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23 September 2021AmericasAlex Baldwin

PTAB affirms validity of three Medtronic patents in Axonics suit

The US Patent Trial and Appeal Board (PTAB) has confirmed the validity of three remaining Medtronic patents challenged by rival medical device manufacturer Axonics.

The PTAB upheld the validity of all claims at issue in Medtronic’s US Patents 8,738,148, and 8,457,758, and invalidated claims 9-13 and 20 of its 9,821,112 patent, according to decisions published on Wednesday, September 22.

The three patents relate to Medtronic’s system sacral neuromodulation (SNM) bladder and bowel control device InterStim.

Medtronic had initially sued Axonics for infringing seven of its patents in 2019. Axonics decided to challenge the patents with an inter partes review (IPR) at the PTAB, halting the infringement proceedings.

The three decisions published yesterday complete the review process, with the validity of all patents at issue upheld.

Medtronic will now request that the US District Court for the Central District of California lift the stay on its patent infringement case against Axonics, according to a statement released by the company.

Brett Wall, executive vice president and president of the Neuroscience Portfolio at Medtronic said: “Medtronic appreciates the Patent Trial and Appeal Board's efforts in this matter. We are pleased with the outcome of the review process and look forward to our day in court to protect the proprietary technology that brings SNM therapy to patients around the world.”

Infringement and validity

Medtronic filed a lawsuit against Axonics with the California court in November 2019, alleging that the Axonics rival SNM system infringed seven of Medtronic’s patents.

In response, Axonics filed for an IPR of all seven of the patents in March 2020, pausing the infringement litigation.

In September 2020, the PTAB rejected the challenge to Medtronic’s US patent 9,463,324 without a hearing.

Last week, the PTAB affirmed claims at issue in Medtronics US patents 8,036,756 and 8,626,314, but only upheld claims 7 of the challenged claims in the 7,774,069 patent. Claims 5, 6, 8 and 9 of the ‘069 patent were ruled to be invalid.

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