PTAB / Federal Circuit / Obviousness / PTAB Procedures and Rules

To avoid running afoul of the APA, patent owners must be permitted to respond to “new” grounds of unpatentability

Published November 18, 2016

In In re: NuVasive, Inc., the Federal Circuit vacated and remanded the Board’s final written decision in IPR2013-0508 for further proceedings. At issue was the Board’s reliance on a prior art figure that was first raised in petitioner’s reply and which the Board did not permit the patent owner to address in the preceding.

In August 2013, Medtronic filed an IPR petition challenging the patentability of twenty-two claims of a patent owned by NuVasive (U.S. Patent No. 8,187,334) and directed to implants for spinal fusion surgery. In its reply brief, Medtronic argued–for the first time–that a particular figure in one of the prior art references of record disclosed two of the claim requirements of the ’334 patent. The Board agreed with Medtronic and canceled all but one of the challenged claims.

On appeal, NuVasive objected to not receiving adequate notice of NuVasive’s assertion that the figure (FIG. 18 of U.S. Patent No. 5,860,973 to Michelson) rendered the challenged claims obvious. In addition, NuVasive requested and was denied the opportunity to submit a surreply to address this new argument by the Board.

Not only did the Board deny NuVasive’s request to file a surreply, it prevented NuVasive from presenting any arguments about FIG. 18 of Michelson during the oral argument.

PATENT OWNER:  And in the reply, they specifically point to the alleged narrower disclosure in Michelson, and then they show it in the vertebral space here. The key of figure 18 and figure 19 is that it is showing a modular implant that is designed to be inserted in modular fashion, again, to create a wide implant.

PETITIONER: Your Honor, I again object, that is raising a new argument that’s not in his response.

PATENT OWNER: And this was an argument that we brought to the Board’s attention, Your Honor, that they raised in reply, and we’re just addressing the argument because I will not have an opportunity to address this argument when Mr. Schwartz stands up in reply and points this Board to figures 18 and 19.

JUDGE: But you asked for a surreply and we denied that.


JUDGE: So I think you just need to stick with — you can point out what they argue, but you should not be responding to it at this hearing.

Because NuVasive was not given the opportunity to present evidence or arguments regarding the applicability of FIG. 18 of Michelson to the obviousness inquiry, the Federal Circuit found a procedural violation of the APA and remanded the case for further proceedings.

For NuVasive, however, the victory may be more procedural than substantive. Only two dependent claims were remanded for further proceedings because most of the challenged claims were also found invalid in view of FIG. 18 of Michelson in another IPR proceeding, which the Federal Circuit affirmed in the same opinion. In the other proceeding, Medtronic raised the FIG. 18 argument in the original petition and thus there was no procedural violation.


Posted on 11/18/2016 by Deakin T. Lauer