Nevro, Boston Scientific and Medtronic are all leaders in the medical devices field. Following heated opposition against the granting of the former’s EP 2 207 587, which began in 2019, the EPO Technical Boards of Appeal (3.4.01) has issued a revocation on the grounds of added matter (case ID: T 0291/19).
This is one of several Nevro patents which the EPO has revoked, although the company still has two patents awaiting upcoming proceedings. In 2022, Nevro and Boston Scientific settled all global litigation. The opposition proceedings had been stayed for several years due to an entitlement action filed by Boston Scientific.
No second success
EP 587 covers ‘multi-frequency neural treatments and associated systems and methods’, which medical professionals employ to treat patients with severe back pain. The associated device sends electric pulses to the spinal cord to prevent the brain receiving pain signals. Boston Scientific and Medtronic launched their opposition to the patent in 2019, which the EPO’s Opposition Division had initially rejected.
Both parties appealed to the Technical Boards of Appeal, and the EPO scheduled a hearing for 5 March 2024. Nevro then stated its intention not to attend. As such, on 16 February, the appeal board handed down a written decision to revoke the patent, concluding that “amendments made to claim one of both requests introduce subject matter which extends beyond the content of the application as filed”.
A spokesperson from Nevro says, “Nevro discontinued and withdrew from the matter because the particular patent was no longer strategically relevant. There may likely be more Board of Appeal decisions of a similar vein, but they have no practical or commercial importance to Nevro. The case was not related to the US litigation between Nevro and Boston.”
A month of events
EP 587 is the first patent in the family under parent patent EP 2 243 510. The Opposition Division also revoked EP 2 586 488 in January 2024. EP 2 630 984 is the first divisional, which the Opposition Division revoked for added matter. Nevro appealed but recently withdrew this, thus rendering the first-instance decision final.
A second divisional, EP 2 853 285, was revoked by the Opposition Division, with the EPO scheduling oral proceedings for EP 285 on 8 March. However, Nevro also withdrew its appeal here. The EPO had scheduled oral Opposition Division proceedings for a third divisional Nevro patent, EP 3 156 099, for 18 March. However, Nevro again withdrew its request for oral proceedings and the patent was revoked on 12 February.
Nevro, however, still has two chances to succeed at the Opposition Division. Parties are still fighting over EP 510, with the Boards of Appeal scheduling oral proceedings for 17 April, and the patent family of EP 2 819 742, which will take place on 2 May. The EPO has issued preliminary opinions, which are against and in favour of Nevro, respectively.
EPO new battleground
The two competitors had sued each other over patents in the US since 2016. In 2018, the dispute spilled over into Germany when Boston Scientific filed an entitlement action with the Munich Regional Court (case ID: 7 O 14659/18). According to JUVE Patent information, the case concerned the surrender of around 30 European patents from Nevro to Boston Scientific.
In 2021, a US court awarded Boston Scientific $20 million in damages because Nevro infringed two of its competitor’s patents. However, in 2022 Nevro and Boston Scientific reached a settlement. California-based Nevro granted Massachusetts-based Boston Scientific a global, non-exclusive, non-transferable licence to practice paresthesia-free therapy, while also promising not to sue for any features embodied in current Boston Scientific products for frequencies below 1,500 Hz.
In return, Boston Scientific granted Nevro a global, non-exclusive, non-transferable licence under Boston Scientific’s asserted patent families and a covenant not to sue. Under the settlement, Boston Scientific had to pay Nevro $85 million.
From Paris to Munich
Boston Scientific and the Munich-based patent attorney firm Vossius & Partner have a long-standing relationship. The patent attorneys file patents with the EPO extensively, having represented the US company for over 25 years. In this instance, Christoph Eisenmann and Arnold Asmussen led for the client, with additional support from in-house counsel Ali Atfi. The firm has also represented Boston Scientific in disputes against other companies, including Cook, over heart valves.
A team from the national full-service French firm August Debouzy led proceedings for Medtronic. Its mixed IP team has expertise across a broad range of industries, with dual-qualified partners Grégoire Desrousseaux and Lionel Martin taking the lead in this instance. Desrousseaux in particular has a long history with Medtronic, first working for the company in the ‘stent wars’ of the early 2000s.
A team from UK and German patent attorney firm Forresters led for Nevro, comprised of partners Charlotte Sunderland and Matt Barton. Both are qualified UK and European patent attorneys. Nevro has instructed Forresters on EPO matters since 2011.
For Boston Scientific Neuromodulation Corporation
Vossius & Partner (Munich): Christoph Eisenmann, Arnold Asmussen (both partner, both patent attorneys)
In-house (Massachusetts): Ali Atfi
For Medtronic
August Debouzy (Paris): Grégoire Desrousseaux, Lionel Martin (both partner)
For Nevro
Forresters (Munich/London): Charlotte Sunderland, Matt Barton (both partner, both patent attorney)
EPO Technical Board of Appeal 3.4.01, Munich
Paul Scriven (chairman); members: Thomas Zinke, Claes Almburg
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