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`Case 1:21-cv-01445-JPM Document 121-1 Filed 04/11/23 Page 2 of 403 PageID #: 2981
`Trials@uspto.gov
`Paper No. 12
`571-272-7822
`Date: March 24, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`LIFE SPINE, INC.,
`Petitioner,
`
`v.
`
`GLOBUS MEDICAL, INC.,
`Patent Owner.
`
`IPR2022-01434
`Patent 8,845,731 B2
`
`
`
`
`
`
`
`
`
`Before KRISTI L. R. SAWERT, CYNTHIA M. HARDMAN, and
`MICHAEL A. VALEK, Administrative Patent Judges.
`
`HARDMAN, Administrative Patent Judge.
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`Granting Petitioner’s Motion to File Under Seal
`37 C.F.R. §§ 42.14, 42.54
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`
`
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`IPR2022-01434
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`I. INTRODUCTION
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`Petitioner Life Spine, Inc. requests inter partes review of claims 1–15
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`of U.S. Patent No. 8,845,731 B2 (“the ’731 patent,” Ex. 1001). Paper 2
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`(“Pet.”). Patent Owner Globus Medical, Inc. filed a Preliminary Response.
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`Paper 9 (“Prelim. Resp.”). With our authorization, Petitioner filed a
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`Preliminary Reply and Patent Owner filed a Preliminary Sur-reply. Paper 10
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`(“Prelim. Reply”); Paper 11 (“Prelim. Sur-reply”).1
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`We have authority under 35 U.S.C. § 314(a), which provides that an
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`inter partes review may not be instituted “unless . . . there is a reasonable
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`likelihood that the petitioner would prevail with respect to at least 1 of the
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`claims challenged in the petition.” After considering the Petition,
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`Preliminary Response, Preliminary Reply, Preliminary Sur-reply, and
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`associated evidence, we institute an inter partes review.
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`The following preliminary findings of fact and conclusions of law are
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`made solely for determining whether to institute review. Any final decision
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`will be based on the full trial record.
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`A. Real Parties in Interest
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`Petitioner and Patent Owner each identify themselves as the real party
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`in interest. Pet. 1; Paper 8 (Patent Owner Updated Mandatory Notices), 1.
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`1 The Board observes that both parties delete spacing between words, in an
`apparent effort to circumvent our word count limits. For example, Petitioner
`uses “EX1002,” while Patent Owner uses “Ex-1001” and “Culbert-
`Declaration.” See, e.g., Pet. 7; Prelim. Resp. 35. The parties are cautioned
`that continuing this practice may lead to a party’s brief not being considered.
`See Consolidated Office Trial Practice Guide (Nov. 2019), at 40, available
`at https://www.uspto.gov/TrialPracticeGuideConsolidated.
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`2
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`B. Related Matters
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`The parties identify Globus Medical, Inc. v. Life Spine, Inc., 1:21-cv-
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`01445 (D. Del.), filed October 13, 2021, as involving the ’731 patent. Pet. 1;
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`Paper 8, 1. The parties also identify a number of patent applications related
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`to the ’731 patent, i.e., 17/192,231, 17/409,079, 17/410,335, 17/589,029, and
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`17/931,913. Pet. 1–2; Paper 8, 1. Patent Owner also identifies a number of
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`related inter partes review proceedings, i.e., IPR2022-01435, IPR2022-
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`01599, IPR2022-01600, and IPR2023-00041. Paper 8, 1.
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`C. The ’731 Patent (Ex. 1001)
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`The ʼ731 patent, titled “Expandable Fusion Device and Method of
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`Installation Thereof,” relates to an expandable device for insertion between
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`adjacent vertebrae to facilitate fusion. Ex. 1001, code (54), 2:49–50.
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`According to the Specification, a need exists for a fusion device that is
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`“capable of being installed inside an intervertebral disc space at a minimum
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`to no distraction height and . . . can maintain a normal distance between
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`adjacent vertebral bodies when implanted.” Id. at 1:44–48. The ’731 patent
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`purports to meet this need with a fusion device including first and second
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`endplates and a central ramp capable of moving in a first direction to push
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`the endplates outwardly into an expanded configuration. Id. at 1:56–60.
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`The Specification describes exemplary expandable fusion devices for
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`installing in an intervertebral disc space to facilitate intervertebral fusion.
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`Id. at 1:52–56. One exemplary device is depicted in Figure 50, reproduced
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`below.
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`3
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`Figure 50 of the ’731 patent, reproduced above, is a perspective view of
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`expandable fusion device 10 in an expanded position. Id. at 4:26–29, 16:20–
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`21. Expandable fusion device 10 includes first endplate 14, second endplate
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`16, central ramp 18, actuator assembly 200, and driving ramp 300. Id. at
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`16:21–24. Actuator assembly 200 functions to pull central ramp 18 and
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`driving ramp 300 together, which forces apart endplates 14 and 16. Id. at
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`16:24–28.
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`4
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`Figure 52 of the ’731 patent is reproduced below.
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`Figure 52, reproduced above, is an exploded view of expandable fusion
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`device 10. Id. at 4:33–35. Central ramp 18, which has first end 408 and
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`second end 410, includes first expansion portion 412, second expansion
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`portion 414, rod-receiving extension 416, and longitudinally-extending
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`
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`through bore 418. Id. at 18:1–6. Rod-receiving extension 416 is threaded to
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`receive threading of extension 404 of actuator assembly 200. Id. at 18:46–
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`49. Driving ramp 300 includes bore 366 sized to receive extension 404.
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`Id. at 18:55–57. Actuator assembly 200 includes head portion 324 with rim
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`332, which engages contact surface 368 of driving ramp 300. Id. at 18:61–
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`64.
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`
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`In operation, expandable fusion device 10 is seated into an
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`intervertebral disc space. Id. at 19:22–24. An instrument is used to engage
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`head portion 324 of actuator assembly 200. Id. at 19:38–40. Rotating
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`5
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`actuator assembly 200 in a first direction pulls central ramp 18 linearly
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`towards driving ramp 300 and pushes driving ramp 300 linearly towards
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`central ramp 18. Id. at 19:50–52, 20:4–8. Ramped portions of central ramp
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`18 and driving ramp 300 push against corresponding ramped portions of
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`endplates 14 and 16, which forces the endplates outward into an expanded
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`position. Id. at 19:50–55, 20:8–13.
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`D. Challenged Claims
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`Petitioner challenges all 15 claims of the ’731 patent. Claims 1, 10,
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`and 15 are independent. Claim 1, reproduced below with bracketed lettering
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`added,2 is illustrative:
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`1. [pre] An intervertebral implant comprising:
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`[a] a first endplate, wherein the first endplate includes a
`first side portion, the first side portion including a first ramped
`portion;
`
`[b] a second endplate, wherein the second endplate
`includes a second side portion, the second side portion
`including a second ramped portion;
`
`[c] a central ramp disposed between the first endplate and
`the second endplate;
`
`[d] a driving ramp disposed between the first endplate
`and the second endplate;
`
`[e] an actuation member coupled to the driving ramp and
`the central ramp;
`
`[f] wherein the central ramp is configured to move in a
`first direction and cause the first and second endplates to move
`outwardly and away from one another, and [g] the central ramp
`is configured to move in a second direction and cause the first
`and second endplate to move inward and towards one another,
`
`
`2 For ease of reference, we use the same bracketed lettering Petitioner uses
`in the Petition. See Pet. 7–21, 129.
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`6
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`[h] wherein the central ramp comprises an expansion
`portion and an extension, the extension extending in a
`longitudinal axis from the expansion portion
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`[i] wherein the first endplate and the second endplate are
`coupled to the expansion portion of the central ramp,
`
`[j] wherein the actuation member extends through an
`unthreaded opening in the driving ramp and extends into a
`threaded opening in the extension of the central ramp;
`
`[k] wherein when the actuation member is rotated the
`driving ramp is fixed with respect to the actuation member and
`the central ramp is moved in either the first direction or the
`second direction.
`
`Ex. 1001, 20:36–21:21.
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`Challenged independent claims 10 and 15 are similar to claim 1, but
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`have a few notable differences. For example, unlike claim 1, claim 10
`
`requires that the first and second ramped portions of the endplates “are
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`complementary with one another.” Id. at 22:24–26. Additionally, like
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`claim 1, claims 10 and 15 require an “extension,” but unlike claim 1 they do
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`not require that the extension “extend[] in a longitudinal axis from the
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`expansion portion.” Id. at 22:14–50, 23:4–24:16.
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`Challenged claims 2–9 depend directly or indirectly from independent
`
`claim 1 and recite additional features, including with respect to the first
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`and/or second endplates (claims 2, 3), the central ramp (claims 4, 5, 7, 8),
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`the driving ramp (claim 6), and the actuation member (claim 9). Id. at
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`21:22–22:12. Challenged dependent claims 11–14 depend directly or
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`indirectly from claim 10, and recite additional features, including with
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`respect to the driving ramp (claims 11, 12), and the actuation member or
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`actuation assembly (claim 13, 14). Id. at 22:51–23:3.
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`7
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`E. Asserted Grounds of Unpatentability
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`Petitioner asserts that claims 1–15 are unpatentable on the following
`
`grounds:
`
`Ground
`
`1
`2
`3
`3
`
`Claim(s)
`Challenged
`1–15
`1–15
`1–15
`2–6, 10–14
`
`35 U.S.C. §3
`
`Reference(s)/Basis
`
`§ 102(b)
`§ 103(a)
`§ 103(a)
`§ 103(a)
`
`Chung4
`Chung, Baynham5,
`Olmos6, Chung
`Chung, Olmos, Baynham
`
`Pet. 3. Petitioner supports its contentions with the Declaration of Troy
`
`D. Drewry (Ex. 1002), among other evidence. Patent Owner supports its
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`contentions with the Declaration of Brad Culbert (Ex. 2001), among other
`
`evidence.
`
`
`3 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), amended several provisions of 35 U.S.C., including §§ 102
`and 103. Petitioner asserts that “September 3, 2010 is the effective filing
`date.” Pet. 4. Based on this effective filing date, the pre-AIA versions of
`35 U.S.C. §§ 102 and 103 apply.
`
`4 Chung et al., KR 20-0290058, issued September 26, 2002 (“Chung,”
`Ex. 1005). Exhibit 1005 includes a certified English translation on pages 1–
`12 and the original Korean document on pages 13–22. When citing Chung
`herein, we refer to the page numbers indicated by the six-digit page
`numbering scheme applied at the bottom center of the exhibit. For
`convenience we drop the lead-in zeros.
`
`5 Baynham et al., U.S. Patent Publication 2007/0270968 A1, published
`November 22, 2007 (“Baynham,” Ex. 1007).
`
`6 Olmos et al., U.S. Patent Publication 2008/0140207 A1, published June 12,
`2008 (“Olmos,” Ex. 1006).
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`8
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`II. ANALYSIS
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`A. Discretionary Denial Under § 325(d)
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`The parties dispute whether the Board should discretionarily deny the
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`Petition under 35 U.S.C. § 325(d). Prelim. Resp. 12–32; Pet. 125–128;
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`Prelim. Reply 1–3; Prelim. Sur-reply 1–3.
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`1. Legal Standard
`
`Section 325(d) provides that the Director7 may “reject the petition” if
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`“the same or substantially the same prior art or arguments previously were
`
`presented to the Office.” The Board analyzes this issue under a two-part
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`framework:
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`(1) whether the same or substantially the same art previously
`was presented to the Office or whether the same or substantially
`the same arguments previously were presented to the Office;
`and (2) if either condition of [the] first part of the framework is
`satisfied, whether the petitioner has demonstrated that the
`Office erred in a manner material to the patentability of
`challenged claims.
`
`Advanced Bionics, LLC v. Med-El Elektromedizinische Geräte GmbH,
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`IPR2019-01469, Paper 6, 8 (PTAB Feb. 13, 2020) (precedential).
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`In analyzing whether the same or substantially the same art or
`
`arguments were previously presented to the Office, we consider factors
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`including: (i) the similarities and material differences between the asserted
`
`art and the prior art previously presented to the Office; (ii) the cumulative
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`nature of the asserted art and the prior art previously evaluated by the Office;
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`and (iii) the extent of the overlap between the arguments made before the
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`7 The Board institutes trial on behalf of the Director. 37 C.F.R. § 42.4(a).
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`9
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`Office and the manner in which the petitioner relies on the prior art or the
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`patent owner distinguishes the prior art. See id. at 8–10.
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`In analyzing whether the petitioner has demonstrated that the Office
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`erred in a manner material to the patentability of challenged claims, we
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`consider factors including: (iv) the extent to which the asserted art was
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`evaluated by the Office, including whether the prior art was the basis for
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`rejection during examination; (v) whether the petitioner has pointed out
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`sufficiently how the Office erred in its evaluation of the asserted prior art;
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`and (vi) the extent to which additional evidence and facts presented in the
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`petition warrant reconsideration of prior art or arguments. See id.
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`2. Analysis
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`There is no dispute that Olmos and Baynham were before the Office.
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`See Pet. 126 (acknowledging that “Baynham was listed in a Notice of
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`References Cited” and “[t]he Examiner rejected pending claims over Olmos
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`in five office actions”); Prelim. Resp. 13. Accordingly, Olmos and
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`Baynham are “[p]reviously presented art.” Advanced Bionics, IPR2019-
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`01469, Paper 6, at 7–8 (indicating that “previously presented art” includes
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`“art made of record by the Examiner”).
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`Chung, however, stands on different footing. There is no dispute that
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`Chung was not before the Office, and thus is not the “same” art previously
`
`presented to the Office. See Pet. 126; Prelim. Resp. 29 (acknowledging that
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`“Chung was not before the Office”); Advanced Bionics, IPR2019-01469,
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`Paper 6, at 13–14. Nevertheless, Patent Owner argues that Chung is
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`cumulative of Olmos and thus “substantially the same” as art that was before
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`the Office. Prelim. Resp. 29.
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`10
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`We are not persuaded that Chung is cumulative of Olmos. Patent
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`Owner presents a table purporting to show that Petitioner’s mapping of
`
`Chung to the challenged claims is similar to Petitioner’s mapping Olmos to
`
`the challenged claims. See Prelim. Resp. 16–26. Petitioner, however, maps
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`Olmos to the challenged claims in a materially different manner than the
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`Examiner mapped Olmos to the claims. As one example, Patent Owner
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`itself points out that Petitioner maps Olmos’s “guide member 230” to the
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`claimed “extension,” whereas the Examiner never made this mapping, and
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`“instead identified various rod-like components as the alleged ‘extension.’”
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`Prelim. Resp. 10–11; see also id. at 30 (“The prosecution history uniformly
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`demonstrates that the Examiner did not consider the guide 232 of the distal
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`wedge 208 to meet the ‘extension’ limitation.”); Prelim. Sur-reply 2 (arguing
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`same).
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`Thus, we find that “the extent of the overlap between the arguments
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`made during examination and the manner in which petitioner relies on the
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`prior art” are different. Advanced Bionics, IPR2019-01469, Paper 6, at 9
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`n.10. We find that this factor, combined with the fact that Chung itself was
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`not before the Examiner, demonstrates that Chung is not cumulative of
`
`Olmos at least as Olmos was previously applied by the Examiner. In other
`
`words, Petitioner is advancing different art (Chung) and reasoning compared
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`to the art and reasoning previously considered by the Office. The Advanced
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`Bionics framework “reflects a commitment to defer to previous Office
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`evaluations of the evidence.” Id. at 9. Here, however, the Office did not
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`evaluate Chung or the arguments Petitioner presently advances based on
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`Chung in its prior consideration of Olmos. Thus, we are not persuaded that
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`Petitioner’s similar mapping of Chung and Olmos to the challenged
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`claims—where that mapping differs from the Examiner’s mapping of Olmos
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`to applicant’s claims—compels a conclusion that Chung is cumulative of
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`Olmos.
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`Every ground of the Petition includes Chung, a reference that was not
`
`before the Examiner. And Petitioner uses Chung differently than the
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`Examiner used the allegedly cumulative reference, Olmos. Accordingly, we
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`find that the first part of the Advanced Bionics framework is not met with
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`respect to Chung. See, e.g., Halliburton Energy Servs., Inc. v. U.S. Well
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`Servs., LLC, IPR2021-01036, Paper 12 at 19–20 (PTAB Jan. 19, 2022);
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`Advanced Bionics, IPR2019-01469, Paper 6 at 10. For this reason, even
`
`though Olmos and Baynham were before the Office, we find that § 325(d) is
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`not sufficiently implicated such that its statutory purpose would be
`
`undermined by instituting on all challenges. See SAS Q&A’s (June 5,
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`2018),8 Question/Answer D1 (explaining that “[i]n view of the Office’s
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`policy to institute on all challenges or none,” where “only some of the
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`challenges fall within” the scope of § 325(d), “[t]he panel will evaluate the
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`challenges and determine whether § 325(d) is sufficiently implicated that its
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`statutory purpose would be undermined by instituting on all challenges”).
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`Accordingly, we decline to exercise our discretion to deny inter partes
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`review under § 325(d).
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`B. Principles of Law
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`
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`In an inter partes review, “the petitioner has the burden from the onset
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`to show with particularity why the patent it challenges is unpatentable.”
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`8 Available at https://www.uspto.gov/sites/default/files/documents/
`sas_qas_20180605.pdf.
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`Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016)
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`(citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to
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`identify “with particularity . . . the evidence that supports the grounds for the
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`challenge to each claim”)). Petitioner ultimately bears the burden of
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`persuasion to prove unpatentability of each challenged claim by a
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`preponderance of the evidence. 35 U.S.C. § 316(e). This burden never
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`shifts to Patent Owner. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc.,
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`800 F.3d 1375, 1378 (Fed. Cir. 2015). The Board may authorize an inter
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`partes review if we determine that the information presented in the Petition
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`and Patent Owner’s Preliminary Response shows that there is a reasonable
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`likelihood that Petitioner will prevail with respect to at least one of the
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`claims challenged in the petition. 35 U.S.C. § 314(a).
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`Anticipation under 35 U.S.C. § 102 requires that a prior art reference
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`set forth each and every element of a claim as set forth in the claim.
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`Verdegaal Bros. v. Union Oil Co., 814 F.2d 628, 631 (Fed. Cir. 1987);
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`see also Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir.
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`2008) (anticipation not only requires that each element of a claim be present
`
`in a prior art reference, but also the “arrangement or combination” of those
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`elements).
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`A claim is unpatentable as obvious under 35 U.S.C. § 103(a) if the
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`differences between the claimed subject matter and the prior art are such that
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`the subject matter, as a whole, would have been obvious at the time the
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`invention was made to a person having ordinary skill in the art to which said
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`subject matter pertains. 35 U.S.C. § 103(a) (2006); see also KSR Int’l Co. v.
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`Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is
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`resolved based on underlying factual determinations including: (1) the scope
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`and content of the prior art; (2) any differences between the claimed subject
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`matter and the prior art; (3) the level of ordinary skill in the art; and (4) any
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`objective indicia of nonobviousness.9 Graham v. John Deere Co., 383 U.S.
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`1, 17–18 (1966). An obviousness determination requires finding a reason to
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`combine accompanied by a reasonable expectation of achieving what is
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`claimed in the challenged patent. See Intelligent Bio-Sys., Inc. v. Illumina
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`Cambridge Ltd., 821 F.3d 1359, 1367 (Fed. Cir. 2016). “[A]ny need or
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`problem known in the field of endeavor at the time of invention and
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`addressed by the patent can provide a reason for combining the elements in
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`the manner claimed.” KSR, 550 U.S. at 419–20.
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`C. Level of Ordinary Skill in the Art
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`We consider the grounds of unpatentability in view of the
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`understanding of a person of ordinary skill in the art as of September 3,
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`2010. See Graham, 383 U.S. at 17–18; supra n.3. Petitioner contends that a
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`person of ordinary skill in the art (sometimes abbreviated herein as
`
`“POSITA”):
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`would have had a bachelor’s degree in mechanical engineering
`or biomedical engineering and two or more years of experience
`in biomechanical engineering, biomedical engineering, and/or
`spinal implant devices. A person could also have qualified as a
`POSITA with some combination of more formal education
`(e.g., an M.D.) and less technical experience or less formal
`education and more technical or professional experience in the
`foregoing fields, and would have had further appreciation of
`various technical concepts in this field, as explained by Prof.
`Drewry.
`
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`9 Patent Owner does not presently assert objective indicia supporting
`nonobviousness of the challenged claims. See generally Prelim. Resp.;
`Prelim. Sur-reply.
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`Pet. 5 (citing Ex. 1002 (Drewry Decl.) ¶¶ 30, 43–62). Patent Owner does
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`not presently dispute Petitioner’s proposal. Prelim. Resp. 1.
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`Because Petitioner’s proposed level of ordinary skill in the art appears
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`to be consistent with the cited prior art and is undisputed on this record, we
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`adopt it for purposes of this Decision. See Okajima v. Bourdeau, 261 F.3d
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`1350, 1355 (Fed. Cir. 2001) (indicating that the prior art itself may reflect an
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`appropriate skill level).
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`D. Claim Construction
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`In AIA proceedings we interpret a claim “using the same claim
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`construction standard that would be used to construe the claim in a civil
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`action under 35 U.S.C. 282(b).” 37 C.F.R. § 42.100(b). Under this
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`standard, we construe the claim “in accordance with the ordinary and
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`customary meaning of such claim as understood by one of ordinary skill in
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`the art and the prosecution history pertaining to the patent.” Id.; see also
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`Phillips v. AWH Corp., 415 F.3d 1303, 1312–19 (Fed. Cir. 2005) (en banc).
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`Petitioner asserts that the claims do not “require constructions
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`differing from their plain and ordinary meaning.” Pet. 4. Patent Owner
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`argues that Petitioner’s interpretations of the claim terms “extension,”
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`“expansion portion,” and “complementary with one another” in Petitioner’s
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`discussion of the asserted grounds are contrary to the plain and ordinary
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`meaning of these terms and are inconsistent with the Specification. See, e.g.,
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`Prelim. Resp. 36–40 (addressing the meaning of “extension”); 41–47
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`(addressing the meaning of “expansion portion”); 85–93 (addressing the
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`meaning of “complementary with one another”); Prelim. Reply 3–5.
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`We provide preliminary constructions for each of these terms below.
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`Any final written decision entered in this case may include final claim
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`15
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`constructions that differ from these preliminary constructions, or from any
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`discussion of claim scope provided in our analysis below. Any final claim
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`constructions will be based on the full trial record.
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`1. “extension” (Independent Claims 1, 10, 15)
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`Patent Owner argues that an “extension” (as recited in independent
`
`claims 1, 10, and 15) is “a structure that increases the length of the central
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`ramp.” Prelim. Sur-reply 3; see also Prelim. Resp. at, e.g., 36, 38. Patent
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`Owner supports this construction by arguing, among other things, that the
`
`Examiner “repeatedly identified the ‘extensions’ in Olmos as various rod-
`
`like structures,” and “the specification repeatedly identifies the central ramp
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`‘extension’ . . . as structures that increase the length of the ramp.” Prelim.
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`Resp. 37, 39. Patent Owner argues that Petitioner’s suggestion that
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`“anything protruding” or any “outgrowth protrusion off of the surface of the
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`ramp” is not supported by the intrinsic evidence. Prelim. Resp. 39; Prelim.
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`Sur-reply 4.
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`Petitioner responds that Patent Owner’s construction “would
`
`improperly read limitations into the claims based on disclosed
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`embodiments.” Prelim. Reply 3. Petitioner also argues that the
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`Specification uses the term “‘extension’ to refer to a myriad of structures,”
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`and “[t]he Examiner likewise applied ‘extension’ broadly to a variety of
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`structures.” Id. (citing Ex. 1001, 5:47–58, Fig. 10, 11:8–10, 11:40–42,
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`Fig. 23, 9:40–45, 10:1–19, Fig. 24, claims 2, 3; Ex. 1004, 42–44, 66–67,
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`126–27).
`
`On this preliminary record, Petitioner has the better argument. It
`
`appears that Patent Owner’s construction improperly reads in limitations
`
`from example embodiments, such as the embodiments depicted in Figures
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`16
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`25 and 46 of the ’731 patent. See Prelim. Resp. 39 (Patent Owner’s
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`annotated Figures 25 and 46). Petitioner demonstrates that both the
`
`Specification and the Examiner used the term “extension” more broadly to
`
`refer to a variety of structures, not merely to structures that “increase the
`
`length of the central ramp.” See, e.g., Prelim. Reply 3; Ex. 1001, 5:47–58,
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`Fig. 10, 11:8–10, 11:40–42, Fig. 23, 9:40–45, 10:1–19, Fig. 24, claims 2, 3;
`
`Ex. 1004, 42–44, 66–67, 126–27. Patent Owner seeks to ignore the
`
`Specification and Examiner’s use of the term “extension” in connection with
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`structures other than the central ramp (see, e.g., Prelim. Sur-reply 4), but on
`
`this record nothing indicates that the patentee intended a special definition
`
`for the term “extension” in the context of the central ramp.
`
`For purposes of this Decision, we apply the plain and ordinary
`
`meaning of the term “extension,” i.e., “an addition to a main structure.”
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`See Ex. 3001, 4. This construction is consistent with the broad use of the
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`term “extension” in the Specification to refer to a variety of additions to a
`
`main structure having a variety of shapes.
`
`2. “expansion portion” (Independent Claims 1, 10, 15)
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`Patent Owner asserts that the plain and ordinary meaning of
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`“expansion portion” (as recited in independent claims 1, 10, and 15) is “a
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`portion with an angled surface that facilitates expansion.” Prelim. Resp. 41.
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`Patent Owner contends that this construction is consistent with the parties’
`
`agreed construction in the pending litigation for the same term in U.S. Patent
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`No. 10,925,752—a patent that is not related to the ’731 patent, but which
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`Patent Owner contends has a “substantively identical” specification. Id. at
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`41 n.8. Patent Owner also appears to argue that according to the
`
`Specification, an “expansion portion” is a portion of the central ramp having
`
`17
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`one or more angled or ramped surfaces. See id. at 43–45 (citing, e.g.,
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`Ex. 1001, Figs. 25, 27, 46, 52).
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`On this record Patent Owner does not persuade us that the plain and
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`ordinary meaning of the term “expansion portion” requires “an angled
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`surface.” First, Patent Owner does not adequately explain why we should
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`adopt an agreed construction in an unrelated proceeding based on an
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`unrelated patent. Second, the plain and ordinary meaning of the term
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`“expansion portion” is, as the phrase itself suggests, a “portion that
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`facilitates expansion.” See also Ex. 3001, 4 (indicating that “expansion”
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`means “[t]he act or process of expanding”). Nothing in this plain meaning
`
`suggests an angled surface. Patent Owner does not adequately explain why
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`the example embodiments depicted in the Specification should be
`
`understood to limit the claims, given the Federal Circuit’s guidance that
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`“a particular embodiment appearing in the written description may not be
`
`read into a claim when the claim language is broader than the embodiment.”
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`SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir.
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`2004); see also Phillips, 415 F.3d at 1323 (“[A]lthough the specification
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`often describes very specific embodiments of the invention, we have
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`repeatedly warned against confining the claims to those embodiments.”).
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`For purposes of this Decision, we apply the plain and ordinary
`
`meaning of the term “expansion portion,” i.e., a “portion that facilitates
`
`expansion.”
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`18
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`3. “complementary with one another” (Independent Claim 10)
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`Patent Owner appears to argue that “complementary with one
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`another” (which appears in independent claim 1010) means “mat[ing] with
`
`one another in a beneficial way.” Prelim. Resp. 90. Patent Owner argues
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`that this construction is consistent with the Specification’s discussion of
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`“complementary texturing or engagement features” and with use of the term
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`“complementary” in a variety of other references. See id. at 86–87 (citing,
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`e.g., Ex. 1001, 8:34–40; Ex. 2001 (Culbert Decl.) ¶¶ 164–65; Ex. 1006
`
`¶¶ 88, 89; Ex. 1007 ¶ 30; Ex. 1016, 24:22–27). Patent Owner also asserts
`
`that its construction is consistent with the prosecution history, wherein the
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`applicant “specifically added the disputed claim language to the claims to
`
`exclude the ‘mirrored’ ramp surfaces identified by the Examiner.” Id. at 90;
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`see also id. at 88–90 (citing Ex. 1004, 264, 246, 248, 251).
`
`We find that Patent Owner’s proposed construction of “mat[ing] with
`
`one another in a beneficial way” imports into the claim a subjective
`
`requirement of “beneficial” mating that does not appear to be grounded in
`
`the intrinsic record and appears to be inconsistent with the plain and
`
`ordinary meaning of the term “complementary.” The Specification uses the
`
`term “complementary” only once, stating in reference to Figure 17 that “the
`
`lower surfaces 104 have complementary texturing or engagement features on
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`their surfaces to engage with the texturing or engagement features on the
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`upper endplate 14 and the lower endplate 16 of the fusion device 10.” Ex.
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`1001, 8:36–40. On this record, Patent Owner has not adequately explained,
`
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`10 Patent Owner mistakenly identifies this term as appearing in claim 15.
`See Prelim. Resp. 85.
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`19
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`nor do we otherwise discern, how this statement s
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