Case: 21-1777 Document: 40 Page: 1 Filed: 03/18/2022
NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
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BOSTON SCIENTIFIC NEUROMODULATION
CORP.,
Appellant
v.
NEVRO CORP.,
Appellee
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2021-1777
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Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2019-
01340.
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Decided: March 18, 2022
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PRATIK A. SHAH, Akin Gump Strauss Hauer & Feld
LLP, Washington, DC, argued for appellant. Also repre-
sented by Z.W. JULIUS CHEN; MICHAEL P. KAHN, New York,
NY; DAVID A. CAINE, Arnold & Porter Kaye Scholer LLP,
Palo Alto, CA; MATTHEW WOLF, Washington, DC.
RICHARD CRUDO, Sterne Kessler Goldstein & Fox,
Washington, DC, argued for appellee. Also represented by
Case: 21-1777 Document: 40 Page: 2 Filed: 03/18/2022
2 BOSTON SCIENTIFIC v. NEVRO CORP.
NAVEED HASAN, JON WRIGHT; CHING-LEE FUKUDA, Sidley
Austin LLP, New York, NY.
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Before MOORE, Chief Judge, CHEN and HUGHES, Circuit
Judges.
HUGHES, Circuit Judge.
Boston Scientific Neuromodulation Corp. appeals a de-
cision of the Patent Trial and Appeal Board invalidating all
claims of U.S. Patent No. 6,381,496 as obvious. Because
substantial evidence supports the Board’s factual findings,
we affirm.
I
U.S. Patent No. 6,381,496 relates to implant devices
that allow users to modify therapy parameters. For exam-
ple, a spinal cord stimulation device uses parameters like
amplitude, width, and frequency to create electric pulses
that the device sends to a patient’s spinal cord. The ’496 pa-
tent discloses a device that can switch from one set of val-
ues for these operational parameters to another. Claim 1 is
representative:
1. An implant device comprising:
an implantable case;
electronic circuitry housed within said implantable
case for performing a prescribed function, the elec-
tronic circuitry including
a control register wherein a control set of
operational parameters is stored,
a controller that controls the operation of
the implant device as a function of the con-
trol set of operational parameters stored in
the control register, and
a plurality of sets of operational parameters; and
Case: 21-1777 Document: 40 Page: 3 Filed: 03/18/2022
BOSTON SCIENTIFIC v. NEVRO CORP. 3
selection means for selecting one of the plurality of
sets of operational parameters as the control set of
operational parameters that is stored in the control
register;
whereby the operation of the implant device may
be changed through selection of a different set of
operational parameters.
’496 patent at 19:47–64.
Nevro Corp. petitioned for inter partes review of all
claims of the ’496 patent, asserting seven obviousness
grounds. The Board instituted review, agreed with all as-
serted grounds, and concluded that the ’496 patent is un-
patentable as obvious. Boston Scientific appeals. We have
jurisdiction under 28 U.S.C. § 1295(a)(4)(A).
II
We review the ultimate conclusion of obviousness de
novo and subsidiary fact findings for substantial evidence.
In re Ethicon, Inc., 844 F.3d 1344, 1349 (Fed. Cir. 2017).
Boston Scientific argues that the Board misconstrued
the term “set of operational parameters” by allowing a set
to contain only one parameter even though the patent uses
the plural term “parameters.” Boston Scientific asserts
that this error is material because the prior art reference
Shelton (U.S. Patent No. 5,387,228) teaches modifying only
a single parameter. Boston Scientific further argues that
Shelton does not teach the ’496 patent’s “selecting one of
the plurality of sets of operational parameters as the con-
trol set” limitation.
While Nevro disagrees with Boston Scientific’s argu-
ments about Shelton, it tells us we should instead focus on
the prior art reference Nappholz (U.S. Patent
No. 5,720,770). According to Nevro, Nappholz discloses
modifying multiple parameters—rendering any claim
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4 BOSTON SCIENTIFIC v. NEVRO CORP.
construction error harmless—and teaches the disputed
limitation.
We agree with Nevro. Substantial evidence supports
the Board’s factual finding that Nappholz teaches “select-
ing one of the plurality of sets of operational parameters as
the control set.” Nappholz’s claims 10 and 27 teach a sys-
tem that switches between “first and second therapies” in
response to a change in conditions. Nappholz at 16:1–12,
17:13–22. And Nappholz’s figure 7 depicts a flowchart in
which the device detects a change in the user’s activity
level, asks the user what activity she is performing (e.g.,
sleeping, waking up, exercising), and then adjusts the op-
erational parameters accordingly. See id. at 9:19–29. These
disclosures constitute substantial evidence supporting the
Board’s finding that Nappholz teaches “a plurality of sets
of operational parameters” and means for selecting one set
as the control set.
We also do not need to determine whether a “set of op-
erational parameters” must contain more than one param-
eter because Nappholz teaches sets containing more than
one parameter. See id. at 15:14–25 (claiming means for ex-
changing information with an implantable cardiac device,
“said information including . . . commands for modifying [a
plurality of] programmable parameters”). We affirm the
Board’s decision.
AFFIRMED