United States Court of Appeals
`for the Federal Circuit
`______________________
`
`IN RE: WARSAW ORTHOPEDIC, INC.,
`Appellant
`______________________
`
`2015-1050, 2015-1058
`______________________
`
`Appeals from the United States Patent and Trade-
`mark Office, Patent Trial and Appeal Board in Nos.
`IPR2013-00206 and IPR2013-00208.
`______________________
`
`Decided: August 9, 2016
`______________________
`
`JOHN C. O’QUINN, Kirkland & Ellis LLP, Washington,
`DC, argued for appellant. Also represented by WILLIAM H.
`BURGESS, BRIAN H. GOLD; LUKE DAUCHOT, STEVEN
`PAPAZIAN, NIMALKA R. WICKRAMASEKERA, Los Angeles, CA.
`
`MONICA BARNES LATEEF, Office of the Solicitor, United
`States Patent and Trademark Office, Alexandria, VA, argued
`for intervenor Michelle K. Lee. Also represented by THOMAS
`W. KRAUSE,
`STACY BETH MARGOLIES,
`SCOTT
`WEIDENFELLER.
`
`______________________
`
`Before PROST, Chief Judge, BRYSON and WALLACH, Circuit
`Judges.
`WALLACH, Circuit Judge.
`
`WARSAW2065
`NuVasive, Inc. v. Warsaw Orthopedic, Inc.
`Case IPR2013-00206
`
`

`
`2
`
` IN RE: WARSAW ORTHOPEDIC, INC.
`
`Based on two petitions filed by NuVasive, Inc.
`
`(“NuVasive”), the United States Patent and Trademark
`Office’s (“USPTO”) Patent Trial and Appeal Board
`(“PTAB”) instituted inter partes reviews of claims 1–30 of
`U.S. Patent No. 8,251,997 (“the ’997 patent”). In separate
`Final Written Decisions, the PTAB found claims 1–8 and
`17–23 obvious and therefore invalid. See NuVasive, Inc.
`v. Warsaw Orthopedic, Inc. (NuVasive I), No. IPR2013-
`00208, 2014 WL 3422010 (P.T.A.B. July 10, 2014) (ad-
`dressing claims 1–8); NuVasive, Inc. v. Warsaw Orthope-
`dic, Inc. (NuVasive II), No. IPR2013-00206, 2014 WL
`3422008 (P.T.A.B. July 10, 2014) (addressing claims 9–
`30).
`Warsaw Orthopedic, Inc. (“Warsaw”), the assignee of
`the ’997 patent, appeals.1 We affirm-in-part, vacate-in-
`part, and remand.
`
`DISCUSSION
`I. Subject Matter Jurisdiction and Standard of Review
`This court possesses subject matter jurisdiction pur-
`suant to 28 U.S.C. § 1295(a)(4)(A) (2012). We review the
`PTAB’s legal conclusions de novo, Redline Detection, LLC
`v. Star Envirotech, Inc., 811 F.3d 435, 449 (Fed. Cir.
`2015), and its factual findings for substantial evidence, In
`re Gartside, 203 F.3d 1305, 1316 (Fed. Cir. 2000). “Sub-
`stantial evidence is something less than the weight of the
`evidence but more than a mere scintilla of evidence.” In
`re Moutett, 686 F.3d 1322, 1331 (Fed. Cir. 2012).
`
`1 NuVasive initially appealed several aspects of the
`PTAB’s decisions, but later terminated its appeal (No.
`2015-1049) and withdrew from Warsaw’s appeals (Nos.
`2015-1050 and -1058). We permitted the USPTO to
`participate in oral argument in defense of the PTAB’s
`decisions.
`
`

`
`IN RE: WARSAW ORTHOPEDIC, INC.
`
`3
`
`II. Substantial Evidence Supports Some, But Not All, of
`the PTAB’s Obviousness Findings
`A patent claim is invalid “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 [(‘PHOSITA’)] to
`which said subject matter pertains.” 35 U.S.C. § 103(a)
`(2006).2 Obviousness is a question of law based on under-
`lying findings of fact. Gartside, 203 F.3d at 1316. The
`underlying factual findings include (1) “the scope and
`content of the prior art,” (2) “differences between the prior
`art and the claims at issue,” (3) “the level of ordinary skill
`in the pertinent art,” and (4) the presence of secondary
`considerations of nonobviousness such “as commercial
`success, long felt but unsolved needs, [and] failure of
`others.” Graham v. John Deere Co. of Kan. City, 383 U.S.
`1, 17–18 (1966).
`Warsaw contests the PTAB’s findings that claims 1–8
`and 17–23 of the ’997 patent would have been obvious
`over various prior art references. We address the claims
`in turn.
`
`A. The ’997 Patent
`A brief review of the anatomy of the human spine will
`provide the context necessary to understand the invention
`disclosed in the ’997 patent. A human spine contains
`twenty-four vertebrae divided over three regions: seven
`cervical (neck), twelve thoracic (chest), and five lumbar
`
`2 Congress amended § 103 when it passed the
`Leahy-Smith America Invents Act (“AIA”). Pub. L. No.
`112-29, § 3(c), 125 Stat. 284, 287 (2011). However, be-
`cause the application that led to the ’997 patent was filed
`before March 16, 2013, the pre-AIA § 103 applies. Id.
`§ 3(n)(1), 125 Stat. at 293.
`
`

`
`4
`
`
`
` IN RE: WARSAW ORTHOPEDIC, INC.
`
`(lower) vertebrae. Each vertebra has three parts, includ-
`ing a body. A vertebral body has three components: the
`“endplate,” which is at the center and contains blood
`vessels, as well as the “apophyseal ring” (tracing the
`circumference of a vertebral body) and the “cortical rim”
`(constituting the edge of the vertebral body), which are
`made of dense bone and do not contain blood vessels.
`Discs occupy the space between the vertebrae, absorbing
`shock.
`The ’997 patent relates to spinal surgery that “in-
`sert[s] an artificial implant between two adjacent verte-
`brae” from a patient’s side. ’997 patent, Abstract. In
`particular, the ’997 patent discloses “instrumentation and
`methods of performing surgical procedures on the human
`thoracic and lumbar spine along the lateral aspect [(i.e.,
`side)] of the spine” to correct “thoracic and lumbar disc
`disease and spinal deformities where concomitant fusion
`is desired.” Id. col. 1 ll. 17–23. The lateral approach to
`spinal surgery disclosed by the ’997 patent seeks to avoid
`complications that may arise when the surgery is per-
`formed anteriorly or posteriorly (i.e., from the front or
`back of a patient). Id. col. 3 ll. 22–23.
`The ’997 patent contains four independent claims—
`including claims 1 and 17—and twenty-six dependent
`claims. Id. col. 22 l. 47–col. 28 l. 37. Independent claims
`1 and 17 follow a similar structure: they recite a method
`that begins with an incision in the patient’s side, followed
`by steps of advancing specific instruments into the surgi-
`cal path and inserting an implant between the vertebrae
`to be fused. See id. col. 22 l. 47–col. 23 l. 39 (claim 1); id.
`col. 25 l. 18–col. 26 l. 24 (claim 17). In relevant part,
`independent claim 1 recites
`[i]nserting . . . a non-bone interbody intraspinal
`implant . . . , the length of said implant being
`sized to occupy substantially the full transverse
`width of the vertebral bodies of the two adjacent
`
`

`
`IN RE: WARSAW ORTHOPEDIC, INC.
`
`5
`
`vertebrae, the length of said implant being greater
`than the depth of the disc space, . . . [and] the
`length of said implant being greater than the max-
`imum height of said implant.
`Id. col. 23 ll. 19–39 (emphases added). Independent claim
`17 recites nearly identical language. Id. col. 26 ll. 3–24
`(claim 17). The “length” is measured laterally, consistent
`with the direction of the insertion, from the “insertion
`end” to the “trailing end.” See, e.g., id. col. 23 ll. 24–26
`(claim 1). These appeals principally concern the length of
`the implant recited in the ’997 patent’s independent
`claims.3
`B. Substantial Evidence Supports the PTAB’s Findings as
`to Brantigan and the Motivation to Combine Prior Art
`References
`The PTAB found that claims 1 and 17 of the ’997 pa-
`tent would have been obvious over a combination of three
`prior art references: U.S. Patent Nos. 4,545,374 (“Jacob-
`son”) and 5,192,327 (“Brantigan”); and Hansjorg F. Leu &
`Adam Schreiber, Percutaneous Fusion of the Lumbar
`Spine: A Promising Technique, St. Art Revs., Sept. 1992,
`at 593–604 (“Leu”) (J.A. 493–506). See NuVasive I, 2014
`
`
`3 Claims 2–8 and 18–23 depend from independent
`claims 1 and 17, respectively. See ’997 patent col. 23 ll.
`40–59 (claims 2–8); id. col. 26 ll. 25–42 (claims 18–23).
`Warsaw does not argue the merits of the dependent
`claims separately or attempt to distinguish them from
`prior art. Therefore, the dependent claims stand or fall
`with their attendant independent claim. See, e.g., In re
`Kaslow, 707 F.2d 1366, 1376 (Fed. Cir. 1983) (“Since the
`claims are not separately argued, they all stand or fall
`together.” (citation omitted)).
`
`

`
`6
`
`
`
` IN RE: WARSAW ORTHOPEDIC, INC.
`
`WL 3422010, at *4–13.4 Warsaw challenges the PTAB’s
`factual findings regarding the teachings of Brantigan as
`well as its finding of a motivation to combine Brantigan
`with Leu and Jacobson. We discuss each issue in turn.
`1. Brantigan
`Warsaw alleges that “Brantigan does not disclose an
`implant with any dimension spanning ‘substantially the
`full transverse width’ of a vertebra” as recited in claims 1
`and 17 of the ’997 patent, such that the PTAB erred in
`finding claims 1 and 17 obvious in light of Brantigan.
`Warsaw’s Br. 60 (capitalization omitted). According to
`Warsaw, “Brantigan’s specification and claims repeatedly
`and specifically explain that its implants must be re-
`cessed within the vertebrae to sit on the endplate portion
`of the vertebra—which, as a matter of anatomy, is sub-
`stantially shorter than the full width of a vertebra.” Id. at
`61 (emphasis modified) (citations omitted).
`Warsaw’s argument assumes that the limitation “sub-
`stantially the full transverse width” in claims 1 and 17 of
`the ’997 patent means that the length of the patented
`implant must extend beyond a vertebra’s endplate to
`include the apophyseal ring. However, the PTAB properly
`concluded that
`claim 1 recites an implant being sized to occupy
`substantially the full transverse width of the ver-
`tebral body. [Warsaw] does not show that claim 1
`also recites an implant being sized to extend onto
`the apophyseal ring of the vertebral body or an
`
`4 The PTAB’s analysis of claim 1 is identical to its
`analysis of claim 17. Compare NuVasive I, 2014 WL
`3422010, at *4–13 (claim 1), with NuVasive II, 2014 WL
`3422008, at *4–14 (claim 17). Unless otherwise noted, we
`refer only to the PTAB’s analysis of claim 1 in NuVasive I
`for ease of reference.
`
`

`
`IN RE: WARSAW ORTHOPEDIC, INC.
`
`7
`
`implant being sized to extend beyond a central re-
`gion of a vertebral body. Nor does [Warsaw] point
`to an explicit disclosure in the [s]pecification [of
`the ’997 patent] regarding the length of the im-
`plant with respect to the alleged “apophyseal
`ring.”
`NuVasive I, 2014 WL 3422010, at *9; see also NuVasive II,
`2014 WL 3422008, at *10 (providing a similar analysis
`with respect to claim 17). The subject claims’ text sup-
`ports the PTAB’s conclusion. See ’997 patent col. 23 ll.
`26–29 (where claim 1 recites “the length of said implant
`being sized to occupy substantially the full transverse
`width of the vertebral bodies of the two adjacent verte-
`brae,” but does not recite anything about the apophyseal
`ring); id. col. 26 ll. 10–12 (reciting substantially the same
`in claim 17).
`Warsaw next contends “[t]he PTAB’s conclusion that
`Brantigan teaches an implant sized to span substantially
`the full transverse width of adjacent vertebrae depends on
`its fundamental misunderstanding of the statement that
`the Brantigan implant is ‘generally shaped and sized to
`conform with the disc space’” between the adjacent verte-
`brae. Warsaw’s Br. 64 (citations omitted). That “an
`implant is designed to fit the disc space” between the
`adjacent vertebrae, Warsaw contends, “does not reveal
`what all of its dimensions are.” Id. at 66.
`When the PTAB examines the scope and content of
`prior art, such as Brantigan, it must consider the prior art
`“in its entirety, i.e., as a whole.” Panduit Corp. v. Den-
`nison Mfg. Co., 810 F.2d 1561, 1568 (Fed. Cir. 1987)
`(citation omitted). An examination of the scope and
`content of the prior art produces factual findings reviewed
`for substantial evidence. Gartside, 203 F.3d at 1316.
`Substantial evidence supports the PTAB’s finding
`that Brantigan teaches an implant that spans substan-
`tially the full width of a vertebra, as recited in claims 1
`
`

`
`8
`
`
`
` IN RE: WARSAW ORTHOPEDIC, INC.
`
`and 17 of the ’997 patent. The PTAB observed that
`“Brantigan discloses, for example, a ‘plug . . . generally
`shaped and sized to conform with the disc space between
`adjoining vertebrae in a vertebral column.’” NuVasive I,
`2014 WL 3422010, at *8 (citing Brantigan col. 4 ll. 6–8).
`Based on this evidence, the PTAB reasoned that
`it would have been obvious to one of ordinary skill
`in the art that an implant that is “sized to con-
`form with the disc space,” as disclosed by Branti-
`gan, would have occupied at least a length that is
`less than the full transverse width of the vertebral
`bodies by an insubstantial amount (i.e., occupying
`“substantially” the full transverse width). Other-
`wise, an implant that does not occupy “substan-
`tially” the full transverse width would not have
`been sized to conform to the disc space, in contrast
`to Brantigan’s disclosure that the implant is, in
`fact, sized to conform to the disc space.
`Id. at *9. The evidence cited and rationale provided by
`the PTAB comports with what our precedent demands.
`See, e.g., In re Zurko, 258 F.3d 1379, 1386 (Fed. Cir. 2001)
`(“[T]he [PTAB] must point to some concrete evidence in
`the record in support of [its] findings.” (footnote omitted));
`see also In re Lee, 277 F.3d 1338, 1342 (Fed. Cir. 2002)
`(“Judicial review of a [PTAB] decision . . . is thus founded
`on the obligation of the agency to make the necessary
`findings and to provide an administrative record showing
`the evidence on which the findings are based, accompa-
`nied by the agency’s reasoning in reaching its conclu-
`sions.” (citations omitted)). To the extent that Warsaw
`argues the PTAB erred because it did not decide whether
`Brantigan discloses dimensions that exactly meet the
`limitation “substantially the full transverse width” in
`claims 1 and 17 of the ’997 patent, Warsaw’s Br. 66,
`Warsaw misunderstands the governing law, see, e.g.,
`Beckson Marine, Inc. v. NFM, Inc., 292 F.3d 718, 727
`
`

`
`IN RE: WARSAW ORTHOPEDIC, INC.
`
`9
`
`(Fed. Cir. 2002) (“[O]bviousness does not require the prior
`art to reach expressly each limitation exactly.”).
`Warsaw also argues that the PTAB erred because
`“Brantigan does not disclose an implant with a ‘length’
`substantially the full transverse width of a vertebra.”
`Warsaw’s Br. 69 (capitalization omitted). That is so,
`Warsaw argues, because “[t]he Brantigan implants were
`not designed or intended for lateral implantation,” but
`rather concern implants surgically inserted anteriorly or
`posteriorly. Id. at 71.
`Warsaw’s argument misunderstands the PTAB’s find-
`ings. The PTAB concluded that the lateral insertion
`aspect would have been obvious in view of Jacobson, not
`Brantigan. NuVasive I, 2014 WL 3422010, at *11 (“Ja-
`cobson discloses or suggests th[e lateral] feature. We
`need not determine whether one of ordinary skill in the
`art would have understood Brantigan to also disclose this
`feature.”). Warsaw does not separately contest the
`PTAB’s findings as to Jacobson, at least on this point. See
`Warsaw’s Br. 69–73. Thus, we will not disturb this aspect
`of the PTAB’s decision. See Nat’l Steel Car, Ltd. v. Cana-
`dian Pac. Ry., Ltd., 357 F.3d 1319, 1336–37 (Fed. Cir.
`2004) (rejecting argument directed at the wrong prior
`art). In any event, the record belies Warsaw’s argument
`that the Brantigan implants were not designed for lateral
`implantation. Brantigan col. 6 ll. 62–68 (“[T]he plugs of
`this invention . . . are inserted into the opened up disc
`space . . . either anteriorly, laterally[,] or posterior-
`ly . . . .”).
`Warsaw further alleges that “Brantigan does not dis-
`close implants with a length—or any dimension—‘greater
`than the depth of the disc space,’” as claims 1 and 17 of
`the ’997 patent recite. Warsaw’s Br. 73 (capitalization
`omitted). However, in its response to NuVasive’s petition,
`Warsaw did not raise this argument. Accordingly, War-
`saw has waived this argument. See, e.g., Redline, 811
`
`

`
`10
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`
`
` IN RE: WARSAW ORTHOPEDIC, INC.
`
`F.3d at 450 (explaining that this court does not consider
`arguments not raised before the PTAB).
`Warsaw also argues that “Brantigan’s disclosure of
`implants that can be rotated or reversed teaches away
`from the ’997 patent.” Warsaw’s Br. 77. We disagree that
`Brantigan’s disclosure of implants that can be rotated or
`reversed teaches away from the claimed invention. A
`reference “teach[es] away when a person of ordinary skill,
`upon reading the reference, would be discouraged from
`following the path set out in the reference.” Galderma
`Labs., L.P. v. Tolmar, Inc., 737 F.3d 731, 738 (Fed. Cir.
`2013) (citation omitted). Whether a reference teaches
`away presents a factual question reviewed for substantial
`evidence. See In re Urbanski, 809 F.3d 1237, 1241 (Fed.
`Cir. 2016) (examining “whether the prior art teaches
`away from the claimed invention” produces “factual
`findings”). Warsaw’s argument asks the court to elevate
`one aspect of Brantigan (i.e., that the implants can be
`rotated or reversed prior to implantation) over another
`(i.e., that the implants are sized to conform with the disc
`space). The PTAB concluded that, regardless of whether
`the Brantigan implants may be rotated or reversed,
`“Brantigan discloses that the implant is ‘sized to conform
`with the disc space,’ which one of ordinary skill in the art
`would have understood to mean sized to occupy substan-
`tially the full transverse widths of the vertebral bodies for
`reasons previously stated.”
` NuVasive I, 2014 WL
`3422010, at *11. We may not reweigh this evidence on
`appeal. See In re NTP, Inc., 654 F.3d 1279, 1292 (Fed.
`Cir. 2011) (We do “not reweigh evidence on appeal, but
`rather determine[] whether substantial evidence supports
`the [PTAB’s] fact findings.”).
`2. Motivation to Combine Prior Art References
`As part of the obviousness inquiry, we consider
`“whether a [PHOSITA] would have been motivated to
`combine the prior art to achieve the claimed invention
`
`

`
`IN RE: WARSAW ORTHOPEDIC, INC.
`
`11
`
`and whether there would have been a reasonable expecta-
`tion of success in doing so.” DyStar Textilfarben GmbH &
`Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356,
`1360 (Fed. Cir. 2006) (citation omitted). The answers to
`these questions require producing factual findings that we
`review for substantial evidence. See Gartside, 203 F.3d at
`1316 (discussing motivation to combine); see also Alza
`Corp. v. Mylan Labs., Inc., 464 F.3d 1286, 1289 (Fed. Cir.
`2006) (discussing reasonable expectation of success).
`Warsaw alleges that “[t]he entire affirmative portion
`of the [PTAB’s] analysis” regarding motivation to combine
`is insufficient as a matter of law because it reflects “a
`belief that one of ordinary skill in the art could combine
`[Jacobson, Leu, and Brantigan], not that [one] would have
`been motivated to do so.” Warsaw’s Br. 79–80 (internal
`quotation marks and citations omitted). According to
`Warsaw, the PTAB “did not supply the necessary expla-
`nation or evidence for combining Jacobson, Leu, and
`Brantigan because it could not.” Id. at 82.
`We disagree with Warsaw that the PTAB’s analysis
`suffers from legal error or that the PTAB failed to supply
`the requisite explanation in support of its conclusions. In
`its analysis, the PTAB determined that a PHOSITA
`“would have” been motivated to combine Jacobson, Leu,
`and Brantigan, and provided a reasoned explanation for
`reaching that conclusion. See NuVasive I, 2014 WL
`3422010, at *12 (“[T]he 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).” (emphasis added)); see also id. at *12–13
`(providing a full motivation-to-combine analysis). The
`true nature of Warsaw’s arguments reflects a collateral
`
`

`
`12
`
`
`
` IN RE: WARSAW ORTHOPEDIC, INC.
`
`attack on the teachings of the prior art references, based
`on aspects of the references that it finds more persuasive
`than did the PTAB. See Warsaw’s Br. 83–85. Those
`arguments contest the weight the PTAB afforded to the
`record evidence, but we may not reweigh facts already
`considered by the PTAB. See NTP, 654 F.3d at 1292.
`C. The PTAB Did Not Adequately Explain How Jacobson
`Discloses Claim 17’s “Elongated Portions” Limitation
`Finally, Warsaw raises an argument specific to a limi-
`tation in claim 17 of the ’997 patent. In relevant part,
`claim 17 requires the positioning of a surgical instrument
`with “elongated portions” so that at least part of one
`elongated portion “is over one of the two adjacent verte-
`brae and at least part of another . . . elongated portion[] is
`over the other of the two adjacent vertebrae.” ’997 patent
`col. 25 l. 65–col. 26 l. 2. Warsaw contends that “no sub-
`stantial evidence support[s] the [PTAB]’s conclusion that
`Jacobson discloses a surgical instrument with ‘elongated
`portions’ positioned” over adjacent vertebrae, as recited by
`claim 17. Warsaw’s Br. 86. Warsaw avers that the PTAB
`erred in finding that “anchor wires” in Jacobson meets the
`“positioned over” limitation recited in claim 17. See id.
`Warsaw raises several arguments that it did not pre-
`sent to the PTAB. Compare id. at 86–90, with J.A. 1213
`(where, before the PTAB, Warsaw argued only that “claim
`17 recites a third surgical instrument with at least two
`elongated portions that are positioned over adjacent
`vertebral bodies. [NuVasive] relies solely on Jacobson’s
`wires for this element. These portions are not ‘positioned
`over’ adjacent vertebrae. Instead, the wires ‘are advanced
`into the disc capsule.’” (citation omitted)). In responding
`to this narrow argument, the PTAB found that Warsaw
`did “not provide sufficient evidence of specific differences
`between the ‘elongated portion’ being ‘positioned over’
`adjacent vertebrae, as recited in claim 17, and the ‘anchor
`wires’ [disclosed in Jacobson] that are also ‘positioned
`
`

`
`IN RE: WARSAW ORTHOPEDIC, INC.
`
`13
`
` NuVasive II, 2014 WL
`over’ adjacent vertebrae.”
`3422008, at *13. Based on the limited argument before it,
`we cannot say that the PTAB erred in rejecting Warsaw’s
`argument. “If all of the arguments made on appeal had
`been made to [the agency] and the record made to support
`them, [the agency] may well have reached a different
`conclusion”; however, we may not “entertain new argu-
`ments[] and reverse [the agency] on the basis of them.”
`Jacobi Carbons AB v. United States, 619 F. App’x 992,
`1001 (Fed. Cir. 2015) (unpublished).
`Nevertheless, as we stated above, the PTAB main-
`tains the independent “obligation . . . to make the neces-
`sary findings and to provide an administrative record
`showing the evidence on which the findings are based,
`accompanied by the agency’s reasoning in reaching its
`conclusions.” Lee, 277 F.3d at 1342 (emphasis added)
`(citations omitted). As for its reasoning, the PTAB “must
`articulate ‘logical and rational’ reasons for [its] decisions.”
`Synopsys, Inc. v. Mentor Graphics Corp., 814 F.3d 1309,
`1322 (Fed. Cir. 2016) (citation omitted). We may affirm
`the PTAB’s finding “if we may reasonably discern that it
`followed a proper path, even if that path is less than
`perfectly clear.” Ariosa Diagnostics v. Verinata Health,
`Inc., 805 F.3d 1359, 1365 (Fed. Cir. 2015) (citation omit-
`ted).
`We cannot reasonably discern that the PTAB’s deci-
`sion as to the “elongated portions” limitation in claim 17
`followed the proper path. The PTAB’s affirmative narra-
`tive in support of its finding that Jacobson discloses the
`subject limitation in claim 17 consists of a single sentence:
`“Jacobson appears to disclose anchor wires (i.e., ‘elongated
`portions’) that are positioned over adjacent vertebrae.”
`NuVasive II, 2014 WL 3422008, at *13 (citing Jacobson
`fig.5). The PTAB’s conclusory assertion that Figure 5 of
`Jacobson “appears to” support its finding does not equate
`to the reasoned explanation needed to support its conclu-
`sion. See Synopsys, 814 F.3d at 1322; see also Lee, 277
`
`

`
`14
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` IN RE: WARSAW ORTHOPEDIC, INC.
`
`F.3d at 1345 (“The [PTAB] cannot rely on conclusory
`statements when dealing with . . . prior art and specific
`claims, but must set forth the rationale on which it re-
`lies.”). Thus, we remand this issue to the PTAB for addi-
`tional explanation.
`Finally, we take no position on whether Jacobson,
`taken as a whole, discloses the “elongated portions”
`limitation in claim 17, for that is a matter for the PTAB to
`decide on remand. See Gartside, 203 F.3d at 1316 (exam-
`ining the scope and content of the prior art produces
`factual findings reviewed for substantial evidence); see
`also Ariosa, 805 F.3d at 1365 (“[W]e must not ourselves
`make factual and discretionary determinations that are
`for the [USPTO] to make.” (citations omitted)). If the
`PTAB determines on remand that Jacobson does not
`disclose the “elongated portions” limitation in claim 17, it
`may take additional actions that it deems appropriate.
`CONCLUSION
`We have considered the remaining arguments and
`find them unpersuasive. Accordingly, the Final Written
`Decisions of the United States Patent and Trademark
`Office’s Patent Trial and Appeal Board are
`AFFIRMED-IN-PART, VACATED-IN-PART, AND
`REMANDED
`COSTS
`Each party shall bear its own costs.