IP Law Daily Board’s decision that spinal surgery claims were obvious affirmed in part
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Tuesday, August 9, 2016

Board’s decision that spinal surgery claims were obvious affirmed in part

By Thomas Long, J.D.

Substantial evidence supported some, but not all, findings by the Patent Trial and Appeal Board that certain claims of a patent relating to spinal surgery involving insertion of an artificial implant were invalid as obvious over the prior art, the U.S. Court of Appeals for the Federal Circuit has held. The Board’s decision invalidating the claims was affirmed in part, vacated in part, and remanded (In re Warsaw Orthopedic, Inc., August 9, 2016, Wallach, E.).

The USPTO’s Patent Trial and Appeal Board granted two petitions for inter partes review (IPR) of U.S. Patent No. 8,251,997 ("the ’997 patent") and found that claims 1-8 and 17-23 were invalid as obvious. Warsaw Orthopedic, Inc., the assignee of the ’997 patent, appealed.

Patent-at-issue. The ’997 patent related to spinal surgery that "insert[s] an artificial implant between two adjacent vertebrae" from a patient’s side. The patent disclosed "instrumentation and methods of performing surgical procedures on the human thoracic and lumbar spine along the lateral aspect of the spine" to correct "thoracic and lumbar disc disease and spinal deformities where concomitant fusion is desired."

IPR decision. The Board found that independent claims 1 and 17 of the ’997 patent would have been obvious over a combination of three prior art references: U.S. Patent Nos. 4,545,374 ("Jacobson") 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"). Warsaw challenged the Board’s factual findings regarding Brantigan as well as its finding of a motivation to combine Brantigan with Leu and Jacobsen.

Teachings of Brantigan. The Federal Circuit held that substantial evidence supported the PTAB’s finding that Brantigan taught an implant that spanned substantially the full width of a vertebra, as recited in claims 1 and 17 of the ’997 patent. The court also disagreed with Warsaw’s contention that Brantigan’s disclosure of implants that can be rotated or reversed taught away from the claimed invention. The court noted that it could not reweigh the Board’s evidentiary finding that Brantigan disclosed 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 substantially the full transverse widths of the vertebral bodies.

Motivation to combine. In its analysis, the Board determined that a person having ordinary skill in the art (PHOSITA) would have been motivated to combine Jacobson, Leu, and Brantigan, and provided a reasoned explanation for reaching that conclusion, the courts said. According to the court, Warsaw’s true argument was an improper attempt to make a collateral attack on the teachings of the prior art references, based on aspects of the references that it found more persuasive than the Board did. Those arguments contested the weight the Board afforded to the record evidence; the court stated that it could not reweigh facts already considered by the Board.

Jacobson—"elongated portions" limitation of claim 17. Claim 17 of the ’997 patent required 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 vertebrae and at least part of another … elongated portion[] is over the other of the two adjacent vertebrae." Warsaw argued that no substantial evidence supported the Board’s conclusion that Jacobson disclosed a surgical instrument with "elongated portions" positioned over adjacent vertebrae, as recited by claim 17. According to Warsaw, the Board erred in finding that "anchor wires" in Jacobson met the "positioned over" limitation.

The court noted that the argument before the Board on this question was limited. The Board had the obligation to make the necessary 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. The Board was required to articulate logical and rational reasons for its decisions. The Federal Circuit also noted that it could affirm the Board’s finding if it could reasonably discern that the Board followed a "proper path," even if that path was less than perfectly clear.

However, in this case, the court stated that it could not reasonably discern that the Board’s decision as to the "elongated portions" limitation followed the proper path. The Board’s reasoning on this issue consisted only of a single sentence: "Jacobson appears to disclose anchor wires (i.e., ‘elongated portions’) that are positioned over adjacent vertebrae." This conclusory assertion did not constitute the reasoned explanation needed to support its conclusion, the court said. Accordingly, the finding regarding Jacobson was vacated and remanded for the Board to conduct further findings as to whether Jacobson disclosed the "elongated portions" limitation in claim 17.

The case is Nos. 2015-1050 and 2015-1058.

Attorneys: John C. O’Quinn (Kirkland & Ellis LLP) for Warsaw Orthopedic, Inc. Monica Barnes Lateef, Office of the Solicitor, U.S. Patent and Trademark Office, for Michelle K. Lee.

Companies: Warsaw Orthopedic, Inc.

MainStory: TopStory Patent FedCirNews

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