- Nuvasive, Inc. v. Warsaw Orthopedic, Inc.All claims unpatentablePTAB · Dec 17, 2014 · IPR2013-00395 · APJ Lora M Green · IPR · Final written decision
Claims 1–6 are unpatentable under § 103(a) over both Senter and Brantigan ’035, and Michelson ’037, Wagner, and Brantigan ’035.
RulingsFinal written decision- Skill levelOther
“A claim is unpatentable under 35 U.S.C. § 103(a) if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of ordinary skill in the art; and (4) objective evidence of nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). The level of ordinary skill in the art usually is evidenced by the references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“As demonstrated by the embodiment shown in Figure 14, reproduced above, however, there may be more than a single bearing surface. The claim language only requires that those bearing surfaces be convex. We agree, therefore, with Petitioner that the claim language does not require that the convexity be along the entire length of the implant. Moreover, independent claims 1 and 4 only require that the “upper and lower bearing surfaces . . . being convex along the entire length of said upper and lower bearing surfaces.” There is nothing in the claim language that requires that the convexity conform to the anatomic endplates of the adjacent vertebrae. The Specification does not provide a definition of convexity as conforming to the anatomic endplates of the adjacent vertebrae with reasonable clarity, deliberateness, and precision. We decline, therefore, to construe the convexity of the bearing surfaces as requiring that the convexity conform to the anatomic endplates of the adjacent vertebrae. Thus, we construe “upper and lower bearing surfaces” as requiring that the bearing surface itself must be convex along the entire length of the bearing surface, but as the implant may have more than one upper bearing surface, as well as more than one lower bearing surface, the convexity need not be along the entire length of the implant. Moreover, the convexity need not conform to the anatomic endplates of the adjacent vertebrae.” slip op. at 10
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“Evidence of commercial success, or other secondary considerations, is only significant if there is a nexus between the claimed invention and the commercial success.” Ormco Corp. v. Align Tech. Inc., 463 F.3d 1299, 1311-12 (Fed. Cir. 2006). “For objective evidence to be accorded substantial weight, its proponent must establish a nexus between the evidence and the merits of the claimed invention.” In re GPAC Inc., 57 F.3d 1573, 1580 (Fed. Cir. 1995). In order to establish a proper nexus, the patent owner must offer proof that the sales were a direct result of the unique characteristics of the claimed invention—as opposed to other economic and commercial factors unrelated to the quality of the patented subject matter. See Microsoft v. Proxyconn, Inc., IPR2012-00026, slip op. at 4 (PTAB Mar. 8, 2013) (Paper 32). Patent Owner, however, has not attempted to establish a nexus between the claims of the ’696 and the CLYDESDALE® Spinal System. Thus, Patent Owner’s arguments and evidence as to commercial success are entitled to little or no weight. slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundMotivation foundDecided for petitioner
“Moreover, as taught by Brantigan ’035, the sharp apexes of the nubs bite into the vertebrae bone, and, thus, once the implant is in the proper position, it will not shift from that position. Ex. 1005, 21:1–5. We, thus, credit Dr. Brantigan’s testimony that the ratchetings would not propel an implant forward, but would resist forward movement of the implant, as well as back-out of the implant, after implantation. Ex. 1017 ¶ 18. Thus, we agree with Petitioner that Senter does not teach away from the combination with Brantigan ’035.” slip op. at 19
Patent outcomesUS 8,444,696 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,444,696 - Nuvasive, Inc. v. Warsaw Orthopedic, Inc.All claims unpatentablePTAB · Dec 17, 2014 · IPR2013-00396 · APJ Lora M Green · IPR · Final written decision
Claims 7–12 are unpatentable under § 103(a) as obvious over the combination of Steffee, Michelson ’037, and Kim.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Patent Owner argues that ratchetings should be construed as “facets that are angled to afford forward movement of the spinal fusion implant in one direction and facets that are angled to prevent the spinal fusion implant from backing out in the opposite direction.” PO Resp. 17 (citing Ex. 2005 ¶ 38). Petitioner does not present an alternate construction. We determine that Patent Owner’s construction is consistent with the Specification and the language of the claim itself, and, thus, we adopt that construction.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“a hole that extends from the upper bearing surface to the lower bearing surface that is of sufficient size to permit growth of bone therethrough. Stated differently, “opening,” as required by challenged independent claims 7 and 10, requires that the hole be vertical in the implant as placed. While Steffee does not teach a vertical opening, it does teach that the implant has a plurality of horizontal openings that extend between the side surfaces to allow for blood flow, as well as bone growth from one side of the implant to the other. Ex. 1108, 2:64–67. Michelson ’037 also teaches an implant that may contain a plurality of cells or openings of 1–3 mm, into which fusion-promoting materials may be placed, allowing a bony bond between the adjacent vertebrae to each other, as well as to the implant. Ex. 1109, 8:10–21. Thus, the openings of Steffee and the opening of Michelson ’037 serve the same purpose—that is, to allow the growth of bone to aid in bonding the implants to the adjacent vertebrae. The addition of vertical openings as taught by Michelson ’037 to the implant of Steffee would have been a predictable use of an element taught by the prior art according to its established function. KSR, 550 U.S. at 417.” slip op. at 21
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“The obviousness inquiry, however, does not require an advantage or an improvement in properties. See In re Fulton, 391 F.3d 1195, 1200 (Fed. Cir. 2004) (“[A] finding that the prior art as a whole suggests the desirability of a particular combination need not be supported by a finding that the prior art suggests that the combination claimed by the patent applicant is the preferred, or most desirable, combination.”); see also In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994) (“[a] known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use.”). Moreover, the fact that Brantigan ’757, referenced by Steffee, discloses horizontal slots, but Steffee did not adopt them, does not amount to a teaching away from the use of horizontal slots. See Fulton, 391 F.3d at 1201 (“The prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any . . . alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed.”).” slip op. at 22
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightDecided for petitioner
“Michelson ’037 and Kim as compared to Steffee, Petitioner engaged in improper hindsight in combining Steffee with Michelson ’037 and Kim to arrive at the implant of challenged independent claims 7 and 10. PO Resp. 46. We disagree. Although the Supreme Court has cautioned that it may be valuable to identify a particular reason to combine two references, the obviousness analysis is not limited to this inquiry. See KSR, 550 U.S. at 418–19. “If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability.” Id. at 417. Similarly, “if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.” Id. The combination of Steffee, Michelson ’037, and Kim is no more “than the predictable use of prior art elements according to their established functions.” Id.” slip op. at 24
Patent outcomesUS 8,444,696 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,444,696 - Hayward Industries, Inc. v. Pentair Water Pool And SpA, Inc.All claims unpatentablePTAB · Nov 19, 2014 · IPR2013-00287 · APJ James B Arpin · IPR · Final written decision
Claim 1 is unpatentable under § 103(a) over Struthers and the TI DSP Motor Solutions Guide; Petitioner’s motion to exclude evidence is denied.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner
“1001, col. 17, ll. 36–39, 44–45). Accordingly, Patent Owner argues that the patentee has given a specific definition to the phrase “minimum non-zero flow speed of the motor” in the Specification and that phrase means a “minimum motor speed capable of producing positive water flow in the water distribution system.” Id. For the reasons set forth below, we are not persuaded that the patentee acted as a lexicographer and set forth this definition for the claim phrase. First, we note that the Specification states that controller 24 “can take into account the motor speed required for the pump 10 to open any check valves and produce a positive water flow in the water distribution system” and that this required motor speed “can be referred to as . . . the minimum non-zero flow speed.” Ex. 1001, col. 17, ll. 36–39, 44–45 (emphasis added). We are not persuaded that the Specification sets forth, with “reasonable clarity, deliberateness, and precision,” the definition for the phrase proposed by Patent Owner. Paulsen, 30 F.3d at 1480. Thus, we determine that the Specification only describes a particular embodiment, but does not establish a clear, deliberate, and precise definition of the phrase.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“We are persuaded by Petitioner that the “minimum non-zero flow speed of the motor” is determined by the desired flow of water into the water distribution system. Pet. Reply 1. Consequently, we construe the phrase “minimum non-zero flow speed of the motor” to mean “the minimum speed for achieving a desired flow.” Id.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Struthers to achieve the pump controller of claim 1. PO Resp. 24–26. In particular, Patent Owner argues that “[t]he methods taught by Struthers include reducing the pump’s speed while increasing the pump’s torque, in an attempt to move the clog through the grinder pump.” Id. at 24–25 (citing Ex. 1012, col. 8, ll. 17–39). On the other hand, Patent Owner argues that “[t]he ’051 Patent addresses the problem of how to save time and energy by always starting a pump at a speed that will result in some flow through the pump and into the particular hydraulic system in which the pump is installed.” Id. at 25. As the U.S. Supreme Court explained, however, in performing the obviousness analysis, adjudicative bodies should not look only to the problem that the patentee was trying to solve. KSR, 550 U.S. at 420. “Under the correct analysis, any need or problem known in the field . . . and addressed by the patent can provide a reason for combining the elements in the manner claimed.” Id. Because we determine that the recited pump controller of claim 1 addresses problems relevant to the teachings of Struthers, those problems may provide a reason to combine the teachings of Struthers and the TI DSP Motor Solutions Guide, in the manner proposed by Petitioner. Patent Owner further argues that “the combination of Struthers and [the TI DSP Motor Solutions Guide] does not teach the claimed division of responsibility between the digital signal processor and the microcontroller, such that any conclusion to the contrary relies, respectfully, on an impermissible hindsight reconstruction [of the pump controller recited in claim 1.]” PO Resp. 24; see id. at 33–38. We note that Any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning, but so long as it takes into account only knowledge which was within the level of ordinary skill [in the art] at the time the claimed invention was made and does not include knowledge gleaned only from applicant’s disclosure, such a reconstruction is proper . In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). For the reasons set forth above, we are persuaded that Petitioner has shown that Struthers and the TI DSP Motor Solutions Guide teach or suggest all of the limitations recited in claim 1, including the functions attributed to the digital signal processor and the microcontroller. Moreover, Struthers teaches that “it will be understood that some specific functions may be assigned to either the control board 22 or the microprocessor 24, depending on the specific construction and programming of each of those components in a particular pump unit 10.” Ex. 1012, col. 3, ll. 49–53; see Tr. 7:23–9:18. Thus, we are persuaded that the combination of the teachings of Struthers and the TI DSP Motor Solutions Guide does not rely on impermissible hindsight and that Petitioner has presented adequate reasons for combining the teachings of Struthers and the TI DSP Motor Solutions Guide to achieve the pump controller recited in claim 1 of the ’051 Patent.” slip op. at 24
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation foundDecided for petitioner
“Any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning, but so long as it takes into account only knowledge which was within the level of ordinary skill [in the art] at the time the claimed invention was made and does not include knowledge gleaned only from applicant’s disclosure, such a reconstruction is proper . In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). For the reasons set forth above, we are persuaded that Petitioner has shown that Struthers and the TI DSP Motor Solutions Guide teach or suggest all of the limitations recited in claim 1, including the functions attributed to the digital signal processor and the microcontroller. Moreover, Struthers teaches that “it will be understood that some specific functions may be assigned to either the control board 22 or the microprocessor 24, depending on the specific construction and programming of each of those components in a particular pump unit 10.” Ex. 1012, col. 3, ll. 49–53; see Tr. 7:23–9:18. Thus, we are persuaded that the combination of the teachings of Struthers and the TI DSP Motor Solutions Guide does not rely on impermissible hindsight and that Petitioner has presented adequate reasons for combining the teachings of Struthers and the TI DSP Motor Solutions Guide to achieve the pump controller recited in claim 1 of the ’051 Patent.” slip op. at 24
Patent outcomesUS 7,704,051 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,704,051 - Hayward Industries, Inc. v. Pentair Water Pool And SpA, Inc.All claims unpatentablePTAB · Nov 19, 2014 · IPR2013-00285 · APJ James B Arpin · IPR · Final written decision
Claim 12 is unpatentable as obvious over Rasmuson and Møller ’042 because the combination teaches the claimed pumping system and a skilled artisan would have had reason to combine them.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“not makes clear by its language that the word “primed” should be understood to mean “initially primed” or primed after the pressing of a “Start” button. As Patent Owner acknowledged at Oral Hearing, the claim language does not mention the term “initial” or “start” (Tr. 38:23–40:6) and, despite Patent Owner’s argument regarding the appropriate interpretation of “primed” in view of the Specification, we are not persuaded that the Specification limits “primed” in the manner argued by Patent Owner. Consequently, we conclude that the Specification does not express a clear intent to deviate from the plain meaning of the word “primed.” See Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012) (“It is not enough for a patentee to simply disclose a single embodiment or use a word in the same manner in all embodiments, the patentee must clearly express an intent to redefine the term” (citations omitted; internal quotation marks omitted)). We are persuaded by Petitioner that our construction of the terms “is primed” and “is not primed,” as set forth in our Decision on Institution represents “the broadest reasonable meaning of the words in their ordinary usage, as those words would be understood by one of ordinary skill in the art, taking into account any definitions supplied by [patentee’s] Specification” (In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997)), and we confirm that construction here (Dec. on Inst. 11 (citing Ex. 3001)). Despite Patent Owner’s arguments, we are not persuaded that patentee has supplied here such a definition limiting “primed” to “become primed” or “initially primed” with sufficient clarity, deliberateness, and precision. Paulsen, 30 F.3d at 1480.” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner
“persuaded that the reference to “at least one aquatic application” in the preamble of claim 12 is a limitation. “In general, a preamble limits the invention if it recites essential structure or steps, or if it is ‘necessary to give life, meaning, and vitality’ to the claim.” Catalina Marketing Int’l., Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (quoting Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999)). “Conversely, a preamble is not limiting ‘where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention.’” Id. (quoting Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997)). Here, we determine that the body of the claim describes a structurally complete invention and that the preamble neither recites structure nor is necessary to give life meaning or vitality to claim 12. Therefore, we are not persuaded by Patent Owner’s arguments that Rasmuson is not analogous art based on the type of pumps described in Rasmuson or the aquatic applications for which the recited pumping systems are suitable.” slip op. at 29
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“’479 Patent. In particular, Patent Owner argues that Rasmuson is neither from the same field of endeavor as the claimed invention nor is it reasonably pertinent to the problem faced by the patentee. PO Resp. 40–43 (citing In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004)). For the following reasons, we conclude that Rasmuson is analogous art to the pumping system recited in the challenged claim.” slip op. at 28
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“the relevant art would not have combined the teachings of Rasmuson and Møller ’042 to achieve the pumping system recited in claim 12. PO Resp. 30–59. After consideration of the parties’ remarks and supporting evidence, we are not persuaded by Patent Owner’s arguments and conclude that a person of ordinary skill in the relevant art would have had reason to combine the references in the manner proposed by Petitioner. Petitioner contends that the measurement of input power, as taught by Møller ’042, is a proxy for Rasmuson’s flow transducer’s measurement of actual flow rate and would represent an improvement on Rasmuson’s methods and systems for measuring flow.6 Pet. 33; see Ex. 1018 ¶ 61 (“The controller of the Møller ‘042 Patent correlates the input power to a delivery variable of the pump (flow rate or pressure).” (citing Ex. 1003, col. 3, ll. 33–42)); Ex. 1037 ¶ 38 (“In many cases, using power-sensing techniques is a better option than using a flow transducer . . .”).7 In particular, Petitioner contends that “providing a power 6 Patent Owner argues that Møller ’042 teaches away from Rasmuson because Rasmuson teaches direct flow measurement and Møller ’042 teaches indirect flow measurement. PO Resp. 58–59. We do not find a clear teaching away from the substitution of one flow measurement means for its functional equivalent. For the reasons set forth above, we are not persuaded by those arguments. 7 Dr. Schaaf testified that the use of power meters was less invasive than the installation of flow sensors at the pump and that, after utilizing a controller that measured electrical power to detect loss of prime, pump life was increased from measuring technique [eliminates] the need for a probe to be placed in the water, which may become contaminated, or require piping to be cut.” Pet. 33; see Ex. 1037 ¶¶ 29–40; see also KSR, 550 U.S. at 417 (arrangement of known elements according to their understood functions).” slip op. at 21
Patent outcomesUS 8,019,479 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,019,479 - PTAB · Oct 31, 2014 · IPR2014-00323 · APJ Brian J Mcnamara · IPR · Order
The Board granted the parties’ joint motion and terminated the proceeding under their settlement without issuing a final written decision.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“Paper 10. Patent Owner has not yet filed a Patent Owner Response and the parties have not taken any discovery. Paper 20, 1. In a telephone conference on October 23, 2014, the parties confirmed that there are no other written or verbal agreements between them concerning the patent that is the subject of this proceeding. Under these circumstances, the Board determines that it is appropriate to enter judgment1 and terminate the trial without rendering a final written decision. 37 C.F.R. § 42.72. It is, therefore, ORDERED that the joint motion to terminate the proceeding is GRANTED and the proceeding is hereby terminated; FURTHER ORDERED that the parties’ joint request that the settlement agreement be treated as business confidential information which shall be kept separate from the file of the involved patents under the provisions of 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), is GRANTED.” slip op. at 2
NonePatents in suitUS 8,220,959 - Nuvasive, Inc. v. Warsaw Orthopedic, Inc.All claims unpatentablePTAB · Jul 10, 2014 · IPR2013-00208 · APJ Stephen C Siu · IPR · Final written decision
Claims 1–8 were held unpatentable under §103 over Jacobson, Leu, and Brantigan, with Frey for claims 2–7; the Michelson ’247 ground was not proven.
RulingsFinal written decision- BurdenOther
“For the reasons that follow, we determine that Petitioner has shown by a preponderance of the evidence that claims 1–8 of the ’997 patent are unpatentable.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“Patent Owner argues that an “axis lying in a coronal plane” should be construed as an axis that is lying in “a plane at right angles to a sagittal plane.” PO Resp. 10–11. Petitioner does not contest Patent Owner’s assertion that one of ordinary skill in the art would understand that a “coronal plane” would be oriented “at right angles to a sagittal plane.” Pet. Reply 1. Thus, no further construction of this term is necessary.” slip op. at 5
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“implant” should be construed such that “the composition of the implant does not include any bone” because “the prefix ‘non’ is commonly understood to exclude the thing specified after the word.” PO Resp. 12–13, citing Ex. 2038 ¶ 63. We agree that one of ordinary skill in the art would have understood that the prefix “non” indicates that the implant contains material that is not bone. Patent Owner does not show persuasively, however, that, under a broad but reasonable construction, one of ordinary skill in the art would have understood that it cannot contain any component derived from bone. Hence, we broadly, but reasonably, construe a “non-bone interbody instraspinal implant” as an implant that contains at least one component that does not contain bone.” slip op. at 6
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“what it says (i.e., to mean “lateral”), at least because it would have been reasonable for one of ordinary skill in the art to have construed a term (i.e., “lateral”) with a plain and common definition. Patent Owner’s observation that a construction of the term “lateral” that was in use at the time of the invention included a “direct lateral” approach (as understood in this proceeding) further supports Dr. Jacobson’s testimony that one of ordinary skill in the art would have understood the term “lateral” to mean “direct lateral,” as that term is presently construed in the instant proceedings. Also, we note that claim 1 does not recite the term “direct lateral,” and Patent Owner does not assert that the ’997 patent specification discloses the term “direct lateral.” The absence of the term “direct lateral” in the ’997 patent further supports that one of ordinary skill in the art at the time of the invention would not have used (or understood) the term “direct lateral.” In addition to Jacobson’s explicit disclosure of, for example, “laterally inserting a cannula,” Jacobson discloses figures that illustrate what Patent Owner now refers to as a “direct lateral” approach (i.e., lateral insertion along a path having an axis lying in a coronal plane). Ex. 1004, 2:26–27, Figs. 3–8. We note that in each of the figures of Jacobson, the outer side periphery of the instrument(s) inserted “laterally” into the intervertebral space, as illustrated, are depicted by parallel lines that are oriented at 90 degrees from a horizontal surface. Based on the depiction of the outer side contours of the instrument(s) as being oriented 90 degrees from a horizontal surface, one of ordinary skill in the art would have understood that the instrument(s) are perpendicular to an underlying horizontal surface in the superior-inferior perspective (with respect to the orientation of the patient). More importantly, as the outer side contours of the instruments are parallel in these perspectives, one of ordinary skill in the art would have understood the instruments, as illustrated by Jacobson, to be perpendicular to an underlying horizontal surface in the medial-lateral perspective (with respect to the orientation of the patient – i.e., that the orientation of the instrument(s) is “direct lateral,” as Patent Owner uses that phrase, and not “posterolateral” or “anterolateral”). That is true because, assuming the instrument(s) illustrated in Jacobson are cylindrical, if the instrument(s) were angled away from the viewer, the outer side contours of the instrument(s) at the point of insertion into the intervertebral space would appear farther away from each other as compared to the outer side contours of the instrument(s) at the point farthest from the point of insertion into the intervertebral space (i.e., the proximal end of the instrument(s), which would be located farther away from the viewer). Likewise, if the instrument(s) were angled toward the viewer, the outer side contours of the instrument(s) at the point of insertion into the intervertebral space would appear closer to each other as compared to the outer side contours of the instrument(s) at the point farthest from the point of insertion into the intervertebral space (i.e., the proximal end of the instrument(s), which is located closer to the viewer). Moreover, as Petitioner’s declarant (Dr. Paul McAfee) points out, an anterior cross sectional view of the instrument(s) in-situ (i.e., Ex. 1004, Fig. 6) shows an even and symmetrical view of the instruments throughout the length of the instrument(s). See, e.g., Ex. 1029 ¶ 38. Dr. McAfee’s testimony further supports that Jacobson discloses that the instruments are inserted along a path having an axis lying in a coronal plane passing through a lateral aspect and a medial aspect of the two adjacent vertebrae, as recited in claim 1 (i.e., the “direct lateral” approach as presently understood in the instant proceedings).” slip op. at 8
Patent outcomesUS 8,251,997 unpatentableClaim construction§ 103 obviousnesscites KSRPatents in suitUS 8,251,997 - Nuvasive, Inc. v. Warsaw Orthopedic, Inc.Some claims unpatentablePTAB · Jul 10, 2014 · IPR2013-00206 · APJ Stephen C Siu · IPR · Final written decision
Claims 17–23 were held unpatentable as obvious over Jacobson, Leu, and Brantigan; claims 9–16 and 24–30 were not shown unpatentable on the asserted obviousness grounds.
RulingsFinal written decision- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed
“ordinary skill in the art to have combined the teachings of Jacobson, Leu, and Brantigan. PO Resp. 50–53. Jacobson discloses advancing instruments laterally into the disc space to perform a “fusion” procedure. Ex. 1004, 5:1– 4, 6:11–13. Leu discloses fusion of the lumbar spine by introducing an “interbody graft” into the disc space. Ex. 1005, p. 603. Brantigan, like Leu, discloses “prosthetic implant devices” that are “suitable for . . . lateral placement in any area of the spine.” Ex. 1006, 2:56–58. We agree with Petitioner that the combination of the known element of performing a spinal fusion procedure by laterally advancing instruments into the disc space (Jacobson) with the known element of using an “interbody graft” in a spinal fusion procedure (Leu and Brantigan) would have resulted in no more than the predictable and expected result of performing a spinal fusion procedure (Jacobson) that includes inserting an implant into a disc space (Leu or Brantigan). “The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007).” slip op. at 23
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Jacobson, Leu, Brantigan - combinability Patent Owner argues that it would not have been obvious to one of ordinary skill in the art to have combined the teachings of Jacobson, Leu, and Brantigan. PO Resp. 50–53. Jacobson discloses advancing instruments laterally into the disc space to perform a “fusion” procedure. Ex. 1004, 5:1– 4, 6:11–13. Leu discloses fusion of the lumbar spine by introducing an “interbody graft” into the disc space. Ex. 1005, p. 603. Brantigan, like Leu, discloses “prosthetic implant devices” that are “suitable for . . . lateral placement in any area of the spine.” Ex. 1006, 2:56–58. We agree with Petitioner that the combination of the known element of performing a spinal fusion procedure by laterally advancing instruments into the disc space (Jacobson) with the known element of using an “interbody graft” in a spinal fusion procedure (Leu and Brantigan) would have resulted in no more than the predictable and expected result of performing a spinal fusion procedure (Jacobson) that includes inserting an implant into a disc space (Leu or Brantigan). “The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007).” slip op. at 23
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“of ordinary skill in the art to have combined the teachings of Brantigan with any of Jacobson or Leu because, according to Patent Owner, Brantigan “teaches away from sizing an implant to rest on the apophyseal ring or be sized to occupy substantially the full transverse width of adjacent vertebral bodies.” PO Resp. 51–52, 55–56. This issue was discussed previously above. Patent Owner also argues that it would not have been obvious to one of ordinary skill in the art to have combined the teachings of Brantigan with any of Jacobson or Leu because the “cannulae disclosed by Jacobson and Leu are too narrow to accommodate Brantigan’s implant,” that “a person of ordinary skill in the art would not be able to insert [Brantigan’s] implant in Jacobson’s [system],” and that “the shape of the Brantigan implant is not conducive to insertion through a cannula or similar surgical instrument [as disclosed by Jacobson or Leu].” PO Resp. 52–53. In other words, Patent Owner argues that the combination of Jacobson, Brantigan, and Leu would not have been obvious to one of ordinary skill in the art because the prior art systems are not physically combinable (i.e., Brantigan’s implant allegedly cannot be physically combined with the cannula of either Jacobson or Leu). “The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference . . . . Rather, the test is what the combined teachings of those references would have suggested to those of ordinary skill in the art.” In re Keller, 642 F.2d 413, 425 (CCPA 1981); see also In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983) (“[I]t is not necessary that the inventions of the references be physically combinable to render obvious the invention under review.”). We are thus not persuaded by Patent Owner’s argument.” slip op. at 24
- Obviousness (§103) › Objective indicia / secondary considerations › Commercial successObjective indicia no nexusDecided for patent owner
“Secondary considerations We recognize that evidence of secondary considerations must always be considered en route to the determination of obviousness, but its existence alone does not control the conclusion of obviousness. Richardson-Vicks v. Upjohn Co., 122 F.3d 1476, 1483 (Fed. Cir. 1997). The weight given to evidence of secondary considerations is dependent upon whether there is a nexus between the merits of the claimed invention and the evidence offered. Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1539 (Fed. Cir. 1983).” slip op. at 25
Patent outcomesUS 8,251,997 mixed§ 103 obviousnesscites KSRPatents in suitUS 8,251,997 - Bae Systems Information And Electronic Systems Integration, Inc. v. Cheetah Omni, LLCAll claims unpatentablePTAB · Jun 19, 2014 · IPR2013-00175 · APJ Rama G Elluru · IPR · Final written decision
Claims 1, 4, 13, 15, 17, and 19 were held anticipated by Sanders; claim 14 was held obvious over Sanders; Cheetah’s motion to amend was denied.
RulingsFinal written decision- BurdenUnpatentable
“B. Anticipation by Sanders (Ex. 1010) With respect to our review of BAE’s contention that claims 1, 4, 13, 15, 17, and 19 are anticipated by Sanders, we have reviewed BAE’s Petition, Cheetah’s Patent Owner Response, and BAE’s Reply, as well as the evidence discussed in each of those papers. We are persuaded by a preponderance of the evidence that claims 1, 4, 13, 15, 17, and 19 are anticipated by Sanders. See Pet. 15–27, 28–30, 32–44 (claim charts).” slip op. at 8
- 112 supportMotion to amend, deniedDenied
“In its motion, Cheetah contends that the subject matter of its proposed substitute claims have written description support in the specification of the ’673 patent. Mot. 7. Rules 42.121(b)(1) and (2), however, require that a motion to amend set forth the support in the original disclosure of the patent for each claim that is added and the support in an earlier-filed disclosure for each claim for which the benefit of the filing date of the earlier filed disclosure is sought. 37 C.F.R. § 42.121(b)(1), (2). For written description support for the proposed substitute claims, Cheetah refers to portions of the ’673 patent Specification only for the added limitations in its proposed substitute claims. Specifically, Cheetah refers to Figure 8D, and column 19, lines 20–39 of the ’673 patent Specification. Mot. 7. Such reference does not satisfy the requirements of Rule 42.121(b)(1) because the specification is not the original disclosure. Moreover, Cheetah cites alleged support in the specification for only the added Q-switcher limitations. Cheetah does not identify support in the original disclosure “for each claim” in its motion to amend, as a whole and including the Q-switcher limitations, as required by Rule 42.121(b)(1). Cheetah, therefore, has not made a sufficient showing that its proposed substitute claims, as a whole, have written description support in the original disclosure of the ’673 patent, and we deny the motion on that basis.” slip op. at 18
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied
“Analysis We are persuaded by BAE’s arguments (Opp. 11) that it would have been obvious to a person of ordinary skill in the art to modify Sanders to couple a Q-switcher with fiber laser 82 shown in Figure 16 based on the teachings of Lees. See Ex. 1017 ¶¶ 8–11. As Cheetah acknowledges (Mot. 8), Q-switchers were known in the art and used to obtain high peak power laser pulses. Lees teaches a Q-switcher, the AOM, within the laser cavity of the Er:Yb fiber laser. Ex. 1018, Fig. 1; p. 1836 (right hand column, first full paragraph); Ex. 1017 ¶ 9. Sanders explains that high peak power laser pulses are advantageous for pumping a QPM OPO device, such as Sanders’s NFM device 84. Ex. 1010, 1:40–44, 3:21–27, 17:42–49. We, thus, are persuaded by Dr. Smith’s testimony that it would have been obvious to a person of ordinary skill to provide high peak power pulses to NFM device 84 by arranging Lees’s AOM (i.e., a Q-switcher) within Sanders’s fiber laser 82 in a manner described by Lees. Ex. 1017 ¶¶ 9–10. As BAE asserts, the reason to combine would have been to provide high peak power laser pulses from fiber laser 82 to NFM device 84. See id. ¶¶ 9–11. We further are persuaded that there would have been a reasonable expectation of success for modifying Sanders based on Lees, in view of the similarities between the fiber laser 82 of Sanders and the Q-switched fiber laser of Lees. See id. ¶¶ 10–11.” slip op. at 21
- ScopeMotion to amend, deniedDenied
“We agree with BAE that Cheetah has not demonstrated a need for proposing more than one substitute claim for each of claims 1 and 13. See Opp. 2–3. Substitute claim 22 is identical to substitute claim 21, except for the additional recital of “wherein the Q-switcher produces an output signal having a pulse width in the range of two (2) nanoseconds to one hundred (100) milliseconds.” Mot. 3–4. Cheetah proposes a similar scheme to replace original claim 13. Id. at 5–6. Cheetah, however, has not demonstrated the need for proposing narrower substitute claims than the ones we already have considered. In addition, in order to justify more than one substitute claim for each challenged claim, “a patent owner has to show a special need to justify more than one substitute claim for each challenged claim. In such situations, the patent owner needs to show patentable distinction of the additional substitute claim over all other substitute claims for the same challenged claim.” See Idle Free, Paper 26 at 5, 8–9. With respect to the new limitation of claims 22 and 25, Cheetah states that “[t]he prior art does not read on the Q-switcher output pulse width because it does not read on the Q-switcher itself.” Mot. 12. In its Reply, Cheetah states that “in the manner that the limitations would be read into the claims, the distinction is facially clear without explanation.” PO Reply 3. Cheetah’s conclusory statements have not persuaded us of a patentable distinction of substitute claims 22 and 25 over substitute claims 21 and 24, respectively. See Opp. 4. Cheetah also was required to discuss the “significance and usefulness” of the added features in a proposed substitute claim “from the perspective of one with ordinary skill in the art.” See Idle Free, Paper 26 at 7. This Cheetah failed to do with respect to claims 22 and 25. Therefore, we determine that Cheetah has not met its burden to demonstrate that claims 22 and 25 are patentable.” slip op. at 25
Patent outcomesUS 7,633,673 unpatentableClaim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 7,633,673 - PTAB · Jun 11, 2014 · IPR2014-00362 · APJ Sally C Medley · IPR · Order
The Board granted the parties’ joint motion to terminate the proceeding before institution and granted their request to keep the settlement agreement confidential.
RulingsOther- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingGranted
“§ 42.74, the parties filed a true copy of a settlement agreement along with a joint request to treat the settlement agreement as business confidential, to be kept separate from the patent file. In addition, the parties filed a joint motion to terminate the proceeding pursuant to 35 U.S.C. § 317. This case is in the preliminary proceeding1 stage; no institution of a trial has been made. Based on the facts of this case, it is appropriate to enter judgment.2 Therefore, the joint motion to terminate the proceeding is granted.” slip op. at 1
NonePatents in suitUS 6,306,141 - PTAB · Mar 31, 2014 · IPR2013-00241 · APJ Brian J Mcnamara · IPR · Order
The Board granted the parties’ joint motion and terminated the proceeding by settlement without a final written decision.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“Under these circumstances, we determine that it is appropriate to enter judgment1 and to terminate the trial without rendering a final written decision. 37 C.F.R. § 42.72. It is, therefore, ORDERED that the joint motion to terminate the proceeding is GRANTED and the proceeding is hereby terminated; and FURTHER ORDERED that the parties’ joint request that the settlement agreement be treated as business confidential information which shall be kept separate from the file of the involved patents under the provisions of 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), is GRANTED.” slip op. at 3
NonePatents in suitUS 6,370,954
Holdings, summaries, rulings, issues, outcomes, winners and claim constructions shown for a decision were generated by a large language model reading the opinion. They are a guide to the decision, not the decision. Confirm every one against the court's own text before relying on it. Outcomes read from the patent owner’s side. Party names are extracted from the decision and are missing on about 900 short Director denials and scans, which carry the trial number instead.