In Re: Nuvasive, Inc.
842 F.3d 1376, 2016 U.S. App. LEXIS 21748, 120 U.S.P.Q. 2d (BNA) 1821 (2016)
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Rule of Law:
The Patent Trial and Appeal Board (PTAB) must articulate a satisfactory, non-conclusory explanation with a rational connection between the facts and its conclusion when finding a motivation to combine prior art references in an obviousness determination. Summarizing parties' arguments or simply stating a combination would provide 'additional information' is insufficient to support an obviousness finding.
Facts:
- NuVasive, Inc. is the assignee of U.S. Patent No. 8,361,156 ('156 patent), which relates to a system and method for spinal fusion.
- The invention described in the patent is a spinal fusion implant constructed from a non-bone material.
- The implant is designed to be positioned within the inter-body space between two vertebrae.
- A key feature of the claimed implant is the inclusion of at least two radiopaque markers, which are visible on X-rays.
- These radiopaque markers are specifically oriented to be 'proximate to said medial plane,' meaning they are located near the centerline of the implant.
Procedural Posture:
- Medtronic, Inc. petitioned the U.S. Patent and Trademark Office's Patent Trial and Appeal Board (PTAB) to institute an inter partes review of claims of NuVasive's '156 patent.
- Medtronic argued the claims were invalid as obvious over several prior art references, including the SVS-PR brochure, Telamon references, and the Baccelli patent application.
- The PTAB instituted the inter partes review.
- During the trial phase before the PTAB, NuVasive explicitly waived its argument that the prior art references were not publicly accessible 'printed publications.'
- The PTAB issued a Final Written Decision concluding that the challenged claims of the '156 patent were invalid as obvious.
- NuVasive, Inc. (Appellant) appealed the PTAB's final decision to the U.S. Court of Appeals for the Federal Circuit.
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Issue:
Did the Patent Trial and Appeal Board (PTAB) err in its obviousness determination by failing to articulate a reasoned explanation for why a person of ordinary skill in the art would have been motivated to combine prior art references?
Opinions:
Majority - Wallach, Circuit Judge.
Yes. The PTAB's decision is vacated because it failed to provide an adequate explanation for its conclusion that a person having ordinary skill in the art (PHOSITA) would have been motivated to combine the prior art. The court held that as an administrative agency, the PTAB must articulate a rational connection between the facts found and the decision made. Here, the PTAB's decision consisted mostly of summarizing the parties' arguments and making conclusory statements, such as that the combination would provide 'additional information,' without explaining what that information was or why a PHOSITA would seek it. Merely rejecting one party's arguments and invoking the high level of skill in the art is not a substitute for a reasoned analysis. Because the court could not reasonably discern a proper path of reasoning for the PTAB's motivation-to-combine finding, the decision was vacated and remanded for the PTAB to provide the necessary findings and explanations.
Analysis:
This decision reinforces the procedural requirements for administrative bodies like the PTAB under the Administrative Procedure Act, emphasizing that their factual findings and legal conclusions must be adequately explained to permit meaningful appellate review. It clarifies that for an obviousness finding to be upheld, the PTAB must do more than just summarize evidence and adopt a party's conclusory assertions. The ruling requires a detailed, reasoned explanation for why a skilled artisan would have been motivated to combine prior art, thereby setting a higher standard for the quality of PTAB decisions and giving patent owners a stronger basis to challenge inadequately reasoned invalidity findings.
