Globus Medical, Inc.v.Flexuspine, Inc.

Patent Trial and Appeal Board

Feb 25, 2016

11134069 (P.T.A.B. Feb. 25, 2016)

Trials@uspto.gov Paper 11
571-272-7822 Entered: February 25, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

GLOBUS MEDICAL, INC.,
Petitioner,

v.

FLEXUSPINE, INC.,
Patent Owner.
____________

Case IPR2015-01830
Patent 8,123,810 B2
____________

Before WILLIAM V. SAINDON, HYUN J. JUNG, and
TIMOTHY J. GOODSON, Administrative Patent Judges.

GOODSON, Administrative Patent Judge.

DECISION
Denying Institution of Inter Partes Review
37 C.F.R. § 42.108
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I. INTRODUCTION
Globus Medical, Inc. (“Petitioner”) filed a Petition (Paper 1, “Pet.”)
requesting inter partes review of claim 17 of U.S. Patent No. 8,123,810
(“the ’810 patent”). Flexuspine, Inc. (“Patent Owner”) filed a Preliminary
Response (Paper 9, “Prelim. Resp.”) to the Petition.
We have jurisdiction under 35 U.S.C. § 314. To institute an inter
partes review, we must determine that the information presented in the
Petition shows “a reasonable likelihood that the petitioner would prevail
with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C.
§ 314(a). For the reasons set forth below, we do not institute an inter partes
review of claim 17.
A. Related Matters
Patent Owner is asserting the ’810 patent against Petitioner in a civil
action in the U.S. District Court for the Eastern District of Texas,
Flexuspine, Inc. v. Globus Medical, Inc., Case No. 15-cv-00201-JRG-KNM.
Pet. 2–3; Ex. 1002, 1; Paper 5, 2. In addition, four other petitions for inter
partes reviews involving the same parties are pending:
 IPR2015-01721, which concerns U.S. Patent No. 7,316,714;
 IPR2015-01749, which concerns U.S. Patent No. 7,204,853;
 IPR2015-01755, which concerns U.S. Patent No. 7,909,869; and
 IPR2015-01795, which concerns U.S. Patent No. 8,647,386.
See Pet. 3; Paper 5, 2.
B. The ’810 Patent
The ’810 patent is directed to an expandable intervertebral implant.
Ex. 1001, (57). The parties agree that claim 17, the sole challenged claim,
covers the embodiment shown in Figure 17. See Pet. 5; Prelim. Resp. 5.
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Reproduced below is an annotated version of Figure 17 from Patent Owner’s
Preliminary Response:

Prelim. Resp. 5.
Figure 17 is a perspective view of “a portion of an implant with a
double-wedged expansion member.” Ex. 1001, 6:23–24. The ’810 patent
describes the embodiment shown in Figure 17 as follows:
FIG. 17 depicts a perspective view of an embodiment of a portion
of an expandable implant. Implant 318 may include expansion
member 320. Expansion member 320 may be advanced with
advancing element 322. As depicted in FIG. 17, advancing
element 322 may be a screw. In some embodiments, advancing
element 322 may engage expansion member 320 from a side
(e.g., anterior side, posterior side) of implant 318. In some
embodiments, expansion member 320 may include two angled
portions. Angled portion 324 may engage a portion of implant
318 (e.g., an insert or a portion of an upper body or a lower body).
Advancing element 322 may engage angled portion 326, thus
allowing a component of the force from the advancing element
to increase a height of implant 318. Accessing expansion
member 320 from a longer side (e.g., posterior side) of implant
318 (PLIF approach) may advantageously require a smaller
incision and/or cause less tissue damage during insertion of the
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implant than accessing the expansion member from shorter end
of the implant (TLIF approach).
Id. at 18:6–25.
C. Prosecution of the ’810 Patent
During prosecution of the ’810 patent, the Examiner found that the
application contained claims directed to numerous distinct species, and
required Patent Owner to elect a single species for prosecution. See Ex.
1003, 1106–09. Patent Owner traversed the restriction requirement but
“elect[ed] species 22, shown in FIG. 17.” Id. at 1097–98. In the next Office
Action, the Examiner found Patent Owner’s arguments in traverse of the
restriction requirement to be unpersuasive, and deemed the requirement
final. Id. at 930. The Examiner also rejected the pending claims as
anticipated by Dinsdale.1 Id. at 930–31. Through several subsequent
exchanges between Patent Owner and the Examiner, prosecution remained
focused on whether the claims were allowable over Dinsdale. See id. at
916–21, 904–05, 891–97, 398–99, 389–91.
Dinsdale discloses an apparatus for promoting spinal fusion between
neighboring vertebrae. Id. at 934, (57). Figures 27 and 28 of Dinsdale are
reproduced below:

1 Wagner et al., WO 98/48739, published November 5, 1998. See Ex. 1003,
934. Michael Dinsdale is the fourth inventor listed in this reference. Id. at
934, (72). We follow the nomenclature used by the Examiner and the parties
in this proceeding in referring to this reference as Dinsdale.
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Id. at 1029–30. Figure 27 shows an exploded view of fusion device 200,
which includes engaging plates 202, 204 for engaging adjacent vertebrae and
bracket assembly 206. Id. at 955:24–26. Figure 28 depicts a perspective
view of bracket assembly 206, which “includes an alignment device for
changing a height between engaging plates 202 and 204.” Id. at 956:3–4.
The alignment device includes first and second turnbuckles 250, 270. Id. at
956:4–5. Turnbuckle 250 includes first and second threaded portions 252,
254 threaded in opposite directions. Id. at 956:17–19. Cam blocks 260, 261
are coupled to turnbuckle 250. Id. at 956:23–26. Sloped tracks 220, 222 of
engaging plate 204 are sloped to match the slopes of the lower surfaces of
cam blocks 260, 261. Id. at 956:36–957:1. Rotation of turnbuckle 250 in
one direction causes cam blocks 260, 261 to move away from each other,
and rotation of turnbuckle 250 in the opposite direction causes cam blocks to
move toward each other. Id. at 957:9–12.
The motion of cam blocks 260, 261 toward the edges of engaging
plates 202, 204 causes the height of engaging plates 202, 204 to increase.
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Id. at 957:21–23. This is shown more clearly in Figures 30A and 30B,
reproduced below:

Id. at 1032. Figures 30A and 30B show a cutaway view of device 200 in a
lowered position and a raised position, respectively. Id. at 957:23–24. With
respect to these figures, Dinsdale discloses as follows:
In order for the cam blocks to move laterally toward the exterior
of the fusion device, as shown in FIGs. 30A and 30B, the interior
separation between engaging plates 202 and 204 must be
increased to accommodate the height of the cam blocks.
Increasing the interior separation in turn increases the exterior
height 290 between exterior surfaces 203 of the engaging plates.
Rotation of turnbuckle 250 in a first direction causes lateral
motion of cam blocks 260 and 261 toward the exterior of
interbody fusion device 200. Because the slopes of surfaces 262,
263, 264, and 265 of the cam blocks match the slopes of sloped
tracks 230, 232, 220, and 222, the lateral motion of the cam
blocks forces engaging plates 202 and 204 apart and increases
height 290.
Id. at 957:25–32.
In an Amendment dated March 1, 2010, Patent Owner amended claim
180. Ex. 1003, 385. The parties agree that this is the claim that ultimately
issued as claim 17 of the ’810 patent. See Pet. 9; Prelim. Resp. 24. Patent
Owner’s amendment to claim 180 is reproduced below, with strikethrough
indicating deletion and underscoring indicating an addition:
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Ex. 1003, 385. In its remarks accompanying the Amendment, Patent Owner
argued that “Dinsdale does not disclose advancing a first angled portion and
substantially flat superior and inferior surfaces of an expansion member in a
substantially linear direction between and at least partially oblique to at least
a portion of the inferior and superior surfaces of upper and lower bodies.”
Id. at 390 (emphasis in original). Following this Amendment, the Examiner
issued a Notice of Allowability. Id. at. 372.
D. Challenged Claim
The Petition challenges claim 17, which is reproduced below:
17. An intervertebral implant for a human spine, comprising:
an upper body comprising an inferior surface and a superior
surface, wherein the superior surface of the upper body is
configured to engage a first vertebra of the human spine;
a lower body comprising a superior surface and an inferior
surface, wherein the inferior surface of the lower body is
configured to engage a second vertebra of the human
spine; and
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an expansion member comprising an elongated body having a
substantially flat inferior surface, a substantially flat
superior surface, and a first angled portion at an insertion
end of the elongated body, wherein the expansion member
is configured to be positioned between the upper body and
the lower body such that applying a force to a trailing end
of the elongated body opposite the insertion end of the
elongated body is configured to advance the first angled
portion and the substantially flat superior and inferior
surfaces of the expansion member in a substantially linear
direction between and at least partially oblique to at least
a portion of the inferior surface of the upper body and at
least a portion of the superior surface of the lower body
after insertion of the upper and lower body in the spine to
increase a separation distance between the superior surface
of the upper body and the inferior surface of the lower
body.
Ex. 1001, 36:3–29.
E. References Relied Upon
The Petition relies on the following references:
Lim
Johnson
US 7,828,849 B2
US 6,595,998 B2
Nov. 9, 2010
July 22, 2003
Ex. 1004
Ex. 1005

F. Alleged Grounds of Unpatentability
Petitioner contends that claim 17 of the ’810 patent is unpatentable on
the following grounds:
Reference Basis Claim Challenged
Lim § 103 17
Johnson § 103 17
II. ANALYSIS
In an inter partes review, claim terms in an unexpired patent are given
their broadest reasonable construction in light of the specification of the
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patent in which they appear. 37 C.F.R. § 42.100(b); In re Cuozzo Speed
Techs., LLC, 793 F.3d 1268, 1278 (Fed. Cir. 2015), cert. granted sub nom.
Cuozzo Speed Techs., LLC v. Lee, 84 U.S.L.W. 3218 (U.S. Jan. 15, 2016)
(No. 15-446). Under the broadest reasonable interpretation standard, claim
terms are given their ordinary and customary meaning, as would be
understood by one of ordinary skill in the art in the context of the entire
disclosure. In re Translogic Tech. Inc., 504 F.3d 1249, 1257 (Fed. Cir.
2007). Any special definition for a claim term must be set forth with
reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d
1475, 1480 (Fed. Cir. 1994).
If the scope of the claims cannot be determined without speculation,
the differences between the claimed invention and the prior art cannot be
ascertained. See In re Steele, 305 F.2d 859, 862–63 (CCPA 1962);
BlackBerry Corp. v. MobileMedia Ideas, LLC, Case IPR2013-00036, slip
op. at 8, 20 (PTAB Mar. 7, 2014) (Paper 65). The Board has previously
terminated proceedings or denied institution when the scope of the claims
being challenged could not be determined without speculation. Several such
decisions arise in the context of means-plus-function claim terms for which
supporting structure or a specific algorithm for performing the function was
not identified in the specification. See, e.g., BlackBerry, slip op. at 13–14;
Facebook, Inc. v. TLI Communications LLC, Case IPR2014-00566, slip op.
at 9–12 (PTAB Sept. 15, 2014) (Paper 14); Space Exploration Technologies
Corp. v. Blue Origin LLC, Case IPR2014-01378, slip op. at 7–9 (PTAB Mar.
3, 2015) (Paper 6). However, Board decisions have applied the same
reasoning to other types of claim terms whose metes and bounds are unclear.
See American Honda Motor Co. v. Signal IP, Inc., Case IPR2015-01003,
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slip op. at 11–13 (PTAB Oct. 1, 2015) (Paper 11) (denying institution due to
lack of clarity in the claim term “concentrated”); Samsung Display Co. v.
Gold Charm Ltd., Case IPR2015-01452, slip op. at 12–13 (PTAB Nov. 13,
2015) (Paper 12) (denying institution due to lack of clarity in the claim terms
“channel” and “channel length”).
Claim 17 recites that the expansion member is configured “such that
applying a force to a trailing end of the elongated body opposite the insertion
end of the elongated body is configured to advance the first angled portion
and the substantially flat superior and inferior surfaces of the expansion
member in a substantially linear direction between and at least partially
oblique to at least a portion of the inferior surface of the upper body and
at least a portion of the superior surface of the lower body.” For
convenience, we refer to the emphasized claim language as the “oblique”
limitation. We observe that the quoted claim language specifies
advancement of the expansion member in a substantially linear direction that
is (i) between at least a portion of the inferior surface of the upper body and
at least a portion of the superior surface of the lower body, (ii) at least
partially oblique to at least a portion of the inferior surface of the upper
body, and (iii) at least partially oblique to at least a portion of the superior
surface of the lower body.
The Petition does not propose an express construction of the oblique
term, but it does include an annotated version of Figure 17, reproduced
below, that illustrates Petitioner’s understanding of what it means:
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Pet. 15. Regarding this illustration, Petitioner explains as follows:
[T]he curved shape of the upper and lower bodies of the implant
. . . results in the expansion member (spacer) traveling in a
substantially linear, generally tangential direction during
deployment. Because of the curvature of the resulting path along
the sidewall, the direction of travel would also be at least partially
oblique (i.e. including a lateral/radial component) to at least a
portion of the inferior surface of the upper body and at least a
portion of the superior surface of the lower body.
Id.
Patent Owner disputes Petitioner’s position regarding the meaning of
the oblique term:
The language of claim 17 focuses on oblique movement relative
to the inferior surface of the lower body, not the lateral sidewall
of the implant. The claimed oblique movement is caused by
angled portions of the expansion member, with the intent of
moving the expansion member vertically relative to the inferior
surface of the lower body to cause expansion of the implant.
Prelim Resp. 20. The Preliminary Response includes the following
diagrams that illustrate Patent Owner’s view of what the “oblique” term
means:
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Id. at 8.
The intrinsic record does not support either party’s interpretation of
the “oblique” term. With respect to Petitioner’s position, the Specification
does not indicate the “oblique” direction refers to a lateral or radial
component of the expansion member’s travel as a result of the curved
sidewall of the implant. See Ex. 1001, 18:6–25. Indeed, the Specification
does not refer to the sidewall or the curvature of the implant at all in
describing the advancement of the expansion member in Figure 17. See id.
Moreover, the oblique term requires the expansion member to
advance obliquely relative to “at least a portion of the superior surface of
the lower body.” In Figure 17, as we understand it based on the description
in the Specification, the force of advancing element 322 on angled portion
326 increases the height of implant 318 by driving expansion member 320
leftward, toward the insert. See Ex. 1001, 18:17–20. The sloping interface
between angled portion 324 of expansion member 320 and the insert acts as
a wedge, such that the leftward motion of expansion member 320 pushes the
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upper and lower bodies apart. Thus, during advancement of expansion
member 320, the inferior surface of expansion member 320 slides along and
remains in contact with the superior surface of the lower body. Even
assuming that Petitioner is correct that the advancement of expansion
member 320 includes a lateral component due to the curved sidewall of the
implant, we are not persuaded that this lateral component should be
considered oblique movement between the inferior surface of expansion
member 320 and the superior surface of the lower body, because the inferior
surface of expansion member 320 remains in contact with the superior
surface of the lower body throughout advancement. A bottom surface of an
object that is sliding along the top of a second surface is not moving
obliquely relative to the top of the second surface.
Turning to Patent Owner’s contentions, Patent Owner’s explanation of
what the oblique term means is inconsistent with the arguments it made
during prosecution when it introduced this limitation. As summarized in
Section I.C. above, Patent Owner added the oblique term in response to a
rejection based on Dinsdale, and Patent Owner argued that Dinsdale did not
disclose advancement in an oblique direction as required by the oblique
term. See Ex. 1003, 385, 390. Patent Owner’s contention that the “claimed
oblique movement is caused by angled portions of the expansion member,
with the intent of moving the expansion member vertically relative to the
inferior surface of the lower body to cause expansion of the implant”
(Prelim. Resp. 20) cannot be reconciled with Patent Owner’s argument
during prosecution that Dinsdale does not disclose the oblique term. As
explained in Section I.C. above, in Dinsdale, because “the slopes of surfaces
262, 263, 264, and 265 of the cam blocks [260, 261] match the slopes of
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sloped tracks 230, 232, 220, and 222, the lateral motion of the cam blocks
forces engaging plates 202 and 204 apart and increases height 290.” Ex.
1003, 957:30–32. Thus, just like the lower figure in Patent Owner’s diagram
reproduced above, the angled surfaces of Dinsdale’s cam blocks 260, 261
cause engaging plates 202, 204 to move apart vertically, expanding the
implant.
Having determined that neither party’s interpretation of the oblique
term accords with the intrinsic evidence, we discern no other construction of
the term that would be consistent with the intrinsic record of the ’810 patent.
The word “oblique” does not appear in the description of Figure 17 or
anywhere else in the Specification, apart from the claims. Nevertheless,
Figure 17 and the description thereof must be understood as informative of
the meaning of the oblique term because Figure 17 embodies claim 17. That
claim 17 encompasses the Figure 17 embodiment is a matter on which the
parties agree (see Pet. 5; Prelim. Resp. 5), and is a consequence of Patent
Owner’s election, in response to a restriction requirement, to proceed with
prosecution of the species shown in Figure 17. See Ex. 1003, 1097–98. Yet
it is unclear how the Figure 17 embodiment satisfies the requirement in
claim 17 that the advancement of the expansion member is “at least partially
oblique to . . . at least a portion of the superior surface of the lower body.”
As discussed above with respect to Petitioner’s proposed construction, in the
Figure 17 embodiment, the inferior surface of expansion member 320 slides
along and remains in contact with the superior surface of the lower body
during advancement of expansion member 320. In other words, there is no
relative motion in the vertical direction between the inferior surface of
expansion member 320 and the superior surface of the lower body.
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Further compounding the confusion is that the oblique term should be
understood as being absent in Dinsdale. This conclusion flows from Patent
Owner’s argument during prosecution, in the Amendment in which it
introduced the oblique term. See Ex. 1003, 385, 390. It is unclear what the
oblique term could mean that satisfies both of these criteria of being present
in Figure 17 of the ’810 patent and absent in Dinsdale. Accordingly, “the
prior art grounds of unpatentability must fall, pro forma, because they
[would be] based on speculative assumption as to the meaning of the
claims.” See Samsung, slip op. at 13 (quoting BlackBerry, slip op. at 20).
III. CONCLUSION
For the foregoing reasons, on the record before us, we conclude that
the information presented does not show that there is a reasonable likelihood
that Petitioner will prevail with respect to its obviousness challenges to
claim 17. Therefore, we deny the Petition for inter partes review of claim
17.
IV. ORDER
In consideration of the foregoing, it is hereby ORDERED that the
Petition is denied and no trial is instituted.

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PETITIONER:

George D. Moustakas
David P. Utykanski
HARNESS, DICKEY & PIERCE, P.L.C.
gdmoustakas@hdp.com
dutykanski@hdp.com

PATENT OWNER:

Brett M. Pinkus
FRIEDMAN, SUDER & COOKE
pinkus@fsclaw.com