Boston Scientific Neuromodulation Corp.

Patent Trials and Appeals Board

Jul 13, 2020

IPR2019-01216 (P.T.A.B. Jul. 13, 2020)

Trials@uspto.gov Paper 23
571-272-7822 Entered: July 13, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

NEVRO CORP.,
Petitioner,

v.

BOSTON SCIENTIFIC NEUROMODULATION CORP.,
Patent Owner.
____________

IPR2019-01216
Patent 7,177,690 B2
____________

Before ROBERT A. POLLOCK, SCOTT C. MOORE, and
RICHARD J. SMITH, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

JUDGMENT
Granting Request for Adverse Judgment After Institution of Trial
37 C.F.R. § 42.73(b)
IPR2019-01216
Patent 7,177,690 B2
2
I. INTRODUCTION
Nevro Corp. (“Petitioner”) filed a Petition requesting inter partes
review of claims 1–10, 23, and 32–38 of U.S. Patent No. 7,177,690 B2 (the
“’690 patent”). Paper 1 (“Petition”). Boston Scientific Neuromodulation
Corp. (“Patent Owner”) filed a Preliminary Response to the Petition. Paper
8. Patent Owner filed a statutory disclaimer of claim 23 in the ’690 patent
file on October 23, 2019, and along with its Preliminary Response.
Ex. 2001; Paper 8, 1–2. Claim 23 having been disclaimed by Patent Owner,
we instituted an inter partes review as to challenged claims 1–10 and 32–38
on January 21, 2020. Paper 9.
On May 29, 2020, Petitioner and Patent Owner filed a Joint
Stipulation of Modification for Due Dates 1–3 and 5–6 (“Stipulation”).
Paper 21. Pursuant to the Stipulation, the deadline (Due Date 1) for Patent
Owner to file its response and a motion to amend the ’690 patent was
extended to June 12, 2020. Id. at 2. However, Patent Owner did not file its
response or a motion to amend on or before June 12, 2020.
On June 30, 2020, Petitioner forwarded an e-mail to the Board
regarding the Patent Owner’s “failure to file a patent owner response or a
motion to amend,” detailing Petitioner’s efforts to communicate with Patent
Owner regarding the “failure to file,” and requesting a conference call with
the Board to discuss the matter. Ex. 3001. On July 6, 2020, Patent Owner
forwarded an e-mail to the Board requesting authorization to file a motion
seeking entry of an adverse judgment in the present inter partes review,
which we authorized on July 8, 2020. Id.
On July 8, 2020, Patent Owner filed a Request for Adverse Judgment
Pursuant to 37 C.F.R. § 42.73(b), asking the Board to “cancel the instituted
claims” (1–10 and 32–38) and “enter an adverse judgement against Patent
IPR2019-01216
Patent 7,177,690 B2
3
Owner and terminate this proceeding.” Paper 22, 2. Patent Owner also
represented that “[c]ounsel for Petitioner has stated that Petitioner does not
oppose the requested relief.” Id.
II. DISCUSSION
Under 37 C.F.R. § 42.73(b), “[a] party may request judgment against
itself at any time during a proceeding.” As permitted by this Rule, Patent
Owner has explicitly asked the Board to enter adverse judgment cancelling
claims 1–10 and 32–38 of the ’690 patent. Paper 22. Claims 1–10 and 32–
38 are the only claims at issue in this proceeding. See Paper 9, 1, 2, 29.
III. CONCLUSION
Having reviewed Patent Owner’s request for adverse judgment, we
determine that entry of judgment against Patent Owner cancelling claims 1–
10 and 32–38 of the ’690 patent is appropriate. Thus, we grant the request
for adverse judgment pursuant to 37 C.F.R. § 42.73(b). This constitutes a
final written decision pursuant to 35 U.S.C. § 318(a) cancelling claims 1–10
and 32–38 of the ’690 patent.
IV. ORDER
Accordingly, it is
ORDERED that adverse judgment is entered against Patent Owner
pursuant to 37 C.F.R. § 42.73;
FURTHER ORDERED that claims 1–10 and 32–38 of the ’690 patent
are cancelled;
FURTHER ORDERED that this constitutes a Final Written Decision
under 35 U.S.C. § 318(a);
FURTHER ORDERED that Patent Owner shall file a notice and copy
of this judgment in the files of any proceeding or action involving the ’690
patent; and
IPR2019-01216
Patent 7,177,690 B2
4
FURTHER ORDERED that, pursuant to 37 C.F.R. § 42.73(d)(3),
Patent Owner is precluded from taking any action inconsistent with this
judgment, including obtaining any patent claim that is not patentably distinct
from a cancelled claim in this proceeding.

FOR PETITIONER:
Ching-Lee Fukuda
Sharon Lee
Matthew Hopkins
SIDLEY AUSTIN LLP
clfukuda@sidley.com
sharon.lee@sidley.com
matthew.hopkins@sidley.com

Jon Wright
STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
jwright-ptab@skgf.com

FOR PATENT OWNER:
David A. Caine
Wallace Wu
ARNOLD & PORTER KAYE SCHOLER LLP
david.caine@arnoldporter.com
wallace.wu@arnoldporter.com