Dive Brief:

• The U.S. Patent Trial and Appeal Board (PTAB) upheld two Medtronic patents challenged by Axonics in written decisions published Thursday.
• Axonics tried to show claims made in two Medtronic patents related to sacral neuromodulation (SNM) implants are unpatentable. While Axonics won on some points, the PTAB ruled the company failed to show that all the challenged claims for either patent were unpatentable.
• Medtronic plans to ask the federal court in the Central District of California to lift the hold on its lawsuit against Axonics. In January, Boston Scientific agreed to buy Axonics for $3.7 billion.

Dive Insight:

Medtronic alleged Axonics’ rechargeable SNM system infringes the two patents in a legal complaint in 2019. In total, Medtronic claimed that Axonics’ technology infringes seven of its patents. 

Axonics sought to show certain Medtronic claims were unpatentable because they were anticipated or obvious. The PTAB, part off the U.S. Patent and Trademark Office, sided with Medtronic in its first rulings, but Axonics persuaded the U.S. Court of Appeals to cancel the decisions because the board’s “refusal to consider the new arguments and evidence was erroneous.”

The appeals court told the PTAB to “consider the merits of Axonics’ responsive arguments and evidence.” Now, the board has completed its reassessment of Axonics’ claims about two of the Medtronic patents. 

In its original rulings in 2021, the PTAB found Axonics had failed to prove any of the challenged claims unpatentable. This week’s reassessment was more favorable for Axonics but still upheld the patentability of claims for each patent. The PTAB invalidated 10 of the 15 challenged claims in Medtronic’s 8,626,314 patent and found Axonics failed to show any of the 8,036,756 claims are unpatentable.

The ruling could clear the wider case to move forward. The U.S. District Court put proceedings on hold while the PTAB reassessed the patentability of the claims. With the reassessment complete, Medtronic plans to ask the federal court in the Central District of California to lift the hold and proceed to a jury trial on five patents that the board has ruled include patentable claims.

"It's now past time for Axonics to stand up in a court of law and take responsibility for its unauthorized use and infringement of Medtronic's intellectual property," Mira Sahney, Medtronic’s president of the pelvic health business in the neuroscience portfolio, said in a statement.

Axonics said in a Thursday statement it plans to seek review of the PTAB’s findings. The company may be part of Boston Scientific by the time the trial starts. Boston Scientific expects to close the acquisition in the first half of 2024, although antitrust experts recently told Bloomberg the U.S. Federal Trade Commission is likely to scrutinize the deal.

The ruling is the latest in the ongoing Medtronic-Axonics patent dispute. In February, Medtronic said it filed a complaint with the U.S. International Trade Commission to prevent Axonics from importing and selling products the medtech giant claims infringe on two of its patents related to the compatibility of implantable devices with MRI machines.