NOTE: This disposition is nonprecedential.

 

United States Court of Appeals 

for the Federal Circuit ______________________ 

BOSTON SCIENTIFIC NEUROMODULATION 

CORP.,

Appellant

v.

NEVRO CORP.,

Appellee

______________________ 

2021-1777

______________________ 

Appeal from the United States Patent and Trademark 

Office, Patent Trial and Appeal Board in No. IPR2019-

01340.

______________________ 

Decided: March 18, 2022

______________________ 

PRATIK A. SHAH, Akin Gump Strauss Hauer & Feld 

LLP, Washington, DC, argued for appellant. Also represented by Z.W. JULIUS CHEN; MICHAEL P. KAHN, New York, 

NY; DAVID A. CAINE, Arnold & Porter Kaye Scholer LLP, 

Palo Alto, CA; MATTHEW WOLF, Washington, DC. 

 RICHARD CRUDO, Sterne Kessler Goldstein & Fox, 

Washington, DC, argued for appellee. Also represented by 

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2 BOSTON SCIENTIFIC v. NEVRO CORP. 

NAVEED HASAN, JON WRIGHT; CHING-LEE FUKUDA, Sidley 

Austin LLP, New York, NY. 

 ______________________ 

Before MOORE, Chief Judge, CHEN and HUGHES, Circuit 

Judges. 

HUGHES, Circuit Judge. 

Boston Scientific Neuromodulation Corp. appeals a decision of the Patent Trial and Appeal Board invalidating all 

claims of U.S. Patent No. 6,381,496 as obvious. Because 

substantial evidence supports the Board’s factual findings, 

we affirm.

I 

U.S. Patent No. 6,381,496 relates to implant devices 

that allow users to modify therapy parameters. For example, a spinal cord stimulation device uses parameters like

amplitude, width, and frequency to create electric pulses 

that the device sends to a patient’s spinal cord. The ’496 patent discloses a device that can switch from one set of values for these operational parameters to another. Claim 1 is 

representative:

1. An implant device comprising:

an implantable case;

electronic circuitry housed within said implantable 

case for performing a prescribed function, the electronic circuitry including

a control register wherein a control set of 

operational parameters is stored,

a controller that controls the operation of 

the implant device as a function of the control set of operational parameters stored in 

the control register, and

a plurality of sets of operational parameters; and

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BOSTON SCIENTIFIC v. NEVRO CORP. 3

selection means for selecting one of the plurality of 

sets of operational parameters as the control set of 

operational parameters that is stored in the control 

register;

whereby the operation of the implant device may 

be changed through selection of a different set of 

operational parameters.

’496 patent at 19:47–64.

Nevro Corp. petitioned for inter partes review of all 

claims of the ’496 patent, asserting seven obviousness 

grounds. The Board instituted review, agreed with all asserted grounds, and concluded that the ’496 patent is unpatentable as obvious. Boston Scientific appeals. We have 

jurisdiction under 28 U.S.C. § 1295(a)(4)(A).

II

We review the ultimate conclusion of obviousness de 

novo and subsidiary fact findings for substantial evidence. 

In re Ethicon, Inc., 844 F.3d 1344, 1349 (Fed. Cir. 2017). 

Boston Scientific argues that the Board misconstrued 

the term “set of operational parameters” by allowing a set 

to contain only one parameter even though the patent uses 

the plural term “parameters.” Boston Scientific asserts 

that this error is material because the prior art reference 

Shelton (U.S. Patent No. 5,387,228) teaches modifying only 

a single parameter. Boston Scientific further argues that 

Shelton does not teach the ’496 patent’s “selecting one of 

the plurality of sets of operational parameters as the control set” limitation.

While Nevro disagrees with Boston Scientific’s arguments about Shelton, it tells us we should instead focus on 

the prior art reference Nappholz (U.S. Patent 

No. 5,720,770). According to Nevro, Nappholz discloses

modifying multiple parameters—rendering any claim 

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4 BOSTON SCIENTIFIC v. NEVRO CORP. 

construction error harmless—and teaches the disputed 

limitation.

We agree with Nevro. Substantial evidence supports 

the Board’s factual finding that Nappholz teaches “selecting one of the plurality of sets of operational parameters as 

the control set.” Nappholz’s claims 10 and 27 teach a system that switches between “first and second therapies” in 

response to a change in conditions. Nappholz at 16:1–12, 

17:13–22. And Nappholz’s figure 7 depicts a flowchart in 

which the device detects a change in the user’s activity 

level, asks the user what activity she is performing (e.g., 

sleeping, waking up, exercising), and then adjusts the operational parameters accordingly. See id. at 9:19–29. These 

disclosures constitute substantial evidence supporting the 

Board’s finding that Nappholz teaches “a plurality of sets 

of operational parameters” and means for selecting one set 

as the control set. 

We also do not need to determine whether a “set of operational parameters” must contain more than one parameter because Nappholz teaches sets containing more than 

one parameter. See id. at 15:14–25 (claiming means for exchanging information with an implantable cardiac device, 

“said information including . . . commands for modifying [a 

plurality of] programmable parameters”). We affirm the 

Board’s decision.

AFFIRMED

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