`Tel: 571-272-7822
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` Paper 73
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` Entered: November 16, 2016
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`
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`NUVASIVE, INC.
`Petitioner
`
`v.
`
`WARSAW ORTHOPEDIC, INC.
`Patent Owner
`_______________
`
`Case IPR2013-00206
`Patent 8,251,997 B2
`
`_______________
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`Before SALLY C. MEDLEY, LORA M. GREEN, and STEPHEN C. SIU,
`Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`
`
`
`
`On July 10, 2014, the Board issued a Final Written Decision in accordance
`with 37 C.F.R. § 42.73. Paper 65 (“Final Dec.”). The Board concluded that
`Petitioner had shown by a preponderance of the evidence that claims 17–23 of the
`
`
`
`IPR2013-00206
`Patent 8,251,997 B2
`
`’997 patent are unpatentable over the combination of Jacobsen1, Leu2, and
`Brantigan3, but had not shown by a preponderance of the evidence that claims 9–16
`and 24–30 of the ’997 patent are unpatentable. Final Dec. 31, 36. Both parties
`appealed the decision to the United States Court of Appeals for the Federal Circuit,
`but Petitioner subsequently withdrew its appeal and is no longer a party to the
`proceeding.
`With respect to the claims involved in this proceeding, the Federal Circuit
`vacated the Board’s decision that claims 17–23 are unpatentable over Jacobson,
`Leu, and Brantigan and remanded the case for additional explanation. In Re
`Warsaw Orthopedic, Inc., 832 F.3d 1327 (Fed. Cir. 2016). In particular, the
`Federal Circuit remanded the case for the Board to provide additional explanation
`regarding our finding that Jacobson’s anchor wires positioned over adjacent
`vertebrae meet the claim 17 “elongated portions” limitation.
`On November 15, 2016, a conference call was held involving counsel for
`Patent Owner, and Judges Medley, Green, and Siu.4 Based on the discussion had
`during the conference call regarding the Federal Circuit remand, we determine that
`additional briefing is warranted. In particular, Patent Owner is authorized to file a
`brief limited to ten pages for the sole purpose of addressing the “elongated
`
`1 U.S. Patent No. 4,545,374 (issued Oct. 8, 1985) (Ex. 1004) (“Jacobson”).
`2 Hansjörg F. Leu and Adam Schreiber; Percutaneous Fusion of the Lumbar
`Spine: A Promising Technique, 6(3) SPINE: STATE OF THE ART REVIEWS 593
`(Sept. 1992) (Ex. 1005) (“Leu”).
`3 U.S. Patent No. 5,192,327 (issued Mar. 9, 1993) (Ex. 1006) (“Brantigan”).
`4 Counsel for Petitioner also attended but did not otherwise participate in the call,
`and verified that Petitioner was no longer a party to the matter.
`2
`
`
`
`
`
`IPR2013-00206
`Patent 8,251,997 B2
`
`portions” limitation of claim 17. Patent Owner may file as exhibits briefs
`presented to the Federal Circuit, and may also cite to evidence of record. Patent
`Owner is not otherwise authorized to file any new evidence.
`Accordingly, it is
`ORDERED that Patent Owner is authorized to file a paper in accordance
`with this order, not to exceed ten pages, no later than December 9, 2016.
`
`
`
`PETITIONER:
`Michael T. Rosato
`mrosato@wsgr.com
`
`PATENT OWNER:
`Thomas Martin
`tmartin@martinferraro.com
`
`
`
`
`
`
`
`3
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