Trials@uspto.gov
`571-272-7822
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`Paper 67
`Date: August 28, 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`_____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
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`NUVASIVE, INC.,
`Petitioner,
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`v.
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`WARSAW ORTHOPEDIC, INC.,
`Patent Owner.
`____________
`
`Case IPR2013-00206
`Patent 8,251,997 B2
`____________
`
`
`Before SALLY C. MEDLEY, LORA M. GREEN, and STEPHEN C. SIU,
`Administrative Patent Judges.
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`SIU, Administrative Patent Judge.
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`DECISION
`Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71(d)
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`

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`IPR2013-00206
`Patent 8,251,997 B2
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`I.
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`BACKGROUND
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`NuVasive, Inc. (“Petitioner”) requests reconsideration of the Board’s final
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`written decision (“Decision” or “Dec.”), dated July 10, 2014 (Paper 65). In the
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`Decision, we determined that Petitioner has not shown by a preponderance of the
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`evidence that claims 9–16 and 24–30 of US Patent No. 8,251,997 B2 ( “the ’997
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`patent”), which is assigned to Warsaw Orthopedic, Inc. (“Patent Owner”), are
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`unpatentable. Dec. at 36.
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`We have considered Petitioner’s request, but we decline to modify the final
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`written decision.
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`II.
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`STANDARD OF REVIEW
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`A party challenging a final written decision by way of a request for
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`rehearing must identify specifically all matters the party believes the Board
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`misapprehended or overlooked. 37 C.F.R. § 42.71(d). The challenging party bears
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`the burden of showing that the decision should be modified. Id.
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`III. DISCUSSION
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`Claim 9 recites “the length of said implant being sized to occupy
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`substantially the full transverse width of the vertebral bodies of the two adjacent
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`vertebrae.” Petitioner argues that we “overlook[ed] or misapprehend[ed] the clear
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`teachings of Michelson ’247 (particularly Figure 5 and col. 5, lines 1-7)” in
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`concluding that Michelson ’247 fails to disclose or suggest this feature. Req.
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`Reh’g. 3. We disagree with Petitioner.
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`Michelson ’247 discloses that “the present invention offers . . . greater
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`surface area [as compared to the BAGBY device] to distribute the load” and is
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`2
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`IPR2013-00206
`Patent 8,251,997 B2
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`“placed bilaterally where the bone tends to be more cortical and much stronger.”
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`Ex. 1008, 5:2-7. Contrary to Petitioner’s contention, Michelson ’247 merely
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`discloses a device with greater surface area than the “BAGBY device” and that the
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`device is placed bilaterally. Petitioner does not show sufficiently that Michelson
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`’247 also discloses that the implant is sized to occupy substantially the full
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`transverse width of the vertebral bodies. Regarding Figure 5, we note that
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`Michelson ’247 merely discloses that Figure 5 is “a sectional view of the vertebra
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`structure, taken along lines 5—5 of FIG. 4.” Ex. 1008, 7:61-62. Petitioner does
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`not show sufficiently that Michelson ’247 discloses that Figure 5 is drawn to scale
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`or any specific measurements of the components illustrated therein. “[I]t is well
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`established that patent drawings do not define the precise proportions of the
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`elements and may not be relied on to show particular sizes if the specification is
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`completely silent on the issue.” Hockerson-Halberstadt, Inc. v. Avia Group Int’l,
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`Inc., 222 F.3d 951, 956 (Fed. Cir. 2000) (citing In re Wright, 569 F.2d 1124, 1127
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`(CCPA 1977)).
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`As previously discussed in the Decision, Michelson ’247 discloses “an
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`implant that measures 26 millimeters in length [that] is inserted into a drilled
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`opening that is 28 millimeters in length.” Decision 32. Petitioner does not show
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`persuasively that Michelson ’247 discloses that the device is sized at 26
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`millimeters or that the drilled opening is sized at 28 millimeters in order to be sized
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`to occupy substantially the full transverse width of the vertebral bodies. In fact,
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`Michelson ’247 does not disclose the size of the vertebral bodies at all. Hence,
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`Michelson ’247 does not disclose or suggest that the implant is sized to occupy
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`substantially the full transverse width of the vertebral bodies. At best, Michelson
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`’247 merely discloses that the implant is sized to measure 26 millimeters without
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`regard to the size of the vertebral bodies, as previously explained in the Decision.
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`3
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`IPR2013-00206
`Patent 8,251,997 B2
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`Petitioner argues that Michelson ’247 discloses that “the present device is
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`placed bilaterally where the bone tends to be more cortical and much stronger
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`out towards the rim.” Req. Reh’g. 4. Petitioner contends that this disclosure
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`indicates that Michelson ’247 discloses an implant that is sized to occupy
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`substantially the full transverse width of the vertebral bodies of the two adjacent
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`vertebrae, as recited in claim 9. We disagree. Rather, Michelson ’247 discloses
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`that a device is placed bilaterally, which refers to the location at which the device
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`is placed (i.e., bilaterally) and does not refer to the size of device (i.e., whether the
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`device is sized to occupy substantially the full transverse width of the vertebral
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`bodies or not).
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`Petitioner further argues that the Decision overlooks or misapprehends that
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`the combination of Michelson ’247 and Jacobson discloses or suggests an implant
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`sized to occupy substantially the full transverse width of the vertebral bodies of the
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`two adjacent vertebrae, as recited in claim 9. Req. Reh’g. 6-8. In particular,
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`Petitioner argues that “Jacobson supplies the teaching of the lateral approach.”
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`Req. Reh’g. 7. As described in the Decision and reiterated above, Michelson ’247
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`fails to disclose or suggest an implant sized to occupy substantially the full
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`transverse width of the vertebral bodies of the two adjacent vertebrae. Petitioner
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`does not contend that Jacobson discloses or suggests an implant sized to occupy
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`substantially the full transverse width of the vertebral bodies of the two adjacent
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`vertebrae. Hence, Petitioner has not shown sufficiently how either Michelson ’247
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`or Jacobson discloses or suggests this claim feature. Petitioner does not explain
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`sufficiently how this feature would have been obvious to one of ordinary skill in
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`the art in view of the lack of such a suggestion in any of the cited references.
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`Petitioner further argues that claim 9 would have been obvious to one of
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`ordinary skill in the art given that Michelson suggests the use of “a longer
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`IPR2013-00206
`Patent 8,251,997 B2
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`threaded fusion implant” and that “a fusion implant . . . should extend long
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`enough to rest on the cortical bone towards the outer rim.” Req. Reh’g. 8, 11.
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`However, Petitioner does not demonstrate sufficiently that Michelson ’247
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`discloses or suggests these features. Rather, Michelson ’247 appears to disclose
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`merely an implant measuring 26 millimeters in length that is inserted into a drilled
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`opening that is 28 millimeters in length. In any event, claim 9 recites the length of
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`said implant being sized to occupy substantially the full transverse width of the
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`vertebral bodies of the two adjacent vertebrae. Claim 9 does not recite “a longer
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`threaded fusion implant” or an implant that “extends long enough to rest on the
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`cortical bone towards the outer rim.” Thus, even assuming that Michelson ’247
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`discloses or suggests a longer threaded fusion implant that extends long enough to
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`rest on the cortical bone towards the outer rim, we are still not persuaded by
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`Petitioner’s argument.
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`Claim 24 recites the length of said implant being sized to occupy the full
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`transverse width of the vertebral bodies of the two adjacent vertebrae. In the
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`Decision, we concluded that Petitioner did not “assert or demonstrate sufficiently
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`that Michelson ’247 discloses or suggests an implant sized to occupy the full
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`transverse width of the vertebral bodies.” Decision 32–33. Petitioner argues that
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`“under a broadest reasonable construction standard [the term “full transverse
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`width,” as recited in claim 24, should be construed] to be the same as the phrase
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`‘substantially the full transverse width’ in claim 9.” Req. Reh’g. 13. We need not
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`further consider Petitioner’s proposal to construe the term “full” (as recited in
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`claim 24) to mean “substantially full” because Petitioner does not show
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`persuasively that the asserted combination of references discloses or suggests an
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`implant being sized to occupy either the full width (claim 24) or substantially the
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`full transverse width of the vertebral bodies, as recited in claim 9.
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`5
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`IPR2013-00206
`Patent 8,251,997 B2
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`Petitioner does not provide additional arguments in support of claims 10-16
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`or 25-30.
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`IV. CONCLUSION
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`For at least the reasons given, we determine that Petitioner has not carried its
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`burden of demonstrating that the Board misapprehended or overlooked any matters
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`in rendering the final written decision. We decline to modify the final written
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`decision.
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`V. ORDER
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`Accordingly, it is
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`ORDERED that the request for rehearing is denied.
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`6
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`IPR2013-00206
`Patent 8,251,997 B2
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`PETITIONER:
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`Stephen Schaefer
`Michael Hawkins
`Fish and Richardson PC
`schaefer@fr.com
`hawkins@fr.com
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`PATENT OWNER:
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`Thomas Martin
`Wesley Meinerding
`Martin and Ferraro LLP
`tmartin@martinferraro.com
`wmeinerding@martinferraro.com
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