Benzinga | Sep 22, 2021 03:33PM EDT

Medtronic Reports US Patent & Trademark Office's Patent Trial, Appeal Board Affirmed Added 3 Patents IN Disupte With Axonics Over Intellectual Property For ITs Sacral Neuromdoulation Device Family

Medtronic (NYSE:MDT), the global leader in medical technology, today announced that the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office has affirmed an additional three patents in a dispute with Axonics over intellectual property for its sacral neuromodulation (SNM) device family, the InterStim(tm) systems. Today's decisions complete the review process initiated by Axonics to challenge the validity of the seven total patents involved in the IP infringement case brought by Medtronic. Cumulatively, the PTAB has now affirmed claims in all seven of the Medtronic patents.

The PTAB's latest decisions today affirmed all claims at issue in Medtronic's U.S. Patent Nos. 8,457,758 ('758) and 8,738,148 ('148); and affirmed claims 1-7, 16-18 and 22 of Medtronic's U.S. Patent No. 9,821,112 ('112), while invalidating claims 9-13 and 20. These patents relate to recharging technology. Medtronic is weighing its legal options with regard to the handful of invalidated patent claims in the '112 patent. The '758 patent and the '148 patent expire in April 2025, the '112 patent expires in April 2024.

Now that the IPR is complete -- including the PTAB's decision in September 2020 to reject without hearing the challenge to Medtronic U.S. patent No. 9,463,324 ('324) -- Medtronic will request that the U.S. District Court in the Central District of California lift the stay on the IP infringement case and resume proceedings. The decision on the '324 patent is final and not appealable. The '324 patent expires in April 2024.

All Medtronic patents affirmed by the PTAB have been in force for every sale Axonics has made to-date.

"Medtronic appreciates the Patent Trial and Appeal Board's efforts in this matter," said Brett Wall, executive vice president and president of the Neuroscience Portfolio at Medtronic. "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."