PTAB

IPR2025-01598

Medtronic Inc v. Moskowitz Family LLC

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Intervertebral Fusion Devices
  • Brief Description: The ’293 patent discloses spinal implants, specifically intervertebral cages, designed for insertion into the disc space between adjacent vertebrae. The implants are secured using bi-directional screws and are configured to facilitate biological bone fusion.

3. Grounds for Unpatentability

Ground 1: Obviousness of Claim 43 over Byrd alone or in view of Waugh

  • Prior Art Relied Upon: Byrd (Patent 7,077,864) and Waugh (Application # 2008/0249569).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Byrd discloses a vertebral interbody cage with nearly all features of claim 43. Byrd’s cage is configured for insertion between vertebrae to provide both screw fusion (via angled screw passages) and biological fusion (via a hollow center for bone graft). Petitioner mapped Byrd’s front, rear, and side walls to the claimed top, bottom, and side walls, and identified its screw passages as the claimed "internal screw trajectory guide" with the requisite entry and exit openings. The primary feature Byrd suggests but does not explicitly label is a "zero-profile" configuration.
    • Motivation to Combine: Petitioner asserted that a person of ordinary skill in the art (POSITA) would modify Byrd’s cage to be "zero-profile." Byrd itself teaches using "low profiles" to avoid contact with adjacent blood vessels, and a POSITA would know that a zero-profile design is a type of low-profile design. Waugh explicitly teaches a zero-profile implant that is "entirely contained within the disc space" to prevent patient trauma. A POSITA would combine Byrd's functional cage design with Waugh's known safety-enhancing zero-profile configuration as a predictable solution to a known problem.
    • Expectation of Success: Success was expected because modifying Byrd’s implant to be zero-profile would only require selecting appropriate dimensions—a matter of routine optimization—without altering the cage's fundamental design or function. Byrd itself discloses that "differing size cages may be provided."

Ground 2: Obviousness of Claim 43 over Messerli alone or in view of Waugh

  • Prior Art Relied Upon: Messerli (Application # 2010/0305704) and Waugh (Application # 2008/0249569).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner contended that Messerli alone renders claim 43 obvious. Messerli explicitly relates to a "zero or low profile fusion implant" and discloses an intervertebral implant with a plate (top wall), a spacer containing an opening for bone graft material, and opposing screws for fixation. Petitioner asserted that Messerli’s screw holes and passages constitute the claimed internal screw trajectory guide, and that the exit openings are formed in the claimed locations on the bottom and side surfaces of the top wall. Petitioner noted that during prosecution of a related patent, the USPTO found that Messerli disclosed these same key limitations.
    • Motivation to Combine: While arguing Messerli alone is sufficient, Petitioner asserted a POSITA would also look to references like Waugh. The combination would be motivated by Waugh’s clear teachings on the benefits of a strictly zero-profile design to confirm the advantages of the "zero or low profile" configuration suggested by Messerli. This would have been a predictable design choice given the recognized benefits discussed in both references.
    • Expectation of Success: A POSITA would have a high expectation of success, as Messerli already teaches the core "zero or low profile" concept. No significant modification to Messerli's design would be needed, only ensuring the dimensions were selected to fit entirely within the disc space, a routine practice taught by references like Waugh.

Ground 3: Anticipation of Claim 43 by Waugh

  • Prior Art Relied Upon: Waugh (Application # 2008/0249569).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Waugh discloses every element of claim 43. Waugh’s implantable medical device is expressly described as "sized to fit the disc space height" and "capable of being entirely contained within the disc space," meeting the "zero-profile" limitation. It facilitates biological fusion via a "hollow center" for bone growth materials and screw fusion via "anchor members" (screws). Petitioner provided a detailed mapping showing Waugh's implant member includes a top wall, bottom wall, and sidewalls, as well as anchor member apertures that function as an "internal screw trajectory guide." Petitioner argued that the entry and exit openings of these guides in Waugh have the exact partial-surface geometry recited in claim 43. This finding was allegedly confirmed by the USPTO during prosecution of a related patent.

4. Key Claim Construction Positions

  • Petitioner asserted that the Board need not formally construe any claim terms because claim 43 is unpatentable under any reasonable construction.
  • Critically, Petitioner argued its invalidity positions hold even under the Patent Owner's interpretations of claim terms, as inferred from infringement contentions in parallel district court litigation. Petitioner used Patent Owner's own litigation diagrams labeling "top wall," "bottom wall," and "entry opening" on accused products to show that the prior art references disclose identical structures.

5. Arguments Regarding Discretionary Denial

  • While not explicitly addressing Fintiv factors, Petitioner strongly argued that institution is warranted because the patent issued due to improper prosecution.
  • Petitioner alleged that the key prior art references—Byrd, Messerli, and Waugh—were never substantively considered by the Examiner. The references were allegedly "buried" in a large, non-compliant Information Disclosure Statement filed after a Notice of Allowance, which the Examiner marked as non-compliant and did not consider. Therefore, Petitioner contended this inter partes review (IPR) presents art and arguments that the USPTO has not previously evaluated.

6. Relief Requested

  • Petitioner requested institution of an IPR and cancellation of claim 43 of the ’293 patent as unpatentable.