Medtronic Inc v. Avanos Medical Sales LLC

1. Case Identification

• Case #: IPR2020-00895
• Patent #: 8,882,755
• Filed: May 29, 2020
• Petitioner(s): Medtronic, Inc.
• Patent Owner(s): Avanos Medical Sales, LLC
• Challenged Claims: 1-8, 13, 17-22

2. Patent Overview

• Title: Internally-Cooled Radiofrequency Ablation Probe
• Brief Description: The ’755 patent discloses an internally-cooled radiofrequency (RF) ablation probe and related systems and methods. The probe features an electrically conductive protrusion at its distal end that contains a temperature sensing element, which is isolated from the internal cooling fluid flow to enable a more accurate measurement of tissue temperature during ablation procedures.

3. Grounds for Unpatentability

Ground 1: Anticipation over Desinger

• Challenged Claims: 1, 2, 8, 17, and 21 are anticipated by Desinger under 35 U.S.C. §102.
• Prior Art Relied Upon: Desinger (WO 00/36985).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Desinger, which was not considered during prosecution, discloses every limitation of the challenged independent claims. Specifically, Petitioner contended that claim 59 of Desinger describes a single probe assembly that incorporates features from its dependent claims, including an internally cooled electrode, a metallic front cylinder (the claimed "protrusion"), and a temperature sensor housed within a recess in that cylinder. Petitioner asserted that the sensor is embedded in a resin or glue bed, which necessarily isolates it from contact with the cooling fluid, thereby anticipating the core features of the ’755 patent claims.

Ground 2: Obviousness over Desinger and Pellegrino

• Challenged Claims: 19 and 20 are obvious over Desinger in view of Pellegrino under 35 U.S.C. §103.
• Prior Art Relied Upon: Desinger (WO 00/36985), Pellegrino (Patent 6,907,884).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground targets method claims 19 and 20. Petitioner argued that Desinger discloses the claimed probe assembly, while Pellegrino teaches a method of treating tissue by inserting first and second probe assemblies into spaced-apart treatment sites. Pellegrino’s method uses multiple probes to create a larger, more effective lesion for nerve ablation without requiring precise targeting. The combination of using Desinger’s probe with Pellegrino’s multi-probe method meets the limitations of providing and inserting multiple probe assemblies to treat tissue.
  • Motivation to Combine: A POSITA would combine Pellegrino’s advantageous multi-probe treatment method with the probe disclosed in Desinger to apply a known, beneficial technique to a suitable, known device. This would predictably result in an improved ability to treat a larger area of tissue, such as for back pain, as described in Pellegrino.
  • Expectation of Success: A POSITA would have a reasonable expectation of success, as the combination involves applying a known surgical method (Pellegrino) with a known type of cooled RF probe (Desinger) to achieve the expected outcome of creating a larger therapeutic lesion.

Ground 3: Obviousness over Desinger and Simpson

• Challenged Claims: Claim 22 is obvious over Desinger in view of Simpson under §103.

• Prior Art Relied Upon: Desinger (WO 00/36985), Simpson (Patent 6,312,425).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground targets claim 22, which recites a specific temperature sensor structure: a thermocouple junction formed by joining an inner surface of a conductive tube (the protrusion) to a wire made of a dissimilar metal. Petitioner argued that Desinger discloses all elements of the claim except for this specific thermocouple structure, instead disclosing a thermistor. Simpson, which was also not considered during prosecution, explicitly teaches this specific, space-saving thermocouple design.
  • Motivation to Combine: A POSITA would be motivated to replace the thermistor in Desinger’s probe with the more compact and integrated thermocouple design from Simpson. This would be a simple substitution of one known type of temperature sensor for another to achieve the known benefits of Simpson’s design, such as saving space in a small-diameter probe and using fewer wires.
  • Expectation of Success: The combination would yield predictable results, as it constitutes a simple substitution of one known component (a thermistor) for another (a thermocouple) in a known location for the known purpose of measuring temperature.

• Additional Grounds: Petitioner asserted additional obviousness challenges, including claims 1, 2, 8, 17, and 21 as obvious over Desinger alone (arguing for the obviousness of combining different embodiments within Desinger); claims 3-5 and 7 as obvious over Desinger and Levine (Patent 5,647,871); claim 13 as obvious over Desinger and Sharps (Patent 6,602,248); and claim 18 as obvious over Desinger and Rittman (Patent 6,575,969).

4. Key Claim Construction Positions

• Petitioner argued that the term "means of delivering a fluid to, and removing said fluid from, said lumen" in claim 2 is a means-plus-function term governed by 35 U.S.C. §112, ¶6.
  • Function: Delivering a fluid to, and removing said fluid from, the lumen.
  • Structure: One or more tubes as disclosed in Figures 3A, 3B, 4, and others in the ’755 patent, and their structural equivalents.
• This construction was central to Petitioner’s argument that Desinger’s rinsing tube (element 110) within a hollow channel (element 76) constituted an equivalent structure that performed the identical function, thereby meeting the limitation of claim 2.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §314(a) based on Fintiv factors would be inappropriate. It was contended that the co-pending district court litigation was in its preliminary stages, with a motion to dismiss pending and no trial date set. Petitioner asserted that an institution decision would occur long before the district court would engage in any substantive analysis of invalidity, and that the presiding judge had a practice of staying cases pending IPR.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-8, 13, and 17-22 of the ’755 patent as unpatentable.