Nuvasive, Inc. v. Warsaw Orthopedic, Inc.

Addressing the propriety of combining prior art in an obviousness analysis, U.S. Patent and Trademark Office’s (PTO) Patent Trial and Appeal Board (“PTAB” or “Board”) determined that a patent for a spinal implant for promoting fusion of vertebrae was obvious in light of a combination of three references describing other spinal implants for the same purpose, finding that combinations of predictable elements in the prior art need not be advantageous.  Nuvasive, Inc. v. Warsaw Orthopedic, Inc., Case No. IPR2013-00396 (PTAB, Dec. 17, 2014) (Green, APJ).

The patent in question described an implant with a top and bottom that was convex with ratchets oriented toward the front to prevent the implant from sliding back out while the surrounding bone grew into vertical holes going through the implant.   The petitioner argued that the combination of three prior patents—Steffee, Michelson and Kim—rendered the patent in question obvious.  Steffee described an implant with triangular-shaped teeth and horizontal holes.  Michelson described an implant without teeth but with vertical and horizontal holes.  Kim described an implant with convex top and bottom faces to interact with the vertebrae above and below and prevent slippage.

The patent owner argued that a person of skill would not have been motivated to combine the prior art because Steffee’s described embodiment did not describe ratcheting teeth and the mixing and matching the hole components in the prior art would have provided no advantage, that the techniques for stabilizing the implants were too divergent, and that any combination would have been made using impermissible hindsight.

The PTAB concluded that the obviousness analysis goes beyond the preferred embodiment to include the full breadth of the description in the prior art. Although Steffee did not specifically describe ratcheting teeth, the wide variance that Steffee allowed for the angles of its teeth allowed for a ratchet construction.  Therefore, the PTAB found that ratcheting teeth that allow for movement in only one direction were included in Steffee’s description.

The PTAB also concluded that it was immaterial whether the combination would have provided any advantage because, for an obviousness analysis, the combination urged does not have to represent an improvement—it merely has to be obvious.  The Board explained that a person of skill in the art would have understood that Steffee’s holes could be changed to Michelson’s vertical holes because the holes, regardless of direction, served the same purpose of allowing for the growth of the bone for fusion to the implant. The use of a vertical hole would have been a predictable use of a prior art element and Steffee’s choice to not include an obvious alternative would not constitute teaching away.

The PTAB also found that the various prior art techniques were not divergent, but were actually complimentary. Combining Kim’s outward curve with Steffee’s teeth would have allowed the teeth greater contact. Thus the PTAB concluded that the prior art combination was not based on improper hindsight because the combinations were predictable variations of techniques that had been previously used to accomplish the same functions.