In two challenges of the same patent, Nuvasive was able to get a total of 30 challenged claims of a Warsaw Orthopedic patent into separate trials for inter partes review, in cases styled as NuVasive, Inc. v. Warsaw Orthopedic, LLC (IPR2013-00206 and IPR2013-00208), involving U.S. Pat. No. 8,251,997.

The ‘997 patent relates to “methods and instrumentation for performing surgery on the spine along its lateral aspect.” The method involves insertion of a guide pin, which serves as a guide post for a distractor, over which is placed an extended outer sleeve.

The Board’s claim construction analysis included the rejection of Patent Challenger’s claim construction proposal for “a single elongated portion removable attached to said distal end of said third surgical instrument,” which had required that the elongated portion include a ring structure. The Board found that this would have required the improper importation of features from an embodiment into the claims, without justification for such importing. 2013-00206 Order at 7. Similarly, the Board refused to include the term “transiently” in its construction of the phrase “positioning a single elongated portion removably attached to said distal end of said third surgical instrument over the disc space.” Again, there was no justification for importing a time limitation into the claim construction. Id. at 8. It is hard to know the interaction of infringement and validity issues that underlie this IPR proceeding, but it is interesting that the Board adopted claim construction positions that were even broader than those proposed by Patent Challenger.

Turning to the merits of the petitions, the Board noted Patent Owner’s contention that Patent Challenger had previously litigated the identical issues presented in the Petition regarding invalidity, but with respect to a related patent, not the patent-at-issue. The Board indicated that Patent Owner failed to demonstrate that the issues were addressed in a trial regarding the ’997, or that the claims were identical in both the ’997 patent and the litigated patent. As such, at this stage of the proceeding, the Board was unable to discern whether the issues litigated were the same as those set forth in the Petition. It seems clear, however, that the Board has left the door open for Patent Owner to present additional evidence on this issue in its formal response to the Petition.

The remainder of the Board’s analyses comprised a methodical application of the long claims-at-issue to the prior art of record. Thus, in a pair of detailed analyses, Nuvasive was able to get a total of 30 challenged claims of the ‘997 patent into two separate trials for inter partes review.