In In Re: Nuvasive, Inc., Appeal No. 2015-1670, the Federal Circuit vacated the PTAB’s obviousness finding in an IPR, and remanded for the PTAB to make the necessary factual findings and articulate a reasoned explanation for why a person of ordinary skill in the art (POSITA) would have been motivated to combine the prior art references.
The PTAB instituted Medtronic’s IPR against NuVasive’s patent relating to a spinal fusion implant and issued a Final Written Decision concluding that the claims would have been obvious over three prior art references.
On appeal, the Federal Circuit rejected the PTAB’s finding of obviousness because the Final Written Decision did not adequately explain a POSITA’s motivation to combine the location of radiopaque markers disclosed in one reference with the spinal implant of another reference. The Court found that the PTAB’s analysis was limited to summaries of the parties’ arguments; the PTAB never provided a basis for adopting Medtronic’s position and failed to articulate any motivation to combine the references. The Court also found that the PTAB improperly relied on the conclusory testimony of Medtronic’s expert witness that a POSITA “would have considered it common sense” to place the radiopaque markers in the location required by the claims. Therefore, the court vacated and remanded for additional findings and explanations by the PTAB.