Requester Appeals PTO’s Refusal to Adopt Rejections, and Wins (Corrected Version)

Scott Daniels | October 22, 2010

Much is made of the fact that the PTO grants the overwhelming majority of requests for reexamination and then adopts at least some of the rejections proposed in the request.  So what do you do if the PTO does not adopt your rejections?  In May 2009 NuVasive requested inter partes reexamination of Warsaw Orthopedic’s U.S. Patent No. 6,969,390 for a medical appliance, proposing ten distinct prior art rejections.  When the examiner granted the request, but refused to adopt the proposed rejections, NuVasive appealed.  Yesterday the Board reversed the refusal and remanded the case to the examiner, with instructions to adopt NuVasive’s first proposed rejection of claim 1 and to reconsider four other proposed rejections of certain dependent claims.

The ‘390 patent claims a “plating system” for application to the human spine, including a cervical plate and a bone screw.  The primary reference relied upon by NuVasive discloses each of the claim limitations, except for certain structural features of the screw.  A secondary reference, however, discloses a plating system with a screw having those structural features.  In denying the request for reexamination, the examiner concluded that there would be no reason for one skilled in the art to replace the screw of the primary reference with the screw of the secondary reference.

The Board disagreed, invoking many of the familiar passages from KSR.  It explained that “screw head shape is a ‘design choice that is well within the skill of the art,’” and that substitution of the screw of the primary with the screw of the secondary reference is “merely a predictable variation.”  Further, the “functional similarities” between the two screws would indicate to one skilled in the art that they “would yield substantially the same result.”  Finally, the Board stated that one skilled in the art “would know to select materials and sizes accordingly so that the desired goal of affixing the device can be attained.”

The ‘390 patent is just one of many patents in the infringement action, Medtronic Sofamor et al. v. NuVasive, No. 3:08-cv-01512 (AJB)(S.D. Cal.).  The case involves 12 patents and is scheduled to go to trial in May 2011.  NuVasive has sought reexamination against six of the nine Warsaw Orthopedic/Medtronic patents-in-suit.  For two of the patents under reexamination – U.S. Patent Nos. 6,936,050 and 6,936,051 – NuVasive is appealing to the Board unfavorable decisions by the examiner.  We expect there may be reversals in those reexaminations as well.

The suit also includes an allegation that Medtronic infringes three NuVasive patents: U.S. Patent Nos. 7,207,949, 7,470,236, and 7,582,058.  The PTO has granted Medtronic’s request for reexamination of the ‘949 and ‘058 patents, and the trial judge has stayed the portion of the litigation related to those patents.

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