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10 November 2016Americas

Federal Circuit remands NuVasive v PTAB case

The US Court of Appeals for the Federal Circuit issued a mixed ruling on a case yesterday between medical device company NuVasive and the US Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB).

The Federal Circuit affirmed in part, vacated in part and has also returned the case for reconsideration.

US patent number 8,187,334, covering an invention of implants for spinal fusion surgery, is at the centre of this dispute, following an initial patent case between NuVasive and Medtronic.

Although Medtronic had settled with NuVasive, and additionally withdrawn from the present appeal case, Medtronic filed two petitions for inter partes review with the PTAB.

The PTAB cancelled all but one of the challenged claims, finding in one prior art reference, Michelson’s US patent number 6,860,973, “a spinal fusion implant that meets two of the claim requirements of the ‘334 patent”.

On appeal, NuVasive contended that it did not receive adequate notice to address that reading of Michelson and its consequences for the overall obviousness analysis.

The Federal Circuit said in the ruling: “We agree in part. In IPR507, Medtronic’s petition put NuVasive on notice that Medtronic was relying on particular portions of Michelson to teach the ‘334 patent’s claimed long-and-narrow implants. In that proceeding, we see neither procedural nor other error in the board’s [PTAB] decision, and we therefore affirm.”

The court added: “In IPR508, however, Medtronic’s petition did not notify NuVasive of the assertions about the pertinent portions of Michelson that later became critical.”

The Federal Circuit therefore concluded that the PTAB’s “ultimate reliance on that material, together with its refusal to allow NuVasive to respond fully once that material was called out, violated NuVasive’s rights under the Administrative Procedure Act”.

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