Intellectual Property Law Representation

Motivation to Combine Not Confined to Use Disclosed in Prior Art

by | Jul 12, 2023 | Case Updates

On June 10, 2023, the Federal Circuit vacated and remanded PTAB’s findings of unpatentability in IPR2020-00679 re U.S. Patent No. 8,626,314 and IPR2020-00715 re U.S. Patent No. 8,036,756 (the ’314 patent and the ’756 patent collectively as “Medtronic patents”), where the Board found all challenged claims not unpatentable for obviousness. Axonics, Inc. v. Medtronic, Inc., Case No. 22-1454 (Fed. Cir. July 10, 2023).

In its final written decision for both IPRs, the Board found that a relevant artisan would not have had a motivation to combine two prior art references Young and Gerber because the proposed combination would not have solved the problem addressed in Young. Axonics at 8-10.

The Federal Circuit held the Board’s rationale is “infected by error” because:

First, even if the Board was correct to treat the Medtronic patents at issue as limited in the problem they address to the sacral-nerve context, the Board committed a fundamental legal error in confining the motivation inquiry to whether a motivation would exist to make the proposed combination for use in the Young-specific trigeminal-nerve context—to which the Medtronic patents are not limited. Second, the Board was incorrect in its view that “the relevant art is medical leads specifically for sacral neuromodulation,” J.A. 13, as the Medtronic patents’ claims are not limited to the sacral-nerve context and the shared specification, properly read, is not so limited either. Unable to characterize these errors as harmless, we vacate the Board’s decisions and remand.

Axonics at 11-12.