Docket No. 2015-1672, -1673 (IPR2013-00507 and -00508)
MOORE, WALLACH, TARANTO
November 9, 2016
Brief Summary: IPR507 decision cancelling certain claims for obviousness affirmed. IPR508 decision remanded as to claims 16 and 17 because “Medtronic’s [IPR508] petition did not notify NuVasive of the assertions…that later became critical”, and NuVasive was not provided an opportunity to respond.
Summary: NuVasive appealed PTAB IPR (filed by Medtronic and settled) decisions cancelling all but claim 18 of US 8,187,334 relating to implants for spinal fusion surgery. IPR507 cancelled claims 1-5, 10, 11, 14, 15 and 18-28. IPR508 involved the same claims as IPR507 except that IPR508 additionally included claims 16 and 17. For both IPRs, the Board found that Figure 18 of prior art reference US 5,860,973 (“Michelson”) “meets two of the claim requirements…having a length both greater than 40 mm and at least 2.5 times its width.” The FC panel affirmed the IPR507 decision (e.g., “The Board did not have to find a reason that a relevant artisan would combine [the references], because it found Michelson disclosed an implant meeting both limtations.”) Regarding IPR508, NuVasive argued “it did not receive adequate notice of or opportunity to address that reading of Michelson and its consequences for the overall obviousness anlaysis” and the FC panel agreed because “Medtronic’s [IPR508] petition did not notify NuVasive of the assertions…that later became critical”. Unlike in Genzyme (FC 2016), the FC panel found that Michelson’s “Figure 18…did not ‘merely serve to describe the state of the art [at the time of the invention],’ informing the understanding of another, separate prior-art disclosure of a claim limitation.” While Figure 18 was discussed in Medtronic’s petition in IP507, it concluded “the assertion about Figure 18 on which the Board ultimately relied” in IPR508 was not addressed in Medtronic’s Petition and “is sufficiently distinct from Medtronic’s other assertions”. And “NuVasive was entitled to an adequate opportunity to respond” but was not provided that opportunity in IPR508 (“In IPR508, unlike IPR507, there was no notice of the Figure 18 point before NuVasive filed its Patent Owner Response…The Director has furnished no persuasive basis on which we are prepared to hold that a (barely sufficient) notice in one proceeding constituted an obligation-triggering notice in other proceeding in which a comparable notice was missing…Not unitl Medtronic’s Reply, after NuVasive’s Patent Owner Response, was NuVasive given fair notice in IPR508 of the Figure 18 factual assertion….”) This “procedural violation” was found not “support Reversal of the Board’s cancellations” but “warrants a remand for further proceedings.” Thus, the IPR507 decision was affirmed and IPR508 decision was remanded.