Case: 19-1584 Document: 71 Page: 1 Filed: 05/18/2020
NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
BOSTON SCIENTIFIC NEUROMODULATION
CORPORATION,
Appellant
v.
NEVRO CORP.,
Appellee
ANDREI IANCU, UNDER SECRETARY OF
COMMERCE FOR INTELLECTUAL PROPERTY
AND DIRECTOR OF THE UNITED STATES
PATENT AND TRADEMARK OFFICE,
Intervenor
______________________
2019-1584
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2017-
01899.
______________________
Decided: May 18, 2020
______________________
MATTHEW WOLF, Arnold & Porter Kaye Scholer LLP,
Washington, DC, for appellant. Also represented by
ANDREW TUTT; DAVID A. CAINE, Palo Alto, CA.
Case: 19-1584 Document: 71 Page: 2 Filed: 05/18/2020
2 BOSTON SCIENTIFIC v. NEVRO CORP.
JON WRIGHT, Sterne Kessler Goldstein & Fox, PLLC,
Washington, DC, for appellee. Also represented by CHING-
LEE FUKUDA, SHARON LEE, Sidley Austin LLP, New York,
NY; RYAN C. MORRIS, Washington, DC.
MAI-TRANG DUC DANG, Office of the Solicitor, United
States Patent and Trademark Office, Alexandria, VA, for
intervenor. Also represented by THOMAS W. KRAUSE,
FARHEENA YASMEEN RASHEED.
______________________
Before LOURIE, MOORE, and O’MALLEY, Circuit Judges.
MOORE, Circuit Judge.
Boston Scientific Neuromodulation Corporation ap-
peals the final written decision of the Patent Trial and Ap-
peal Board holding claims 1–20 of U.S. Patent No.
7,587,241 unpatentable as obvious. For the reasons dis-
cussed below, we affirm.
BACKGROUND
Boston Scientific owns the ’241 patent, which discloses
methods for controlling an implantable medical device by
enabling or disabling certain features based on the voltage
of its internal power source. ’241 Patent at 13:11–54. In
one embodiment, if the voltage drops below a particular
threshold, the receiver continues to listen for telemetry
from the external charging component, but stops listening
for telemetry from other external components. Id. Telem-
etry from the external components may be transmitted via
a bidirectional telemetry link “known as the FSK (Fre-
quency Shift Key) telemetry link, or RF telemetry link.” Id.
at 8:56–58. The external charging component may also in-
clude a forward telemetry link that “may use OOK-PWM
(On/Off Keying – Pulse Width Modulation), and is typically
an inductive telemetry link.” Id. at 8:58–61. Claim 1 re-
cites:
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BOSTON SCIENTIFIC v. NEVRO CORP. 3
1. A method for controlling an implantable medical
device, comprising:
monitoring a voltage of a power source within the
implantable medical device;
if the voltage is above a first threshold, enabling
the following functions:
listening for a first type of telemetry from a first
external component;
listening for a second type of telemetry from an
external charging component, wherein the ex-
ternal charging component is used to wirelessly
charge the power source; and
providing stimulation to device electrodes us-
ing the power source; and
if the voltage falls below the first threshold, discon-
tinuing listening for the first type of telemetry from
the first external component and discontinuing
providing stimulation to device electrodes using
the power source, while continuing listening for the
second type of telemetry.
’241 patent at 20:28–46 (emphases added).
Nevro Corporation petitioned for inter partes review of
claims 1–20 of the ’241 patent. The Board instituted review
of all challenged claims and held that: (1) claims 1, 3–8, 10–
14, and 16–20 are unpatentable under 35 U.S.C. § 103 in
view of U.S. Patent. No. 6,453,198 (Torgerson ’198), U.S.
Patent No. 7,167,756 (Torgerson ’756), and U.S. Patent No.
6,456,883 (Torgerson ’883); and (2) claims 2, 9, and 15 are
unpatentable under 35 U.S.C. § 103 in view of Torgerson
’198, Torgerson ’756, Torgerson ’883, and U.S Patent No.
6,647,298 (Abrahamson). Boston Scientific timely ap-
pealed. We have jurisdiction under 28 U.S.C.
§ 1295(a)(4)(A).
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4 BOSTON SCIENTIFIC v. NEVRO CORP.
DISCUSSION
We review the Board’s legal determinations de novo
and its factual findings for substantial evidence. In re Van
Os, 844 F.3d 1359, 1360 (Fed. Cir. 2017). “Obviousness is
a question of law based on underlying facts” such as the
scope and content of the prior art. Arctic Cat Inc. v. Bom-
bardier Recreational Prods. Inc., 876 F.3d 1350, 1358 (Fed.
Cir. 2017).
I. Claims 1, 3–8, 10–14, and 16–20
1. “listening for . . . telemetry”
The Board construed “telemetry” as the “transmission
of data or information . . . in the form of a transmission of
energy (power).” J.A. 18. It clarified that “telemetry does
not include an unmodulated transmission of energy
(power).” Id. Under this construction, the Board found
that Torgerson ’883’s disclosure of a charging circuit receiv-
ing telemetry from a telemetry signal teaches the claimed
step of listening for the second type of telemetry. J.A. 42–
43.
Boston Scientific argues that the Board erred in con-
struing “telemetry” and what it means to “listen[] for . . .
telemetry,” and therefore that substantial evidence does
not support the Board’s finding. While Boston Scientific
agrees with the Board that “telemetry” means “data or in-
formation,” it contends that “listening for . . . telemetry”
means that “a specialized receiver is ready to receive data
or information transmitted to it from a specialized trans-
mitter.” Appellant’s Br. 36. Boston Scientific did not pro-
pose a construction for, and the Board did not separately
construe, “listening for . . . telemetry.”
Nevro contends that Boston Scientific waived any
claim construction argument as to “listening for . . . telem-
etry” by failing to raise it before the Board. We agree. The
Board construed “telemetry” in its Institution Decision,
providing Boston Scientific ample opportunity to offer a
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BOSTON SCIENTIFIC v. NEVRO CORP. 5
construction for the “listening for” term in its patent owner
response. The Board’s Institution Decision also prelimi-
narily determined that Torgerson ’883 discloses a “second
telemetry from an external charging component . . .” under
its construction. The Board’s finding in its Final Written
Decision that Torgerson ’883’s charging circuit teaches “lis-
tening for a second type of telemetry” by “draw[ing] energy
(power) from the modulated electromagnetic
waves . . . transmitted to it” was therefore not an unex-
pected construction of “listening for telemetry” as Boston
Scientific contends. Appellant’s Reply Br. 9 (citing J.A. 42–
43, 48–49). Accordingly, we hold that Boston Scientific
waived any claim construction argument as to “listening
for . . . telemetry” and we do not address the parties’ argu-
ments as to the construction of this term or whether sub-
stantial evidence supports the Board’s finding under
Boston Scientific’s proposed construction.
Substantial evidence supports the Board’s finding that
Torgerson ’883 discloses listening for a second type of te-
lemetry under the Board’s construction. J.A. 41. Figure 2
of Torgerson ’883 “illustrates that a telemetry signal 10 in-
teracts directly with a charging circuit 20 and a controller
90.” J.A. 1144 at 5:18–20. Torgerson ’883 further discloses
that “[t]he telemetry signal 10 also interacts with the con-
troller 90 to deliver and receive patient and device data.”
Id. at 5:23–24. Thus, the signal in Torgerson ’883 meets
the Board’s construction that the telemetry signal include
data (e.g., modulated electromagnetic waves). J.A. 42–43.
As the Board found, “[t]he fact that charging circuit 20
draws energy (power) from the modulated electromagnetic
waves that make for the ‘telemetry’ signals does not change
the fact that it uses the ‘telemetry’ signals transmitted to
it.” J.A. 43.
2. “type of telemetry”
The Board found that Torgerson ’756 discloses a telem-
etry unit that listens for a first type of telemetry from an
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6 BOSTON SCIENTIFIC v. NEVRO CORP.
external physician programmer and patient programmer.
The Board further found that “Torgerson ’756 covers the
use of a second type of telemetry for battery charging oper-
ations.” J.A. 39 (emphasis in original). Boston Scientific
argues that the latter finding is not supported by substan-
tial evidence. It contends that Torgerson ’756 discloses
only one type of telemetry—inductive telemetry—and
therefore Torgerson ’756 does not disclose a second type of
telemetry.
Torgerson ’756 discloses a telemetry unit that listens
for a first type of telemetry. Nevro argues that Torgerson
’756’s recharge module, which uses “other communication
techniques” to communicate with an external charger, uses
a second type of telemetry. The recharge module comprises
a recharge regulation control unit that “communicates with
[an] external component via telemetry unit 305.” J.A. 1129
at 7:41–45; J.A. 1130 at 9:46–47. Torgerson ’756 further
discloses the implementation of “other communication
techniques” where “recharge regulation control unit 525
communicates with the external component by modulating
the load on the recharge coil[, which] can then be sensed in
the circuitry driving the source coil of the external compo-
nent.” J.A. 1130 at 9:48–53. There is nothing in the ’241
patent specification that precludes this communication
technique from constituting a second “type of telemetry”
merely because it is not a different type of energy transfer
modality. Indeed, Boston Scientific’s expert, Dr. Ronald
Berger testified that “it is the modulation of the electro-
magnetic wave that makes it a telemetry link.” J.A. 1416
¶ 33. Dr. Berger also testified that “it is possible that the
Torgerson ’756 may use two types of telemetry . . . for the
internal device to communicate outward to the external de-
vice.” J.A. 1317 at 140:17–20. We therefore hold that sub-
stantial evidence supports the Board’s finding that the
recharge regulation control unit employs a second type of
telemetry to communicate the change in load to the exter-
nal component. J.A. 38.
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BOSTON SCIENTIFIC v. NEVRO CORP. 7
3. Combination of Torgerson References
Boston Scientific argues that substantial evidence does
not support the Board’s finding that a skilled artisan would
have been motivated to modify Torgerson ’198 and Torg-
erson ’756 in view of Torgerson ’883 to create a device that
listens for two types of telemetry. We do not agree. As
discussed above, Torgerson ’756 discloses the implementa-
tion of “other communication techniques” where “recharge
regulation control unit 525 communicates with the exter-
nal component.” J.A. 1130 at 9:48–53. It further discloses
that when “the power source 315 is almost depleted of en-
ergy, the power source 315 may not have sufficient energy
to provide the feedback control” and, therefore, “the exter-
nal component may deliver an initial large burst of energy
to ‘wake up’ the power source 315 and the recharge module
310.” J.A. 1129 at 8:62–67. Dr. Berger stated that the
wake up burst in Torgerson ’756 “may be the same wake
up burst” as the one in Torgerson ’883. J.A. 1321 at 144:8–
16. We therefore agree with the Board that “[g]iven that
Torgerson ’883 employs a telemetry technique to deliver a
‘wake up’ burst, which Torgerson ’756 also discloses and is
perhaps the same ‘wake up’ burst, . . . adequate motivation
has been provided for a POSA to look to Torgerson ’883 for
another technique (involving telemetry) to deliver a ‘wake
up’ burst with respect to the charging component of Torg-
erson ’756.” J.A. 50.
Accordingly, we hold that the Board did not err in hold-
ing that claims 1, 3–8, 10–14, and 16–20 would have been
obvious over the combined teachings of Torgerson ’198,
Torgerson ’756, and Torgerson ’883.
II. Claims 2, 9, and 15
Claims 2, 9, and 15 limit independent claims 1, 8, and
14, respectively by reciting: “wherein the first telemetry
type comprises Frequency Shift Keying (FSK), and wherein
the second telemetry type comprises On/Off Keying
(OOK).” Substantial evidence supports the Board’s finding
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8 BOSTON SCIENTIFIC v. NEVRO CORP.
that it would have been obvious to use FSK for the first
type of telemetry and OOK for the second type of telemetry.
J.A. 55.
Torgerson ’198 and Torgerson ’756 disclose that telem-
etry modules, such as telemetry module 305, are “generally
known in the art.” J.A. 1114 at 6:12–20, 6:28–36; J.A. 1128
at 6:50–59. Abrahamson discloses the use of FSK and OOK
telemetry units. J.A. 1156 at 1:14–21 (“In RF coupled sys-
tems, . . . [t]he carrier signal is modulated with the data
that are to be transmitted using an appropriate modulation
scheme, such as . . . frequency shift keying (FSK) . . . .”);
J.A. 1158 at 5:11–15 (“The exact duration of the time inter-
val is dependent of the used signal modulation method . . .
[such as] On Off Keying (OOK) . . . .”). Nevro’s expert, Dr.
Mark Kroll, declared that “a POSA would have chosen the
FSK modulation scheme for the communication between
the telemetry module 305 and an external device for pro-
gramming the INS 14 because FSK provides a higher band-
width and thus a higher capacity to transmit useful
information.” J.A. 1021 ¶ 181. He further testified that “a
POSA would have chosen the OOK modulation scheme for
communication between the recharge module 310 and an
external device used for charging the INS 14 because that
communication is typically simpler and can be fully
achieved with the simpler OOK modulation scheme.” Id.
Accordingly, we conclude that the Board did not err in
holding that claims 2, 9, and 15 would have been obvious
in view of the combined teachings of Torgerson ’198, Torg-
erson ’756, Torgerson ’883, and Abrahamson.
CONCLUSION
We have considered the parties’ remaining arguments
and do not find them persuasive. Because the Board’s find-
ings are supported by substantial evidence, we affirm its
holding that claims 1–20 of the ’241 patent are unpatenta-
ble as obvious.
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BOSTON SCIENTIFIC v. NEVRO CORP. 9
AFFIRMED