PTAB

IPR2026-00216

Medtronic Inc v. Moskowitz Family LLC

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Key Events
Petition

1. Case Identification

2. Patent Overview

  • Title: Expandable Intervertebral Spacer
  • Brief Description: The ’284 patent discloses an expandable intervertebral spacer for spinal fusion surgery. The device consists of two housings pivotally connected at one end, which can be expanded to distract adjacent vertebrae using a wedge that is advanced between the housings by a rotation screw.

3. Grounds for Unpatentability

Ground 1: Anticipation and Obviousness over Palmatier - Claims 1-2, 4, 7, 10-13, and 19-20 are anticipated by or, in the alternative, obvious over Palmatier.

  • Prior Art Relied Upon: Palmatier (Patent 9,445,919).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Palmatier, specifically the embodiment of implant 840 shown in Figures 22-26, disclosed every limitation of the challenged claims. This embodiment described an expandable implant with a first housing (piston component 846) and a second housing (base component 848) connected by a hinge. A wedge (858) driven by a screw (892) expanded the device. Critically, Petitioner asserted that during the original prosecution, the Examiner overlooked that this specific embodiment of Palmatier disclosed a "slot" in the second housing to receive the first housing, a feature the Patent Owner had successfully argued was missing from the prior art to secure allowance.
    • Motivation to Combine (for obviousness alternative): For the alternative obviousness argument regarding the axial alignment of implant ends, Petitioner argued a person of ordinary skill in the art (POSITA) would have been motivated to modify Palmatier's implant 840. The motivation was to make its ends align like those in other Palmatier embodiments (implants 40 and 540) to increase the implant’s footprint. This modification would better distribute stress on vertebral endplates and reduce the known risk of implant subsidence.
    • Expectation of Success (for obviousness alternative): A POSITA would have a high expectation of success in making this modification. Palmatier itself taught that "various modifications may be made" and disclosed other embodiments with the desired axially aligned configuration. Modifying the end alignment was a predictable design choice that would not alter the fundamental expansion mechanism of the implant.

Ground 2: Obviousness over Palmatier and Gordon - Claims 4, 8, and 9 are obvious over Palmatier in view of Gordon.

  • Prior Art Relied Upon: Palmatier (Patent 9,445,919) and Gordon (Application # 2005/0278026).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner contended that while Palmatier disclosed an implant with indentations for an insertion tool, it did not illustrate the tool itself. Gordon disclosed a "holding device" with prongs ("holding arms 716") designed to engage complementary notches on a similar expandable spinal implant for insertion and expansion. Combining Palmatier's implant with Gordon's tool would satisfy the means-plus-function limitations of claim 4 ("means for mating with prongs of a tool"), claim 8 ("means for gripping and inserting the device"), and claim 9 ("means for turning the rotation screw").
    • Motivation to Combine: A POSITA would combine the teachings to create a complete and functional surgical system. Gordon's tool offered the advantage of a single instrument for both inserting and expanding the implant, which was preferable to using multiple tools as it would be more efficient and less disruptive during surgery. Both Palmatier's and Gordon's implants used similar screw-driven expansion mechanisms, making the combination straightforward.
    • Expectation of Success: A POSITA would have a reasonable expectation of success because Gordon's tool was designed for the exact purpose of manipulating implants like Palmatier's. The cooperative nature of the components was apparent, and Gordon taught that its driver head could take "various forms" to actuate an expansion screw like the one in Palmatier.

Ground 3: Obviousness over Palmatier and Glerum - Claims 14 and 16-18 are obvious over Palmatier in view of Glerum.

  • Prior Art Relied Upon: Palmatier (Patent 9,445,919) and Glerum (Application # 2011/0319997).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground addressed challenged claims requiring "substantially convex" vertebral body engagement surfaces. Palmatier disclosed the core expandable implant but with flat engagement surfaces. Glerum taught an expandable fusion device with explicitly convex endplates. Petitioner argued that modifying Palmatier's flat surfaces to be convex, as taught by Glerum, would have been obvious.
    • Motivation to Combine: A POSITA would be motivated to incorporate Glerum's convex surfaces into Palmatier's implant to achieve a better anatomical fit with the naturally concave vertebral endplates. It was well-known in the art at the time that improving the surface fit of an implant could mitigate the risk of subsidence and improve fusion outcomes.
    • Expectation of Success: The expectation of success would be high. Modifying the surface geometry of an implant was a routine design consideration, and Glerum itself taught that convex and flat surfaces were interchangeable options. This surface modification would not affect the functionality of Palmatier's internal expansion mechanism.

4. Key Claim Construction Positions

  • Petitioner argued that several claims included means-plus-function limitations and proposed the following corresponding structures based on the ’284 patent’s specification:
    • Claim 4 ("means for mating with prongs of a tool"): The corresponding structure is "indentations on the lateral sides of the second housing."
    • Claim 8 ("means for gripping and inserting the device"): The corresponding structure is "a tool with prongs."
    • Claim 9 ("means for turning the rotation screw"): The corresponding structure is "a rotatable tool (e.g., an Allen key) with a screw engagement portion."
    • Claims 10, 17, and 20 ("means for attaching the first housing to the second housing"): The corresponding structure is "one or more pins," with each pin passing through a portion of both housings to create a pivot.

5. Key Technical Contentions (Beyond Claim Construction)

  • A central technical contention was that the Patent Office erred during the original prosecution of the ’284 patent. Petitioner argued the Examiner was persuaded to allow the claims by focusing only on one embodiment in Palmatier (implant 540) while failing to appreciate that another embodiment in the same reference (implant 840, Figs. 22-26) explicitly disclosed the key "slot" limitation that was the basis for overcoming the prior art rejection.

6. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-2, 4, 7-14, and 16-20 as unpatentable.