On December 7, 2016, the Court of Appeals for the Federal Circuit (CAFC) vacated a decision of the Patent Trial and Appeals Board (PTAB) in In re NuVasive, Inc., No. 15-1670 (Fed. Cir. December 7, 2016), finding that judicial review of the obviousness determination could not be meaningfully achieved without sufficient articulation of a motivation to combine the prior art references. In particular, while the Court acknowledged that common sense dictated that “additional information” could potentially be obtained by a combination of the references, the case was remanded because, without articulation of a “reason why” a person having ordinary skill in the art (PHOSITA) would have been motivated to seek out the “additional information,” the PTAB’s findings amounted “nothing more than conclusory statements.” NuVasive, page 12. This decisions is not surprising, as the CAFC has previously stated that a conclusion of obviousness “cannot be sustained with mere conclusory statements.” In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006); see also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007), 82 USPQ2d at 1396.

The PTAB had found several claims of NuVasive’s US Patent No. 8,361,156 invalid in an inter partes review (IPR) instituted on a petition by Medtronic, Inc. See Medtronic, Inc. v. NuVasive, Inc., No. IPR2013-00506, 2015 WL 996352 (P.T.A.B. Feb. 11, 2015). The claims at issue recited a spinal fusion implant including “radiopaque markers . . . proximate to [a] medial plane.” In the IPR, Medtronic successfully argued that the claims would have been obvious over a combination of TelamonTM brochures and device guides (the TelamonTM references) in view of U.S. Patent Application Publication No. 2003/0028249 to Baccelli et al. (Baccelli). Medtronic’s expert asserted that it would be “common sense” to combine the Telamon references with Baccelli “to provide additional information regarding the orientation or location of an implant” (12). See Medtronic at 14.

On appeal at the CAFC, NuVasive argued that the PTAB’s Final Written Decision did not adequately explain why a PHOSITA would have been motivated to combine the references , and rather relied on only the conclusory statement of Medtronic’s expert (although Medtronic withdrew as Appellee, the US Patent Office participated in oral arguments at the CFAC. See NuVasive, Footnote 1.) The Court agreed with NuVasive that the PTAB’s explanation was insufficient, and provided examples from previous cases where the PTAB acceptably articulated why a PHOSITA would have combined references had been presented.

For example, the CFAC approved of the argument that a PHOSITA “interested in Nishida’s preference to minimize waste . . . would have logically consulted the well-known practice of flat knitting, which eliminates the cutting process altogether” (citing Nike, Inc., v. Adidas AG, 812 F.3d 1326, 1337 (Fed. Cir. 2016), where Nishida was one of the prior art references combined). Also, the CFAC approved of the motivation of allowing for “a greater degree of movement between the jaws, without impacting the quick change functionality” (citing Allied Erecting & Dismantling Co. v. Genesis Attachments LLC, 825 F.3d at 1337), where it was argued that the purpose of one the combined references was “to provide a greater degree of movement between the back and fore buckets of the apparatus.” (col. 1, ll. 49-55 of US Patent No. 4,283,866 to Ogawa).

The CFAC explained that in each of these cases, the proposed motivation “had a foundation in the prior art” (page 10), and was not based solely on common sense (page 11 citing see Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355, 1362 (Fed. Cir. 2016) (“[R]eferences to ‘common sense’ . . . cannot be used as a wholesale substitute for reasoned analysis and evidentiary support . . . .”) The court suggested that the portions NuVasive’s expert testimony that discussed how placing radiopaque markers along the medial plane “would provide . . . better alignment of the implant” might have been an adequate motivation to combine the prior art references. However, since these uses were not disclosed in the prior art references, the court concluded that NuVasive’s expert testimony referred to benefits recognized after the priority date of NuVasive’s patent.

In summary, the decision in NuVasive indicates that a proper justification to combine prior art references includes both a benefit that could have been be obtained by the combination, and a specifically articulated motivation that a PHOSITA would have combined the references. The court found that although a potential benefit, i.e., “additional information,” had been provided, the lack of any articulation of a motivation to combine the references beyond common sense prevented any meaningful judicial review , emphasizing the CFAC’s preference for a motivation stated in the prior art references themselves. Thus, to ensure a conclusion of obviousness survives an appeal, whenever possible practitioners should identify a prior art reference that discusses a motivation to seek out the benefit.