NuVasive Scores Major Comeback at PTO Board against Medtronic/Warsaw Orthopedic Patents

Scott Daniels | August 8, 2011

The cervical fixation device manufacturer NuVasive won a major victory Friday in its on-going patent war with Medtronic and Warsaw Orthopedic.  Warsaw, that owns U.S. Patent Nos. 6,428,542 and 6,936,050, and Medtronic, Warsaw’s exclusive licensee, sued NuVasive in 2008 in the Southern District of California for selling cervical plate devices that infringed the ‘542 and ‘050 patents, as well as 11 other related patents.  NuVasive replied by requesting inter partes reexamination of the ‘542 and ‘050 patents, and that portion of Warsaw’s infringement action was stayed pending completion of the reexaminations.

The PTO ordered reexamination, but the examiner ultimately refused to adopt a series of NuVasive’s proposed prior art rejections.  Friday, however, the PTO Board of Appeals reversed the examiner, finding that most of the ‘542 and ‘050 were obvious over the prior art.  Essentially, the Board determined that the examiner had construed both the claims and the prior art disclosures too narrowly.  Using the “predictable use of prior art elements according to their established functions” passage from KSR, the Board concluded that the claims were obvious.  The Board’s entry of rejections is considered a “new grounds of rejection” under Rule 41.77(a), and Warsaw may now reopen prosecution or request rehearing.

NuVasive’s victory was not complete, however, since the Board affirmed the examiner’s decision not to reject a series of dependent claims in the ‘542 patent, thereby affirming their validity. 

The case demonstrates the main benefit for Requesters of inter partes reexamination over ex parte reexamination, specifically, the right to participate in the proceeding after the Request, in fact, the right to participate fully throughout the appellate stage.  Had NuVasive requested ex parte reexamination instead, it could not have challenged the examiner’s refusal to adopt its proposed rejections, and the validity of the ‘542 and ‘050 patents would now stand confirmed.  To us, this right of full participation dwarves the downside risk of estoppel attached to inter partes reexamination.

The case also calls into question the assumption of many in the blogosphere that inter partes reexaminations move glacially through the Central Reexamination Unit and the Board at the PTO.  The ‘050 reexamination was requested in March 2009, the ‘542 reexamination, in May 2009.  NuVasive’s appeal briefs were filed in September and December, 2010, respectively. 

As for the infringement action in California, a two-week trial regarding three of Warsaw’s remaining patents, plus a NuVasive patent asserted against Medtronic, is scheduled to start at the end of August.

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