Medtronic Inc v. Barry Mark

1. Case Identification

• Case #: IPR2014-01212
• Patent #: 7,776,072
• Filed: July 27, 2014
• Petitioner(s): Medtronic, Inc.
• Patent Owner(s): Mark A Barry, MD
• Challenged Claims: 1-4

2. Patent Overview

• Title: System and Method for Aligning Vertebrae in the Amelioration of Aberrant Spinal Column Deviation Conditions
• Brief Description: The ’072 patent discloses systems and methods for correcting spinal column deformities. The technology involves surgically implanting multiple pedicle screws into a patient's vertebrae, engaging those screws with a specialized derotation tool, and applying force to the tool's handle to simultaneously rotate multiple vertebrae into a corrected alignment.

3. Grounds for Unpatentability

Ground 1: Claims 1-4 are obvious over the Video/Slides/MTOS Chapter in view of the ’928 and ’291 applications.

• Prior Art Relied Upon: Video (a 2001 surgical video titled Thoracic Pedicle Screws for Idiopathic Scoliosis), Slides (a 2003 presentation handout), MTOS Chapter (from Masters Techniques in Orthopaedic Surgery), the ’928 application (Application # 2005/0245928), and the ’291 application (Application # 2005/0033291).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that the primary references (Video, Slides, and MTOS Chapter), which were distributed together and could be considered a single reference, collectively disclosed nearly all limitations of the challenged claims. They showed a surgical method using multiple individual derotation tools ("apical derotators") simultaneously to correct spinal curvature. Petitioner contended that the surgeon's hands grasping multiple handles at once constituted a "functional linking." These primary references, however, did not explicitly disclose a single, mechanically linked handle for three or more derotators. The ’291 application was cited to show that the claimed step of rod rotation was a well-known technique.
  • Motivation to Combine: A POSITA would combine the teachings of the primary references with the ’928 application. The ’928 application disclosed a vertebral correction tool with handles interconnected by a mechanical linkage (cross-action members). The motivation was to improve upon the manual, multi-tool method by incorporating a mechanical linkage to ensure uniform, simultaneous movement of the vertebrae, reduce surgeon workload, and improve surgical precision.
  • Expectation of Success: A POSITA would have a reasonable expectation of success, as combining known mechanical linkages with known surgical tools to ease operation and ensure uniformity was a predictable and common-sense design modification.

Ground 2: Claims 1-4 are obvious over the Video/Slides/MTOS Chapter in view of the ’328 and ’291 applications.

• Prior Art Relied Upon: Video, Slides, MTOS Chapter, the ’328 application (Application # 2003/0065328), and the ’291 application.
• Core Argument for this Ground:
  • Prior Art Mapping: This ground presented an alternative to Ground 1, substituting the ’328 application for the ’928 application as the source for the mechanical linkage element. Petitioner asserted that the ’328 application also taught a pedicle screw cluster derotation tool with a handle means that included a linking member (a "microschweller") to join individual handles. The linking member was disclosed to facilitate the simultaneous transport of three pedicle screw engagement members.
  • Motivation to Combine: The motivation was identical to that in Ground 1. A POSITA would be motivated to incorporate the linking mechanism from the ’328 application into the surgical technique shown in the primary references to achieve the predictable benefits of improved ergonomics, uniformity, and control during the vertebral derotation procedure.
  • Expectation of Success: Success was expected because the combination involved applying a known mechanical principle (linking handles for simultaneous actuation) to a known surgical procedure to achieve a predictable improvement.

Ground 3: Claims 1-2 are anticipated or obvious over the ’928 application.

• Prior Art Relied Upon: The ’928 application (Application # 2005/0245928).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner argued that the ’928 application, by itself, anticipated or rendered obvious claims 1 and 2. Petitioner asserted that during prosecution, the Patent Owner had distinguished the ’928 application by arguing it only disclosed moving two, not three, engagement members simultaneously. Petitioner countered this, arguing the ’928 application disclosed a tool with handles (knobs and threaded rods), a mechanical linkage (cross-action members), and at least three engagement members (guide tubes 102a, 102b, and 104). Petitioner further argued that the tool's disclosed use for applying force perpendicular to the direction of distraction or compression would have been understood by a POSITA to inherently or obviously perform a derotation of the vertebrae.

• Additional Grounds: Petitioner asserted additional obviousness challenges, including a challenge to claims 3 and 4 over the ’928 application in view of the Video/Slides/MTOS references and the ’291 application (Ground 4), and an anticipation/obviousness challenge against claim 1 based on the ’328 application alone (Ground 5).

4. Key Claim Construction Positions

• "handle means" (claims 1, 3, 4): Petitioner argued for the plain meaning of "a part that is designed especially to be grasped by the hand." In the alternative, if the term were construed as a means-plus-function element, Petitioner identified the corresponding structure in the specification as a handle from which shafts extend or linked handles, as depicted in the patent’s figures.
• "mechanically linked" (claims 1, 3, 4): Petitioner proposed the construction "joined by a physical connection or physically joined." This construction was central to the obviousness arguments for combining the primary references (showing functionally linked but physically separate tools) with secondary references that explicitly taught a physical linkage.

5. Relief Requested

• Petitioner requests institution of inter partes review and cancellation of claims 1-4 of the ’072 patent as unpatentable.