In Re: Warsaw Orthopedic, Inc.
832 F.3d 1327
| Fed. Cir. | 2016Background
- NuVasive filed IPR petitions challenging claims 1–30 of U.S. Patent No. 8,251,997; the PTAB found claims 1–8 and 17–23 obvious and invalid in two Final Written Decisions.
- The ’997 patent claims a lateral surgical method inserting a non-bone interbody implant sized to occupy “substantially the full transverse width” of adjacent vertebral bodies; independent claims at issue are claims 1 and 17 (with dependent claims standing or falling with them).
- PTAB relied principally on prior art Jacobson, Brantigan, and Leu to find the claims obvious: Jacobson for lateral insertion; Brantigan and Leu for implants sized to conform to the disc space.
- Warsaw (assignee) appealed, arguing (inter alia) that Brantigan does not disclose an implant spanning substantially the full transverse width, that the prior art would not have been combined, and that Jacobson does not disclose claim 17’s “elongated portions” limitation.
- The Federal Circuit reviewed legal conclusions de novo and factual findings for substantial evidence, affirmed most of PTAB’s obviousness holdings, but vacated and remanded the PTAB’s finding that Jacobson discloses the “elongated portions” limitation because the PTAB’s explanation was conclusory.
Issues
| Issue | Plaintiff's Argument (Warsaw) | Defendant's Argument (NuVasive/PTAB) | Held |
|---|---|---|---|
| Whether Brantigan teaches an implant sized to occupy "substantially the full transverse width" of vertebral bodies | Brantigan only teaches implants recessed to sit on endplates (narrower than full width); thus it does not meet the limitation | Brantigan describes implants "sized to conform with the disc space," which a PHOSITA would understand to occupy substantially the full transverse width | Held: Affirmed — substantial evidence supports PTAB that Brantigan teaches an implant sized to occupy substantially the full transverse width |
| Whether Brantigan teaches an implant length "greater than the depth of the disc space" and lateral insertion | Warsaw contends Brantigan lacks those dimensional and lateral-insertion teachings | PTAB relied on Jacobson for lateral insertion; Warsaw waived the unraised dimensional argument as not presented to PTAB | Held: PTAB’s use of Jacobson for lateral insertion sustained; Warsaw’s dimensional argument waived |
| Whether a PHOSITA would be motivated to combine Jacobson, Brantigan, and Leu and have a reasonable expectation of success | Warsaw argues PTAB only showed combinability in theory, not a motivation to combine | PTAB explained combining known lateral access (Jacobson) with known interbody graft use (Brantigan/Leu) would yield a predictable result and provided motivation analysis | Held: Affirmed — substantial evidence supports PTAB’s motivation-to-combine and expectation-of-success findings |
| Whether Jacobson discloses claim 17’s “elongated portions” positioned over adjacent vertebrae (anchor wires) | Warsaw argues Jacobson’s wires are advanced into the disc capsule and are not shown "positioned over" adjacent vertebrae | PTAB cursorily stated Jacobson "appears to disclose" anchor wires as elongated portions positioned over adjacent vertebrae | Held: Vacated and remanded — PTAB’s single-sentence, conclusory explanation is inadequate; further fact-finding and reasoning required |
Key Cases Cited
- Redline Detection, LLC v. Star Envirotech, Inc., 811 F.3d 435 (Fed. Cir.) (standard of review for PTAB legal conclusions and factual findings)
- In re Gartside, 203 F.3d 1305 (Fed. Cir.) (Graham factors and review of underlying factual findings)
- In re Mouttet, 686 F.3d 1322 (Fed. Cir.) (substantial-evidence standard explanation)
- Graham v. John Deere Co. of Kan. City, 383 U.S. 1 (U.S.) (Graham obviousness framework)
- In re Zurko, 258 F.3d 1379 (Fed. Cir.) (agency must point to concrete record evidence)
- In re Lee, 277 F.3d 1338 (Fed. Cir.) (agency obligation to provide record and reasoning)
- Beckson Marine, Inc. v. NFM, Inc., 292 F.3d 718 (Fed. Cir.) (prior art need not expressly reach each limitation for obviousness)
- Nat'l Steel Car, Ltd. v. Canadian Pac. Ry., Ltd., 357 F.3d 1319 (Fed. Cir.) (appellate limits on attacking wrong prior art)
- In re NTP, Inc., 654 F.3d 1279 (Fed. Cir.) (do not reweigh evidence on appeal)
- DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356 (Fed. Cir.) (motivation-to-combine and expectation-of-success principles)
- Alza Corp. v. Mylan Labs., Inc., 464 F.3d 1286 (Fed. Cir.) (reasonable expectation of success discussion)
- In re Urbanski, 809 F.3d 1237 (Fed. Cir.) (teaching away is a factual inquiry)
- Synopsys, Inc. v. Mentor Graphics Corp., 814 F.3d 1309 (Fed. Cir.) (agency must provide logical and rational reasons)
- Ariosa Diagnostics v. Verinata Health, Inc., 805 F.3d 1359 (Fed. Cir.) (courts may affirm if agency followed a discernible proper path; but should not make agency factual determinations)
- In re Kaslow, 707 F.2d 1366 (Fed. Cir.) (dependent claims stand or fall with independent claim when not argued)