CAFC Holds Patentee’s Rights Violated When Not Allowed to Respond to a Prior Art Argument

November 10, 2016 – The Federal Circuit found that the PTAB in an inter partes review (IPR) proceeding violated a patentee’s rights under the Administrative Procedure Act by canceling patent claims based on a portion of a prior art reference that was not specifically identified in the IPR petition, and by denying the patentee the opportunity to address that portion of the reference.  The Federal Circuit thus vacated the cancellation of the claims and remanded the matter.

In the IPR proceeding, petitioner Medtronic challenged several claims in NuVasive’s U.S. Patent No. 8,187,334 (“the ’334 patent”), which are directed to a spinal fusion implant.  The Board canceled all but one of the claims, finding them obvious based on, inter alia, “Figure 18” from a prior art Michaelson patent.  However, Medtronic did not specifically mention Figure 18 in its petition.  Instead, Medtronic first mentioned Figure 18 in its Reply—after NuVasive had filed its Patent Owner Response—to argue that Figure 18 disclosed a spinal implant claimed by the ’334 patent.

NuVasive tried, unsuccessfully, to move the Board either to strike Medtronic’s new Figure 18 argument or to allow NuVasive to respond.   NuVasive further tried to address Figure 18 substantively at oral argument, but the Board refused.  The Board found all but one of the challenged claims obvious, crediting Medtronic’s argument that Figure 18 disclosed a spinal implant claimed by the ’334 patent..

On appeal, the Federal Circuit held that the Board did not provide NuVasive with adequate notice or opportunity to respond to Figure 18.

The case is captioned In re NuVasive, Inc., in the United States of Appeals for the Federal Circuit, 2015-1672 and 2015-1673.

By:  Christopher J. Stankus

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