PTAB

IPR2026-00163

Medtronic Inc v. Moskowitz Family LLC

Key Events

Petition

Title: Expandable Intervertebral Implant and Tool System
Brief Description: The ’136 patent discloses a system comprising an expandable spinal implant and a corresponding tool assembly. The tool assembly is designed for inserting the implant into an intervertebral space and subsequently expanding it to restore vertebral spacing.

Prior Art Relied Upon: Gordon (Application # 2005/0278026).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that Gordon discloses a complete system comprising an expandable spinal implant (e.g., implant 304) and a tool assembly (instrument 700) that meets all limitations of the challenged claims. Gordon’s instrument was asserted to teach the claimed “first tool” with holding arms (“engagement prongs”) and a hollow shaft (“adjusting tool passage”). Gordon’s inner driver (driver 708) was mapped to the claimed “second adjusting tool” used to turn the implant’s advancing element (adjusting screw).
- Motivation to Combine (for Obviousness): For certain limitations not explicitly shown in one embodiment, Petitioner argued a person of ordinary skill in the art (POSITA) would find it obvious to modify Gordon's implant 304 to include side recesses for tool engagement, as taught by another similar c-shaped implant embodiment (implant 484) within Gordon. This modification would be motivated by the desire to use Gordon's disclosed insertion tool (instrument 700), which is designed to engage such recesses.
- Expectation of Success: A POSITA would have a high expectation of success because the proposed modification only involved combining features from similar embodiments within the same reference to achieve their intended, compatible functions.

Prior Art Relied Upon: McLuen (Application # 2006/0253201) and Gordon (Application # 2005/0278026).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner asserted that McLuen discloses an expandable spinal implant (bone fusion device 1500) that meets the implant limitations of the challenged claims, including expandable tabs, an adjusting screw, and side channels for tool engagement. However, McLuen does not fully disclose the tool assembly. Petitioner argued that Gordon provides the missing tool assembly, which includes a first tool for holding the implant and a second, inner tool for expansion.
- Motivation to Combine: A POSITA would combine Gordon’s tool assembly with McLuen’s implant to create a complete, functional system. The motivation stems from the structural similarities between the implants and the fact that Gordon’s tool is designed to solve problems inherent in systems like McLuen’s, such as screwdriver slippage during expansion. Gordon’s integrated tool assembly, which securely holds the implant during expansion, offered a known advantage over using separate, un-integrated tools.
- Expectation of Success: A POSITA would expect success because the components were highly compatible. Gordon’s holding arms were shaped to engage the channels disclosed in McLuen, and Gordon’s driver head could actuate McLuen’s positioning screw with, at most, minor and predictable modifications.

Prior Art Relied Upon: Gordon (Application # 2005/0278026) and Michelson (WO 02/062272).
Core Argument for this Ground:
- Prior Art Mapping: This ground focused on modifying the tool assembly taught by Gordon using the teachings of Michelson. Petitioner argued it would have been obvious to replace Gordon’s driver (the “second adjusting tool”), which uses a thumbwheel, with Michelson’s expander driver, which features a T-shaped handle.
- Motivation to Combine: A POSITA would combine the references to improve Gordon’s tool. Michelson’s T-shaped handle was a known alternative to a knob or thumbwheel and would predictably provide greater mechanical advantage and more precise rotational control during implant expansion. Further, incorporating Michelson’s design of a separable adjusting tool would improve the manufacturability, cleaning, and serviceability of the overall tool assembly.
- Expectation of Success: Success was expected because this combination represented a simple substitution of one known type of handle (thumbwheel) for another known alternative (T-handle) to achieve the predictable result of improved user control.
Additional Grounds: Petitioner asserted an additional obviousness challenge (Ground 4) for claims 9-12 and 14-17 based on the combination of McLuen in view of Gordon and Michelson, arguing that the improved Gordon-Michelson tool would be applied to the McLuen implant for the same reasons articulated in Grounds 2 and 3.

Petitioner requests institution of an inter partes review (IPR) and cancellation of claims 9-12, 14-18, and 20 of the ’136 patent as unpatentable.