PTAB

IPR2021-01285

Lumenis Be Ltd v. BTL Healthcare Technologies As

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Key Events
Petition

1. Case Identification

2. Patent Overview

  • Title: Electrical Stimulation of Body Tissues by Magnetic Field
  • Brief Description: The ’894 patent discloses a device for stimulating and remodeling muscle tissue using a time-varying magnetic field. The system uses applicators, which may be held in place by a belt, containing coils that are energized by the discharge from capacitors to induce muscle contractions for "toning" effects.

3. Grounds for Unpatentability

Ground 1: Obviousness over Simon - Claims 18-21 and 23-30 are obvious over Simon.

  • Prior Art Relied Upon: Simon (Application # 2015/0165226).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Simon discloses all key elements of the challenged claims in its magnetic stimulator for muscle rehabilitation. Simon teaches a device with two applicators in a housing, each containing a coil that generates a time-varying magnetic field when a capacitor is discharged. This device is controlled by a control unit that manages an impulse generator, applies stimulation to body regions like the abdomen, and uses adjustable parameters (e.g., frequency, amplitude, repetition rate). Simon also recognizes that coils can overheat and discloses cooling them with flowing fluids.
    • Motivation to Combine (for §103 grounds): As a single-reference ground, the argument focused on obvious modifications. Petitioner contended that a person of ordinary skill in the art (POSITA) would find it obvious to implement any minor variations not explicitly shown in Simon, such as ramping down current to mimic natural muscle relaxation for patient comfort or using conventional connecting tubes for the disclosed fluid cooling to prevent overheating.
    • Expectation of Success: A POSITA would have had a high expectation of success as these modifications involved applying known principles to achieve predictable results consistent with Simon's stated goals.

Ground 2: Obviousness over Burnett-'870 and Magstim - Claims 18-30 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 asserted Burnett-’870 teaches a system for muscle toning using multiple applicators with coils, which can be attached to a patient via an adjustable belt or abdominal garment. Burnett-’870 discloses adjustable parameters like amplitude and frequency, coil cooling, and a logic controller. However, Petitioner argued that Burnett-’870 leaves the specific details of the powering circuitry to a POSITA. Magstim, a foundational guide to magnetic stimulation techniques, was alleged to supply these conventional details. Magstim explicitly teaches the standard components of a "typical stimulator," including a capacitor charged by a power source and discharged through an electronic switch to power the coil, as well as the use of biphasic and sinusoidal impulses.
    • Motivation to Combine: A POSITA seeking to build the device described in Burnett-’870 would be motivated to consult a standard reference like Magstim to implement the basic, well-known circuitry and pulse characteristics for a magnetic stimulator. The combination represents applying fundamental, publicly available knowledge to a known therapeutic system.
    • Expectation of Success: Combining Burnett-’870’s system with the standard components and operating principles described in Magstim would have been a routine and predictable integration for a POSITA.

  • Additional Grounds: Petitioner asserted additional obviousness challenges, including that claims 18-21 and 23-30 are obvious over Simon in view of Burnett-’870, arguing Burnett-’870 supplies express teachings on ramp-down stimulation patterns and cooling tubes to supplement Simon. Petitioner also argued claim 22 is obvious over Simon in view of Edoute (Application # 2015/0025299), which teaches the simultaneous application of magnetic and radiofrequency (RF) energy to provide the complementary benefits of muscle toning and skin tightening.

4. Key Claim Construction Positions

  • "control unit": Petitioner noted that in prior Post-Grant Reviews of related patents, the Board had determined that the term "control unit" is not indefinite and does not invoke 35 U.S.C. §112(f). Petitioner stated it applies the plain and ordinary meaning to all claim terms, consistent with those prior Board decisions.

5. Arguments Regarding Discretionary Denial

  • Petitioner argued that discretionary denial under 35 U.S.C. §314(a) and §325(d) is inapplicable. The petition asserted that the primary prior art references, Simon and Magstim, were never before the examiner during prosecution of the ’894 patent. Furthermore, the petition contended that the asserted grounds are unique and were not raised in a previously settled Post-Grant Review (PGR2021-00023) involving the same patent.

6. Relief Requested

  • Petitioner requests the institution of an inter partes review and the cancellation of claims 18-30 of the ’894 patent as unpatentable under 35 U.S.C. §103.