PTAB

IPR2026-00217

Medtronic Inc v. Moskowitz Family LLC

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Expandable Intervertebral Spacer for Spinal Fusion
  • Brief Description: The ’633 patent discloses an expandable intervertebral spacer used in spinal fusion surgery. The device comprises two movable housings connected by a hinge, which are expanded by the lateral movement of an internal wedge that is advanced via a rotation screw.

3. Grounds for Unpatentability

Ground 1: Claims 1, 2, 4, 7, 10-14, and 16-19 are anticipated by, or alternatively obvious over, Palmatier.

  • Prior Art Relied Upon: Palmatier (Patent 9,445,919).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Palmatier’s disclosed implant 840 anticipates every limitation of the challenged claims. It asserted that implant 840 teaches a "first movable portion" (piston component 846) and a "second movable portion" (base component 848) that are pivotably connected by a hinge. Critically, Palmatier’s base component defines a slot in its fourth end portion sized to receive the second end portion of the piston component, allowing the ends to be axially aligned. The implant is expanded by a mechanism comprising a wedge (858) and a rotation screw (892) that pivotably moves the two portions apart.
    • Motivation to Combine (for obviousness alternative): In the alternative, Petitioner contended that if implant 840 did not disclose perfectly aligned ends, a person of ordinary skill in the art (POSITA) would have been motivated to modify it. Palmatier discloses other embodiments (implants 40 and 540) with fully aligned ends. A POSITA would combine these features to increase the implant's footprint, a well-known technique to improve biomechanical stability and reduce the risk of subsidence into the vertebral body.
    • Expectation of Success: A POSITA would have a high expectation of success, as Palmatier itself teaches that "various modifications may be made to the embodiments disclosed herein" and shows multiple successful implementations of the same core expansion technology with slight variations.
    • Key Aspects: Petitioner argued that the Patent Office only allowed the claims of the ’633 patent family because the Examiner, during prosecution of a parent patent, overlooked the relevant implant 840 embodiment in Palmatier and instead focused on a different embodiment that lacked the claimed slot feature.

Ground 2: Claims 4, 8, 9, and 20 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: This ground addresses means-plus-function claims related to an insertion tool. Petitioner asserted that Palmatier discloses an implant with indentations configured for engagement with an insertion tool but does not explicitly illustrate the tool. Gordon discloses a "holding device 710" with prongs ("holding arms 716") and a driver head (726) that are perfectly suited for mating with Palmatier's indentations to grip the implant and for engaging its rotation screw to actuate expansion.
    • Motivation to Combine: A POSITA would combine Palmatier’s implant with a tool like Gordon’s to solve the clear need for a method of insertion and actuation. Gordon’s tool offers the distinct advantage of a single instrument capable of both gripping/inserting the implant and subsequently expanding it, which would be preferable to using multiple tools to improve surgical efficiency and minimize disruption.
    • Expectation of Success: Success would be reasonably expected, as the combination involves mating known, complementary features—an implant designed with engagement points and a tool designed with corresponding features.

Ground 3: 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 targets claims requiring the vertebral body engagement surfaces to be "at least partially convex." While arguing Palmatier's implant already meets this limitation, Petitioner presented an alternative obviousness argument. Glerum explicitly teaches an "expandable fusion device" with endplates that "can be curved convexly" to achieve better engagement with the vertebral body.
    • Motivation to Combine: A POSITA would modify Palmatier's implant to incorporate Glerum’s convex surfaces to achieve an optimal anatomical fit with the concave surfaces of vertebral endplates. This was a known design principle intended to improve stability and mitigate the risk of fusion failure.
    • Expectation of Success: Modifying the surface geometry of an implant was a routine design choice and considered predictable. Glerum itself teaches that flat and convex surfaces are interchangeable options, and this external modification would not interfere with the functionality of Palmatier's internal wedge-based expansion mechanism.

4. Key Claim Construction Positions

  • Petitioner argued that several claims include means-plus-function limitations under 35 U.S.C. § 112, and proposed constructions for the corresponding structures based on the ’633 patent’s specification:
    • "means for mating the second movable portion with prongs of a tool" (Claim 4): The corresponding structure is "indentations on the lateral sides of the second movable portion."
    • "means for gripping and inserting the device" (Claim 8): The corresponding structure is "a tool with prongs."
    • "means for turning the rotation screw..." (Claim 9): The corresponding structure is "a rotatable tool (e.g., an Allen key) with a screw engagement portion."
    • "means for pivotably attaching the first movable portion to the second movable portion" (Claims 10 & 17): The corresponding structure is "one or more pins, each of which passes through at least a portion of both the first and second movable portions."

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1, 2, 4, 7-14, and 16-20 of the ’633 patent as unpatentable.