Final Decision in NuVasive’s Inter Partes Review of Warsaw Orthopedic Patent
The Patent Trial and Appeals Board (the “Board”) recently issued Final Written Decisions disposing of two inter partes reviews that NuVasive filed in mid-2013 regarding U.S. patent number 8,444,696 (the ’696 Patent). The ’696 Patent is entitled “Anatomic spinal implant having anatomic bearing surfaces” and, according to its abstract, “is directed to an interbody spinal implant having a structural configuration that provides for maintaining the normal anatomic relationship of two adjacent vertebrae of the spine.” According to the USPTO Assignment Database, the patent application that later became the ’696 patent was assigned on May 17, 2005 by its inventor to SDGI Holdings, Inc., then was assigned on April 28, 2006 by SDGI Holdings, Inc. to Warsaw Orthopedic, Inc.
In its recent Final Written Decision disposing of IPR2013-00395, the Board determined that NuVasive showed by a preponderance of the evidence that claims 1–6 of the ’696 Patent are unpatentable under 35 U.S.C. § 103(a) as obvious over the combination of three references, Michelson, Wagner, and Brantigan. In its recent Final Written Decision disposing of IPR2013-00396, the Board determined that NuVasive showed by a preponderance of the evidence that claims 7-12 of the ’696 Patent are unpatentable under 35 U.S.C. § 103(a) as obvious over a different combination of three references, including Steffee, Michelson, and Kim.
On August 17, 2012, Warsaw Orthopedic, Medtronic Sofamor Danek, Medtronic Puerto Rico, and Osteotech filed a complaint against NuVasive alleging infringement of U.S. patents numbers 8,021,430 and 5,676,146. In its two petitions for inter partes review, NuVasive stated that Warsaw Orthopedic asked the Court for permission to add the ’696 patent to the lawsuit. On July 24, 2013 Warsaw’s request was granted.
NuVasive Files for Inter Partes Review of Warsaw Orthopedic’s Spinal Implant Patent
On June 27, 2013, NuVasive, Inc. filed two petitions with the Patent Trial and Appeal Board requesting inter partes review of Warsaw Orthopedic, Inc.’s U.S. Patent No. 8,444,696.
The ’696 Patent is entitled “Anatomic Spinal Implant Having Anatomic Bearing Surfaces.” The ’696 Patent relates to “an interbody spinal implant having a structural configuration that provides for maintaining the normal anatomic relationship of two adjacent vertebrae of the spine.” Figure 1 from the ’696 Patent is shown below:
The ‘696 Patent has 19 issued claims. The first petition (IPR2013-00395) seeks review of claims 1-6, and the second petition (IPR2013-00396) seeks review of claims 7-12. The petitions also identify a lawsuit between NuVasive and Warsaw Orthopedic that is currently pending in the Southern District of California, and state that Warsaw Orthopedic has asked the Court for permission to add the ’696 Patent to that lawsuit. Warsaw’s original complaint in that lawsuit, filed on August 17, 2012, alleges infringement by NuVasive of U.S. Patent Nos. 8,021,430 and 5,676,146.
NuVasive Files 2 Petitions for Inter Partes Review of Warsaw Orthopedic Patent
San Diego-based NuVasive, Inc. filed two petitions last Friday with the Patent Trial and Appeal Board for inter partes review of Medtronic subsidiary Warsaw Orthopedic, Inc.’s U.S. Pat. No. 8,251,997. The sole listed inventor of the ‘997 patent is Dr. Gary Michelson.
The ‘997 patent is entitled “Method for Inserting an Artificial Implant Between Two Adjacent Vertebrae Along a Coronal Plane” and “relates generally to instrumentation and methods of performing surgical procedures on the human thoracic and lumbar spine along the lateral aspect of the spine and from a true lateral or anterolateral approach, and specifically to the surgical correction of thoracic and lumbar disc disease and spinal deformities where concomitant fusion is desired.” Figure 13 from the ‘997 patent is shown below:
NuVasive’s first and second petitions collectively seek review of all 30 of the claims of the ‘997 patent, asserting the claims are obvious over a number of references. The associated exhibits can be found by visiting the Board’s website, entering the patent number 8251997, and clicking on the Search button.
Medtronic and NuVasive have a history of spinal patent infringement litigation. In 2008, Medtronic filed a patent lawsuit against NuVasive relating to spinal implants, and NuVasive filed patent infringement counterclaims. The first phase of this litigation went to trial in 2011, where Medtronic won $101 million in damages and NuVasive won $660,000, and is still ongoing.
Of note, the ‘997 patent, among others, was asserted by Warsaw against NuVasive in another pending patent infringement lawsuit originally filed in the Northern District of Indiana. The case has since been transferred to the Southern District of California. Warsaw’s alleged infringement contentions against NuVasive with respect to the ‘997 patent can be found here.
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