Lumenis Be Ltd v. BTL Healthcare Technologies As

1. Case Identification

• Case #: IPR2021-01284
• Patent #: 10,709,895
• Filed: August 5, 2021
• Petitioner(s): Lumenis Ltd.
• Patent Owner(s): BTL Healthcare Technologies A.S.
• Challenged Claims: 14-29

2. Patent Overview

• Title: Electrical Stimulation of Body Tissues
• Brief Description: The ’895 patent discloses a device for toning muscles by producing a time-varying magnetic field. The system uses applicators with magnetic field generating coils, positionable on target body regions, to induce muscle contractions.

3. Grounds for Unpatentability

Ground 1: Obviousness over Simon - Claims 14-29 are obvious over Simon

• Prior Art Relied Upon: Simon (Application # 2015/0165226).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued Simon, a reference for muscle rehabilitation, discloses all key elements of the challenged claims. Simon teaches a magnetic stimulator with two applicators, each containing a coil, housed together and connected to a control unit. This unit includes an impulse generator with capacitors and switches to generate consecutive energy impulses. Simon explicitly discloses adjustable parameters like frequency and amplitude, recognizes coil overheating and suggests cooling solutions (e.g., flowing water), and describes applying the device to the abdomen. Petitioner contended that for elements not explicitly detailed, such as a trapezoidal pulse envelope or specific cooling tube configurations, a person of ordinary skill in the art (POSITA) would have found it obvious to implement these known techniques to improve patient comfort and device longevity.
  • Motivation to Combine (for §103 grounds): As this ground relies on a single reference, the argument focused on obvious modifications. Petitioner asserted a POSITA would modify Simon to incorporate known techniques, such as ramping current up and down to create a trapezoidal envelope to mimic natural muscle contraction and increase patient comfort, a principle Simon itself teaches by aiming to reduce discomfort. Similarly, using connecting tubes for a cooling fluid was presented as an obvious implementation of Simon's disclosed cooling concept.
  • Expectation of Success: Petitioner asserted that implementing these well-known, routine modifications in Simon's device would predictably achieve their intended functions without undue experimentation.

Ground 2: Obviousness over Burnett in view of Magstim - Claims 14-29 are obvious over Burnett ’870 in view of Magstim

• Prior Art Relied Upon: Burnett-’870 (Application # 2014/0148870) and Magstim (a 2006 technical guide on magnetic stimulation).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner argued Burnett-’870 discloses a magnetic stimulation device for muscle toning that uses multiple applicators with coils, which can be attached to the body (e.g., buttocks) via an adjustable belt or garment. Burnett-’870 teaches that the coils can be activated simultaneously or differentially and discloses adjustable parameters and liquid cooling. Petitioner contended that Burnett-’870 does not explicitly detail the underlying circuitry but that a POSITA would turn to a standard reference like Magstim to supply these known details. Magstim, a guide for magnetic stimulation techniques, was argued to disclose the conventional components of such a system, including the use of capacitors, electronic switches, control circuitry, and the generation of biphasic and sinusoidal impulses. Magstim also shows a user interface for setting parameters for trains of pulses.
  • Motivation to Combine: A POSITA would combine Magstim with Burnett-’870 to implement the functional but less-detailed system of Burnett-’870. Because Burnett-’870 discloses activating coils "differentially," a POSITA would have been motivated to use Magstim’s teaching of standard circuitry (separate capacitors and switches per coil) to achieve the independent control required for such operation. Petitioner argued it would have been an obvious, typical implementation to supply the known components from Magstim to build the device described in Burnett-’870.
  • Expectation of Success: The combination involved applying known, standard stimulator components and principles (from Magstim) to a known system for muscle toning (Burnett-’870). Petitioner argued this would have been a straightforward and routine integration with a high expectation of success.

• Additional Grounds: Petitioner asserted an additional obviousness challenge against claims 14-29 based on Simon in view of Burnett-’870. This ground relied on Simon as the primary reference and supplemented it with Burnett-’870's teachings on elements such as treating buttock muscles, using independently-positionable applicators on a belt, and generating a trapezoidal pulse envelope.

4. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under §§314(a) and 325(d). It was asserted that the primary 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 in a rejection. Petitioner also distinguished this IPR from a previously filed Post-Grant Review (PGR) by another party, which was denied based on Fintiv factors, by noting that this petition presents unique grounds and relies on different prior art combinations than those asserted in the PGR.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 14-29 of the ’895 patent as unpatentable.