Lumenis Be Ltd v. BTL Healthcare Technologies As

1. Case Identification

• Case #: IPR2021-01276
• Patent #: 10,695,575
• Filed: August 5, 2021
• Petitioner(s): Lumenis Ltd.
• Patent Owner(s): BTL Healthcare Technologies A.S.
• Challenged Claims: 1-15

2. Patent Overview

• Title: Electrical Stimulation of Body Tissues
• Brief Description: The ’575 patent is directed to a method and system for toning muscles by applying a time-varying magnetic field to body tissue. The disclosed device uses at least two applicators, each containing a magnetic field generating coil, that are positioned on a patient to induce muscle contractions.

3. Grounds for Unpatentability

Ground 1: Claims 1-15 are obvious over Simon

• Prior Art Relied Upon: Simon (Application # 2015/0165226).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued Simon discloses all limitations of the challenged claims. Simon teaches a magnetic stimulator for muscle rehabilitation with a control unit and two applicators, each containing a coil and a capacitor. The device generates a time-varying magnetic field to stimulate muscles in regions like the abdomen, with adjustable parameters including frequency and impulse duration that fall within the claimed ranges. Simon also discloses cooling the coils with flowing water, air, or ferrofluids. To the extent Simon’s applicators are shown in a single housing, Petitioner contended it was known to use independently-positioned applicators, and a person of ordinary skill in the art (POSITA) would find it obvious to modify Simon’s device for greater flexibility in treating different body areas.
  • Motivation to Combine (for §103 grounds): Not applicable as this ground is based on a single reference. The argument for obviousness relies on the reference’s direct teachings combined with routine modifications a POSITA would have been motivated to make.
  • Expectation of Success (for §103 grounds): A POSITA would have had a high expectation of success in making minor modifications, such as separating the applicators, to achieve the predictable result of more versatile muscle treatment.

Ground 2: Claims 1-15 are obvious over Burnett-’870 in view of Magstim

• Prior Art Relied Upon: Burnett-’870 (Application # 2014/0148870) and Magstim (a 2006 technical guide).
• Core Argument for this Ground:
  • Prior Art Mapping: Burnett-’870 discloses a method for muscle toning using multiple, independently positionable applicators with coils, which can be attached to a body region like the abdomen via an adjustable belt. It also teaches liquid cooling of the coils and that they may be activated "simultaneously or differentially." Petitioner asserted that Magstim, a technical guide on magnetic stimulation, supplies any missing details about the underlying circuitry and pulse parameters. Magstim discloses the standard components of a "typical stimulator," including capacitors, electronic switches, and control circuitry, and teaches generating biphasic, sinusoidal impulses with specific durations and frequencies that meet the claim limitations.
  • Motivation to Combine (for §103 grounds): A POSITA would combine Magstim's teachings on standard stimulator components and operation with Burnett-’870's multi-applicator system to create a complete, functional device. Burnett-’870 explicitly leaves the details of powering the coils to a POSITA, and Magstim provides a known, "typical" implementation for doing so. Because Burnett-'870 discloses activating coils "differentially," a POSITA would be motivated to use Magstim's teachings to implement separate energy storage and control for each coil.
  • Expectation of Success (for §103 grounds): The combination would predictably work because it involves implementing Burnett-’870’s system using the standard, well-understood components and operating principles described in Magstim.

Ground 3: Claims 1-15 are obvious over Simon in view of Burnett-’870

• Prior Art Relied Upon: Simon (Application # 2015/0165226) and Burnett-’870 (Application # 2014/0148870).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground uses Simon as the primary reference for its disclosure of a complete magnetic stimulation system. Burnett-’870 is added primarily to teach the clear benefit and implementation of using multiple, independently-positioned applicators, which allow for more flexible and symmetrical treatment on different sides of the body (e.g., left and right abdominal muscles or buttocks).
  • Motivation to Combine (for §103 grounds): To the extent Simon’s applicators are argued to be fixed within a single housing, a POSITA would combine this with Burnett-’870's teaching of independently-positioned applicators attached by an adjustable belt. This modification would increase the flexibility of Simon's device, allowing it to be used for a more "diverse" range of applications and anatomical locations, which Simon itself contemplates.
  • Expectation of Success (for §103 grounds): A POSITA would have a reasonable expectation of success in separating Simon's applicators as taught by Burnett-’870. This would be a routine design choice to achieve the predictable advantage of more versatile and symmetrical muscle treatment.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under 35 U.S.C. §314(a) and §325(d) is inappropriate. The key prior art references, Simon and Magstim, were never considered by the Examiner during prosecution. While Burnett-’870 was cited in an Information Disclosure Statement, it was never substantively applied or analyzed. Petitioner also asserted that the grounds presented are unique and distinct from those raised in a prior Post-Grant Review against the ’575 patent.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-15 of the ’575 patent as unpatentable.