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 REMEDCO. LTD.,
`Petitioners,
`
`Vv.
`
`BTL HEALTHCARE TECHNOLOGIES A.S.,!
`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
`DenyingInstitution of Post-Grant Review
`35 US.C. § 324
`
`' 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 toBLT Healthcare Technologies A.S. Ex. 3002.
`
`

`

`PGR2021-00020
`Patent 10,695,575 Bl
`
`I.
`
`INTRODUCTION
`
`Allergan, Inc., Allergan Limited, Allergan USA,Inc., Zeltiq
`
`Aesthetics, Inc., Zeltiq Ireland Unlimited Company, and Remed Co.Ltd.
`
`(collectively, “Petitioner’’) filed a Petition (Paper | (“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 predecessorin 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 (Paper9), Petitioner filed a Reply to Patent
`
`Owner’s Preliminary Response (Paper 10) and Patent Ownerfiled 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.
`
`Il.
`
`BACKGROUND
`
`A.
`
`Real Parties-in-Interest
`
`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 RemedCo.Ltd.
`
`Pet. 92. Patent Owner namesitself, BTL Industries, Inc., and BLT Medical
`
`Technologies S.R.O. as the real parties-in-interest. Paper 15, 1.
`
`B.
`
`Related Matters
`
`Asrequired 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
`
`

`

`PGR2021-00020
`Patent 10,695,575 Bl
`
`particular, the parties inform us that the ’575 Patentis 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 andis 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; Paper5, 2.
`
`The °575 Patentis also the subject of PGR2021-00021. Paper3, 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 hasfiled
`
`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.
`
`C.
`
`The ’575 Patent
`
`The ’575 Patent relates to ““device[s] and methodsusing the influence
`
`of magnetic and inducedelectric field on biological structure.” Ex. 1004,
`
`1:53-55. A circuit for “providing high powerpulses to the stimulating
`
`magnetic field generating device” is shown in Figure 5b, reproduced below.
`
`Id. at 14:31-33.
`
`

`

`PGR2021-00020
`Patent 10,695,575 Bl
`
`
`
`Figure 5b
`
`Figure 5b, above, showsa “circuit for providing high powerpulses for
`improved function of a treatment device.” Jd. at 15:8-9. Figure 5b includes
`“magnetic field generating device 28 and energy storage device 29...
`
`connected in series and disposedin parallel to switch 30.” Jd. at 15:9-12.
`
`“To provide an energy pulse, controlled shorting of energy source 31 takes
`
`place through the switch 30.” Jd. 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. Jd. at 20:48—50.
`
`

`

`PGR2021-00020
`Patent 10,695,575 Bl
`
`54
`
`55~
`
`56
`Coagasgsgarsesrsr22sgengsesiite,
`
`
`
`PLOELESELESSLESECEELEELEELEEAEEEEEREEES,-
`
`Figure 12
`
`Figure 12, above, shows “an exemplary embodiment of the magnetic
`
`treatment device including two independent magnetic field generating
`
`circuits.” Jd. at 20:48-50. The circuit shown in Figure 12 includes magnetic
`
`field generating circuit 52 and magnetic field generating circuit 57. Jd. at
`
`Fig. 12, 20:47-56. Magnetic field generating circuit 52 includes “energy
`
`source 53, switching device 54, energy storage device 55, and magneticfield
`
`generating device 56.” Jd. 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.” Jd. at 20:53-56. A control unit
`
`controls provides energy from the energy storage devicesto thecoils to
`
`generate magnetic impulses by thecoils. Jd. at 21:14—17.
`
`

`

`PGR2021-00020
`Patent 10,695,575 BI
`
`D.
`
`Illustrative Claims
`
`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, reproducedbelow,is illustrative of the claimed subject matter.
`
`1.
`
`Amethod 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 inductanceasthe first magnetic
`field generating coil;
`charginga 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 ofa 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,
`time-varying
`wherein the first
`impulse of the first
`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 pts and 3 ms;
`the
`establishing a first pulse duration beginning at
`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;
`
`

`

`PGR2021-00020
`Patent 10,695,575 Bl
`
`cooling each of the first and the second magnetic field
`generating coils; and
`applyinga first plurality of impulses generated bythe first
`magnetic field generating coil and applying a secondplurality 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.
`
`E.
`
`Evidence
`
`Petitioner relies on the patent document references summarized in
`
`Table 1 below.
`
`
`
`
`
`
`
`
`
`Patent Document
`US 8,834,547 B2
`WO 2015/179571 Al
`
`
`
`1021
`1090
`
`
`
`
`
`
`Petitioner relies on the non-patent literature references summarized in
`
`Table 2 below.
`
`Exhibit
`Non-Patent Literature Title
`
`Effects ofElectrical Muscle John P. Porcari,|1019
`
`
`
`Stimulation on Body
`et al.
`
`
`
`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
`
`

`

`PGR2021-00020
`Patent 10,695,575 Bl
`
`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.
`
`F.
`
`Asserted Grounds
`
`Petitioner asserts that the challenged claims of the 575 Patent are
`
`unpatentable based on the grounds summarized in Table 3 below:
`
`
`
`
`
`
`
`
`Lack of Written Description
`
`G.
`
`Level ofSkill in the Art
`
`In determining the level of ordinary skill in the art, various factors
`
`may beconsidered, including the “type of problems encounteredin the art;
`
`prior art solutions to those problems; rapidity with which innovations are
`
`made; sophistication of the technology; and educational level ofactive
`
`workersin the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995)
`
`Becausethe 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 versionsof these statutes. The °575 Patent’s filing
`date also is after the effective date set for the AJA’s changes to § 112 and we
`apply the AIA version of that statute. See AIA § 4(e). Our application of the
`AIA lawis not an affirmative ruling on the actual effective filing date of this
`patent.
`
`

`

`PGR2021-00020
`Patent 10,695,575 B1
`
`(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, anduse 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:
`
`least a bachelor’s degree in electrical
`(i) a person with at
`engineering, biomedical engineering, physics, or related field of
`study, andat least two years’ experience in academiaor 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 Ownerdoesnotchallenge
`Petitioner’s identification of the POSA. See generally, Prelim. Resp.
`
`Wefind that the phrases “at least” and “or more” in Petitioner's
`proposedidentification of the POSA create a vague, open-ended upper
`boundfor the level of ordinary skill, and we therefore do not adoptthat
`aspect of the proposal. Accordingly, for purposes of this decision, and based
`on the current record, we adoptPetitioner's assessmentofthe level ofskill
`
`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 assertedprior art references.
`
`See Okajima, 261 F.3d at 1355.
`
`

`

`PGR2021-00020
`Patent 10,695,575 B1
`
`H.—Claim Construction
`
`Weinterpret claim terms in accordance with the standard usedin
`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 enhancedvisual 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,
`
`3:18-28, 22:60—23:2, 25:1-3). In view of the issues we address below, we
`
`determinethat it is not necessary to provide an express interpretation ofthis
`
`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 argumentthat “control unit”is
`
`indefinite. We address claim construction for “control unit” in our
`
`discussion of Petitioner’s indefiniteness argument.
`
`Ill. DISCRETIONARY DENIAL OF THE PETITION
`
`Patent Ownercontends weshould 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
`
`May5, 2020) (“Fintiv”)). Because we determine that Petitionerfails 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.
`
`10
`
`

`

`PGR2021-00020
`Patent 10,695,575 B1
`
`IV.
`
`INDEFINITENESS
`
`Petitioner asserts that the term “control unit” in claim 13 is a means
`
`plus function claim term invoking 35 U.S.C. § 112(f) andthat 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 concludethat the term “control unit” does not
`
`invoke § 112(f), and further that, even if it had invoked § 112(f), the °S75
`
`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 wordthattriggers
`
`Section 112(f)”and “[t]he prefix ‘control’ does notalter this.” Pet. 14-15.
`
`Petitioner also asserts that during prosecution, “the Examiner advised Patent
`
`Ownerthat ‘control unit’ invoked Section 112(f).” Jd. at 15 (citing Ex. 1012,
`
`24).
`
`Patent Ownerarguesthat Petitioner’s analysis is conclusory and
`
`considers the terms “control” and “unit” in isolation from other recitations in
`
`the claim. Prelim. Resp. 28. Patent Owneralso argues the following:
`
`. the Federal Circuit held that the term “digital
`.
`In Samsung, .
`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 See Samsung Elec. Am., Inc. v. Prisua Eng’g Corp., 948 F.3d 1342, 1354
`(Fed. Cir. 2020).
`
`11
`
`

`

`PGR2021-00020
`Patent 10,695,575 Bl
`
`And in Samsung, the court found it relevant that the “digital
`processing unit” was “operably connected to” other structural
`components in the claim. Jd. So too here, the claimed “control
`unit” is operably connected to other structural components such
`as the claimed first and second “energy sources” andfirst and
`second “magnetic field generating coils.”
`
`Id. at 28-29.
`
`Patent Ownerasserts that, as understoodin 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 Ownerfurtherasserts that “[t]o operate circuit componentslike
`the switch SW,control unit 115 mustalso be a physical circuit component.”
`
`Id. at 33.
`
`Westart our inquiry with the rebuttable presumption that § 112(f)
`
`does not apply because “control unit” does not use the word “means.”
`
`Williamsonv. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015)
`
`(“[T]he use of the word ‘means’ in a claim elementcreates a rebuttable
`presumptionthat § 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 relevantpart).
`
`Ourinquiry does not end with the rebuttable presumption. The
`
`Federal Circuit emphasizesthat “the essential inquiry is not merely the
`
`presenceor absence of the word ‘means’ but whether the wordsof the claim
`
`are understood by personsofordinary skill in the art to have a sufficiently
`
`definite meaning as the nameforstructure.” Williamson, 792 F.3d at 1348.
`
`To overcome the presumption that § 112(f) does not apply, the burden is on
`
`12
`
`

`

`PGR2021-00020
`Patent 10,695,575 Bl
`
`Petitioner to “demonstrate[] that the claim term fails to ‘recite sufficiently
`
`definite structure’ or else recites ‘function withoutreciting sufficient
`
`structure for performing that function.” Jd. 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
`
`evidenceintrinsic to the patent.”).
`
`Weagree with Patent Ownerthat Petitioner’s assertion is conclusory.
`
`Petitioner’s discussion of the claim languageis 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. Jd. Importantly, Petitioner’s assertion lacks
`
`meaningful discussion of the construction of “control unit” as understoodin
`
`the context of the °575 Patent Specification and claims. Jd; 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 4 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 knownstructures such as a personal computer, a human machine
`
`13
`
`

`

`PGR2021-00020
`Patent 10,695,575 Bl
`
`interface, or, alternatively, a “PD and/or PID controller.” Ex. 1004, 8:55—
`9:2, 14:38-45, 75:21-23; Samsung, 948 F.3dat 1354 (finding that claimed
`“digital processing unit” was not a meansplus function limitation where the
`term referred to “a class of knownstructures — 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 powersupply 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 nottake
`a position on the Examiner’s statement during prosecution anddid 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 shownthat
`it is more likely than not that “control unit” is a means-plus-functionterm.
`
`B.
`
`If “control unit” invokes § 112 (), does the ’575 Patent
`Specification discloses sufficient structure?
`Weturn next to whether Petitioner has shownthat 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”
`performsthe function of “controlling .
`.
`. the discharge of energyto 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. Jd. Petitioner acknowledges that the ’575 Patent Specification
`
`describes a control unit “CU” 115, but argues that the disclosure is deficient
`
`14
`
`

`

`PGR2021-00020
`Patent 10,695,575 Bl
`
`because it describes “only” what the control unit does, “e.g., ‘regulating
`
`and/or adjusting,’ without disclosing any correspondingstructure.” Jd. at 17.
`
`Patent Ownerasserts that even if “control unit” is interpreted under
`
`§ 112(f), the ’575 Patent Specification provides sufficient structure. Prelim.
`Resp. 39. Patent Ownerpointsto the disclosure in the °575 Patent
`Specification that the control unit’s regulation may be done using a human
`machineinterface (“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 Owneralso 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 magneticfield. Id. at 45-46 (citing Ex. 1004, 14:33-45). Patent
`
`Ownerasserts that the °575 Patent also describes a “trapezoidal envelope”as
`an example algorithm for how to control the magnetic field. Jd. at 46 (citing
`Ex. 1004, 34:14-33, Fig. 13).
`
`Structure disclosed in the specificationis sufficient ifthe 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 correspondingstructure to perform
`
`all of the claimed functions. Jd. at 1351-1352.
`
`For claim 13, Petitioner asserts that the function performed by the
`control unit is as follows: “controlling .
`.
`. the discharge of energyto 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
`
`15
`
`

`

`PGR2021-00020
`Patent 10,695,575 Bl
`
`synchronized to generate the impulses at one fixed time within the pulse or
`both operation modes may be combined.” Jd. 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, whichis 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 machineinterface. 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 Patentthat 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
`
`machineinterfaces 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 correspondingto the claimed
`function also does not take into accountthe disclosures identified by Patent
`
`Owner. Ex. 1023 {§ 157-167.
`
`For the reasons given, we determine that Petitioner has not shownthat
`
`it is more likely than not that the °575 Patent Specification lacks disclosure
`
`of sufficient structure for “control unit.”
`
`V. WRITTEN DESCRIPTION—CLAIMS1-29
`
`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 independentclaimsthat “magnetic field generating coils”
`generate impulses having “a magnetic flux density in a range of 0.1 Tesla to
`7 Tesla.” Id. Petitioner also pointsto the recitation of a time-varying
`
`16
`
`

`

`PGR2021-00020
`Patent 10,695,575 Bl
`
`magnetic field having “an impulse duration in a range of 3 us to 3 ms”(as
`recited in iridependent claim 1) and having “an impulse duration in a range
`
`of 3 ps to 1 ms”(as recited in independent claims 16 and 24). Jd. Petitioner
`
`asserts “for each method covered by the claims, the POSITA mustselect
`
`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.” Jd. at 68.
`Patent Ownerasserts that “the specification expressly supports the
`
`exact claimed ranges of magnetic flux density (0.1 and 7 Tesla) and impulse
`
`duration (3 us — 3 ms).” Prelim. Resp. 47-48 (citing Ex. 1004, 27:29-31,
`
`27:35—42). Patent Ownerfurther 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.” Jd. at 48 (alterations in original);
`
`Ex. 1004, 23:1-20. Patent Ownercontendsthat 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 concludethat the inventor had possession ofthe claimed
`
`invention at the time oftheoriginalfiling. See, e.g., Moba, B.V. v. Diamond
`
`Automation, Inc., 325 F.3d 1306, 1319-1320 (Fed. Cir. 2003). The
`
`disclosure requiredto satisfy the written description requirement“varies
`
`with the nature and scope of the invention at issue, and with the scientific
`
`and technologic knowledgealready in existence.” Capon v. Eshhar, 418
`
`F.3d 1349, 1357 (Fed. Cir. 2005). We agree with Patent Ownerthat
`
`Petitioner has not shown that the 575 Patent Specification lacks sufficient
`
`17
`
`

`

`PGR2021-00020
`Patent 10,695,575 B1
`
`disclosure to reasonably conveyto those skilled in the art that the inventor
`
`had possession of the claimed invention.
`
`Weagree with Patent Ownerthat the °575 Patent Specification
`
`describes using the disclosed method for toning. Ex. 1004, 23:15—20 (“The
`
`treatment effect may be knownas 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 knownas
`
`muscle strengthening, muscle toning or muscle firming.” (emphasis added)),
`
`25:60-61 (“Henceeffects 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 moreattractive
`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 us to 3
`
`ms,” and an “impulse duration in a range of 3 pts to 1 ms.” Jd. at 27:28-39.
`
`Petitioner asserts that “for each method covered by the claims, the
`
`POSITA mustselect values from within claimed ranges for the claimed
`
`operating parameters—andfurther 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.” Jd. at 69. We donotfind these
`
`arguments persuasive.
`
`18
`
`

`

`PGR2021-00020
`Patent 10,695,575 Bl
`
`Petitioner concedesthat, by 2016, using magnetic stimulation to
`
`induce muscle contraction was “well-known.” Pet. 9. According to
`
`Petitioner, magnetic stimulation devices used a numberof parameters for
`
`stimulation, including: “the intensity of the energy stimulus .
`
`.
`
`.
`
`; the
`
`duration of a pulse .. .
`
`; the pulse repetition rate .
`
`.
`
`.
`
`; the numberof pulses
`
`in a group(‘train’); and the time from onetrain to the next.” Id. at 9-10.
`
`Petitioner concedesthat “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.” Jd. at
`
`10.
`
`Not only was magnetic stimulation known,it was put into practice.
`
`Petitioner explains that “numerouspriorart 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, weightloss, .
`
`.
`
`. [and]
`
`prevention of muscle atrophy.” Jd. Morespecifically, Petitioner admits that
`
`“{s]ince at least the 1990s, it also has been knownto use magnetic
`
`stimulation for aesthetic purposes to tone muscles.” Jd. at 12.
`
`The ’575 Patent Specification discloses a method ofusing a time-
`
`varying magnetic field to tone muscle. See e.g., 1004, 23:11-20. It also
`
`discloses ranges for various treatment parameters, including flux density and
`
`impulse duration. Jd. at 27:28-39. In addition,it discloses that the optimal
`
`selection of treatment parameters may depend on the physique, BMI, or
`
`tolerance of a patient. Jd. at 68:20—21 (“The treatment time may be
`
`dependent on BMI ofthe patient.”); see also id., 24:19-23 (limiting magnetic
`flux density to highest value acceptable to not cause pain to patient), 27:65—
`
`19
`
`

`

`PGR2021-00020
`Patent 10,695,575 B1
`
`67 (setting higher magnetic flux density to patents that exercise regularly),
`
`79:44—49 (noting that the operator can design a treatment for a patient’s
`
`specific needs). Particularly given the admittedly extensive knowledge in
`
`the field at the time the application for the °575 Patent was filed, this was
`
`sufficient to “reasonably convey[] to those skilled in the art that the inventor
`
`had possession of the claimed subject matter as of the filing date.” Ariad
`
`Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en
`
`banc).
`
`For the reasons given, we determinethat Petitioner has not shownthat
`
`it is more likely than not that the ’575 Patent Specifi

Accessing this document will incur an additional charge of $.

After purchase, you can access this document again without charge.

Accept $ Charge

This document could not be displayed.

We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.

Your account does not support viewing this document.

You need a Paid Account to view this document. Click here to change your account type.

Your account does not support viewing this document.

Set your membership status to view this document.

With a Docket Alarm membership, you'll get a whole lot more, including:

  • Up-to-date information for this case.
  • Email alerts whenever there is an update.
  • Full text search for other cases.
  • Get email alerts whenever a new case matches your search.

Become a Member

One Moment Please

The filing “” is large (MB) and is being downloaded.

Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.

Your document is on its way!

If you do not receive the document in five minutes, contact support at support@docketalarm.com.

Sealed Document

We are unable to display this document, it may be under a court ordered seal.

If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.


Access Government Site

We are redirecting you
to a mobile optimized page.

We are unable to display this document.

PTO Denying Access

Refresh this Document
Go to the Docket