Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH

Trials@uspto.gov 	Paper No. 6
Tel: 571-272-7822 	Entered: February 13, 2020
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________
ADVANCED BIONICS, LLC,
Petitioner,
v.
MED-EL ELEKTROMEDIZINISCHE GERÄTE GMBH,
Patent Owner.
_______________
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_______________
Before WILLIAM M. FINK, Vice Chief Administrative Patent Judge,
LINDA E. HORNER and KALYAN K. DESHPANDE, Administrative
Patent Judges.
DESHPANDE, Administrative Patent Judge.
DECISION
Denying Institution of Inter Partes Review
35 U.S.C. § 314

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I. 	INTRODUCTION
Advanced Bionics, LLC (“Petitioner”) filed a Petition requesting an
inter partes review of claims 1, 3, 5, 6, 10, 11, 14, 16, and 20 of U.S. Patent
No. 8,634,909 (Ex. 1001, “the ’909 patent”). Paper 1 (“Pet.”). MED-EL
Elektromedizinische Geräte GmbH (“Patent Owner”) filed a Preliminary
Response. Paper 5 (“Prelim. Resp.”). We have authority under 35 U.S.C.
§ 314(a), which provides that an inter partes review may not be instituted
“unless . . . there is a reasonable likelihood that the petitioner would prevail
with respect to at least 1 of the claims challenged in the petition.” 	After
considering the Petition, Patent Owner’s Preliminary Response, and
associated evidence, we exercise our discretion to deny institution of inter
partes review under 35 U.S.C. § 325(d).
Related Matters
Petitioner and Patent Owner indicate that the ’909 patent is the subject
of MED-EL Elektromedizinische Geräte Ges.m.b.H et al. v. Advanced
Bionics LLC, Case No. 1:18-cv-01530-MN (D. Del), filed on October 3,
2018. Pet. 89; Paper 4.
The ’909 Patent
The ’909 patent relates to “implantable medical devices, and
specifically, to magnetic elements in such devices that allow for magnetic
resonance imaging.” Ex. 1001, 1:9–11. The ’909 patent discloses that a
typical cochlear hearing implant system includes an external magnet having
a conventional coin shape and a north-south magnetic dipole perpendicular
to the skin as well as an internal magnet having a coin shape and a north-
south magnetic dipole perpendicular to the skin. Id. at 1:14–22, 1:26–29.
According to the ’909 patent, interactions occur between the implant magnet

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and an applied external magnetic field when a patient undergoes Magnetic
Resonance Imaging (MRI) examination. Id. at 1:38–41. Such interactions
may displace the internal magnet or displace the internal implant housing,
which may damage adjacent tissue; reduce or remove the magnetization of
the internal magnet; or cause imaging artifacts in the MRI image. Id. at
1:43–53.
The ’909 patent discloses a magnetic arrangement for an implantable
system that includes a planar coil housing containing a signal coil. Id. at
2:14–18. The magnetic arrangement further includes a first attachment
magnet located within the plane of the coil housing so the first attachment
magnet is rotatable therein and has a magnetic dipole parallel to the plane of
the coil housing. Id. at 2:18–22. A side cross-sectional view of cochlear
implant 400 is shown in Figure 4(B):
Figure 4(B) illustrates that cochlear implant 400 has planar coil
housing 402 and first attachment magnet 401 located within the plane of coil
housing 402 and rotatable therein. Id. at 3:65–4:3. First attachment magnet
401 also has a magnetization direction with a magnetic dipole parallel to the
plane of coil housing 402. Id. at 4:4–5. External transmitter coil housing

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405 has second attachment magnet 404 with a similar magnetic dipole
parallel to the plane of coil housing 405. Id. at 4:5–8. According to the ’909
patent, the magnets may be disk shaped but “any shape could be
implemented so long as the magnetization is parallel to the coil housing and
the skin.” Id. at 6:3–6. The ’909 patent also discloses that disk-shape
magnets allow for rotation in only one plane but still can align well with the
field of a magnetic resonance scanner without the need to drill a recess into
the bone during implantation, which spherical magnets may require. Id. at
1:66–2:7, 6:45–50, 6:66–7:2.
The ’909 patent discloses that the arrangement of Figure 4(B) results
in attachment magnets 401, 404 self-orienting when external transmitter coil
housing 405 is placed on the skin of a patient. Id. at 4:5–12. In addition,
when a patient with the arrangement of Figure 4(B) undergoes an MRI, a
magnetization component of the internal attachment magnet is perpendicular
to the external magnetic field of magnetic resonance scanner. Id. at 4:19–25.
This causes the attachment magnet to turn around its axis to align with the
magnetization direction of the magnetic resonance scanner, which results in
no torque on the magnet and its coil housing or weakening of the magnetic
force of the attachment magnet. Id. at 4:25–28, 4:35–39.
Illustrative Claim
Petitioner challenges claims 1, 3, 5, 6, 10, 11, 14, 16, and 20 of the
’909 patent. Pet. 25–87. Claims 1 and 10 are the only independent claims
challenged. Claim 1 is illustrative of the challenged claims and is
reproduced below:
1. 	An implantable system for a recipient patient, the
implantable system comprising:

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a coil housing configured to be implanted under the
patient’s skin, the coil housing having a planar outer surface
configured to lie parallel to the patient’s skin and containing a
signal coil for transcutaneous communication of an implant
communication signal; and
a planar disc shaped first attachment magnet within the
coil housing, the first attachment magnet adapted to be rotatable
therein, having a magnetic dipole moment oriented across a
diameter of the first attachment magnet, and configured within
the coil housing such that the magnetic dipole moment remains
substantially parallel to the planar outer surface of the coil
housing when the first attachment magnet rotates for
transcutaneous magnetic interaction with a corresponding
second attachment magnet.
Ex. 1001, 7:44–60. Independent claim 10 is similar to claim 1 and further
recites a transmitter housing containing a second attachment magnet. Id. at
8:27‒47.

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The Alleged Grounds of Unpatentability and Evidence of Record
The information presented in the Petition sets forth proposed grounds
of unpatentability of claims 1, 3, 5, 6, 10, 11, 14, 16, and 20 of the ’909
patent under 35 U.S.C. § 103(a)1 as follows (see Pet. 25–87):2
Claim(s) Challenged 	35 U.S.C. § 	Reference(s)/Basis
1, 3, 5, 6, 10, 11, 14, 16,
20 103(a) 	Zimmerling,3 Charvin4
1, 3, 5, 6, 10, 11, 14, 16,
20 103(a) 	Chang,5 Zimmerling,
Schmid6
II. ANALYSIS
35 U.S.C. § 325(d)
Petitioner and Patent Owner present arguments about our discretion
under 35 U.S.C. § 325(d). Pet. 87–89; Prelim. Resp. 65–72. We address
this threshold issue first, and, determine that it is dispositive of our decision
of whether to institute inter partes review. For the foregoing reasons, we are
1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
Stat. 284, 287–88 (2011), amended 35 U.S.C. § 103 effective March 16,
2013. Because the application from which the ’909 patent issued was filed
before March 16, 2013, we refer to the pre-AIA version of § 103.
2 Petitioner supports its challenge with the Declaration of Frank G. Shellock,
Ph.D. Ex. 1002.
3 U.S. Pat. No. 6,838,963 B2, issued Jan. 4, 2005 (“Zimmerling,” Ex. 1003).
4 U.S. Pat. No. 7,266,208 B2, issued Sept. 4, 2007 (“Charvin,” Ex. 1004).
5 U.S. Pat. App. Pub. No. US 2009/0005836, published Jan. 1, 2009
(“Chang,” Ex. 1005).
6 U.S. Pat. No. 6,761,681 B2, issued July 13, 2004 (“Schmid,” Ex. 1006).

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persuaded by Patent Owner to exercise our discretion to deny institution of
inter partes review under 35 U.S.C. § 325(d).
1. 	Introduction
Section 325(d) provides that the Director may elect not to institute7 a
proceeding if the challenge to the patent is based on matters previously
presented to the Office. 35 U.S.C. § 325(d) states, in pertinent part,
In determining whether to institute or order a proceeding under
this chapter, chapter 30, or chapter 31, the Director may take
into account whether, and reject the petition or request because,
the same or substantially the same prior art or arguments
previously were presented to the Office.
Thus, 35 U.S.C. § 325(d) identifies two separate issues for the
Director to consider in exercising discretion to deny institution of review:
whether the petition presents to the Office the same or substantially the same
art previously presented to the Office, or whether the petition presents to the
Office the same or substantially the same arguments previously presented to
the Office. As discussed in detail below, the question of whether proffered
art or arguments are “the same or substantially the same” as art or arguments
previously presented to the Office is a highly factual inquiry, which may be
resolved by reference to the factors set forth in Becton, Dickinson.8
Under § 325(d), the art and arguments must have been previously
presented to the Office during proceedings pertaining to the challenged
patent. Previously presented art includes art made of record by the
7 The Board institutes trial on behalf of the Director. 37 C.F.R. § 42.4(a).
8 Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586,
Paper 8 (Dec. 15, 2017) (precedential as to § III.C.5, first paragraph)
(“Becton, Dickinson”).

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Examiner, and art provided to the Office by an applicant, such as on an
Information Disclosure Statement (IDS), in the prosecution history of the
challenged patent. The proceedings in which the art was previously
presented include, for example: examination of the underlying patent
application, reexamination of the challenged patent, a reissue application for
the challenged patent, and AIA post-grant proceedings involving the
challenged patent.
If the “same or substantially the same prior art or arguments
previously were presented to the Office,” then the Board’s decisions
generally have required a showing that the Office erred in evaluating the art
or arguments. See, e.g., Becton, Dickinson, Paper 8 at 24 (considering
whether the petitioner has pointed out sufficiently how the examiner erred in
its evaluation of the asserted prior art). If the petitioner fails to show that the
Office erred, the Director may exercise his discretion not to institute inter
partes review. Id. (exercising discretion where “Petitioner has not pointed to
error by the Examiner”).
Thus, under § 325(d), the Board uses the following two-part
framework: (1) whether the same or substantially the same art previously
was presented to the Office or whether the same or substantially the same
arguments previously were presented to the Office; and (2) if either
condition of first part of the framework is satisfied, whether the petitioner
has demonstrated that the Office erred in a manner material to the
patentability of challenged claims.9 If a condition in the first part of the
9 An example of a material error may include misapprehending or
overlooking specific teachings of the relevant prior art where those teachings
impact patentability of the challenged claims. Another example may include

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framework is satisfied and the petitioner fails to make a showing of material
error, the Director generally will exercise discretion not to institute inter
partes review. If reasonable minds can disagree regarding the purported
treatment of the art or arguments, it cannot be said that the Office erred in a
manner material to patentability. At bottom, this framework reflects a
commitment to defer to previous Office evaluations of the evidence of
record unless material error is shown.
2. 	Becton, Dickinson Factors
We recognize that restating the framework in its statutory language
does not address challenging factual questions, such as when a ground of
unpatentability presents “substantially the same prior art or arguments”
previously presented to the Office. In this regard, the Becton, Dickinson
factors10 provide useful insight into how to apply the framework under
35 U.S.C. § 325(d). Becton, Dickinson specifically addressed the situation
in which the petition relied on the same or substantially the same art or
an error of law, such as misconstruing a claim term, where the construction
impacts patentability of the challenged claims.
10 Becton, Dickinson identifies the following non-exclusive factors: (a) the
similarities and material differences between the asserted art and the prior art
involved during examination; (b) the cumulative nature of the asserted art
and the prior art evaluated during examination; (c) the extent to which the
asserted art was evaluated during examination, including whether the prior
art was the basis for rejection; (d) the extent of the overlap between the
arguments made during examination and the manner in which petitioner
relies on the prior art; (e) whether petitioner has pointed out sufficiently how
the examiner erred in its evaluation of the asserted prior art; and (f) the
extent to which additional evidence and facts presented in the petition
warrant reconsideration of the prior art or arguments. See Becton, Dickson,
Paper 8 at 17–18 (§ III.C.5, first paragraph).

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arguments previously presented during initial examination of the challenged
patent. The factors set forth in Becton, Dickinson should be read broadly,
however, to apply to any situation in which a petition relies on the same or
substantially the same art or arguments previously presented to the Office
during a proceeding pertaining to the challenged patent. For example,
although Becton, Dickinson factors (a) and (b) pertain to art evaluated
“during examination,” these factors more broadly provide guidance as to
whether the art presented in the petition is the “same or substantially the
same” as the prior art previously presented to the Office during any
proceeding, including prior AIA proceedings. Similarly, although Becton,
Dickinson factor (d) pertains to arguments made “during examination,” this
factor more broadly provides guidance as to whether the arguments
presented in the petition are “the same or substantially the same” as the
arguments previously presented to the Office during any proceeding.
If, after review of factors (a), (b), and (d), it is determined that the
same or substantially the same art or arguments previously were presented to
the Office, then factors (c), (e), and (f) relate to whether the petitioner has
demonstrated a material error by the Office. Factor (c) focuses on the record
developed by the Office in previously reviewing the art or arguments. It
informs, therefore, the petitioner’s showing under factors (e) and (f), which
focus on the petitioner’s evidence of previous Office error regardless of the
context in which the same or substantially the same art or arguments were
previously presented. For example, if the record of the Office’s previous
consideration of the art is not well developed or silent, then a petitioner may
show the Office erred by overlooking something persuasive under factors (e)
and (f). On the other hand, if the alleged error is a disagreement with a

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specific finding of record by the Office, then ordinarily the petitioner’s
required showing of material error must overcome persuasively that specific
finding of record. That is, although Becton, Dickinson factor (c) evaluates
“the extent to which the asserted art was evaluated during examination,
including whether the prior art was the basis for rejection,” the focus should
be on the record when determining whether the Office erred in evaluating
such art or arguments.
3. 	Application of § 325(d) to the Current Facts
Petitioner argues that we should exercise our discretion to institute
inter partes review because evaluation of “[t]he Becton[,] Dickinson factors
all weigh in favor of institution under 35 U.S.C. § 325(d).” Pet. 87. Patent
Owner contends that we should exercise our discretion to deny institution of
inter partes review because the “prior art relied on by Petitioner was
previously considered and distinguished during prosecution of the ‘909
Patent and the arguments presented by Petitioner add nothing new from what
was already known and considered by the Examiner during prosecution.”
Prelim. Resp. 65. We apply the framework set forth above to the facts of the
current proceeding to determine whether to exercise our discretion to
institute or deny institution of inter partes review.
a. Prosecution history of the ’909 patent
U.S. Patent Application No. 13/091,352 (“the ’352 application”),
which claims priority to U.S. Provisional Application No. 61/327,158,
issued as the ’909 patent. Ex. 1001, codes (10), (21), (60); Pet. 17. The
’352 application included original independent claim 1, and dependent
claims 2–17. Ex. 1007, 17–19. The Examiner rejected original claims 1–3

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and 5–17 as anticipated by Zimmerling,11,12 and rejected original claim 4 as
obvious over Zimmerling, relying predominantly on Figures 8A–8C and the
description of Figures 8A–8C. Id. at 60–62.
The Applicant then amended original independent claim 1 to require
that the planar coil housing have “parallel flat planar outer surfaces lying in
the plane of the patient’s skin,” and argued the spherical magnet
embodiment of Zimmerling did not meet this limitation because “one side of
the implant housing must substantially protrude out from the main body of
the implant housing.” Ex. 1007, 71, 75. The Examiner rejected amended
claim 1 and dependent claims 2, 3, and 5–17 as anticipated by Zimmerling,
and dependent claim 4 as obvious over Zimmerling, relying again on Figures
8A–8C and the description of these figures, and further on Figure 9. Id. at
82–86. The Examiner found that “an external magnetic field is applied by
laying another magnet over [the internal] magnet” and determined that
Applicant’s argument that Zimmerling would cause a protrusion in the
patient’s skin is unpersuasive because there is “nothing in the disclosure of
Zimmerman [sic] to suggest that a spherical or other configuration of [the]
magnet would cause a protrusion to appear in the patient’s skin.” Id. at 82–
83.
The Applicant then further amended claim 1 to require the “coil
housing configured to be implanted under the patient’s skin” that has “a
11 The Examiner found that Zimmerling is prior art under 35 U.S.C.
§ 102(b). Ex. 1007, 60.
12 Dr. Martin Zimmerling is the first named inventor of both the ’909 patent
and the submitted Zimmerling reference. Prelim. Resp. 2. Additionally,
both the ’909 patent and Zimmerling list MED-EL Elektromedizinische
Geräte GmbH as the assignee. See Ex. 1001, code (73); Ex. 1003, code (73).

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planar outer surface configured to lie parallel to the patient’s skin.” Id. at
95. Claim 1 was also amended to require that the first attachment magnet
has a magnetic dipole “moment oriented across a diameter of the first
attachment magnet, and configured within the coil housing such that the
magnetic dipole moment remains substantially parallel to the planar outer
surface.” Id. The Applicant argued that amended claim 1 requires that “an
implantable magnet that remains substantially parallel to an outer planar
surface of its housing (and thus also to the patient’s skin) when the magnet
rotates within the housing,” whereas Zimmerling discloses a magnet whose
moment “does not remain substantially parallel to the outer surface of the
housing when the magnet rotates.” Id. at 101.
The Examiner then allowed the claims, including independent claims
1 and 10, noting that the claims are “allowable over the prior art for the
reasons argued by the Applicant.” Id. at 117–118.
b. Whether the same or substantially the same art previously
was presented to the Office
In Ground 1, Petitioner relies on the combination of Zimmerling and
Charvin. Pet. 26. In Ground 2, Petitioner relies on the combination of
Chang, Zimmerling, and Schmid. Id. As discussed above, the Examiner
rejected original claims 1–3 and 5–17 as anticipated by Zimmerling, and
original claim 4 as obvious over Zimmerling. See Section II.A.3.a.
Petitioner and Patent Owner agree that Zimmerling was discussed during
prosecution. Pet. 88; Prelim. Resp. 66. Accordingly, it is not disputed that
Zimmerling is the same art previously presented to the Office.
Petitioner and Patent Owner agree that Charvin, Chang, and Schmid
were not were not of record during prosecution. Pet. 87; Prelim. Resp. 70.

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Thus, neither Charvin, nor Chang, nor Schmid is the “same” art previously
presented to the Office.
Patent Owner asserts that each of Charvin, Chang, and Schmid is
“substantially the same” as Zimmerling. Prelim. Resp. 70. Petitioner
argues, however, that the Examiner did not cite Zimmerling for the same
purposes as Petitioner relies on Charvin and Schmid. Pet. 87. Petitioner
also asserts that both grounds of unpatentability alleged in the Petition
combine Zimmerling with references not before the Examiner to create a
distinct combination not considered by the Examiner, and both grounds rely,
at least in part, on Zimmerling as a secondary reference. Id. at 88.
Beginning with Ground 1, Petitioner alleges that Zimmerling
discloses all of the limitations of independent claim 113 except for the
limitations “a planar disc shaped first attachment magnet within the coil
housing” and “the magnetic dipole moment remains substantially parallel to
the planar outer surface of the coil housing when the first attachment magnet
rotates.” Pet. 27‒61. Petitioner alleges that Charvin alone discloses these
two limitations. Id. at 44–46, 48–49.14
13 Petitioner alleges Zimmerling discloses all of the limitations of
independent claims 1 and 10, and dependent claims 3, 5, 6, 10, and 20.
Pet. 25–61. We recognize that Petitioner does not allege that Zimmerling
alone discloses the additional limitations of claims 11, 14, and 16. Id.
14 In addition to alleging that Charvin discloses these two limitations,
Petitioner often supplements its citations to Zimmerling with additional
citations to Charvin, asserting that Charvin also discloses the same
limitations of the challenged claims. See id. at 37, 39‒40, 42‒44, 47‒48,
50‒52, 54‒55, 61. We do not understand, however, Petitioner to rely on
Charvin as the primary reference, and Petitioner does not propose modifying
Charvin with the teachings of Zimmerling.

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For these two limitations, we review whether Petitioner relies on
Charvin in substantially the same manner as the Examiner cited Zimmerling
during prosecution such that Charvin discloses substantially the same
information as Zimmerling in relevant part. As to the first limitation,
Petitioner relies on Charvin for disclosure of “a planar disc shaped first
attachment magnet within the coil housing,” arguing that Charvin discloses
flat, circular magnets housed within separate casings. 	Pet. 44‒46 (citing
Ex. 1004, 4:66–5:1, 6:34–39, 6:58–6:61, Figs. 4, 6, 9). During prosecution,
the Examiner found that Zimmerling discloses this limitation. See Ex. 1007,
84 (“Zimmerling discloses (Figures 8-9) . . . a planar disc shaped (col. 9,
lines 34-47) first attachment magnet (805/901) within the plane of the coil
housing”); see Prelim. Resp. 68–69. As such, both Charvin and Zimmerling
disclose substantially the same magnet shape and configuration, thereby
disclosing substantially the same information already considered by the
Office. Thus, as to this first limitation, Charvin is substantially the same art
as Zimmerling.
As to the second limitation, Petitioner relies on Zimmerling for
disclosure of “a freely turnable first attachment magnet” and relies on
Charvin for disclosure of “a first attachment magnet oriented such that the
magnetic dipole moment is substantially parallel to the outer surface of the
coil housing and the skin when it is in transcutaneous magnetic interaction
with a corresponding second attachment magnet.” Pet. 48‒49 (citing
Ex. 1002 ¶¶ 147‒149; Ex. 1004, 2:47‒55, 6:33‒44, Fig. 4).15 During
15 Petitioner does not allege that Charvin discloses a first attachment magnet
that rotates. Pet. 48. Rather, Petitioner argues that Zimmerling discloses a

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prosecution, the Examiner found that magnetized part 802 of Zimmerling’s
embodiment shown in Figures 8A and 8B met the limitation for a magnetic
dipole parallel to the plane of the coil housing. Ex. 1007, 84 (“The
low-reluctance part 802 is thus magnetized along its axis, generating a
magnetic dipole parallel to the symmetry axis 815.” (quoting Ex. 1004,
8:15‒54)); Prelim. Resp. 69. The Examiner allowed the claims only after
they had been amended to specifically require that the first attachment
magnet have a magnetic dipole moment “oriented across a diameter of the
first attachment magnet, and configured within the coil housing such that the
magnetic dipole moment remains substantially parallel to the planar outer
surface of the coil housing when the first attachment magnet rotates for
transcutaneous magnetic interaction with a corresponding second attachment
magnet.” Ex. 1007, 95, 118‒119; Prelim. Resp. 69. Petitioner does not rely
on Charvin to disclose a magnet with a magnetic dipole moment that
remains substantially parallel to the planar outer surface of the coil housing
when the magnet rotates. Specifically, Petitioner does not rely on Charvin to
disclose a magnet that rotates. Pet. 48. Thus, Petitioner relies on Charvin in
the same manner as the Examiner relied on Zimmerling during prosecution.
Therefore, as to this second limitation, Charvin is substantially the same art
as Zimmerling.
Accordingly, we are not persuaded by Petitioner that, because Charvin
was not of record during prosecution of the ’909 patent, there are
“significant and material differences between the prior art asserted in this
Petition and the prior art evaluated during prosecution.” Pet. 87. Rather,
first attachment magnet that rotates, and relies on the combination of
Zimmerling and Charvin to meet the entire limitation. Id. at 48–49.

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because Ground 1 relies on at least Zimmerling to disclose almost all of the
limitations of the claims, and relies on Charvin solely to disclose limitations
that the Examiner previously found disclosed in Zimmerling in the same
manner that the Examiner relied on Zimmerling, based on the totality of the
evidence presented, we agree with Patent Owner that Ground 1 includes
only “the same or substantially the same prior art that was previously
presented to the Office.” See Prelim. Resp. 66–70.
Turning to Ground 2, Petitioner alleges that Chang and/or Schmid
discloses the limitations of several of the challenged claims, and further
alleges that Zimmerling discloses all of the limitations of the challenged
claims except for the limitations “a planar disc shaped first attachment
magnet within the coil housing” and “the magnetic dipole moment remains
substantially parallel to the planar outer surface of the coil housing when the
first attachment magnet rotates.” Pet. 61‒87. Petitioner alleges that Chang
and Schmid disclose these limitations, respectively. Id. at 70–71, 73–75.
Although Petitioner asserts that a person having ordinary skill in the art
would have found it obvious to modify Chang with the teachings of
Zimmerling and Schmid, Petitioner also admits that “Chang, Zimmerling,
and Schmid all disclose a similar system in which external and internal
components are magnetically attracted to each other to maintain alignment
when transmitting signals through the skin.” Id. at 61‒62.
We turn to the two additional limitations for which the Petitioner does
not cite to Zimmerling, and evaluate whether Petitioner relies on Chang or
Schmid in substantially the same manner as the Examiner cited Zimmerling
during prosecution. As to the first limitation, the Examiner found that
Zimmerling discloses the same limitation for which Petitioner relies on

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Chang. See id. at 70–71; Ex. 1007, 84. As such, both Chang and
Zimmerling disclose substantially the same magnet shape and configuration,
thereby disclosing substantially the same information already considered by
the Office. Thus, as to this first limitation, Chang is substantially the same
art as Zimmerling.
As to the second limitation, Petitioner relies on Zimmerling for
disclosure of “a freely turnable first attachment magnet” and relies on
Schmid for disclosure of “a first attachment magnet oriented such that the
magnetic dipole moment is substantially parallel to the outer surface of the
coil housing and the skin when it is in transcutaneous magnetic interaction
with a corresponding second attachment magnet.” Pet. 73‒75 (citing
Ex. 1002 ¶¶ 230‒232; Ex. 1006, 1:65‒2:2, Figs. 2A, 3).16 During
prosecution, the Examiner found that magnetized part 802 of Zimmerling’s
embodiment shown in Figures 8A and 8B met the limitation for a magnetic
dipole parallel to the plane of the coil housing. Ex. 1007, 84 (“The
low-reluctance part 802 is thus magnetized along its axis, generating a
magnetic dipole parallel to the symmetry axis 815.” (quoting Ex. 1004,
8:15‒54)); Prelim. Resp. 69. The Examiner allowed the claims only after
they had been amended to specifically require that the first attachment
magnet have a magnetic dipole moment “oriented across a diameter of the
first attachment magnet, and configured within the coil housing such that the
magnetic dipole moment remains substantially parallel to the planar outer
16 Petitioner does not allege that Schmid discloses a first attachment magnet
that rotates. Pet. 73. Rather, Petitioner argues that Zimmerling discloses a
first attachment magnet that rotates, and relies on the combination of Chang,
Zimmerling, and Schmid to meet the entire limitation. Id. at 73–75.

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surface of the coil housing when the first attachment magnet rotates for
transcutaneous magnetic interaction with a corresponding second attachment
magnet.” Ex. 1007, 95, 118‒119; Prelim. Resp. 69. Petitioner does not rely
on Schmid to disclose a magnet with a magnetic dipole moment that remains
substantially parallel to the planar outer surface of the coil housing when the
magnet rotates. Specifically, Petitioner does not rely on Schmid to disclose
a magnet that rotates. Pet. 73. Thus, Petitioner relies on Schmid in the same
manner as the Examiner relied on Zimmerling during prosecution. That is,
as far as the patentability of the ’909 patent, Schmid is not materially
different from Zimmerling. Therefore, as to this second limitation, Schmid
is substantially the same art as Zimmerling.
Accordingly, we are not persuaded by Petitioner that because Chang
and Schmid were not of record during prosecution of the ’909 patent, there
are “significant and material differences between the prior art asserted in this
Petition and the prior art evaluated during prosecution.” Pet. 87. Rather,
Petitioner presents Zimmerling in the same manner in Ground 2 as it did in
Ground 1. As such, based on the totality of the evidence presented, we agree
with Patent Owner that Ground 2 includes only the “same or substantially
the same prior art that was previously presented to the Office.” See Prelim.
Resp. 66–70.
Therefore, because it is undisputed that Zimmerling was evaluated
during prosecution of the ’909 patent, Petitioner extensively relies on
Zimmerling in both of the asserted grounds of unpatentability, and Charvin,
Chang, and Schmid disclose information already considered by the Office,
we determine that the Petition presents “the same or substantially the same
prior art that was previously presented to the Office.”

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c. 	Whether the same or substantially the same arguments
previously were presented to the Office
As discussed above, we determine that the “same or substantially the
same prior art” previously was presented to the Office. Accordingly, the
first condition of the first part of the framework is satisfied, and we need not
reach whether the “same or substantially the same arguments” previously
were presented to the Office. See Section II.A.1.
d. Whether Petitioner sufficiently demonstrates that the Office
erred
Having determined that the “same or substantially the same prior art”
previously were presented to the Office, we evaluate whether Petitioner
sufficiently demonstrates that the Office erred. See Section II.A.1.
Petitioner argues that the Examiner erred in evaluating the prior art
because art, such as Charvin and Schmid, “disclosing a dipole parallel to the
skin was not in front of the examiner during prosecution.” Pet. 88.
Specifically, Petitioner argues that the Examiner erred by not reviewing
prior art that discloses “internal planar disk shaped magnets, in the context
of implanted cochlear/hearing implants, with this supposedly ‘changed’
alignment of the magnetic dipole moment.” Id. at 3.
Patent Owner argues that the Examiner did not err because the
Examiner determined that Figures 8A and 8B of Zimmerling “met the
claimed requirement for a magnetic dipole parallel to the plane of the coil
housing,” and the claims were amended to distinguish over Zimmerling by
requiring the first attachment magnet to “have a magnetic dipole moment
oriented across its diameter” and the “magnetic dipole moment remains
substantially parallel to the planar outer surface of the coil hosing when the
first attachment magnet rotates for transcutaneous magnetic interaction with

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a corresponding second attachment magnet.” Prelim. Resp. 69–71
(emphasis added) (citing Ex. 1007, 95, 118–19). Accordingly, Patent Owner
argues that “Zimmerling [] was evaluated and distinguished during
prosecution of the ’909 Patent.” Id. at 71.
We agree with Patent Owner. As discussed above, the Examiner
relied on Zimmerling for disclosure of a first attachment magnet “having a
magnetic dipole parallel to the plane of the coil housing.” Ex. 1007, 84
(citing Ex. 1003, 8:15‒54); see Prelim. Resp. 70. Petitioner must
demonstrate that the Examiner erred in the evaluation of the prior art, for
example, by showing that the Examiner misapprehended or overlooked
specific teachings in the relevant prior art such that the error by the Office
was material to the patentability of the challenged claims. Petitioner argues
that Charvin17 and Schmid18 disclose a first attachment magnet with dipole
moments that remain parallel to the coil housing, and, therefore, the patient’s
skin, when the first attachment magnet is in transcutaneous magnetic
interaction with a corresponding second attachment magnet. Pet. 3 (citing
Ex. 1004, 6:39–44; Ex. 1006, 1:65–2:2). Petitioner has not persuaded us
that the Examiner erred by failing to consider Charvin and Schmid. The
Examiner allowed the claims over the teachings of Zimmerling in light of
17 Petitioner does not allege that Charvin discloses a first attachment magnet
that rotates. Pet. 48. Rather, Petitioner argues that Zimmerling discloses a
first attachment magnet that rotates, and relies on the combination of
Zimmerling and Charvin to meet the entire limitation. Id. at 48–49.
18 Petitioner does not allege that Schmid discloses a first attachment magnet
that rotates. Pet. 73. Rather, Petitioner argues that Zimmerling discloses a
first attachment magnet that rotates, and relies on the combination of Chang,
Zimmerling, and Schmid to meet the entire limitation. Id. at 73–75.

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Applicant’s arguments that Zimmerling does not disclose an implantable
magnet having a dipole moment that remains parallel to the coil housing and
the patient’s skin as the magnet rotates. Id. at 118–119. Petitioner does not
argue that Charvin or Schmid cure this deficiency in Zimmerling. The fact
that Petitioner presented additional references that, similar to Zimmerling,
also disclose an implantable magnet having a magnetic dipole parallel to the
plane of the coil housing does not persuade us that the Examiner materially
erred in determining the patentability of the challenged claims.
Accordingly, we determine that the “same or substantially the same
art previously were presented to the Office” and Petitioner has not
demonstrated that the Examiner erred when considering the prior art or
arguments.
Conclusion
For the foregoing reasons, we exercise our discretion to deny
institution of inter partes review under 35 U.S.C. § 325(d).
III. ORDER
After due consideration of the record before us, and for the foregoing
reasons, it is:
ORDERED that the Petition is denied as to all challenged claims, and
no trial is instituted.

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For PETITIONER:
Marcus Sernel
Hari Santhanam
Daniel Sherer
Joel Merkin
KIRKLAND & ELLIS LLP
msernel@kirkland.com
hari.santhanam@kirkland.com
daniel.sherer@kirkland.com
jmerkin@kirkland.com
For PATENT OWNER:
Robert Asher
Kathryn Noll
SUNSTEIN KANN MURPHY & TIMBERS LLP
rasher@sunsteinlaw.com
knoll@sunsteinlaw.com