Trials@uspto.gov
`571-272-7822
`
`
`
` Paper 8
`
`Entered: September 11, 2014
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`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MEDTRONIC, INC.,
`Petitioner,
`
`
`
`
`
`v.
`
`NUVASIVE, INC.,
`Patent Owner.
`____________
`
`Case IPR2014-00487
`Patent 8,361,156 B2
`____________
`
`Before SALLY C. MEDLEY, LORA M. GREEN, and STEPHEN C. SIU,
`Administrative Patent Judges.
`
`GREEN, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`I.
`
`BACKGROUND
`
`Medtronic, Inc. (“Medtronic”) filed a Petition (“Pet.”) requesting an
`
`inter partes review of claims 1–14, 19, 20, and 23–27 of U.S. Patent No.
`
`8,361,156 B2 (Ex. 1013, “the ’156 patent”) on March 5, 2014. Paper 1.
`
`Patent Owner, NuVasive, Inc. (“NuVasive”), filed a Patent Owner
`
`Preliminary Response (“Prelim. Resp.”). Paper 6. We have jurisdiction
`
`under 35 U.S.C. §§ 6(b) and 314.
`
`
`571-272-7822
`
`
`
` Paper 8
`
`Entered: September 11, 2014
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MEDTRONIC, INC.,
`Petitioner,
`
`
`
`
`
`v.
`
`NUVASIVE, INC.,
`Patent Owner.
`____________
`
`Case IPR2014-00487
`Patent 8,361,156 B2
`____________
`
`Before SALLY C. MEDLEY, LORA M. GREEN, and STEPHEN C. SIU,
`Administrative Patent Judges.
`
`GREEN, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`I.
`
`BACKGROUND
`
`Medtronic, Inc. (“Medtronic”) filed a Petition (“Pet.”) requesting an
`
`inter partes review of claims 1–14, 19, 20, and 23–27 of U.S. Patent No.
`
`8,361,156 B2 (Ex. 1013, “the ’156 patent”) on March 5, 2014. Paper 1.
`
`Patent Owner, NuVasive, Inc. (“NuVasive”), filed a Patent Owner
`
`Preliminary Response (“Prelim. Resp.”). Paper 6. We have jurisdiction
`
`under 35 U.S.C. §§ 6(b) and 314.
`
`
`
`Case IPR2014-00487
`Patent 8,361,156
`
`
`Inter partes review is instituted only if the petition supporting the
`
`ground demonstrates “that there is a reasonable likelihood that the petitioner
`
`would prevail with respect to at least 1 of the claims challenged in the
`
`petition.” 35 U.S.C. § 314(a); see also 37 C.F.R. § 42.108(c) (noting that
`
`inter partes review is only instituted if the petition demonstrates “that there
`
`is a reasonable likelihood that at least one of the claims challenged in the
`
`petition is unpatentable”).
`
`
`
`Based on the circumstances in this case, we exercise our discretion
`
`under 35 U.S.C. § 325(d) to deny the Petition, and, therefore, decline to
`
`institute inter partes review.
`
`
`
`A. Related Proceedings
`
`Petitioner states it is a named counterclaim-defendant in a district
`
`court case involving the ’156 patent, Warsaw Orthopedic, Inc. v. NuVasive
`
`Inc., Case No: 3:12-cv-02738-CAB-MDD (S.D. Cal.).. Pet. 1–2.
`
`Petitioner also indicates that it previously filed two other petitions for
`
`inter partes review of the ’156 patent on August 14, 2013: “the ’504
`
`Petition” in IPR2013-00504 and “the ’506 Petition” in IPR2013-00506. Pet.
`
`2. Petitioner notes that the Board instituted trial as to the ’506 Petition as
`
`claims 1–14, 19, 20, and 23–27 of the ’156 patent (“the ’506 Proceeding”),
`
`but denied the ’504 Petition. Id. According to Petitioner, the instant Petition
`
`remedies the deficiencies of the ’504 Petition, and also “adds new arguments
`
`and evidence as to the length disclosure of U.S. Patent Appl. Pub. No.
`
`2002/0165550 to Frey.” Id.
`
`
`
`
`
`2
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`
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`Case IPR2014-00487
`Patent 8,361,156
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`B. The ’156 Patent (Ex. 1013)
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`The ’156 patent is drawn to a spinal implant, and methods of spinal
`
`fusion using the implant. ’156 patent, col. 1, ll. 20–24. A spinal fusion
`
`procedure generally involves removing some, or all, of a diseased spinal
`
`disc, and inserting an intervertebral implant into the disc space. Id. at col. 1,
`
`ll. 30–33. The spinal fusion implant is introduced into the disc space via a
`
`lateral approach to the spine, or via a posterior, anterior, antero-lateral, or
`
`postero-lateral approach. Id. at col. 5, ll. 29–35. As taught by the ’156
`
`patent, the implant is made from a material “having suitable radiolucent
`
`characteristics,” such as poly-ether-ether-ketone (PEEK). Id. at col. 5, ll. 10-
`
`15.
`
`
`
`C. Representative Claim
`
`Medtronic challenges claims 1–14, 19, 20, and 23–27 of the ’156
`
`patent. Claim 1 is the only independent claim, and reads as follows
`
`(emphasis added):
`
`1. A spinal fusion implant of non-bone construction positionable
`within an interbody space between a first vertebra and a second
`vertebra, said implant comprising:
`
`
`an upper surface including anti-migration elements to
`contact said first vertebra when said implant is positioned
`within the interbody space, a lower surface including anti-
`migration elements to contact said second vertebra when said
`implant is positioned within the interbody space, a distal wall, a
`proximal wall, a first sidewall, and a second sidewall generally
`opposite from the first sidewall, wherein said distal wall,
`proximal wall, first sidewall, and second sidewall comprise a
`radiolucent material;
`
`
`
`
`3
`
`
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`Case IPR2014-00487
`Patent 8,361,156
`
`
`wherein said implant has a longitudinal length extending
`from a proximal end of said proximal wall to a distal end of
`said distal wall, said implant has a maximum lateral width
`extending from said first sidewall to said second sidewall along
`a medial plane that is generally perpendicular to said
`longitudinal length, and said longitudinal length is greater than
`said maximum lateral width;
`
`at least a first fusion aperture extending through said
`upper surface and lower surface and configured to permit bone
`growth between the first vertebra and the second vertebra when
`said implant is positioned within the interbody space, said first
`fusion aperture having: a longitudinal aperture length extending
`generally parallel to the longitudinal length of said implant, and
`a lateral aperture width extending between said first sidewall to
`said second sidewall, wherein the longitudinal aperture length is
`greater than the lateral aperture width; and
`
`at least first and second radiopaque markers oriented
`generally parallel to a height of the implant, wherein said first
`radiopaque marker extends into said first sidewall at a position
`proximate to said medial plane, and said second radiopaque
`marker extends into said second sidewall at a position
`proximate to said medial plane.
`
`D. Prior Art Relied Upon
`
`Medtronic relies upon the following prior art references:
`
`Frey et al., US Patent Appl. Pub. No. 2002/0165550 A1,
`published November 7, 2002 (Ex. 1003) (“Frey”).
`
`Baccelli et al., US Patent Appl. Pub. No. 2003/0028249 A1,
`published February 6, 2003 (Ex. 1004) (“Baccelli”).
`
`Michelson, US 5,860,973, issued January 19, 1999 (Ex. 1005)
`(“Michelson”).
`
`
`4
`
`
`
`
`
`
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`Case IPR2014-00487
`Patent 8,361,156
`
`
`Moret, US Patent Appl. Pub. No. 2003/0100950 A1, published
`May 29, 2003 (Ex. 1006) (“Moret”).
`
`Messerli et al., US Patent Appl. Pub. No. 2003/0139813 A1,
`published July 24, 2003 (Ex. 1007) (“Messerli”).
`
`
`E. The Asserted Grounds of Unpatentability
`
`Medtronic challenges the patentability of claims of the ’156 patent on
`
`the following grounds. Pet. 4.
`
`
`
`
`
`Reference(s)
`
`Frey and Baccelli
`
`Basis
`
`§ 103
`
`§ 103
`
`Frey, Baccelli, and
`Messerli
`Frey, Baccelli, and
`Michelson
`Frey, Baccelli, and Moret § 103
`
`§ 103
`
`Baccelli and Frey and/or
`Michelson
`
`§ 103
`
`II. ANALYSIS
`
`Claims challenged
`
`1–8, 10–14, 19, 20,
`and 23–27
`1–8, 10–14, 19, 20,
`and 23–27
`1–14, 19, 20, and
`23–27
`1–8, 10–14, 19, 20,
`and 23–27
`1–8, 10–14, 19, 20,
`and 23–27
`
`Patent Owner argues that Petitioner is seeking inter partes review of
`
`claims 1–14, 19, 20, and 23–27 of the ’156 patent for a third time. Prelim.
`
`Resp. 1. According to Patent Owner, the instant Petition “is essentially a
`
`duplicate of its previously denied petition in the ’504 IPR.” Id. at 2.
`
`As set forth in 35 U.S.C. § 325(d):
`
`In determining whether to institute or order a proceeding under this
`chapter, chapter 30, or chapter 31, the Director may take into account
`whether, and reject the petition or request because, the same or
`
`
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`5
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`
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`Case IPR2014-00487
`Patent 8,361,156
`
`
`substantially the same prior art or arguments previously were
`presented to the Office.
`
`Petitioner argues that while it “is mindful of 35 U.S.C. § 325(d), the
`
`denial of the ’504 Petition has no bearing on this Petition.” Pet. 2.
`
`According to Petitioner, it is responding to “a noted deficiency,” and is
`
`providing new evidence and argument as to how the previously supplied
`
`prior art renders the challenged claims obvious. Id. at 2–3. Petitioner argues
`
`further that the grounds presented in the instant Petition are not redundant to
`
`those that were instituted in the ’506 Proceeding, as “those grounds are
`
`based on different prior art references and different arguments.” Id. at 3.
`
`
`
`Trial was instituted in the ’506 Proceeding on February 13, 2013.
`
`That proceeding involves the same patent, as well as the same claims, for
`
`which Petitioner is requesting inter partes review in the instant Proceeding.
`
`While Petitioner argues that the grounds are not redundant to those instituted
`
`on in the ’506 Proceeding, Petitioner does not provide any specific reasoning
`
`to support that argument, other than to state that the grounds are based on
`
`different prior art references. Oral argument is currently scheduled for
`
`November 18, 2014, in the ’506 proceeding.
`
`
`
`Moreover, the instant Petition presents the same prior art previously
`
`presented in the ’504 Petition, and the proposed challenges to the claims are
`
`nearly identical to the proposed challenges in the ’504 Petition. Compare
`
`Pet. 4, with ’504 Petition 3 (same claims are challenged over the same prior
`
`art references). As in the ’504 Petition, in the instant proceeding Petitioner
`
`is relying on Frey (Ex. 1003) for teaching, or suggesting, the limitation of
`
`claim 1 that the “implant has a maximum lateral width extending from said
`
`first sidewall to said second sidewall along a medial plane that is generally
`
`
`
`6
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`Case IPR2014-00487
`Patent 8,361,156
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`perpendicular to said longitudinal length, and said longitudinal length is
`
`greater than said maximum lateral width.” Pet. 19, 48 (discussion of
`
`element “Claim 1 [E]”); see also IPR2013-00504, Paper 7, 6 (noting that
`
`Frey is relied upon as to all the asserted challenges to teach the recited
`
`limitation).
`
`
`
`We have considered the papers filed in this proceeding, as well as the
`
`Petition and papers filed in the request for inter partes review in IPR2013-
`
`00504. Petitioner has not provided any persuasive reasoning as to why we
`
`should institute inter partes review over “the same or substantially the same
`
`prior art or arguments” that were presented by the ’504 Petition. In addition,
`
`Petitioner is involved in the ’506 Proceeding, which involves all of the same
`
`claims challenged here. Based on the totality of the facts before us, we
`
`exercise our discretion under 35 U.S.C. § 325(d), and deny the Petition in
`
`this proceeding.
`
`
`
`III. ORDER
`
`In consideration of the foregoing, it is hereby:
`
`ORDERED that the Petition is denied as to all challenged claims of
`
`the ’156 patent.
`
`
`
`
`
`
`
`
`
`7
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`
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`Case IPR2014-00487
`Patent 8,361,156
`
`
`PETITIONER:
`
`Jeff E. Schwartz
`Seth A. Kramer
`Fox Rothschild LLP
`jeschwartz@foxrothschild.com
`skramer@foxrothschild.com
`
`PATENT OWNER:
`
`Stephen R. Schaefer
`Michael Hawkins
`Fish & Richardson P.C. (TC)
`schaefer@fr.com
`IPR13958-0116IP3@fr.com
`
`8
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