`11/12/2020
`
`Petitioner’s Motion for Pro Hac Vice Admission of Megan Chung
`
`11/23/2020 Order Granting Petitioner’s Motion for Pro Hac Vice Admission of Megan Chung
`
`12/03/2020
`
`Joint Stipulation to Revise Scheduling Order
`
`12/22/2020
`
`Patent Owner’s Response
`
`12/22/2020
`
`Patent Owner’s Exhibit List
`
`02/10/2021
`
`Petitioner’s Notice of Deposition of Richard T. Mihran, Ph.D.
`
`03/02/2021 Order - Panel Change
`
`03/19/2021
`
`Petitioner’s Reply to Patent Owner’s Response
`
`04/07/2021
`
`Petitioner’s Updated Mandatory Notices
`
`04/07/2021
`
`Petitioner’s Updated Power of Attorney
`
`04/09/2021
`
`Order Regarding Admission of Cross-Examination Testimony and Arguments and
`Evidence Purportedly Outside the Scope of a Reply
`
`04/16/2021
`
`Patent Owner’s List of Improper Reply Arguments and Evidence
`
`04/22/2021
`
`Joint Stipulation to Revise Scheduling Order
`
`04/23/2021
`
`Patent Owner’s Request for Rehearing
`
`04/23/2021
`
`Petitioner’s Response to Patent Owner’s List of Improper Reply Arguments and
`Evidence
`
`05/07/2021
`
`Petitioner’s Request for Oral Argument
`
`1
`
`

`

`Case: 24-2171 Document: 12 Page: 10 Filed: 09/19/2024
`
`Date
`
`Document
`
`05/07/2021
`
`Patent Owner’s Request for Oral Argument
`
`05/13/2021
`
`Petitioner’s Response to Patent Owner’s Request for Rehearing
`
`05/14/2021 Order Setting Oral Argument
`
`05/14/2021 Decision Granting Patent Owner’s Request on Rehearing
`
`05/14/2021
`
`Petitioner’s Updated Mandatory Notices
`
`05/18/2021
`
`Joint Stipulation to Revise Scheduling Order
`
`05/21/2021
`
`Patent Owner’s Sur-Reply
`
`05/21/2021
`
`Patent Owner’s Current List of Exhibits
`
`06/14/2021
`
`Patent Owner’s Current List of Exhibits
`
`06/14/2021
`
`Petitioner’s Updated Exhibit List
`
`06/15/2021
`
`Joint List of Objections to Demonstratives
`
`06/16/2021
`
`Patent Owner’s Updated Mandatory Notices
`
`06/16/2021
`
`Petitioner’s Updated Mandatory Notices
`
`07/28/2021 Oral Hearing Transcript
`
`09/22/2021
`
`Final Written Decision
`
`10/22/2021
`
`Petitioner’s Request for Rehearing by the Director
`
`01/07/2022 Order Denying Request for Director Review
`
`03/11/2022
`
`Petitioner’s Notice of Appeal to the U.S. Court of Appeals for the Federal Circuit
`
`09/14/2023 Order - Panel Change
`
`09/26/2023
`
`Petitioner’s Updated Power of Attorney
`
`09/26/2023
`
`Petitioner’s Amended Mandatory Notices
`
`09/26/2023
`
`Petitioner’s Motion to Withdraw Counsel and Substitute New Counsel
`
`09/28/2023
`
`Petitioner’s Unopposed Motion for Pro Hac Vice Admission of Azra
`Hadzimehmedovic
`
`09/28/2023
`
`Petitioner’s Unopposed Motion for Pro Hac Vice Admission of Aaron M. Nathan
`
`09/28/2023
`
`Petitioner’s Unopposed Motion for Pro Hac Vice Admission of William P. Nelson
`
`09/28/2023
`
`Petitioner’s Unopposed Motion for Pro Hac Vice Admission of Matthew D.
`Powers
`
`09/28/2023 Declaration of Azra Hadzimehmedovic ISO Unopposed Pro Hac Vice Motion
`
`09/28/2023 Declaration of Aaron M. Nathan ISO Unopposed Pro Hac Vice Motion
`
`09/28/2023 Declaration of William P. Nelson ISO Unopposed Pro Hac Vice Motion
`
`2
`
`

`

`Case: 24-2171 Document: 12 Page: 11 Filed: 09/19/2024
`
`Date
`
`Document
`
`09/28/2023 Declaration of Matthew D. Powers ISO Unopposed Pro Hac Vice Motion
`
`10/02/2023 Order Granting Petitioner’s Motions for Withdrawal and Substitution of Counsel
`
`10/03/2023
`
`Order Authorizing Joint Brief of Proposed Procedures Following Remand from the
`U.S. Court of Appeals for the Federal Circuit
`
`10/04/2023 Decision from the U.S. Court of Appeals for the Federal Circuit
`
`10/04/2023 Mandate from the U.S. Court of Appeals for the Federal Circuit
`
`10/09/2023
`
`Joint Brief Regarding Post-Remand Procedures
`
`10/12/2023
`
`10/18/2023
`
`Order Granting Petitioner’s Motions for Pro Hac Vice Admission of Azra
`Hadzimehmedovic, Aaron M. Nathan, William P. Nelson, and Matthew D. Powers
`
`Order Regarding Procedures on Remand from the U.S. Court of Appeals for the
`Federal Circuit
`
`10/31/2023
`
`Patent Owner’s Amended Sur-Reply
`
`11/08/2023
`
`Petitioner’s Motion for Entry of a Proposed Protective Order
`
`11/08/2023
`
`Petitioner’s Notice of Deposition of Richard T. Mihran, Ph.D.
`
`11/10/2023
`
`Patent Owner’s Opposition to Petitioner’s Motion for Entry of a Proposed
`Protective Order
`
`11/14/2023 Order Granting Protective Order
`
`11/21/2023
`
`Petitioner’s Motion To Seal
`
`11/28/2023 Order Denying Petitioner’s Motion to Seal Ex. 1019
`
`12/04/2023
`
`Petitioner’s Motion To Seal Deposition Exhibits
`
`12/05/2023
`
`Petitioner’s Renewed Motion To Seal The Deposition Transcript Of Dr. Mihran
`
`12/05/2023
`
`Petitioner’s Post Remand Brief [PUBLIC]
`
`12/05/2023
`
`Petitioner’s Motion To Seal Supplemental Information And Post-Remand Brief
`
`12/05/2023
`
`Petitioner’s Post Remand Brief [CONFIDENTIAL]
`
`12/19/2023
`
`Patent Owner’s Post-Remand Brief
`
`12/26/2023
`
`Petitioner’s Request for Oral Argument
`
`12/26/2023
`
`Patent Owner’s Notice Regarding Oral Argument
`
`01/03/2024
`
`Petitioner’s Amended Mandatory Notices
`
`01/23/2024 Order Setting Oral Argument
`
`02/05/2024
`
`Patent Owner’s Current List of Exhibits
`
`02/05/2024
`
`Joint List of Objections to Demonstratives
`
`3
`
`

`

`Case: 24-2171 Document: 12 Page: 12 Filed: 09/19/2024
`
`Date
`
`Document
`
`02/05/2024
`
`Petitioner’s Motion to Seal Oral Argument Demonstratives
`
`02/29/2024 Oral Hearing Transcript
`
`03/08/2024 Order Regarding Target Date for Final Written Decisions on Remand
`
`05/30/2024
`
`Final Written Decision on Remand
`
`06/12/2024 Order Granting Petitioner’s Motions to Seal
`
`07/31/2024
`
`Petitioner’s Notice of Appeal to the U.S. Court of Appeals for the Federal Circuit
`
`4
`
`

`

`Case: 24-2171 Document: 12 Page: 13 Filed: 09/19/2024
`Trials@uspto.gov
`Paper 90
`571-272-7822
`Entered: May 30, 2024
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`AXONICS, INC.,
`Petitioner,
`
`v.
`
`MEDTRONIC, INC.,
`Patent Owner.
`
`IPR2020-00680
`Patent 8,457,758 B2
`
`
`
`
`
`
`
`
`
`Before JAMES A. TARTAL, ERIC C. JESCHKE, and
`BRENT M. DOUGAL, Administrative Patent Judges.
`
`TARTAL, Administrative Patent Judge.
`
`JUDGMENT
`Final Written Decision on Remand
`Determining No Challenged Claims Unpatentable
`35 U.S.C. §§ 144, 318
`
`
`
`
`
`
`
`

`

`Case: 24-2171 Document: 12 Page: 14 Filed: 09/19/2024
`IPR2020-00680
`Patent 8,457,758 B2
`
`This case is on remand from the United States Court of Appeals for
`
`the Federal Circuit. Axonics, Inc. v. Medtronic, Inc., 75 F.4th 1374 (Fed.
`
`Cir. 2024). In Axonics, the Federal Circuit stated that Axonics, Inc.
`
`(“Petitioner”) appealed our determination that Petitioner had not shown by a
`
`preponderance of the evidence that any of claims 1, 5, or 9 of U.S. Patent
`
`No. 8,457,758 B2 (Ex. 1001, “the ’758 patent”) is anticipated by any of the
`
`asserted prior art. Axonics, 75 F.4th at 1376 n.3. The Federal Circuit further
`
`stated that Petitioner did not dispute on appeal our claim construction, “only
`
`that the Board erred in refusing to consider [Petitioner’s] reply arguments
`
`and evidence” under the claim construction applied. Id. at 1379–80.
`
`Accordingly, the Federal Circuit’s decision in Axonics to vacate and remand
`
`requires us to consider whether Petitioner shows any of claims 1, 5, or 9 of
`
`the ’758 patent is anticipated by any of the asserted references in light of
`
`Petitioner’s new arguments and evidence presented in its reply. For the
`
`reasons discussed below, we determine that Petitioner does not show by a
`
`preponderance of the evidence that any of claims 1, 5, or 9 of the ’758 patent
`
`is anticipated by any of the asserted prior art.
`I.
`Summary of Procedural History Prior to Remand
`
`A.
`Petitioner1 filed a Petition pursuant to 35 U.S.C. §§ 311–319
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`INTRODUCTION
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`requesting an inter partes review of claims 1–12 of the ’758 patent. Paper 1
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`(“Pet.”). We instituted an inter partes review of claims 1–12 on all grounds
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`of unpatentability asserted in the Petition. Paper 8 (“Inst. Dec.”).
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`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. Petitioner identifies no additional real parties in interest. Pet. 107.
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`2
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`IPR2020-00680
`Patent 8,457,758 B2
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`Medtronic, Inc. (“Patent Owner”)2 filed a Patent Owner Response.
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`Paper 15 (“PO Resp.”). In its Response, Patent Owner stated that it
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`disclaimed claims 3, 7, and 11. PO Resp. 1 (citing Ex. 2007 (a copy of a
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`“Disclaimer in Patent Under 37 CFR 1.321(a)” (the “Disclaimer”))).
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`Petitioner filed a Reply to the Patent Owner Response. Paper 19
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`(“Pet. Reply”). Patent Owner filed a Sur-reply. Paper 34 (“PO Sur-reply”).
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`Patent Owner filed a list of allegedly improper arguments and evidence from
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`Petitioner’s Reply (Paper 23), to which Petitioner responded (Paper 26).
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`Petitioner filed a list of allegedly improper arguments and evidence from
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`Patent Owner’s Sur-reply (Paper 37), to which Patent Owner responded
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`(Paper 38). The first oral argument was held on June 17, 2021, and a
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`transcript of that hearing appears in the record. Paper 44.
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`We entered a Final Written Decision on September 22, 2021,
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`determining that Petitioner failed to show by a preponderance of the
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`evidence the unpatentability of any challenged claim not subject to the
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`Disclaimer. Paper 45 (“FWD”). In the FWD, we addressed at length the
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`construction of two claim terms: “a value associated with said current” and
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`“a measured current associated with said current.” FWD 16–26. In regard
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`to the limitations that recite these terms, which we refer to as the “Value
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`Limitation” and the “Measured Current Limitation,” respectively, we
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`determined in the FWD as follows:
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`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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`3
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`Although the ’758 patent makes clear that “a value” may include
`“current,” we agree with Patent Owner that the two independent
`limitations should be construed such that the Value Limitation
`does not render superfluous the Measured Current 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 Measured Current Limitation does
`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 Measured Current Limitation require two
`separate inputs to the external power source.
`Id. at 26. We generally refer to the dispute over the Value Limitation and
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`the Measured Current Limitation as corresponding to whether the claims
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`require “one input” (i.e., a “single input”) or “two inputs” (i.e. a “second
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`input”).
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`In the FWD, we found that Petitioner did not contend in the Petition
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`that any of the asserted prior art references disclose an external power source
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`that “automatically varies its power output based on two inputs, one
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`corresponding to the Value Limitation and another to the Measured Current
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`Limitation.” Id. at 33. We also found in the FWD that Petitioner improperly
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`argued in its Reply “for the first time that features of each of the asserted
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`references correspond to a second input that automatically varies the power
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`output of the external power source.” Id. at 34. We determined in the FWD
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`that “Petitioner’s arguments that each of the asserted references discloses
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`two inputs are improper reply arguments based on improper reply testimony,
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`and we do not give them weight.” Id. at 36–37. We concluded in the FWD
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`4
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`that Petitioner failed to show the unpatentability of any of claims 1, 2, 4–6,
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`8–10, and 12 of the ’758 patent.3 FWD 46.
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`Following entry of the FWD, Petitioner filed a Request for Rehearing
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`by the Director (Paper 46), which was denied (Paper 47). Petitioner filed a
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`Notice of Appeal of the Final Written Decision with the Federal Circuit. See
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`Paper 48. On August 7, 2023, the Federal Circuit issued a decision in the
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`appeal. At the outset of its decision, the Federal Circuit recognized that, on
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`appeal, Petitioner “does not argue the Board erred in adopting the two-input
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`claim construction, only that the Board erred in refusing to consider
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`[Petitioner’s] reply arguments and evidence under the two-input
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`construction.” Axonics, 75 F.4th at 1379–80. The Federal Circuit concluded
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`as follows:
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`We hold that where a patent owner in an IPR first proposes a
`claim construction in a patent owner response, a petitioner must
`be given the opportunity in its reply to argue and present
`evidence of anticipation or obviousness under the new
`construction, at least where it relies on the same embodiments
`for each invalidity ground as were relied on in the petition. We
`vacate the Board’s decisions in these IPRs and remand for the
`Board to consider [Petitioner’s] arguments and evidence under
`the two-input claim construction and, correspondingly, to
`consider any request by [Patent Owner] to present new evidence
`in support of its surreply.
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`3 We explained in the FWD that, in light of the Disclaimer, “we treat
`claims 3, 7, and 11 as if they never existed.” FWD 4. Accordingly, in the
`FWD, we only considered Petitioner’s allegations of unpatentability directed
`to claims 1, 2, 4–6, 8–10, and 12 of the ’758 patent. Because Petitioner only
`appealed the FWD as to claims 1, 5, and 9 of the ’758 patent in this case,
`claims 1, 5, and 9 are the only claims at issue on remand. Axonics, 75 F.4th
`at 1376 n.3.
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`Axonics, 75 F.4th at 1384; see also Paper 63 (Mandate of the Federal Circuit
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`in the appeal, dated September 13, 2023).
`B.
`Following the issuance of Axonics by the Federal Circuit, the Parties
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`Summary of Procedural History After Remand
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`filed a Joint Brief Regarding Post-Remand Procedures (“JBRPRP,”
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`Paper 65). We entered an Order on Procedures on Remand (“OPR,”
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`Paper 67), which authorized Patent Owner to file an amended sur-reply and
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`supporting declaration, authorized Petitioner to depose Patent Owner’s
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`declarant, and authorized additional briefing from both Parties. As required
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`by the Federal Circuit, we considered Patent Owner’s request to file a
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`supporting declaration over the opposition of Petitioner and found the
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`request to be warranted. See Axonics, 75 F.4th at 1384 (the Federal Circuit
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`stating it is “confident that in circumstances such as these, the Board will
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`allow an appropriate opportunity for a patent owner to submit evidence with
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`a sur-reply”); OPR 5–7 (finding “Patent Owner has shown a need for the
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`opportunity to support its arguments in opposition to Petitioner’s replies
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`with a supplemental declaration,” and rejecting Petitioner’s assertions that
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`Patent Owner “waived” making such a request).
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`Patent Owner filed a Rebuttal Declaration of Dr. Richard T. Mihran,
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`dated October 31, 2023 (Ex. 2010), and an Amended Patent Owner’s Sur-
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`reply (Paper 68, “APO Sur-reply”), which is identical to the original sur-
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`reply filed by Patent Owner with the addition of citations to the supporting
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`rebuttal declaration of Dr. Mihran. See Ex. 2011 (comparison of PO Sur-
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`reply to APO Sur-reply). Petitioner deposed Dr. Mihran for a second time in
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`this case on November 14, 2023, and the transcript of the deposition was
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`filed by Petitioner as Exhibit 1019. Petitioner filed a Post Remand Brief
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`(Paper 79, “Pet. PRB”) and Patent Owner filed a Post Remand Brief
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`(Paper 80, “PO PRB”). Petitioner’s request for a second oral argument
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`(Paper 81) was granted and a transcript of the second hearing in this case,
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`held on February 8, 2024, was entered in the record (Paper 88).
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`C.
`The Parties identify the ’758 patent as a subject of Medtronic, Inc. v.
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`Related Proceedings
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`Axonics Modulation Technologies, Inc., Case No. 8:19-cv-02115-DOC-JDE
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`(C.D. Cal.). Pet. 107; Paper 4, 2. The Parties also identify as related
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`matters IPR2020-00678, concerning U.S. Patent No. 7,774,069 B2
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`(“the ’069 patent”), and IPR2020-00712, concerning U.S. Patent
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`No. 8,738,148 B2 (“the ’148 patent”). Pet. 107; Paper 4, 2. The ’758 patent
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`issued from an application that was a continuation of an application that was
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`a division of an application that issued as the ’069 patent. Ex. 1001,
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`code (60). The ’148 patent issued from an application that was a
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`continuation of the application that issued as the ’758 patent. Id. The
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`Federal Circuit addressed both this case and IPR2020-00712 in Axonics.
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`See 75 F.4th at 1376.
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`D.
`The ’758 patent issued June 4, 2013, from an application filed on
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`The ’758 Patent
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`August 16, 2011, and is directed to a “[s]ystem for transcutaneous energy
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`transfer.” Ex. 1001, codes (22), (45), (57). As background to the invention,
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`the ’758 patent explains that “[s]everal systems and methods have been used
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`for transcutaneously inductively recharging a rechargeable used in an
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`implantable medical device,” including “the use of inductive coupling
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`involv[ing] the placement of two coils positioned in close proximity to each
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`other on opposite sides of the cutaneous boundary.” Id. at 1:65–67, 2:16–19.
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`According to the ’758 patent, “[f]or implanted medical devices, the
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`efficiency at which energy is transcutaneously transferred is crucial.” Id.
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`7
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`at 2:66–67. The ’758 patent further explains that inductive coupling “has a
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`tendency to heat surrounding components and tissue,” which limits “the
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`amount of energy transfer which can be accomplished per unit time”; that a
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`patient’s mobility is impaired during charging; and that the amount of
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`charging “can be limited by the amount of time required for charging,”
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`thereby limiting “the size of the internal power source.” Id. at 2:67–3:25.
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`The ’758 patent states that “[a]lignment of an external primary coil
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`with the internal secondary coil is important in achieving efficiency in
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`transcutaneous energy transfer” and that “it is not always easy for the user to
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`know when the primary and secondary coils are properly aligned.” Id.
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`at 3:33–37. The ’758 patent further states that, even when aligned, “the
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`physical package containing the primary coil with the protrusion of the
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`implanted medical device may not result in optimum alignment of the
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`primary and secondary coils,” because the coils may not be centered in the
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`package and “even perfect alignment of the packages may result in actual
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`misalignment of the primary and secondary coils.” Id. at 3:37–48.
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`According to Patent Owner, the ’758 patent solved the problem of proper
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`alignment “through an inventive system including an external power source
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`that, among other things, automatically varies the power output of the
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`external charging device as a function of parameters associated with the
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`current passing through the internal power source.” PO Resp. 4 (citing
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`Ex. 1001, 3:52–4:12, 20:63–22:15, Fig. 19).
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`8
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`Figure 3 of the ’758 patent is reproduced below.
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`Figure 3 illustrates implantable medical device 16, situated under cutaneous
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`boundary 38, and associated external charging device 48. Ex. 1001, 6:1–4,
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`7:55–56, 8:19–21. Implantable medical device 16 includes rechargeable
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`power source 24, which powers electronics 26 and therapy module 28 “in a
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`conventional manner,” charging regulation module 42, and internal
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`telemetry coil 44. Id. at 7:31–34, 7:57–8:1. External charging device 48,
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`including external telemetry unit 46, charging unit 50, and external
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`antenna 52, is used to charge rechargeable power source 24 of implantable
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`medical device 16 while implantable medical device 16 is in place in a
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`patient. Id. at 7:60–8:1, 8:19–8:23. “[I]nternal telemetry coil 44 [is]
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`configured in [a] conventional manner to communicate through external
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`telemetry coil 46 to an external programming device (not shown), charging
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`unit 50 or other device in a conventional manner in order to both program
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`and control [the] implantable medical device and to externally obtain
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`information from implantable medical device 16 once implantable medical
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`Case: 24-2171 Document: 12 Page: 22 Filed: 09/1