A federal judge in California last week tipped his hand in a tentative ruling, indicating that he may invalidate five of the seven Nevro patents at issue in the case but remained unclear about a number of other issues.
Judge Vince Chhabria of the U.S. District Court for Northern California ruled July 5 that any claims in the patents describing a non-paresthesia-producing therapy effect are indefinite, “which means that all claims using such language are invalid.” That would nix five of the Nevro patents outright, leaving a pair of claims each for the remaining two patents, according to court documents.
“There appears to be something else fundamentally wrong with many of the claims,” Chhabria wrote, “beyond the indefiniteness associated with ‘non-parasthesia producing'” in the patents authored by Nevro co-founder and former CEO Konstantin Alataris.
“The inventive concept appears to be based almost exclusively in the software. That is, the invention is a system in which software is used to do something different with signal generators than what was done before – the software enables the clinician to program the signal generator to send high-frequency signals, whereas in prior systems the software enabled the clinician to program the signal generator to send lower-frequency signals. Yet, in most of the asserted system claims, there is no mention of the programming function – no mention of the one aspect of the system that is actually inventive,” he wrote.
That would mean that the Alataris patents fail to claim “the subject matter which the applicant regards as his invention,” Chhabria wrote, which in turn would mean that “any claim that failed to include the programming aspect of the system would be invalid for that reason as well” – including the first claim of one of the two remaining patents.
And although Nevro could be due summary judgement of infringement and for anticipation for the two claims remaining in one of those patents, Boston Scientific could also be entitled to summary judgment of non-infringement of those claims.
Nevro could also win summary judgment of infringement for the final claim remaining in the last patent, but the judge cited his uncertainty about Boston’s chances for summary judgment because the claim might not meet one of its elements in writing that that a trial may be necessary to decide that and other issues.
Chhabria gave both sides until July 11 to file post-hearing briefs, according to the documents.
