Globus Medical Inc.v.DePuy Synthes Products, LLC

Patent Trial and Appeal Board

May 1, 2015

13163217 (P.T.A.B. May. 1, 2015)

Trials@uspto.gov Paper 15
Tel: 571-272-7822 Entered: May 1, 2015
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

GLOBUS MEDICAL, INC.,
Petitioner,
v.
DEPUY SYNTHES PRODUCTS, LLC,
Patent Owner.

Case IPR2015-00099
Patent 8,623,057 B2

Before BENJAMIN D. M. WOOD, SCOTT E. KAMHOLZ, and
MITCHELL G. WEATHERLY, Administrative Patent Judges.
WEATHERLY, Administrative Patent Judge.
DECISION
Denying Institution of Inter Partes Review
35 U.S.C. § 314(c) and 37 C.F.R. §§ 42.4, 42.108
I. INTRODUCTION
A. Background
Globus Medical, Inc. (“Globus”) filed a corrected petition (Paper 8,
“Pet.”) to institute an inter partes review of claims 1–11 (the “challenged
claims”) of U.S. Patent No. 8,623,057 B2 (Ex. 1001, “the ’057 patent”).
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35 U.S.C. § 311. DePuy Synthes Products, LLC (“Synthes”) timely filed a
Preliminary Response. Paper 13 (“Prelim. Resp.”). Institution of an inter
partes review is authorized by statute when “the information presented in the
petition filed under section 311 and any response filed under section 313
shows that there is a reasonable likelihood that the petitioner would prevail
with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C.
§ 314(a); see 37 C.F.R. § 42.108.
Globus contends that the challenged claims are unpatentable under
35 U.S.C. § 103 as obvious in view of U.S. Patent No. 7,931,675 B2 (iss.
Apr. 26, 2011) (“Panjabi”) (Ex. 1002) and U.S. Patent Pub.
No. 2004/0143264 A1 (“McAfee”) (Ex. 1005). Pet. 14–40. Generally,
Synthes contends that the Petition should be denied in its entirety. For the
reasons described below, we decline to institute an inter partes review of
any of the challenged claims.
B. Related Proceedings
Globus identified as a related proceeding the co-pending district court
proceeding of DePuy Synthes Products, LLC v. Globus Medical, Inc., Case
Number, C.A. No. 14-11-RGA (D. Del.), filed January 7, 2014. Pet. 2.
II. ANALYSIS
As a threshold matter, we must determine whether Globus has
established that Panjabi is prior art to the challenged claims. On the record
before us and for the reasons stated below, we conclude that Globus fails to
do so.
Globus asserts that Panjabi is prior art but does not state expressly the
effective date of Panjabi as prior art under 35 U.S.C. § 102(e). Pet. 3.
Panjabi issued from U.S. App. No. 11/159,471 filed June 23, 2005, which
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Patent 8,623,057 B2
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claims priority to U.S. Provisional App. No. 60/581,716 filed June 23, 2004
(“the ’716 Provisional”). Ex. 1001, cover page, 1:8–10. Under 35 U.S.C.
§ 102(e), “an applicant is not entitled to a patent if another’s patent discloses
the same invention, which was carried forward from an earlier U.S.
provisional application or U.S. non-provisional application.” In re
Giacomini, 612 F.3d 1380, 1383 (Fed. Cir. 2010); Ex parte Yamaguchi, 88
USPQ2d 1606 (BPAI 2008) (precedential). Accordingly, the effective date
of Panjabi as prior art under § 102(e) is the date on which an application in
Panjabi’s priority chain was filed that discloses the information relied upon
to prove unpatentability of the challenged claims.
Globus neither analyzes whether the ’716 Provisional discloses the
subject matter recited in the challenged claims nor provides a copy of the
’716 Provisional for the record in this proceeding. See generally Pet.
(failing to cite any portion of ’716 Provisional or refer to an Exhibit that is a
copy of ’716 Provisional). Therefore, for purposes of this decision, we
accord June 23, 2005, the filing date of the application that issued as
Panjabi, rather than the earlier filing date of the provisional application to
which Panjabi claims priority, as the date on which Panjabi is effective as
prior art under 35 U.S.C. § 102(e).
Globus states that “the earliest effective filing date for the claim[ed]
inventions within the ’057 Patent is March 3, 2005.” Pet. 3 (citing Ex. 1003,
U.S. App. No. 11/072,886 filed March 3, 2005). As Synthes argues, it is
therefore undisputed that the challenged claims have priority no later than
March 3, 2005. Prelim. Resp. 13. Because, on the current record, the
priority of the challenged claims predates June 23, 2005, Globus has failed
to establish that Panjabi is prior art to the challenged claims.
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Globus relies upon the combination of Panjabi and McAfee as the
basis for all its challenges to the patentability of the challenged claims.
Pet. 14–40. Because Globus has failed to establish that Panjabi is prior art,
Globus has failed to set forth a reasonable likelihood of prevailing in
demonstrating that any of the challenged claims are unpatentable.
Accordingly, we deny the Petition and do not institute an inter partes review
of the challenged claims.
III. ORDER
For the reasons given, it is:
ORDERED that the Petition is denied and an inter partes review is
not instituted with respect to any challenged claim.
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PETITIONER:
Michael W. O’Neill
Margaux A. Aviguetero
NOVAK DRUCE CONNOLLY BOVE + QUIGG LLP
GlobusIPR@novakdruce.com
mike.oneill@novakdruce.com
margaux.aviguetero@novakdruce.com

PATENT OWNER:
David R. Bailey
Adam J. Forman
Edward King
BAKER & HOSTETLER LLP
dbailey@bakerlaw.com
aforman@bakerlaw.com
IPR2015-00999@bakerlaw.com