Medtronic, Inc.v.Mark Barry

Patent Trial and Appeal Board

Feb 10, 2015

11202409 (P.T.A.B. Feb. 10, 2015)

Trials@uspto.gov
571-272-7822
Paper 9
Date Entered: February 10, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

MEDTRONIC, INC.,
Petitioner,

v.

MARK A. BARRY,
Patent Owner.
____________

Case IPR2014-01212
Patent 7,776,072 B2
____________

Before DONNA M. PRAISS, BRIAN J. McNAMARA, and
JEREMY M. PLENZLER, Administrative Patent Judges.

McNAMARA, Administrative Patent Judge.

DECISION
Denying Institution of Inter Partes Review
37 C.F.R. § 42.108

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BACKGROUND
Medtronic, Inc. (“Petitioner”) filed a petition, Paper 2 (“Pet.”), to institute
an inter partes review of claims 1–4 (the “challenged claims”) of U.S. Patent No.
7,776,072 B2 (“the ’072 Patent”). 35 U.S.C. § 311. Mark A. Barry (“Patent
Owner”) did not file a Preliminary Response. We conclude that Petitioner has not
shown, under 35 U.S.C. § 314(a), that there is a reasonable likelihood that it would
prevail with respect to at least one of the challenged claims.
For the reasons described below, we do not institute an inter partes review
of the ’072 Patent.
PENDING LITIGATION
Petitioner is the defendant in litigation concerning the ’121 Patent, Mark A
Barry, MD v. Medtronic, Inc., filed in the Eastern District of Texas as Case No.
1:14-cv-00104-RC on February 18, 2014. The Petitioner was served with the
complaint on February 20, 2014.
OTHER RELATED MATTERS
Two additional, related patents are the subject of current petitions for inter
partes review by Petitioner Medtronic, Inc: Patent No. 7,670,358 (Case IPR: 2014-
01210) and Patent No. 8,361,121 B2 (Case IPR: 2014-01211)
THE ’072 PATENT (EXHIBIT 1021)
The disclosure of the ’072 Patent (Ex. 1021) is substantially the same as that
of U.S. Patent No. 8,361,121 B2 (“the ’121 Patent”), which is the subject of related
inter partes review Medtronic, Inc. v. Mark A. Barry, Case IPR2014-01211,
(PTAB, February 10, 2015)(Paper 8)(Decision Denying Institution). The ’072
Patent discloses a system for ameliorating aberrant spinal column deviation
conditions, such as scoliosis, that facilitates the application of derotational forces to
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individual vertebra, while reducing the risk of fracture when applying such forces.
Ex. 1021 col 3, ll. 24–30. The system includes a number of bone screws that are
implanted into the pedicle region(s) of individual vertebrae to be rotated, and to
vertebrae to which balancing forces must be applied, as the spinal column is
manipulated en masse to achieve an overall correction. Id. at col. 3, ll. 39–47.
The pedicle screws have a threaded shank segment and a head segment. Id. at col.
4, ll. 64–65. The head segment has a spinal rod conduit (or channel) that interfaces
with a pre-contoured spinal rod. Id. at col. 4, l. 66–col. 5, l. 3. A spinal rod
engagement means is tightened, using known anti-torques techniques, to fix the
pedicle screw and spinal rod in relative position and orientation, once a spinal
column derotation is complete. Id. at col. 5, ll. 1–3; col. 5, l. 63–col. 6, l. 6.
The system also includes pedicle screw cluster derotation tools. The pedicle
screw cluster derotation tool facilitates simultaneous application of manipulative
forces to multiple pedicle screws implanted in a like number of vertebrae (a
“cluster”). Id. at col. 5, ll. 24–27. The derotation tool includes shafts, extending
from a common handle or linked handle array, that extend to and engage the heads
of a number of implanted pedicle screws implanted in adjacent vertebrae to which
derotational or balancing forces are to be applied during a spinal column derotation
and alignment. Id. at col. 3, ll. 53–60. As manipulative forces are applied to the
handle means of pedicle screw cluster derotation tool, forces are transferred and
dispersed simultaneously among the engaged vertebrae so that a practitioner may,
in a single motion, simultaneously and safely derotate multiple vertebrae of an
affected spinal segment and apply balancing forces to other group(s) of vertebrae
which are contiguous to the effected segment(s) to provide three dimensional
spinal cord correction. Id. at col. 3, ll. 62–col. 6, l. 6.
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Each pedicle screw cluster derotation tool is configured from a grouping of
pedicle screw wrenches joined together by pedicle screw wrench linking members
to act in unison when used to effect rotation or apply a balancing force. Id. at col.
5, l. 7–9. Each pedicle screw wrench includes a handle, a shaft, and a distal end
that reversibly engages the head segment of a pedicle screw. Id. col. 5, ll. 10–12.
As the shaft is moved while the distal end is engaged with a head segment of a
pedicle screw, manipulative forces are transferred to the pedicle screw and, in turn,
to the vertebra in which such pedicle screw is implanted. Id. at col. 5, ll. 13–17.
Pre-contoured spinal rods loosely engaged with the pedicle screws are
rotated from a first orientation through 90 degrees to a second orientation using
hex wrenches to achieve substantial correction in the first two of three axes. Id. at
col. 5, ll. 52–58. Manipulative forces are then applied to pedicle screw clusters
relative to a third or “roll axis before tightening the pedicle screws and spinal rod
in position using well-known anti-torque features of the wrenches. Id. at col. 5, l.
59–col. 6, l. 6.
ILLUSTRATIVE CLAIMS
Claim 1 of the ’072 Patent is illustrative:

1. A system for aligning vertebrae in the amelioration of
aberrant spinal column deviation conditions comprising:
a first set of pedicle screw[s], each pedicle screw having a
threaded shank segment and a head segment; and
a first pedicle screw cluster derotation tool, said first pedicle
screw cluster derotation tool having a first handle means
for facilitating simultaneous application of manipulative
forces to said first set of pedicle screws and a first group of
three or more pedicle screw engagement members which
are mechanically linked with said first handle means, said
first handle means configured to move simultaneously each
pedicle screw engagement member; wherein each pedicle
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screw engagement member is configured to engage
respectively with said head segment of each pedicle screw
of said first set of pedicle screws; and wherein each pedicle
screw engagement member is configured to transmit
manipulative forces applied to said first handle means to
said head segment of each pedicle screw of said first set of
pedicle screws.

BASIS OF PETITION
Petitioner asserts the following challenges. We note that several challenges
are asserted as alternatives and constitute separate grounds.
Claims Statutory Basis Challenge
1-4 35 U.S.C.§ 103
Obvious over the Video
1
,
the Slides
2
, and/or,
MTOS
3
(alone or in
combination) in view of
the ’928 Appl.
4
and the
’291 Appl.
5

1–4 35 U.S.C. § 103 Obvious over the Video,

1
Thoracic Pedicle Screws for Idiopathic Scoliosis Video (2001). Ex. 1002
(“Video”).
2
Free Hand Thoracic Screw Placement and Clinical Use in Scoliosis and
Kyphosis Surgery slide presentation handout (2003). Ex. 1003 (“Slides”).
3
Anthony S. Rinella, Yongjung J. Kim, and Lawrence G. Lenke, “Posterior Spinal
Instrumentation Techniques for Spinal Deformity” Chapter 17 in Masters
Techniques in Orthopaedic Surgery: The Spine, 2nd Edition (undated, see
Declaration of Dr. Lawrence Lenke, Ex. 1001 ¶47, asserting publication date of
Nov. 13, 2003.).
Ex. 1012 (“MTOS”).
4
U.S. Patent Application Publication No. 2005/0245928 A1, published Nov. 3,
2005. Ex. 1006 (“the ’928 Appl.”).
5
U.S. Patent Application Publication No. 2005/0033291 A1, published Feb. 10,
2005. Ex. 1007 (“the ’291 Appl.”).
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the Slides and/or MTOS
in view of the ’328 Appl.
6

and the ’291 Appl.
1–2 35 U.S.C. § 102/103
Anticipated by or obvious
over the ’928 Appl.
3–4 35 U.S.C. § 103
Obvious over the ’928
Appl. in view of the
video, the Slides, MTOS,
and the ’291 Appl.
1 35 U.S.C. § 102/103
Anticipated by or
obvious over the ’328
Appl.

CLAIM CONSTRUCTION
Petitioner contends that the following terms require construction:
Spinal rod engagement means. In related case Medtronic, Inc. v. Mark A.
Barry, Case IPR2014-01210 (PTAB Feb. 10, 2015) (Paper 10 )(Decision Denying
Institution), we noted that claim 1 of U.S. Patent No. 7,760,358 B2 (“the ’358
Patent”) recited a spinal rod engagement means for securing said pedicle screw and
said spinal rod member. In related case Medtronic, Inc. v. Mark A. Barry, Case
IPR2014-01211, (PTAB, February 10, 2015)(Paper 8)(Decision Denying
Institution), we analyzed claim 1 of U.S. Patent No. 8,361,121 B2 (“the ’121
Patent”), which recites both “a spinal rod engagement means for engaging with a
spinal rod member” and “a spinal rod fixation means for, upon activation, fixing
the relative orientation of each pairing of said spinal rod member and said pedicle
screw.”
Claim 1 of the ’072 Patent that is the subject of this proceeding does not
recite a spinal rod engagement means. Claim 2 of the ’072 Patent recites “a spinal

6
U.S. Patent Application Publication No. 2003/0065328 A1, published Apr. 3,
2003. Ex. 1004 (“the ’328 Appl.”).
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rod engagement means for securing each said pedicle screw and said spinal rod,
when extending through each said spinal rod conduit in a substantially fixed
relative position and orientation.” This language is similar to that of claim 1 in the
’358 Patent, which we addressed in IPR2014-01210. In that proceeding we
determined that the function recited in the claim is securing the pedicle screw and
spinal rod member in a substantially fixed relative position and orientation and that
the corresponding structure is that portion 20 of pedicle screw 10 illustrated in
Figure 4 that can be tightened to secure the spinal rod and pedicle screw. In claim
2 in this proceeding, we apply the same construction we applied to this language in
claim 1 of IPR2014-01210, where we construed the spinal rod engagement means
to mean the portion of the pedicle screw that can be tightened to secure the pedicle
screw and spinal rod in a substantially fixed position and orientation
However, claim 3 of the ’072 Patent recites a “spinal rod engagement means
for mechanically engaging with a spinal rod member” and, separately, “a spinal
rod fixation means for, upon actuation, fixing the relative orientation of each
pairing of said spinal rod member and said pedicle screw.” This is similar to the
language in claim 1 of the ’121 Patent, which we addressed in IPR2014-01211.
Referencing Figure 4, the Specification describes the pedicle screw as
having a head segment configured with a spinal rod conduit or channel 16
interfacing with a spinal rod 18. Ex. 1021, col. 4, l. 64–col. 5, l. 1. The
Specification also describes “[s]pinal rod engagement means 20 serve to fix
pedicle screw 10 and spinal rod 18 in relative position and orientation, once a
spinal column derotation is complete.” Ex. 1021, col. 5, ll. 1–3. There is no
separate disclosure of a spinal rod fixation means. Thus, there is an inconsistency
between the function recited in claim 3 as that performed by the “spinal rod
engagement means” and the description in the Specification. However, for
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purposes of this proceeding, we observe that the spinal rod engagement means
recited in claim 3 of the ’072 Patent performs the function of engaging with a
spinal rod member and that the spinal rod conduit is the structure that performs the
claimed function.
Spinal rod fixation means. As noted above, independent claim 3 of the ’072
Patent is drafted using language similar to that of the ’121 Patent in IPR2014-
01211, reciting both a spinal rod engagement means and a spinal rod fixation
means. As we discussed in construing this language in IPR2014-01211, the
claimed function is, upon actuation, fixing the spinal rod member relative to the
pedicle screw and the corresponding structure is a fixation element and the
corresponding structure is that portion of the screw that can be tightened to
perform the function. Medtronic, Inc. v. Mark A. Barry, Case IPR2014-01211,
(PTAB, February 10, 2015)(Paper 8)(Decision Denying Institution).
Handle means. Like the ’121 Patent, which we addressed in IPR2014-
01211, independent claims 1 and 3 of the ’072 Patent are written in means-plus-
function terms and recite a “first handle means for facilitating simultaneous
application of manipulative forces to said first set of pedicle screws and a first
group of three or more pedicle screw engagement members mechanically linked
with said first handle means.” Ex. 1021, col. 6, ll. 24–30, 62–67. The claims also
recite that the first handle means is configured to move simultaneously each
pedicle screw engagement member. Id. at col. 6, ll. 31–33, col. 6, l. 67–col. 7, l. 1.
Claims 1 and 3 also recite that each pedicle screw engagement member is
configured to engage respectively with a head segment of each pedicle screw of the
first set of pedicle screws, id. at col. 6, ll. 33–36, col. 7 ll. 2–4, and that each
pedicle screw engagement member is configured to transmit manipulative forces
applied to the first handle means to the head segment of each pedicle screw, id. at
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col. 6, ll. 36–39, col. 7, ll. 5–7. As we discussed in IPR2014-01211, we construe
the function to be simultaneously applying manipulative forces to a first set of
pedicle screws and a first group of three or more pedicle screw engagement
members and the structure to be a common handle or linked handle array from
which extend shafts that engage pedicle screws.
Mechanically linked. We apply the same construction in this proceeding as
we applied in related IPR2014-01210. As we noted in that proceeding, the term
“mechanically linked” is not used in the Specification and we agreed with
Petitioner that we should construe “mechanically linked” to mean joined by a
physical connection.
A second group of vertebrae. Petitioner contends that, consistent with
Figure 1 of the ’072 Patent, the term should be construed to refer to portions of
vertebrae, one side of a group of vertebrae lateral to another side, right or left. Pet.
7. For purposes of this decision, we apply Petitioner’s proposed construction.
ANALYSIS OF PETITIONER’S PRIOR ART CHALLENGES
All of Petitioner’s challenges are based on obviousness under 35 U.S.C.
§ 103. The question of obviousness is resolved on the basis of underlying factual
determinations including: (1) the scope and content of the prior art; (2) any
differences between the claimed subject matter and the prior art; (3) the level of
skill in the art; and (4) objective evidence of nonobviousness, i.e., secondary
considerations. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). A claim is
unpatentable under 35 U.S.C. § 103(a) if the differences between the subject matter
sought to be patented and the prior art are such that the subject matter as a whole
would have been obvious at the time the invention was made to a person having
ordinary skill in the art to which said subject matter pertains. KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 406 (2007). To establish obviousness of a claimed
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invention, all the claim limitations must be taught or suggested by the prior art.
See CFMT, Inc. v. Yieldup Int’l Corp., 349 F.3d 1333, 1342 (Fed. Cir. 2003); In re
Royka, 490 F.2d 981, 985 (CCPA 1974). A patent claim composed of several
elements, however, is not proved obvious merely by demonstrating that each of its
elements was known, independently, in the prior art. KSR Int’l Co., 550 U.S. at
419. In that regard, for an obviousness analysis, it can be important to identify a
reason that would have prompted one of skill in the art to combine prior art
elements in the way the claimed invention does. Id. However, a precise teaching
directed to the specific subject matter of a challenged claim is not necessary to
establish obviousness. Id. Rather, obviousness must be gauged in view of
common sense and the creativity of an ordinarily skilled artisan. Id. Petitioner’s
expert, Dr. Lenke, identifies one of ordinary skill as having an undergraduate
degree in Mechanical or Biomedical Engineering or the equivalent, and at least two
to three years of experience with fixation implants and methods and systems for
scoliosis or spinal deformity correction and the like, or a medical degree or the
equivalent, and at least two to three years of experience with fixation implants and
methods and systems for scoliosis or spinal deformity correction and the like, or an
equivalent amount of experience in medical device design, e.g. four years design
experience could replace an undergraduate degree. Ex. 1001 ¶ 36.
Claims 1–4 as Obvious Under 35 U.S.C. § 103 over the
Video, the Slides, and/or the MTOS in view of the ’291
Appl. and the ’928 Appl.
Petitioner identifies this challenge as Ground 1 in this proceeding. Pet. 12.
We addressed extensively the subject matter disclosed in the Video, the Slides, and
the MTOS in related proceeding IPR2012-01210. We agree with Petitioner that
the Video, the Slides, and MTOS disclose a method as recited in the preamble
(Claims 1[A], 3[A]), a first set of pedicle screws (Claims 1[B], 3[B]) and each
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pedicle screw having a threaded shank segment (Claims 1[C], 3[C]). Claims 1[D]
and 3[E], as designated by Petitioner, Pet. 17–18, 26–27, recite a first pedicle
screw cluster derotation tool having a first handle means.
We have construed the first handle means to be in means-plus-function form
in which the function is simultaneously applying manipulative forces to a first set
of pedicle screws and a first group of three or more pedicle screw engagement
members. Petitioner cites the combination of the Video, the Slides and MTOS as
disclosing derotation tools each including a first group of handles for facilitating
simultaneous application of manipulative forces to pedicle screw engagement
members that are each linked to the handles. Pet. 18–19 (concerning Claim 1[D]),
26–27 (concerning Claim 3[E].) Petitioner contends that the ’928 Appl. discloses
two handles in the form of knobs 112a and 112b and threaded rods 110b that each
allow a practitioner to apply forces to two of the pedicle screw engagement
members. Pet. 18. Petitioner further suggests that, in the ’928 Appl., the handles
are interconnected by a linkage in the form of cross-action members 107a, 107b, so
that the pedicle screw engagement members move simultaneously in response to a
force applied to one or both handles. Id. at 18–19.
In the ’928 Appl., adjusting one knob causes a pedicle screw engagement
member (guide tube 102a or guide tube 102b) to adjust relative to stationary
pedicle screw engagement member (guide tube 104). Adjusting both knobs at the
same time would cause the position of only two pedicle screw engagement
members to be adjusted because guide tube 104 remains stationary. Ex. 1006 ¶ 66.
Petitioner does not explain how adjusting the knobs, as disclosed in the ’928 Appl.,
results in simultaneously applying manipulative force to a first set of pedicle
screws and a first group of three or more screw engagement members, such that the
first handle means moves each pedicle screw engagement member simultaneously,
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as required by the claim. Citing the Lenke Decl., Petitioner states that the addition
of a mechanical linking member to connect the handles and achieve the same type
of movement as that shown in the Video, Slides, and MTOS would have been
nothing more than a simple and obvious modification in view of the express
teaching of the ’928 Appl. and the design incentives of easing the surgeon’s
workload, and achieving uniformity in the movement of the pedicle screw
engagement members and the attached vertebral bodies. Pet. 15 (citing Ex. 1001
¶¶ 69, 70.) However, Petitioner does not provide articulated reasoning why a
person of ordinary skill would be motivated to combine the teachings of the ’928
Appl., which achieve lateral movement of pedicle screw engagement members
relative to a stationary pedicle screw engagement member using multiple cross
member linkages, to the teachings of the Video, Slides, and MTOS, which describe
an apical vertebral derotation (AVD) maneuver involving the application of
downward pressure. See Ex. 1012, 241–245 (describing segmental compression
and distraction of screws in straightening the curve, as distinguished from
derotation in the AVD maneuver). Claim 3 recites the further limitation that the
manipulative force is applied “thereby in a single motion simultaneously rotating
[the] vertebrae of [the] first group of vertebrae.” The combination of the Video,
the Slides, and MTOS in view of the ’928 Appl. does not disclose the single
motion required by the claim.
In consideration of the above, we are not persuaded that Petitioner has
demonstrated a reasonable likelihood of prevailing in its challenge that claims 1–4
are unpatentable as obvious over the Video, the Slides, and/or MTOS (alone or in
combination), in view of the ’291 Appl., and the ’928 Appl., and we do not
institute a trial on this challenge.
Claims 1 and 2 as Anticipated or Obvious Under 35 U.S.C.
§ 102 or § 103 by the ’928 Appl.
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Petitioner identifies this challenge as Ground 3 in this proceeding. Pet. 38.
As discussed above, we are not persuaded that the ’928 Appl. discloses or renders
obvious the limitations recited in Claim 1[D]. Therefore, we are not persuaded that
Petitioner has demonstrated a reasonable likelihood that it would succeed in its
challenge that claims 1 and 2 are anticipated or obvious over the ’928 Appl. and
we do not institute a trial on this challenge.
Claims 3 and 4 as Obvious Under 35 U.S.C. § 103 over
the ’928 Appl. in view of the Video, the Slides, and/or the MTOS,
and alternatively the ’291 Appl.
This challenge (identified by Petitioner as Ground 4) asserts the same
references as those Petitioner asserted in its challenge that claims 1–4 are obvious
over the Video, the Slides, and/or the MTOS in view of the ’291 Appl. and the
’928 Appl. (identified by Petitioner as Ground 1) and references arguments made
in that challenge. Pet. 46. In this challenge, Petitioner cites the ’928 Appl. as
disclosing the handles in the first handle means (Claim 3[E]). Id. at 47. As
discussed above, we are not persuaded that the combination of the ’928 Appl. and
the Video, MTOS, and the Slides discloses or renders obvious the limitations
recited in Claim 3[E], as designated by Petitioner. Therefore, we are not persuaded
that Petitioner has demonstrated a reasonable likelihood that it would succeed in its
challenge to claims 3 and 4 as obvious over the ’928 Appl. in view of the Video,
Slides, and/or MTOS, and, alternatively, the ’291 Appl.
Claim 1 as Anticipated Under § 102, or Alternatively
Obvious Under 35 U.S.C. § 103, by the ’328 Appl.

Petitioner identifies this challenge as Ground 5 in this proceeding. Pet. 54
Citing paragraph 23 of ’328 Appl., Petitioner contends that the ’328 Appl.
discloses a system for treating and correcting deformities and injuries of the spine
as recited in Claim 1[A] of the ’072 Patent. Pet. 54, 56. Petitioner cites paragraph
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82 of the ’328 Appl. as disclosing vertebral fixation units or pedicle screws as
recited in Claim 1[B]. Pet. 56. Petitioner cites paragraph 66 as disclosing that the
pedicle screws have a threaded portion and a head portion, as recited in Claim
1[C]. Id.
As Petitioner notes, the support units described in paragraph 82 in the ’328
Appl. include fixation plates 153, 154, 155, 156, 157, 158, 159, 160, 161, each of
which is shaped as an isosceles trapezium, as shown in Figure 3. Paragraph 66 of
the ’328 Appl. describes vertebral fixation elements 109–126 as half pins with a
working end provided with a screw like thread and a fastening end provided with a
through hole, whose axis is perpendicular to the longitudinal axis of the pin, and
which is used in the process of inserting each pin into a vertebra, as shown in Fig.
19. Ex. 1004 ¶¶ 66, 76–79. The fastening ends of the vertebral fixation elements
are attached to the plates through mounting slots using clamps. Id. at ¶ 82.
7
Thus,
the support units contain vertebral fixation elements that are threaded and
implanted into vertebrae in a manner similar to that of the claimed pedicle screws.
Turning to Claim 1[D], Petitioner contends that the ’328 Appl. discloses a
pedicle screw cluster derotation tool having the claimed first handle means for
facilitating simultaneous application of manipulative forces to the first set of
pedicle screws and a first group of three or more pedicle screw engagement
members that are mechanically linked to the first handle means. Pet. 57.
Petitioner identifies the pedicle screw engagement members as support units
1, 2, and 3. Id. As discussed above, Petitioner identifies the vertebral fixation
elements in the support units of the ’328 Appl. as corresponding to the claimed
pedicle screws. The plates disclosed in the ’328 Appl. engage the vertebral

7
The ’328 Appl. provides a similar explanation for clamping the vertebral fixation
pins 109–126 to the fixation junction illustrated in Fig. 2. Ex. 1004 ¶ 79.
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fixation elements by clamps. Pet. 58 (citing Ex. 1004 ¶ 65). Petitioner also states
that each of the pedicle screw engagement members comprises three such fixation
junctions connected to each other in a parallel fashion by threaded ties. Id.
Petitioner argues that the microschweller 204, the threaded rods 205 and
206, and the connecting element 213 make up the first handle means of the pedicle
screw cluster derotation tool. Id. at 55. We have construed the first handle means
as a means-plus-function claim in which the function is simultaneously applying
manipulative forces to a first set of pedicle screws and a first group of three or
more pedicle screw engagement members. We have construed the corresponding
structure to be a common handle or linked handle array from which extend shafts
that engage pedicle screws.
According to Petitioner, threaded rods 205 and 206 and threaded shank 22
(sic, 222) of connecting element 213 constitute individual handles linked to the
pedicle engagement means. Id. at 55, 57. Petitioner does not explain how or why
these elements in the ’328 Appl. constitute handles. Petitioner contends that
microschweller 204 serves as a linking member between handles, but does not
identify any description in the ’328 Appl. of rods 205 and 206 and connecting
member 213 as handles. Thus, we are not persuaded that the ’328 Appl. discloses
a linked handle array.
We have also construed the corresponding structure of the first handle means
to include shafts that extend from a common handle and engage pedicle screws.
Although the microschweller 204 links rods 205 and 206 and connecting element
213, which arguably constitute shafts connecting to the center fixation junction of a
support unit to engage pedicle screws, Petitioner has not persuaded us that the ’328
Appl. discloses a common handle. Petitioner argues that because of the rigid
connection between the microschweller and the rods, the application of force to the
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first handle means (rods 205, 206, connecting element 213, and microschweller
204) will result in simultaneous application of manipulative force to a first set of
pedicle screws and a first group of three or more pedicle screw engagement means,
as recited in claim 1. Id. at 55. However, Petitioner has not shown that
microschweller 204 constitutes a common handle.
The ’328 Appl. discloses that rods 205 and 206 are bolted to posts 211 and
212 on the center fixation junction 154, 160 of outer support units 1 and 3,
respectively, and are fastened through holes 220, 221 to microschweller 204 using
load bearing nuts 207, 208, 207a and 208a, but Petitioner identifies no description
of the rods as handles. Ex. 1004 ¶¶ 70, 88–87. The ’328 Appl. further discloses
that connecting element 213, made as a lug with threaded shank 222 and through
hole 223 (the axis of the lug being perpendicular to the axis of the shank), connects
the center fixation junction 157 of support unit 2, such that the lug of the post 213
is connected with a connecting hole of fixation junction 157 using through hole
223 and a bolt. The threaded shank is fastened with the help of load bearing nuts
209 and 210 to microschweller 204 through slot 219. Id. The ’328 Appl. next
states that graduated turning of load bearing nut 210 is performed, and the required
transport of the microschweller in the transverse plane is performed, after which
load bearing nuts 207, 208, 207a, and 208a are then fixed. Id. at ¶ 87. The ’328
Appl. also notes that the graduated transport in the transverse plane should be
repeated. Id. The ’328 Appl. does not disclose using the microschweller as a
handle. Instead, the ’328 Appl. describes graduated turning of load bearing nut
210 and the required transport of the microschweller 204. Id. Petitioner notes that
the dictionary definition of the term “handle” includes “a part designed especially
to be grasped by the hand.” Pet. 6. Petitioner does not explain how the
microschweller 204 would be used as a handle to obtain graduated transport in the
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transverse plane. Thus, we are not persuaded that Petitioner has demonstrated it is
reasonably likely to prevail in its challenge to claim 1 as anticipated by or obvious
over the ’328 Appl.
In consideration of the above, we are not persuaded that Petitioner has
demonstrated a reasonable likelihood that it would prevail in its challenge to claim
1 as anticipated by or obvious over the ’328 Appl.
Claims 1–4 As Obvious Under 35 U.S.C. § 103 over the
Video, the Slides, and/or the MTOS in view of the ’328
Appl. and alternatively the ’291 Appl.
Petitioner identifies this challenge as Ground 2 in this proceeding. Pet. 35.
Petitioner asserts that the ’328 Appl. discloses Claim 1[D]. For the reasons
discussed above, we are not persuaded that the ’928 Appl. or the ’328 Appl.
discloses the first handle means. Thus, we are not persuaded that Petitioner has
demonstrated a reasonable likelihood that it would prevail on its challenge that
claims 1–4 are obvious under 35 U.S.C. § 103 over the Video, the Slides, and/or
the MTOS in view of the ’328 Appl. and, alternatively, the ’291 Appl. We decline
to institute a trial on this ground.
SUMMARY
We are not persuaded that Petitioner has demonstrated a reasonable
likelihood that it would succeed on any of the challenges in the Petition and we do
not institute a trial on any ground.

ORDER
In consideration of the foregoing, it is hereby:
ORDERED that the Petition is DENIED.

IPR 2014-01212
Patent 7,776,072 B2

18

PETITIONER:
Jeff. E. Swartz
Seth A. Kramer
FOX ROTHSCHILD LLP
jeschwartz@foxrothschild.com
skramer@foxrothschild.com

PATENT OWNER:
David G. Henry, Sr.
Michael D. Ellis
GRAY, REED & MCGRAW, PC
dhenry@grayreed.com
mellis@grayreed.com