PTAB

IPR2026-00217

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 ’633 patent discloses an expandable intervertebral fusion device for spinal surgery. The device comprises two hingedly connected movable portions (housings) that are expanded by a translatable wedge mechanism, which is advanced by a rotation screw, to restore spacing between vertebrae.

3. Grounds for Unpatentability

Ground 1: Anticipation and Obviousness of Claims 1, 2, 4, 7, 10-14, and 16-19 over Palmatier

  • Prior Art Relied Upon: Palmatier (Patent 9,445,919).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Palmatier anticipates every limitation of independent claim 1 and its dependent claims. The argument centered on Palmatier’s implant 840 embodiment (Figs. 22-26), which Petitioner contended was overlooked during prosecution of a related patent. Petitioner mapped claim 1’s “first movable portion” to Palmatier’s piston component 846 and the “second movable portion” to base component 848. These components are shown as hingedly connected. The claimed expansion mechanism is met by Palmatier’s wedge 858, which slides between the piston and base components, driven by rotation screw 892. A key feature, the “slot in the fourth end portion” of the second movable portion that receives the first, was identified in Palmatier’s implant 840, a feature Petitioner asserted the examiner missed by focusing on a different embodiment in a related case.
    • Motivation to Combine (for obviousness alternative): In the alternative, Petitioner argued that even if Palmatier’s implant 840 was not found to be perfectly axially aligned as claimed, it would be obvious to modify it. Palmatier’s other embodiments (implants 40 and 540) expressly disclose axially aligned ends. A POSITA would have been motivated to modify implant 840 to match the alignment of implants 40 and 540 to increase the implant’s footprint and biomechanical stability, a known design goal to reduce subsidence.
    • Expectation of Success: A POSITA would have a high expectation of success in making such a modification, as Palmatier itself teaches that its embodiments are similar and that modifications can be made. The change would not alter the fundamental expansion mechanism of the device.

Ground 2: Obviousness of Claims 4, 8, 9, and 20 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 addressed claims requiring "means for mating" or "gripping" the device with a tool. Petitioner argued Palmatier discloses the implant (implant 840) with indentations for engagement with an insertion tool but does not illustrate the tool itself. Gordon discloses a "holding device 710" with prongs ("holding arms 716") designed to engage complementary notches on an expandable spinal implant for insertion and stabilization during expansion.
    • Motivation to Combine: A POSITA would combine Gordon's tool with Palmatier's implant to create a complete, functional surgical system. The use of a single tool for both inserting an implant and actuating its expansion mechanism (as taught by Gordon) was a known way to improve surgical efficiency and minimize disruption to the patient. Both implants use a similar screw-driven expansion mechanism, making the combination intuitive.
    • Expectation of Success: Success would be expected, as it would only require routine modifications to shape Gordon’s tool prongs to mate with the specific indentations on Palmatier's implant.

Ground 3: Obviousness of Claims 14 and 16-18 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 focused on claim 14’s limitation requiring the vertebral body engagement surfaces to be "at least partially convex." While Petitioner contended Palmatier’s surfaces already met this limitation, it argued in the alternative that the feature would be obvious over Glerum. Glerum explicitly discloses an expandable fusion device with convex endplates, teaching that a convex surface provides a better fit with the concave anatomy of vertebral endplates.
    • Motivation to Combine: A POSITA would combine Glerum’s teaching of convex surfaces with Palmatier’s implant to improve the device's performance. It was well understood in the art that matching the implant's geometry to the patient's anatomy could reduce the risk of subsidence and fusion failure.
    • Expectation of Success: There would be a high expectation of success, as modifying the surface curvature of an interbody implant was a common and straightforward design choice. Glerum itself teaches that flat and convex surfaces are interchangeable design options.

4. Key Claim Construction Positions

Petitioner asserted that several claims include means-plus-function limitations under 35 U.S.C. § 112, para. 6 and proposed the following 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 (bottom housing).
  • "means for gripping and inserting the device" (Claims 8, 20): The corresponding structure is a tool with prongs that insert into the indentations.
  • "means for turning the rotation screw" (Claims 9, 20): The corresponding structure is a rotatable tool, such as an Allen key, with a screw engagement portion.
  • "means for pivotably attaching the first movable portion to the second movable portion" (Claims 10, 17, 20): The corresponding structure is one or more pins passing through a portion of both movable portions to create a hinge.

5. Relief Requested

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