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Oct 28, 2019
Joe Bird is a lawyer specializing in patent litigation, and works for the firm Maynard Cooper & Gale. In this episode, he discusses the current lawsuit between Nevro and Boston Scientific for a high-frequency spinal cord stimulation device, he gives a general overview of patent law and how patents are enforced and litigated, and also discusses what this lawsuit means for the neurotech industry.
Top three takeaways:
[0:00] Ladan introduces the episode and the guest, Joe Bird, a lawyer who specializes in patent litigation.
[1:27] Bird mentions that he is a lawyer working for a firm in Birmingham and specializes in patent litigation, and discusses his previous experience working in law.
[3:54] Bird discusses the emerging neurotech industry and how patent litigation in this industry is emerging.
[5:37] Bird lays down the groundwork for understanding the lawsuit between Nevro and Boston Scientific
[6:45] Bird gives an overview of how patents are administered and how patent litigation is carried out
[8:00] Bird discusses high-frequency stimulation and how it makes the product unique
[9:40] Bird discusses how Boston Scientific is challenging Nevro’s patent and discusses the prior art involved. Prior art serves a very important purpose in patent claims.
[12:00] Bird discusses patent claims, how they are made, what the rules are behind making them, and how they are unique
[14:30] Bird discuss claim construction and how patents are enforced
[15:45] Bird discusses the patent claim in the Nevro litigation and what it says
[17:10] A problem found with the patent claim is: the phrase “an implantable signal generator configured to generate a signal” is ambiguous.
[19:45] Another problem with the patent claim is: “to generate a non-paresthesia producing therapy signal” is a phrase that is an area of indefiniteness. Bird asks, “Can you patent something that doesn’t create an effect?”
[21:50] Two things important in the process of getting a patent claim issued are saying a product has a certain structure/composition, or function. Uses chainsaw as example
[22:40] Bird states how the court did not like how Nevro’s claim pertained to the claimed effect of the product, rather than an aspect of the product itself.
[23:45] There are two kinds of patent claims: article of composition or structure of device (device claim), and method claims. Bird mentions how court found that wording of Nevro’s patent claim was not indefinite for a method claim.
[25:40] Strategy to enforce structure-based claim is different (and easier) than enforcing a method claim
[28:00] Some patent clients conceal information about the process/products, some info does not go into patent. Bird says it is important to include all information possible in the patent.
[30:13] How patents are distinguished, and how patents are checked to make sure there is no “patent overlap”
[31:25] What does this Nevro vs Boston Scientific lawsuit mean for the neurotech industry? (specifically, for spinal cord stimulation)
[32:00] Bird talks about how more successful products are more susceptible to patent litigation
[33:00] This “war” is just beginning, and those in the spinal cord stimulation industry should be aware that litigation such as this could be a very costly part of entering the market
[35:30] Bird is working on getting his yacht, and Ladan can visit him 😊
[36:00] Bird says “follow the money and you can tell where the controversies are going to be”. He says the more revenue goes toward a product and patent, the more counsel they need.
[39:00] The investment occurring in this industry would not occur without patent protection. Investors do not want to put money in a company unless the products can be protected.
[40:35] Bird discusses non-practicing entities, which include research institutions, but also companies that simply acquire patents and instigate lawsuits
[41:45] Be kind to your patent lawyer.