Lumenis Be Ltd v. BTL Healthcare Technologies As

1. Case Identification

• Case #: IPR2021-01404
• Patent #: 10,124,187
• Filed: September 13, 2021
• Petitioner(s): Lumenis Be Ltd.
• Patent Owner(s): BTL Healthcare Technologies A.S.
• Challenged Claims: 1, 19-30

2. Patent Overview

• Title: Method and Device for Treating Biological Structures
• Brief Description: The ’187 patent relates to a method and device for providing aesthetic treatment to a patient's skin and other tissue using a combination of a time-varying magnetic field and radiofrequency (RF) waves.

3. Grounds for Unpatentability

Ground 1: Obviousness over Simon and Edoute - Claims 1, 19, and 22-29 are obvious over Simon in view of Edoute.

• Prior Art Relied Upon: Simon (Application # 2015/0165226) and Edoute (Application # 2015/0025299).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Simon disclosed a magnetic stimulator for muscle rehabilitation that taught the core components of the magnetic field generating device, including an impulse generator, control unit, coils, and an energy storage device (capacitor). However, Simon lacked a detailed disclosure of a high-frequency (HF) generator and RF electrode for heating tissue. Edoute supplied these missing elements, teaching a device that simultaneously emits RF and magnetic pulses for muscle contraction and skin rejuvenation, including an HF generator ("electrical output device") and RF electrodes.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Simon's magnetic muscle toning device with Edoute's RF skin treatment to achieve the complementary benefits of improving a patient's overall visual appearance. The combination would address the known issue of skin sagging that can occur with muscle toning by simultaneously providing skin tightening, a result explicitly taught by Edoute.
  • Expectation of Success: A POSITA would have an expectation of success because Simon already disclosed a device with applicators for tissue treatment, and Edoute taught the integration of RF electrodes and coils within such applicators for simultaneous treatment.

Ground 2: Obviousness over Simon, Edoute, and Ishikawa - Claims 20-21 are obvious over Simon in view of Edoute and Ishikawa.

• Prior Art Relied Upon: Simon (Application # 2015/0165226), Edoute (Application # 2015/0025299), and Ishikawa (Application # 2001/0031906).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon the combination of Simon and Edoute to argue that the additional limitations of claims 20 and 21 were disclosed by Ishikawa. These claims recite a conductor diameter of less than 3 mm and the use of a litz-wire in the magnetic field generating device. Petitioner asserted that Ishikawa explicitly taught using a "litz wire coil" with an exemplary conductor diameter of "0.2-1.5mm" for magnetic stimulation systems.
  • Motivation to Combine: Simon acknowledged that magnetic stimulator coils can overheat during use. A POSITA would be motivated to incorporate Ishikawa's teachings into the Simon/Edoute device to solve this known problem. Ishikawa taught that using a litz-wire coil prevents overheating, reduces the danger of burns, and increases power consumption and stimulation efficiency, providing a clear rationale for its inclusion.

Ground 7: Obviousness over Burnett-’870, Park, and Zarsky - Claims 1, 19-30 are obvious over Burnett-’870 in view of Park and Zarsky.

• Prior Art Relied Upon: Burnett-’870 (Application # 2014/0148870), Park (Application # 2016/0129274), and Zarsky (Application # 2013/0123765).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner argued Burnett-’870 taught a base system for toning muscles using time-varying magnetic fields and disclosed that the device may deliver "high frequencies" and apply an "RF field." To the extent Burnett-’870 lacked specific implementation details, Park provided the rationale for combination therapy, and Zarsky supplied the required RF circuitry details. Park taught a wearable system combining pulsed electromagnetic fields and heat energy (like RF) for firming and toning skin and muscles. Zarsky disclosed a complete RF treatment system, including a power supply, HF generator, and crucially, a transmatch and balun transformer for impedance matching.
  • Motivation to Combine: A POSITA would be motivated to modify Burnett-’870 based on the teachings of Park and Zarsky. Park explicitly described the complementary benefits of combining magnetic and RF treatments for enhanced therapeutic effects, providing the reason to combine them. Zarsky provided the well-known and necessary circuitry for implementing the RF portion of the combined device, which a POSITA would consult to predictably build the system.
  • Expectation of Success: The combination would predictably work because it involved applying known techniques (Zarsky's RF circuit) to a known device (Burnett-’870's magnetic stimulator) for a known and advantageous purpose (the complementary benefits described in Park).

• Additional Grounds: Petitioner asserted additional obviousness challenges based on combinations of Simon, Edoute, Park, Zarsky, and Ishikawa, which relied on similar combination rationales and design modification theories.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under 35 U.S.C. §325(d) would be inappropriate. The core arguments were that the primary prior art reference in several key grounds, Simon, was never before the Examiner.
• Although other references like Edoute and Burnett-’870 were cited in an Information Disclosure Statement, the Examiner never substantively applied them in a rejection or discussed them during prosecution of the claims at issue. Petitioner contended it was presenting new combinations and arguments not previously considered by the USPTO.

5. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 1 and 19-30 of Patent 10,124,187 as unpatentable.