System and method for aligning vertebrae in the amelioration of aberrant spinal column deviation conditions

September 14, 2015 – After recently instituting inter partes review of two vertebral alignment patents based on revised petitions filed by Medtronic, the Patent Trial and Appeal Board denied motions to reconsider denial of institution of IPR based on the petitioner’s initial petitions challenging the same patents.  With respect to a related patent, the Board denied Medronic’s revised petition to institute inter partes review and declined to reconsider its denial of petitioner’s first petition against the patent.

Background and Rationale

Dr. Mark Barry asserted three patents against Medtronic in the Eastern District of Texas on February 18, 2014.  Medtronic first petitioned for inter partes review of the asserted patents on July 27, 2014.  On February 10, 2015, The Board denied institution of IPR for all three patents on the basis of Medtonic’s first petitions.  Shortly thereafter, Medtronic filed a second series of IPR petitions challenging the asserted patents, and subsequently requested rehearing of the Board’s denials of the first petitions.  On September 9, 2015, the Board instituted IPR of two of the patents on the basis of Medtronic’s second petitions.

With respect to its denial of the motions to reconsider institution of IPR of the two patents for which IPR was later instituted based on Medtronic’s second petitions, the Board cited the “overlapping references and issues” between the instituted petitions and the first petitions as a basis to exercise its discretion under 35 U.S.C. § 325(d) to deny rehearing of the first petitions.  Regarding the patent for which IPR was not instituted based on either petition, the Board concluded that the second petition “did not present a reasoned articulation to support the obviousness of” a feature of the claims, and similarly cited “overlapping references and issues” to deny the petitioner’s request for rehearing of the first petition.

The patents-at-issue are U.S. Patent Nos. 7,670,358, 7,776,072, and 8,361,121, titled “System and method for aligning vertebrae in the amelioration of aberrant spinal column deviation conditions.”  Requests for rehearing were denied in IPR2014-01210, -01211, and -01212, and institution was denied in IPR2015-00782.  The co-pending litigation is captioned Barry v. Medtronic, Inc., 1:14-cv-00104-RC.

By: Sean C. McDonagh

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