Case: 21-1117
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`Document:63
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`Page:1_
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`Filed: 04/11/2022
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`GAnited States Court of Appeals
`for the Federal Circuit
`
`SURGALIGN SPINE TECHNOLOGIES, INC.,
`FKA RTI SURGICAL,INC.,
`Appellant
`
`Vv.
`
`LIFENET HEALTH,
`Cross-Appellant
`
`2021-1117, 2021-1118, 2021-1236
`
`Appeals from the United States Patent and Trademark
`Office, Patent Trial and Appeal Board in Nos. IPR2019-
`00569, IPR2019-00570.
`
`JUDGMENT
`
`THIS CAUSE having been considered,it is
`
`ORDERED AND ADJUDGED:
`
`AFFIRMED-IN-PART, REVERSED-IN-PART, AND
`REMANDED
`
`April 11, 2022
`Date
`
`FOR THE COURT
`
`/s/ Peter R. Marksteiner
`Peter R. Marksteiner
`Clerk of Court
`
`

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`Case: 21-1117
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`Filed: 04/11/2022
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`NOTE: This disposition is nonprecedential.
`
`GAnited States Court of Appeals
`for the federal Circuit
`
`SURGALIGN SPINE TECHNOLOGIES, INC., FKA
`RTI SURGICAL, INC.,
`Appellant
`
`Vv.
`
`LIFENET HEALTH,
`Cross-Appellant
`
`2021-1117, 2021-1118, 2021-1236
`
`Appeals from the United States Patent and Trademark
`Office, Patent Trial and Appeal Board in Nos. IPR2019-
`00569, IPR2019-00570.
`
`Decided: April 11, 2022
`
`DAVID HEADRICK, McAndrews, Held & Malloy, Ltd.,
`Chicago, IL, argued for appellant. Also represented by
`HERBERTD. HART, III, PETER LISH, BEN MAHON.
`
`VINCENT JOHN GALLUZZO, Crowell & Moring LLP,
`Washington, DC, argued for cross-appellant. Also repre-
`sented by MICHAEL H. JACOBS, SHANNON LENTZ.
`
`

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`SURGALIGN SPINE TECHNOLOGIES v. LIFENET HEALTH
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`Before NEWMAN, SCHALL, and PROST, Circuit Judges.
`
`Opinionfor the court filed by Circuit Judge SCHALL.
`
`Opinion dissenting in part filed by Circuit Judge
`NEWMAN.
`
`SCHALL, Circuit Judge.
`
`LifeNet Health (“LifeNet”) is the owner of U.S. Patent
`No. 8,182,532 (“the 532 patent”) and U.S. Patent No.
`6,458,158 (“the 7158 patent”). After LifeNet sued Surgalign
`Spine Technologies, Inc., formerly known as RTI Surgical,
`Inc.
`(“Surgalign”),
`for
`infringement of those patents,
`Surgalign petitioned the Patent Trial and Appeal Board
`(“Board”) for inter partes review (“IPR”) of both patents.1
`In the IPR for the 532 patent, the Board issued a final writ-
`ten decision in which it determined that Surgalign had
`proved claims 12—21 to be unpatentable but had not proved
`claims 4 and 6-11 to be unpatentable. Surgalign Spine
`Techs., Inc. v. LifeNet Health, No. IPR2019-00570, 2020
`Pat. App. LEXIS 12593, at *76 (P.T.A.B. Aug. 26, 2020)
`(°532 FWD”). In the final written decision in the IPR for
`the ’158 patent, the Board determined that Surgalign had
`failed to prove unpatentability for the claimsof that patent,
`claims 1-15.
`Surgalign Spine Techs., Inc. v. LifeNet
`Health, No. IPR 2019-00569, 2020 Pat. App. LEXIS 12576,
`at *48 (P.T.A.B. Aug. 26, 2020) (158 FWD”).
`
`Surgalign appeals the Board’s determination that
`claims 4 and 6-11 of the ’532 patent and claims 1—15 of the
`"158 patent were not proven to be unpatentable. LifeNet
`cross-appeals the Board’s determination that claims 12—21
`of the 532 patent were proven to be unpatentable. Weaf-
`firm in part, reverse in part, and remand.
`
`LifeNet brought suit for infringement of three ad-
`1
`ditional patents, and Surgalign sought IPRs for those pa-
`tents as well. Those patents are not at issue in this appeal.
`
`

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`SURGALIGN SPINE TECHNOLOGIESv. LIFENET HEALTH
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`3
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`BACKGROUND
`
`I. General
`
`Some spinal injuries and diseases can be treated by
`surgical removalof all or part of an intervertebral disc and
`insertion of an implant that contacts the adjacent verte-
`brae. After the implantation procedure, the natural heal-
`ing process of bones causes the vertebrae to fuse together
`over time.
`Implants for spinal fusion can be made from
`various materials, including bone obtained from the pa-
`tient (autologous bone), or bone obtained from a human do-
`nor (allogenic bone). A bone graft made from autologous
`bone is referred to as an autograft; a graft made from allo-
`genic boneis called an allograft.
`
`Bones are comprised of cortical bone tissue and cancel-
`lous bone tissue. Cortical bone is strong and dense and
`supports the structural weight of the body, but is less re-
`ceptive to cellular growth. Cancellous boneis soft, spongy,
`and has properties that promote the formation of bone,
`such as osteoconductivity.
`
`II. The Patents
`
`The 7532 and 7158 patents have substantially identical
`specifications and are both directed to bone grafts for use
`in spinal fusion. The patents purport to describe a compo-
`site bone graft that can be sized for any application, that
`promotes the growth of patient bone at the implantation
`site,
`that provides
`added stability and mechanical
`strength, and that does not shift, extrude, or rotate after
`implantation.
`°532 patent col. 1 Il. 33-37, col. 2 ll. 5-11;
`158 patent col. 1 Il. 26-33,col. 2 ll. 1-7. Figure 1 of both
`patents depicts bone graft 1 having a cancellous bone por-
`tion 3 betweena first cortical bone portion 2 and a second
`cortical bone portion 4. Bone pins 7 are provided in
`through holes5.
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`SURGALIGN SPINE TECHNOLOGIESv. LIFENET HEALTH
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`532 patent Fig. 1, col. 19 ll. 17-20, 67; ’158 patent Fig. 1,
`col. 19 Il. 38-43.
`
`Pertinent to Surgalign’s appeal, independentclaim 4 of
`the 532 patentrecites a composite bone graft that includes
`twocortical bone portions that are “plate-like.” 7532 patent
`col. 46 ll. 52-55. Also pertinent to Surgalign’s appeal,
`claim 4 of the 532 patent andall of the independent claims
`of the ’158 patent (claims 1, 2, 13, 14, and 15) recite a com-
`posite bone graft that includes “bone pins.” Jd. col. 46 II.
`60-61; ’158 patent col. 45 ll. 8, 20, col. 46 ll. 47, 66, col. 48
`]. 15. These pins are generally made of allogenic cortical
`bone.
`
`Pertinent to LifeNet’s cross-appeal, independent claim
`12 of the 532 patent recites that “one or more osteoconduc-
`tive substances are disposed between [a] first cortical bone
`portion and [a] secondcortical boneportion.” °532 patent
`col. 47 ll. 60-62 (emphasis added).
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`SURGALIGN SPINE TECHNOLOGIESv. LIFENET HEALTH
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`5
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`III. The Prior Art
`
`Three prior art references are relevant to this appeal:
`(1) U.S. Patent Application Publication No. 2002/0138143
`to Groomset al. (“Grooms”), J.A. 2494; (2) U.S. Patent No.
`6,258,125 to Paul et al. (“Paul”), J.A. 2580; and (8) Wolter
`et al., “Bone Transplantation in the Area of the Vertebral
`Column,” Accident Medicine: Scientific and Clinical As-
`pects of Bone Transplantation, vol. 185, pp.
`166—75
`(“Wolter”), J.A. 2657.2
`
`Grooms describes “[a]n implant composed substan-
`tially of cortical bone” that is machined to form a “substan-
`tially ‘D’-shaped” implant
`that has “a canal running
`therethrough” that maybe filled with osteogenic, osteoin-
`ductive, or osteoconductive material. Grooms at Abstract,
`J.A.2494. Grooms explains that the D-shapedcortical bone
`implant can have “flat upper and lower surfaces.” Jd. at
`133, J.A. 2520. Grooms Fig. 8A, below, shows implant 800
`composedof two side-by-side halves, 801A and 801B.
`
`2 Citations to Wolter in this opinion refer to the Eng-
`lish translation of the original German document. See J.A.
`2672-707.
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`800
`
`/
`
`J 801B
`
`mo
`
`Fig. 8A
`
`Grooms Fig. 8A & J 49, J.A. 2506, 2523.
`
`Paul describes an “allogenic intervertebral implant for
`fusing vertebrae” having “top and bottom surfaces [that]
`can be flat planar surfaces.” Paul at Abstract & col. 2 Il.
`17-18, J.A. 2580, 2589. Paul’s Figure 9, below, shows a
`perspective view of one embodiment, where “[flirst lateral
`sides 18 of first and second implants 70, 70’ are scalloped
`to have a C-shape.” Jd. col. 5 Il. 138-16, J.A. 2591.
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`Paul Fig. 9, J.A. 2585.
`
`Wolter describes a “composite corticospongial block”
`madeof twoor three pieces of autologous iliac crest bone,
`fastened together with a metal screw.’ J.A. 2697. Wolter
`states that it “appears to be necessary” to use “exclusively”
`autologous bone to make a graft because it is “the best
`transplant material,” allogenic boneis “exposed to anele-
`vated risk of infection and heal[s] more poorly,” and
`“le]very additional risk from the implant and transplant
`material should be avoided in the area of the vertebralcol-
`umn, since secondary operations have proven to bepartic-
`ularly difficult.”
`J.A. 2660; see also J.A. 2665 (“Only
`autologous material should be used.”). Figure le of Wolter
`
`Tliae crest bone is bone harvested from a patient’s
`3
`ilium, the uppermost andlargest part of the hipbone.
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`shows an exemplary corticospongial block, also referred to
`as a “sandwich block”:
`
`
`
`J.A. 2666.
`
`IV. The IPRs
`
`In the 532 FWD,the Board adopted Surgalign’s initial
`proposed construction of “plate-like” in the ’532 patent to
`mean “generally flat.” ’582 FWD, 2020 Pat. App. LEXIS
`12593, at *31. The Board noted that Surgalign had made
`clear through its briefing and during the hearing that the
`“construction applies to the overall shape of the bone por-
`tion.” Id.
`
`Applying this construction and stating that it was con-
`sidering the “overall shape, not merely whether [the bone
`portions] include a region that is generally flat,” the Board
`determined that Surgalign had not shown that Groomsdis-
`closes cortical bone portions that are “plate-like.” Id. at
`*49, The Board explained that it was not persuaded that
`Grooms’s cortical bone portions are “generally flat,” be-
`cause they “have a generally flat base with legs or curved
`portions that extend away from the base so that the two
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`cortical portions meet away from theflat base portion.” Id.
`The Board also determined that Surgalign had not shown
`that Paul discloses cortical bone portions that are “plate-
`like.” Id. at *53-54. The Board noted that, “[w]hile certain
`surfaces of Paul’s cortical bone portions could be considered
`generally flat, [it] assess[es] the overall shape of Paul’s cor-
`tical bone portions to determineif theyare ‘plate-like.” Do-
`ing so, the Board concluded they were not.
`Jd. Having
`concluded that Grooms and Paul did not disclose “plate-
`like” bone portions, the Board determined that Surgalign
`had not proven that claim 4 and its dependent claims 6—11
`were obvious.
`
`Relevant to LifeNet’s cross-appeal, in the 532 FWD,
`the Board construed the term “disposed between,”as re-
`cited in claim 12 of the ’532 patent, not to require that the
`first and second cortical bone portions be completely sepa-
`rated throughout the graft.
`Id. at *29. The Board began
`by noting that “[l]ooking only at the words of the claim,
`... the ordinary meaningof ‘disposed between’ does not re-
`quire complete separation.” Jd. at *25. The Board found
`persuasive that claims 1 and 2 of the related ’158 patent
`include the same “disposed between” language andalso re-
`cite that the first and second cortical bone portions “are not
`in physical contact.” ’158 patent col. 45 Il. 5-11. Citing to
`Trustees of Columbia University v. Symantec Corp., 811
`F.3d 1359, 1369 (Fed. Cir. 2016), and Stumbo v. Eastman
`Outdoors, Inc., 508 F.3d 13858, 1862 (Fed. Cir. 2007), the
`Board stated that “[i]f ‘disposed between’ required com-
`plete separation... there would be no need for claims 1
`and2 [of] the 158 patent to additionally recite that thefirst
`and second cortical bone portions are not in physical con-
`tact.” ’532 FWD, 2020 Pat. App. LEXIS 12593, at *25-26.
`The Board acknowledged that the “consistent usage” of
`“disposed between”in the specification “provides some sup-
`port” for a construction requiring complete separation, but
`it concluded that that usage was “outweighed by the con-
`trary evidence, particularly the breadth of the claim
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`SURGALIGN SPINE TECHNOLOGIESv. LIFENET HEALTH
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`language itself and the differences between claim 12 of the
`532 patent and theclaimsof the related ’158 patent.” Id.
`at *29. Applying this construction, the Board held that
`Groomsrendered obvious independentclaim 12, andits de-
`pendent claims 13—21 of the 532 patent. Id. at *385—87, 47—
`48. It did so because it agreed with Surgalign that Grooms
`teaches placing osteoconductive substances in the canal of
`the implant, i.e., between the cortical bone portions shown
`in Fig. 8A above.
`The Board thus determined that
`Surgalign had shown that claims 12—21 of the 532 patent
`were unpatentable.
`
`In both IPRs, Surgalign challenged the patentability of
`various claims over Wolter alone or in combination with
`other references. See 532 FWD, 2020 Pat. App. LEXIS
`12593, at *55—-56 (claims 4 and 6—11 of the 532 patent);
`"158 FWD, 2020 Pat. App. LEXIS 12576, at *19, 24, 38-41
`(claims 1—15 of the’158 patent). Surgalign’s argumentsre-
`quired modifying Wolter in two ways: (1) to use allogenic
`bone instead of autologous bone; and (2) to use a bone pin
`instead of a metal screw. 532 FWD, 2020 Pat. App. LEXIS
`12598, at *56; °158 FWD, 2020 Pat. App. LEXIS 12576,at
`*819, 29-93.4
`
`In its final written decisions, the Board determined
`that the challenged claims would not have been unpatent-
`able over Wolter. The Board’s conclusion hinged on its
`
`Surgalign’s proposed combination required the
`4
`first modification even for claims that did not specifically
`recite using allogenic bone.
`°532 FWD, 2020 Pat. App.
`LEXIS 125983,at *57-58 & n.20; 158 FWD, 2020 Pat. App.
`LEXIS 12576, at *19, 22-23 & n.18.
`The second modification of Wolter was required be-
`cause Wolter describes fastening pieces of bone with a
`metal screw, whereas claims 4 and 6—11 of the 532 patent
`and claims 1—15 of the 158 patent recite using non-metallic
`“bone pins.”
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`determination that an ordinarily skilled artisan would not
`have been motivated to modify Wolter in the proposed
`manner(using allogenic bone instead of autologous bone
`and using a bonepin instead of a metal screw) and would
`not have had a reasonable expectation of success in doing
`so. 7158 FWD, 2020 Pat. App. LEXIS 12576, at *24—-87.5
`Specifically,
`the Board determined that an ordinarily
`skilled artisan would not have been motivated to modify
`Wolter’s sandwich block to use allogenic bone against the
`reference’s teachings that autologous bone waspreferable.
`Rejecting Surgalign’s arguments that Wolter’s teaching
`away from allograft in 1987 would be “outdated” by 1999,
`the Board credited the explanation of Surgalign’s expert,
`Dr. Jeffrey Fischgrund,
`that allografts were “already
`known, available, and used by the time Wolter was pub-
`lished.” Jd. at *28, 27. The Board also relied on testimony
`from LifeNet’s expert, Dr. Mark Shaffrey, that “it makes no
`sense to make an allograft by stacking two or threeiliac
`crest bones” because their irregular surfaces would pro-
`hibit a precise fit between the boneblocks. Jd. at *30. The
`Board also was persuaded that Wolter was “tailored to the
`demandsoffilling a large defect using an autograft that
`can be made during surgery.” Id.
`
`Turning to whether oneof skill in the art would have
`been motivated to replace Wolter’s metal screw with a bone
`pin, or would have had successin doing so, the Board con-
`cluded that Surgalign had not proved this to be the case.
`The Board agreed with LifeNet that substitution of a bone
`pin would run counter to Wolter’s goal to fulfill a recog-
`nized need for “a transplant that is as large and stressable
`as possible,” because bone pins are weaker than metal
`screws. Id. at *82—33 (quoting J.A. 2661). The Board also
`found persuasive evidence that there would be “technical
`
`To avoid duplication, we cite only to the 7158 FWD
`5
`when discussing the Board’s analysis of Wolter.
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`Id. at
`difficulties” in making the proposed substitution.
`*31-33.
`In making this finding, the Board found persua-
`sive LifeNet’s arguments and supporting testimony from
`Dr. Shaffrey and LifeNet employee Mr. Barton Gaskins
`that it would bedifficult to line up Wolter’s stack of large,
`irregularly shaped pieces of iliac crest bone, and that it is
`doubtful that a bone pin could withstand the force needed
`to impel it through the three sections and their irregular
`interfaces. Id. at *33—35, citing J.A. 4724, J.A. 4769.
`
`As noted, Surgalign appeals the Board’s determination
`that claims 4 and 6—11 of the ’532 patent and claims 1-15
`of the ’158 patent were not shown to be unpatentable, while
`LifeNet cross-appeals the Board’s determination that
`claims 12—21 of the 532 patent were shownto be unpatent-
`able. We have jurisdiction under 28 U.S.C. § 1295(a)(4)(A).
`
`DISCUSSION
`
`Wereview the Board’s factual findings for substantial
`evidence and its legal conclusions de novo.
`In re Cuozzo
`Speed Techs., LLC, 793 F.3d 1268, 1280 (Fed. Cir. 2015).
`Thus, we review the Board’s ultimate determination of ob-
`viousness de novo and its underlying factual determina-
`tions for substantial evidence. Ariosa Diagnostics v.
`Verinata Health, Inc., 805 F.3d 1859, 1364 (Fed. Cir. 2015).
`The underlying factual findings include “findings as to the
`scope and content of the prior art, the differences between
`the prior art and the claimed invention, the level of ordi-
`nary skill in the art, the presence or absence of a motiva-
`tion to combine or modify with a reasonable expectation of
`success, and objective indicia of non-obviousness.” Id.
`
`“Claim constructionis ultimately a question of law, de-
`cided de novo on review, as are the intrinsic-evidence as-
`pects of a claim-construction analysis.”
`Intel Corp. v.
`Qualcomm Inc., 21 F.4th 801, 808 (Fed. Cir. 2021) (cita-
`tions omitted). However, “we review any underlying fact
`findings about extrinsic evidence...
`for substantial-
`
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`evidence support when the appeal comes from the Board.”
`Id. (citations omitted).
`
`I,
`
`Surgalign’s first argument on appeal focuses on claims
`4 and 6—11 of the 532 patent. Surgalign contends that the
`Board “incorrectly applied” a claim construction for the
`term “plate-like” that was different from the claim con-
`struction the Board adopted. Surgalign Br. 35-48. Accord-
`ing to Surgalign, the Board’s construction of “plate-like” to
`mean “generally flat” was correct, but when the Board pur-
`ported to apply that construction to Grooms and Paul, the
`Board improperly excluded boneportions in the references
`that were “generally flat” in the horizontal plane, i.e., the
`plane in which they are inserted.
`Jd. at 29, 37, 40.
`Surgalign argues such an effective construction conflicts
`with other claim language, the figures of the ’532 patent,
`and a prior art reference U.S. Patent No. 5,961,554 to Jan-
`son et al., which uses the term “plate-like” to describe spi-
`nal spacers with a similar shape to Grooms and Paul. Id.
`at 40—48.
`
`Surgalign separately argues that the Board’s fact find-
`ings that the Grooms and Paul cortical bone portions are
`not “plate-like” lack substantial evidence. This is because,
`Surgalign contends, the bone portions of Grooms and Paul
`are “generally flat” horizontally, i.e., in the plane in which
`the grafts are implanted into the spine. Surgalign Br. 48—
`50.
`
`LifeNet responds that, since the Board adopted and ap-
`plied the construction that Surgalign requested—that
`“plate-like” be construed to mean “generally flat” and that
`“plate-like” be tested against the “overall shape” of each
`cortical bone portion—what Surgalign actually challenges
`is the Board’s findings that Grooms and Paul do not have
`“plate-like” cortical bone portions, a factual issue we review
`for substantial evidence. LifeNet Br. 28-29, 32. Should we
`consider Surgalign’s claim construction argument, LifeNet
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`argues that Surgalign’s position on appeal contradicts
`Surgalign’s argument before the Board that “plate-like”
`“addressesthe ‘overall shape’ of a bone portion.” Jd. at 34—
`35 (quoting J.A. 1965).
`
`“We have reversed or vacated and remandedfinal writ-
`ten decisions of the Board when the Board departs from the
`proper construction [of a claim term] when assessing pa-
`tentability in view of the prior art.” Google LLC v. Lee, 759
`F. App’x 992, 996 (Fed. Cir. 2019) (citing Corning v. Fast
`Felt Corp., 873 F.3d 896, 900-01 (Fed. Cir. 2017), and
`D’Agostino v. MasterCard Int'l Inc., 844 F.3d 945, 950 (Fed.
`Cir. 2016)).
`In Corning, the Board construed the claim
`term “roofing or building cover material” in a mannerthat
`would “not require an asphalt-coated substrate.” 873 F.3d
`at 900. When evaluating obviousness, however, the Board
`made clear that it understood its construction to require
`materials that either had been or would eventually be
`coated with asphalt. Id. We determinedthis waserror. Id.
`at 901.
`
`Similarly, here the Board indicated it was applying its
`“generally flat” construction and that it was testing that
`construction against the “overall shape” of each cortical
`bone portion. It is clear, however, that the Board analyzed
`the “general flat[ness]” of the Grooms and Paul cortical
`boneportions only with respect to the vertical plane. With
`respect to Grooms, the Board analyzed only whether the
`parts of the bone portions from which the “legs or curved
`portions” extend were “generally flat.”
`°532 FWD, 2020
`Pat. App. LEXIS 12593, at *49-50. The Boarddid not con-
`sider the flatness of the bone portions as they extend in the
`horizontal direction. Asfor its analysis of Paul, the Board
`pointed out that, although “certain surfaces of Paul’s corti-
`cal bone portions could be considered generally flat,” Paul’s
`cortical bone portions have curved surfaces that are “C-
`shape[d].” Jd. at *538-54. Accordingly, while the Board
`again stated it was applying its construction to the “overall
`shape” of Paul’s bone portions, it considered only the “C-
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`shape[d]” vertical plane of Paul,” and did not address the
`flatness of the bone portions as they extendin the horizon-
`tal direction.
`
`Contrary to the Board’s as-applied construction, the
`532 patent clearly contemplates cortical bone portions hav-
`ing curvature in the vertical plane.
`Indeed, the language
`of claim 4 itself contemplates cortical bone portions with
`vertical curvatures. Claim 4 recites that the bonegraft can
`be shapedlike a “cylinder, a flattened curved block, [and] a
`tapered cylinder.” ’532 patent col 46 ll. 60-65. Forthecor-
`tical bone portions to embody these shapes, there must be
`some vertical curvature. In addition, figures 14, 35, 37, 38,
`43, and 44, which both parties have asserted show “plate-
`like” bone portions, see 532 FWD, 2020 Pat. App. LEXIS
`12593, at *29-30; J.A. 2925 4 38, depict bone portions that
`have curved surfaces in the vertical plane. One such figure
`is Figure 14, shownin part below:
`
` 83
`
`7
`
`FIG. 14A
`
`532 patent Fig. 14.
`
`Thus, we agree with Surgalign that it was error for the
`Board to effectively construe “generally flat” to exclude
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`SURGALIGN SPINE TECHNOLOGIESv. LIFENET HEALTH
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`consideration of the horizontal plane. As the Board ini-
`tially noted, the proper construction should consider the
`“overall shape” of the cortical bone portion.
`
`The evidence and arguments presented to the Board
`support only one possible evidence-supportedfinding: that
`substantial evidence does not support the Board’s determi-
`nation that Grooms and Paul do not teach “plate-like” bone
`portions when the correct construction is employed. See
`Google, 759 F. App’x at 996; Corning, 873 F. 3d at 901-02.
`The Board’s obviousness determination for claims 4 and 6—
`11 was based solely on this erroneous determination. We
`therefore reverse the Board’s obviousness determination
`with respect to these claims insofar as it was based on the
`Grooms and Paul referencesfailing to teach the “plate-like”
`claim limitation.®
`
`Il.
`
`Surgalign’s second argument on appeal is that the
`Board erred whenit held claims 4 and 6-11 of the ’532 pa-
`tent and claims 1—15 of the ’158 patent not unpatentable
`over several combinations where Wolteris the primary ref-
`erence. Surgalign Br. 50—72. Its argumentsin that regard
`are directed to the Board’s analysis regarding modifying
`Wolter to use allogenic bone instead of autologous bone and
`modifying Wolter to use a bone pin instead of a metal
`screw. Asto the first modification, Surgalign contends that
`the Board erred because it did not frame its obviousness
`analysis in terms of what a person of ordinary skill in the
`art would have been motivated to do at the time ofthe in-
`vention in 1999, and instead focused on Wolter’s 1987
`statements that autologous bone was preferable to allo-
`genic bone. Surgalign’s Br. 52-56. Surgalign also contends
`
`6 On remand, the Board should proceed to analyze
`the remaining issues raised by Grounds 2 and5of the pe-
`tition.
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`that the Board erroneously focused its motivation to com-
`bine analysis on whether making a Wolter-type graft from
`allogenic bone would have been the preferred solution. Id.
`at 56-59. As to the second modification, Surgalign con-
`tends that the Board erred whenit found lack of motivation
`to combine and no reasonable expectation of success with
`respect to replacing the metal screw used in Wolter with a
`bone pin. According to Surgalign, the Board erroneously
`combined these two considerations—motivation to com-
`bine, expectation of success—into a single inquiry into
`whether the proposed combination would have been “diffi-
`cult.” Id. at 60-62. Surgalign also argues that the Board’s
`findings of lack of motivation to combine and reasonable
`expectation of success are not supported by substantial ev-
`idence. Surgalign takes issue with (a) the Board’s finding
`that Wolter’s graft lacked a precise fit, because Wolter de-
`scribesits iliac crest bone portionsasfitting in a “precisely-
`fitting manner,” J.A. 2661; (b) the Board’s reliance on Dr.
`Shaffrey’s testimony about how an ordinary artisan would
`not have expected success in pushing an allograft bone pin
`through Wolter’s graft, because Surgalign contends this
`testimony was not directed to using a bone pin with anal-
`lograft; and (c) the Board’s reliance on fact-witness Mr.
`Gaskins’ testimony. Id. at 65—70.
`
`LifeNet responds that the Board properly addressed
`the question of whether an ordinarily skilled person in
`1999 would have been motivated to modify Wolter’s auto-
`graft to an allograft, and that the Board’s factual findings
`were supported by substantial evidence.
`Specifically,
`LifeNet contends, the Board foundthata skilled artisan in
`1999 would not have been motivated to “beg[in] with
`Wolter” and to “adapt|] it to an allograft against the refer-
`ence’s teachings,” including because the Wolter-style graft
`was “tailored to the demandsoffilling a large defect using
`an autograft that can be made during surgery.” LifeNet
`Br. 53 (quoting ’158 FWD, 2020 Pat. App. LEXIS 12576, at
`*30).
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`With respect to whether one of skill in the art would
`have replaced Wolter’s metal screw with a bone pin,
`LifeNet argues that the Board simply found that the “tech-
`nical difficulties” inherent in Surgalign’s proposed modifi-
`cation to Wolter undermined Surgalign’s arguments on
`both motivation to combine and reasonable expectation of
`success, not that the two findings had been combined. Id.
`at 54-60. But, even if the Board did conflate the two issues,
`LifeNet urges, the Board made sufficient factual findings
`to support its judgment. Id. at 59.
`
`As to whether substantial evidence supports the
`Board’s findingsof lack of motivation to combine andrea-
`sonable expectation of success, LifeNet responds in kind to
`each of Surgalign’s arguments. First, LifeNet contends
`that the Board’s findings were not premised entirely on a
`lack of a precise fit in Wolter. According to LifeNet, it was
`just one point of many that undercut Surgalign’s obvious-
`ness case. Id. at 61-64. Second, LifeNet contends that Dr.
`Shaffrey’s testimony included testimony pertaining to a
`bone pin with an allograft, even if the Board quoted a par-
`agraph pertaining to an autograft. Id. at 64—65 (citing J.A.
`4726-27, J.A. 30-33, J.A. 157-61). Third, LifeNet con-
`tends that Surgalign did not move to exclude Mr. Gaskins’
`testimony,
`that
`there is nothing improper about
`the
`Board’s reliance on fact testimony, and that Surgalign is
`improperly seeking a re-weighing of the credibility of the
`witnesses and evidence. Id. at 65-67.
`
`Weturn to the “bone pin” issuefirst. We agree with
`LifeNet that, even if the Board did conflate motivation to
`combine and reasonable expectation of success, the FWDs
`contain sufficient factual findings supported by substantial
`evidence of no reasonable expectation of success, even if the
`Board had held there was a motivation to combine. As
`noted above, the Board found that a bone pin is weaker
`than a metal screw. 7158 FWD, 2020 Pat. App. LEXIS
`12576, at *382-33. The Board also found that “Wolter’s
`stack of three large, irregularly shaped piecesof iliac bone
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`would be difficult to precisely line up for a bone pin, and
`[that] it is doubtful that a bone pin could withstand the
`force needed to impel a bone pin through thethree sections
`andtheir irregular surface.” Id. at *33-34.
`
`Substantial evidence supports these findings. Both Dr.
`Shaffrey and Mr. Gaskinstestified that a bonepin is sig-
`nificantly weaker than a metal screw. See id. at *32—33
`(quoting J.A. 4724-25 9103 (Shaffrey) and J.A. 4769 916
`(Gaskins)); see also id. at *33 (stating that Surgalign’s ex-
`pert Mr. Sherman also agreed that a small-fragment can-
`cellous bone screw is stronger than a cortical bone pin in
`all axes). In addition, the Board credited Dr. Shaffrey’s tes-
`timony explaining that a person of skill in the art “would
`not expect success in pushingan allograft bone pin through
`Wolter’s graft because passing a bone pin through ‘the
`thick bone tissue and across theirregular interfaces of the
`iliac crest would be considered unfeasible.”
`Jd. at *35
`(quoting J.A. 4724—25 9103). As the Board noted, Dr. Shaf-
`frey specifically explained that “using a bone pin to hold
`three stackediliac crest allografts together would not work
`for the same reasons [he] discussed with respect to an au-
`tograft.” Id. (quoting J.A. 4727 9106). For its part, Mr.
`Gaskins’ testimony explains that the technologies known
`at the time of the invention would not have resolved the
`technical difficulties of inserting a bone pin into a graft. Id.
`(citing J.A. 4769-70, J.A. 4772, J.A. 4773-74 J 17-18, 22,
`26-28). And,finally, we see no error in the Board’s reliance
`on Mr. Gaskins’ testimony. See Fanduel, Inc. v. Interactive
`Games LLC, 966 F.3d 1334, 1344 (Fed. Cir. 2020) (indicat-
`ing that expert testimonyis not required for the Board to
`makefactual findings based on its view of the record).
`
`Thus, even if the Board improperly analyzed motiva-
`tion to combine,
`the Board’s ultimate conclusion that
`claims 4 and 6—11 of the 532 patent and claims 1—15 of the
`7158 patent were not rendered obvious by Wolter is sup-
`ported by its finding that one of skill in the art would not
`have had a
`reasonable
`expectation of
`success
`in
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`substituting a bone pin for Wolter’s metal screw, which is
`itself supported by substantial evidence. See Intelligent
`Bio-Sys., Inc. v. Illumina Cambridge Lid., 821 F.3d 1359,
`1367 (Fed. Cir. 2016) (“[T]his court sits to review judg-
`ments, not opinions. And while the Board conflated two
`different legal concepts—reasonable expectation of success
`and motivation to combine—it nevertheless made suffi-
`cient factual findings to support its judgment that the
`claims at issue are not invalid.” (internal quotation marks
`and citation omitted)). Because the Board found no reason-
`able expectation of success,