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Lumenis Be Ltd. v. BTL Healthcare Technologies A.S.

Docket IPR2021-01279, Patent Trial and Appeal Board (Aug. 5, 2021)
Barbara Parvis, David Cotta, Zhenyu Yang, presiding
Case TypeInter Partes Review
Patent10709895
Patent Owner BTL Healthcare Technologies A.S.
Petitioner Lumenis Be Ltd.
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10 Notice refund approved: Notice refund approved

Document IPR2021-01279, No. 10 Notice refund approved - Notice refund approved (P.T.A.B. Apr. 5, 2022)
Petitioner’s request for a refund of certain post-institution fees paid on August 5, 2021 in the above proceeding is hereby granted.
The amount of $22,500.00 has been refunded to Petitioner’s deposit account.
The parties are reminded that unless otherwise permitted by 37 C.F.R. § 42.6(b)(2), all filings in this proceeding must be made electronically in the Patent Trial and Appeal Board End to End (PTAB E2E), accessible from the Board Web site at http://www.uspto.gov/PTAB.
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8 Institution Decision Deny: Institution Decision Deny

Document IPR2021-01279, No. 8 Institution Decision Deny - Institution Decision Deny (P.T.A.B. Mar. 21, 2022)
The parties additionally identify the following settled 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.
Patent Owner also argues that Simon “produces ‘its effect through a different mechansim than conventional magnetic stimulation,’” specifically “by generating and applying an electric field or current at the surface of the patient’s skin.” Id. at 13–14 (citing Ex. 1004 ¶¶ 27, 37, 122).
Figure 2, above, illustrates a block diagram of the Magstim Model 2008 monophasic stimulator including a transformer, charging circuitry, a capacitor, an electronic switch, and a coil.
However, immediately preceding this statement, the Petition cites Magstim (page 4 and Figure 2) as an example of the “circuitry of a ‘typical simulator’ to control charging and discharging of a capacitor” and of “a capacitor and switch for a typical stimulation coil.” Pet. 46.
In re Kuhle, 526 F.2d 553, 555 (CCPA 1975) (“Use of such a means of electrical connection in lieu of those used in the references solves no stated problem and would be an obvious matter of design choice within the skill [in] the art.” (citations omitted)).
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6 Notice Notice filing date accorded: Notice Notice filing date accorded

Document IPR2021-01279, No. 6 Notice Notice filing date accorded - Notice Notice filing date accorded (P.T.A.B. Sep. 23, 2021)
For more information, please consult the Office Patent Trial Practice Guide, 77 Fed. Reg. 48756 (Aug. 14, 2012), which is available on the Board Web site at http://www.uspto.gov/PTAB.
Patent Owner is advised of the requirement to submit mandatory notice information under 37 C.F.R. § 42.8(a)(2) within 21 days of service of the petition.
The parties are advised that under 37 C.F.R. § 42.10(c), recognition of counsel pro hac vice requires a showing of good cause.
Many non-profit organizations, both inside and outside the intellectual property field, offer alternative dispute resolution services.
If the parties actually engage in alternative dispute resolution, the PTAB would be interested to learn what mechanism (e.g., arbitration, Case IPR2021-01279 Patent No. 10,709,895 mediation, etc.) was used and the general result.
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2 Petition: Petition for Inter Partes Review

Document IPR2021-01279, No. 2 Petition - Petition for Inter Partes Review (P.T.A.B. Aug. 5, 2021)
While Simon contains embodiments in which coils’ electric fields have a synergistic effect (e.g., Simon, [0077]), a POSITA would nonetheless have been motivated to apply Burnett-’870’s teachings of separating applicators for ...
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9 Refund Request: Petitioner Request for Refund of Post Institution Fee

Document IPR2021-01279, No. 9 Refund Request - Petitioner Request for Refund of Post Institution Fee (P.T.A.B. Apr. 1, 2022)
On August 5, 2021, Petitioner filed a Petition for Inter Partes Review of U.S. Patent No. 10,709,895 with the Patent Trial and Appeal Board that was assigned case number IPR2021-01279.
In accordance with the fee schedule specified in 37 C.F.R. § 42.15(a), Petitioner deposited an electronic payment in the amount of $41,500.00 with the Board at the time of filing of the Petition, including a $19,000.00 payment for the Inter Partes Review request fee and a $22,500.00 payment for the post-institution fee.
On March 21, 2022, the Patent Trial and Appeal Board entered a Decision denying institution of Inter Partes Review.
Accordingly, Petitioner requests a refund in the amount of $22,500.00 for the post-institution fees that it has paid to the USPTO in connection with this proceeding.
Dated: April 1, 2022 Respectfully submitted, By: /Scott A. McKeown/ Scott A. McKeown Registration No. 42,866 Counsel for Petitioner Lumenis Be Ltd.
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7 Preliminary Response: Patent Owners Preliminary Response

Document IPR2021-01279, No. 7 Preliminary Response - Patent Owners Preliminary Response (P.T.A.B. Dec. 23, 2021)
Third, none of the garment-wrapped coils shown in Burnett’s Figures 9A-9D are positioned over a patient’s buttocks or abdomen.
This is because none of the references disclose two - 48 - Case IPR2021-01279 U.S. Patent No. 10,709,895 capacitors.
However, Petitioner’s and Dr. Bikson’s evaluation of Magstim, Burnett185, and Burnett’s background section are - 49 - Case IPR2021-01279 U.S. Patent No. 10,709,895 fatally flawed because none of these disclosures disclose two ...
Here, the “applicator may include cooling features, where cooling is provided by utilizing liquids or airflow, such as rapid airflow to cool the coils or applicator.” Id. None of these examples discuss cooling coils wrapped in garment material, ...
None of Petitioner’s grounds meet the institution standard.
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4 Notice: Petitioners Updated Mandatory Notice Information

Document IPR2021-01279, No. 4 Notice - Petitioners Updated Mandatory Notice Information (P.T.A.B. Sep. 10, 2021)
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