M&G Team Secures IPR Win For Medtronic Against Bosch

January 21, 2015

On January 15, 2015, Merchant & Gould secured three significant victories for Medtronic Inc., at the Patent Trial and Appeal Board (the “PTAB” or “Board”) of the U.S. Patent and Trademark Office. In the three inter partes review decisions, the Board invalidated all claims at issue in three patents belonging to Robert Bosch Healthcare Systems, Inc. (“Bosch”).  Each of the patents deals with methods and systems for remotely monitoring patients. The Board invalidated all claims (1-5) of U.S. Patent No. 7,840,420,[1]all claims (1-16) of U.S. Patent No. 7,921,186,[2] and claims 1, 2, and 5-10 of U.S. Patent No. 7,587,469.[3]  Bosch asserted the three patents in a lawsuit that was stayed in view of the proceedings pending at the Patent and Trademark Office.
The parties argued their cases before the Board at a September 9, 2014 hearing, with Merchant & Gould’s Dan McDonald representing Medtronic. Much of the Board’s analysis related to whether certain prior art could reasonably be combined to show obviousness and whether the Patent Owner’s evidence of non-obviousness was sufficiently linked with the claimed features of the patents. The Board found that the prior art was analogous to the disputed patent, and that there was sufficient reason for one of ordinary skill to combine that art to render the claims obvious.[4]The Board gave little weight to the Patent Owner’s claims of commercial success, long-felt need, industry praise, copying, and teaching away by others. In a thorough, detailed analysis, the Board determined that the Patent Owner had not shown how the specific, claimed features were tied to the alleged secondary factors.[5] For that reason, those secondary factors were insufficient to demonstrate patentability.
The Board also denied Bosch’s motion to exclude Medtronic’s expert witness.  The Board held that the expert’s analysis was reasonable and admissible because it properly used the knowledge of one of ordinary skill in the art at the time of invention.[6]
[1] IPR2013-00449
[2] IPR2013-00431
[3] IPR2013-00451
[4] IPR2013-00431, paper 67 at 40-41; IPR2013-00449, paper 68 at 46; and IPR2013-00451, paper 65 at 36.
[5] E.g. IPR2013-00431, paper 67 at 30-39.
[6] E.g. Id. (citing In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971)).