SeaSpine Holdings Corp v. Jackson Roger

1. Case Identification

• Case #: IPR2025-00773
• Patent #: 11,399,873
• Filed: March 26, 2025
• Petitioner(s): SeaSpine Holdings Corporation
• Patent Owner(s): Roger P. Jackson, M.D.
• Challenged Claims: 1-19

2. Patent Overview

• Title: Threaded Closure for Bone Anchor Assembly
• Brief Description: The ’873 patent relates to threaded closure mechanisms for use with open bone anchors in spinal surgery. The invention describes a threaded plug, or closure, featuring a thread start with a blunt, partially curvate face that is spaced above the bottom surface of the closure to facilitate easier alignment and engagement with the receiver threads.

3. Grounds for Unpatentability

Ground 1: Obviousness over Kirschman - Claims 1-2, 4, and 7 are obvious over Kirschman

• Prior Art Relied Upon: Kirschman (Application # 2011/0152947) and Higbee (Patent 447,775), which Kirschman incorporates by reference.
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Kirschman, a reference directed to spinal implants, discloses all limitations of independent claim 1. Kirschman teaches a medical implant assembly with a receiver and a threaded cap (plug). The receiver has a channel for a rod and an upper portion with internal threads. The cap features a continuously helically wound thread form with a truncated leading edge, which Petitioner asserted constitutes the claimed "start structure." Petitioner contended that Kirschman’s cap includes a bottom surface with a deformable ring that functions as the claimed "annular outer edge," and that the frustoconical guiding surface of the cap spaces the thread's start structure "apart and above" this bottom surface. Finally, Petitioner argued the truncated leading face of the thread in Kirschman is shown to be curved, meeting the "partial curvate surface" limitation.
  • Motivation to Combine (for §103 grounds): This ground relies on a single reference, arguing Kirschman alone renders the claims obvious. It also leverages Kirschman's express incorporation of Higbee for its teachings on "blunt-tip threads" to prevent cross-threading, arguing a POSITA would have understood Kirschman's thread start in light of Higbee's foundational disclosure.
  • Expectation of Success (for §103 grounds): A POSITA would have expected success in applying the well-known principles of thread design, including the blunt thread starts taught by Higbee and implemented in Kirschman, to a spinal implant closure.

Ground 2: Obviousness over Kirschman and Boschert - Claims 3 and 12-16 are obvious over Kirschman in view of Boschert

• Prior Art Relied Upon: Kirschman (Application # 2011/0152947) and Boschert (Patent 7,857,834).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon the teachings of Kirschman by adding Boschert's disclosure of a double-lead setscrew. Petitioner argued this combination renders obvious claims requiring a "first start structure" and a "second start structure" (claims 3 and 12-16). Boschert explicitly teaches that its setscrew can be designed with a "double lead" to allow it to start more easily than a single-lead screw.
  • Motivation to Combine (for §103 grounds): A POSITA would combine Kirschman's closure with Boschert's double-lead thread design to improve the performance of the implant. Kirschman sought to solve issues of forceful rod seating and cross-threading, and Boschert's double-lead thread directly addresses ease of starting and reduces the number of rotations needed to secure a cap, which are known benefits that would have motivated the combination.
  • Expectation of Success (for §103 grounds): Multi-threaded screws were well-known in the art, and a POSITA would have reasonably expected to successfully implement a double-lead thread on Kirschman's cap using standard manufacturing techniques.

Ground 3: Obviousness over Kirschman and Johnson - Claims 5-6 are obvious over Kirschman in view of Johnson

• Prior Art Relied Upon: Kirschman (Application # 2011/0152947) and Johnson (Application # 2007/0088357).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground adds Johnson's teachings to Kirschman to address claims requiring "breakoff extensions" on the receiver arms (claims 5-6). Johnson discloses a receiver with an upper portion designed to be a removable, break-off extension separated from the lower portion by a thinned section. These extensions facilitate rod insertion and seating before being sheared off.
  • Motivation to Combine (for §103 grounds): A POSITA would combine Kirschman's receiver with Johnson's break-off extensions to further improve rod seating, a problem Kirschman sought to address. Johnson's extensions allow a surgeon to insert a rod without needing a special reducing tool. A POSITA seeking to enhance Kirschman's design would have been motivated to incorporate this well-known feature to simplify the surgical procedure.
  • Expectation of Success (for §103 grounds): A POSITA would have reasonably expected to successfully form Kirschman's receiver with Johnson's break-off extensions, as Johnson describes that such extensions can be integrally formed or separately attached.

• Additional Grounds: Petitioner asserted additional obviousness challenges, including claims 8-11 over Kirschman in view of the ’477 Publication (adding features like beveled surfaces and break-off plugs), and three-reference combinations for claims 17-19.

4. Arguments Regarding Discretionary Denial

• Arguments against §325(d) Denial: Petitioner argued the examiner materially erred during prosecution by failing to appreciate the full disclosure of Kirschman (and its incorporation of Higbee), despite these references being of record. The examiner never rejected the claims based on these references, instead issuing only a nonstatutory double patenting rejection. Petitioner asserted that its analysis, supported by expert declaration, presents the art in a new light and corrects the examiner's error.
• Arguments against Discretionary Denial under Fintiv: Petitioner argued that the Fintiv factors favor institution. The parallel district court trial date is not currently set, having been moved multiple times. The ’873 patent was only recently added to the litigation, and Petitioner filed the IPR petition expeditiously thereafter. To reduce overlap, Petitioner stipulated that if the IPR is instituted, it will not pursue the same grounds or any other grounds that could have been reasonably raised in the IPR in the district court litigation.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-19 of the ’873 patent as unpatentable.