Medtronic, Inc. v. Nuvasive, Inc.,

Trials@uspto.gov Paper 8
571-272-7822 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.

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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.

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B. The ’156 Patent (Ex. 1013)
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;

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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”).

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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) Basis Claims challenged
Frey and Baccelli § 103 1–8, 10–14, 19, 20,
and 23–27
Frey, Baccelli, and
Messerli
§ 103 1–8, 10–14, 19, 20,
and 23–27
Frey, Baccelli, and
Michelson
§ 103 1–14, 19, 20, and
23–27
Frey, Baccelli, and Moret § 103 1–8, 10–14, 19, 20,
and 23–27
Baccelli and Frey and/or
Michelson
§ 103 1–8, 10–14, 19, 20,
and 23–27
II. ANALYSIS
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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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

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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.

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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