RSB Spine, LLC

Patent Trials and Appeals Board

Apr 15, 2021

IPR2020-00274 (P.T.A.B. Apr. 15, 2021)

Trials@uspto.gov Paper 40
571-272-7822 Entered: April 15, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________

MEDACTA USA, INC., PRECISION SPINE, INC.,
and LIFE SPINE, INC.,
Petitioner,

v.

RSB SPINE, LLC,
Patent Owner.
_______________

IPR2020-00274
Patent 6,984,234 B2
_______________

Before PATRICK R. SCANLON, MICHAEL L. WOODS, and
ERIC C. JESCHKE, Administrative Patent Judges.

JESCHKE, Administrative Patent Judge.

JUDGMENT
Final Written Decision
Determining No Challenged Claims Unpatentable
35 U.S.C. § 318(a)
Dismissing Petitioner’s Motion to Exclude
37 C.F.R. § 42.64

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I. BACKGROUND
Medacta USA, Inc., Precision Spine, Inc., and Life Spine, Inc.
(collectively, “Petitioner”) challenge claims 1–10, 13, 14, 16, 18–20, 22, 24,
25, 28, 29, 31, and 32 (the “challenged claims”) of U.S. Patent No.
6,984,234 B2 (Ex. 1001, “the ’234 patent”), which is assigned to RSB Spine,
LLC (“Patent Owner”). We have jurisdiction under 35 U.S.C. § 6, and we
issue this Final Written Decision under 35 U.S.C. § 318(a) and 37 C.F.R.
§ 42.73. For the reasons below, we conclude that Petitioner has not proven,
by a preponderance of the evidence, the unpatentability of any of the
challenged claims.
A. Procedural History
Petitioner filed a Petition seeking inter partes review of the
challenged claims. Paper 4 (“Pet.”). Patent Owner filed a Preliminary
Response. Paper 13. We instituted a trial as to all challenged claims.
Paper 22 (“Decision on Institution” or “Dec. Inst.”).
During the trial, Patent Owner filed a Response (Paper 25, “PO
Resp.”), Petitioner filed a Reply (Paper 29, “Pet. Reply”), and Patent Owner
filed a Sur-reply (Paper 32, “PO Sur-reply”). Petitioner filed a motion to
exclude evidence (Paper 35; see also Paper 37 (Petitioner’s reply brief)),
which Patent Owner opposed (Paper 36).
Petitioner relies on the declaration testimony of Mr. Michael C.
Sherman, filed with the Petition (Ex. 10051, “Sherman Pet. Decl.”) and the
Reply (Ex. 1023, “Sherman Reply Decl.”). Patent Owner relies on the
declaration testimony of Mr. Troy D. Drewry, filed with the Response.

1 We refer to the “corrected” version of Exhibit 1005, filed on
December 14, 2019.
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Ex. 2006 (“Drewry Decl.”). A consolidated oral argument in this
proceeding and two related proceedings (IPR2020-00264 and IPR2020-
00265) was held on February 23, 2021, and a copy of the transcript of that
argument was entered into the record. Paper 39 (“Tr.”).
B. Related Proceedings
The parties identify five proceedings in the U.S. District Court for the
District of Delaware involving the ’234 patent: (1) RSB Spine, LLC v. Life
Spine, Inc., No. 18-cv-1972 (D. Del.); (2) RSB Spine, LLC v. Medacta USA,
Inc., No. 18-cv-1973 (D. Del.); (3) RSB Spine, LLC v. Precision Spine, Inc.,
No. 18-cv-1974 (D. Del.); (4) RSB Spine, LLC v. Xtant Medical Holdings,
Inc., No. 18-cv-1976 (D. Del.); and (5) RSB Spine, LLC v. DePuy Synthes,
Inc., No. 19-cv-1515 (D. Del.) (collectively, the “Delaware Litigations”).
Pet. 1–2; Paper 7 (Patent Owner’s Mandatory Notices) at 2.2 The Delaware
Litigations also involve U.S. Patent No. 9,713,537 B2 (Ex. 2004, “the ’537
patent”). Pet. 1.
On the same day as the filing of the Petition in this Proceeding
(December 13, 2019), Petitioner filed a petition for inter partes review of
claims 35, 37, and 39 of the ’234 patent in IPR2020-00265. Medacta USA,
Inc. v. RSB Spine, LLC, IPR2020-00265, Paper 2 (PTAB Dec. 13, 2019)
(Petition) (“-00265 Pet.”). We granted institution in that proceeding. See
IPR2020-00265, Paper 24 (PTAB May 22, 2020) (Decision on Institution).

2 Petitioner also includes RSB Spine, LLC v. RTI Surgical, Inc., No. 18-
cv-1975 (D. Del.) in its list of “pending litigations.” Pet. 1. Patent Owner
does not list this litigation (Paper 7 at 2), which appears to have been
voluntarily dismissed on April 11, 2019 (RSB Spine, LLC v. RTI Surgical,
Inc., No. 18-cv-1975 (D. Del. April 11, 2019), ECF No. 12).
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On December 13, 2019, Petitioner also filed petitions for inter partes
review of claims 1, 3–6, 10, 13–15, 18, 19, 21, 22, 24, 29, and 30 of the ’537
patent, in both IPR2020-00264 and IPR2020-00275. Medacta USA, Inc. v.
RSB Spine, LLC, IPR2020-00264, Paper 2 (PTAB Dec. 13, 2019) (Petition);
Medacta USA, Inc. v. RSB Spine, LLC, IPR2020-00275, Paper 4 (PTAB
Dec. 13, 2019) (Petition). We granted institution in IPR2020-00264, but
denied institution in IPR2020-00275. See IPR2020-00264, Paper 24 (PTAB
May 22, 2020) (Decision on Institution); IPR2020-00275, Paper 22 (PTAB
May 22, 2020) (Decision on Institution).
The parties also identify “related” U.S. Patent Application No.
15/723,522 as currently pending before the U.S. Patent and Trademark
Office. Pet. 2; Paper 7 at 2.
C. The ’234 Patent
The ’234 patent “is directed to a bone plate system that is particularly
useful for assisting with the surgical arthrodesis (fusion) of two bones
together, and more particularly, to a bone plate that provides and controls
limited movement between the bones during fusion.” Ex. 1001, 1:6–10. In
the “Background” section, the ’234 patent discloses that “[t]he stabilization
of the vertebra to allow fusion is often assisted by a surgically implanted
device to hold the vertebral bodies in proper alignment and allow the bone to
heal, much like placing a cast on a fractured bone.” Id. at 1:47–51.
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Figure 1 is reproduced below:

Figure 1 “is a perspective view of a bone stabilization plate system
according to the invention that is assembled between adjacent vertebrae.”
Ex. 1001, 3:46–48. More specifically, Figure 1 depicts bone stabilization
plate system 10, “compris[ing] a base plate 20 [(unnumbered)] having first
and second ends, and including a primary member 21 and a secondary
member 22 at the second end of the base plate.” Id. at 4:3–6.3 Describing
Figure 1 (as well as Figure 3 below), the ’234 patent discloses that “base
plate 20 [is] mounted to first and second adjacent vertebral bodies 14 and 16
with a bone graft 12 between the vertebral bodies” and that “base plate 20
has a bottom surface 26 that contacts the bone graft 12.” Id. at 4:16–19.

3 Throughout this Decision, we omit any bolding of reference numerals
or claim numbers in quotations from the ’234 patent and from prior art
references.
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Figure 3 is reproduced below:

Figure 3 “is a side cross-sectional view of the bone stabilization plate
system of [Figure 1] assembled between adjacent vertebrae.” Ex. 1001,
3:51–53. In the embodiment depicted in these Figures, primary member 21
includes two “first bone screw holes 42 extending therethrough for receiving
a corresponding number of first bone screws 24,” each of which “extends
into the first vertebral body 14 at an angle.” Id. at 4:45–48, 4:55–57. In
addition, secondary member 22 includes one “bone screw hole in the form of
an elongated bone screw slot 48 for receiving a second bone screw 25,”
shown extended into “second vertebral body 16.” Id. at 4:63–67.
In the embodiment depicted above, “base plate 20 further includes a
pair of lateral tabs 60 integrally formed with the primary member 21 and
extending outwardly from opposite ends of the bottom surface 26 of the
primary member to form, together with the primary member, a unitary
substantially U-shaped structure.” Ex. 1001, 6:33–38. The ’234 patent
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discloses that, “[i]n use, the lateral tabs 60 extend around the bone graft 12
to prevent lateral shift of the graft and control subsidence of adjacent
vertebrae as they set during healing.” Id. at 6:38–41.
D. Illustrative Claims
Petitioner challenges claims 1–10, 13, 14, 16, 18–20, 22, 24, 25, 28,
29, 31, and 32, of which claims 1 and 22 are independent. Claims 2–10, 13,
16, 19, and 20 depend from claim 1; claims 24, 25, 29, 31, and 32 depend
from claim 22. Claim 1 is reproduced below:
1. A method for joining first and second bones
having top surfaces and side surfaces generally
facing each other, the method comprising:
inserting between the side surfaces of the
bones a base plate having a first end nearer the first
bone and a second end nearer the second bone,
wherein the base plate has a first screw hole
extending through the first end and a second screw
hole extending through the second end;
introducing a first bone screw through the
first screw hole and into the first bone, wherein the
first bone screw is introduced at an angle relative to
the top surface of the bone ranging from about 20°
to about 60°,
introducing a second bone screw through the
second screw hole and into the second bone,
wherein the second bone screw is introduced at an
angle relative to the top surface of the bone ranging
from about 20° to about 70°, and
covering at least a part of the first bone screw
and at least a part of the second bone screw to
prevent the first and second bone screws from
backing out of the first and second bones,
respectively.
Ex. 1001, 8:62–9:16.
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Claim 22 is reproduced below:
22. A bone stabilization plate system comprising:
a base plate having bottom surface and first
and second ends, the first end comprising a first
bone screw region having a first bone screw hole
extending therethrough at an angle relative to the
bottom surface of the base plate ranging from about
20° to about 60°, and the second end comprising a
second bone screw region having a second bone
screw hole extending therethrough at an angle
relative to the bottom surface of the base plate
ranging from about 20° to about 70°;
a first bone screw capable of securing the
base plate to a first bone by insertion through the
first bone screw hole;
a second bone screw capable of securing the
base plate to a second bone by insertion through the
second bone screw hole; and
a bone screw retaining means for securedly
covering at least a part of the first and second bone
screws to prevent the bone screws from backing out
from the first and second bones.
Ex. 1001, 10:37–56.
E. Instituted Grounds of Unpatentability
We instituted inter partes review of the challenged claims based on
the following grounds of unpatentability asserted by Petitioner:

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Claim(s) Challenged 35 U.S.C. § Reference(s)/Basis
1–10, 13, 14, 16, 18–20,
22, 24, 25, 28, 29, 31, 32 103(a) Michelson
4
2–8, 16 103(a) Michelson, Fraser ’1065
II. DISCUSSION
A. The Level of Ordinary Skill in the Art
The level of ordinary skill in the art is “a prism or lens” through which
we view the prior art and the claimed invention. Okajima v. Bourdeau, 261
F.3d 1350, 1355 (Fed. Cir. 2001). The person of ordinary skill in the art is a
hypothetical person presumed to have known the relevant art at the time of
the invention. In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). In
determining the level of ordinary skill in the art, we may consider certain
factors, including the “type of problems encountered in the art; prior art
solutions to those problems; rapidity with which innovations are made;
sophistication of the technology; and educational level of active workers in
the field.” Id. (internal quotation marks and citation omitted).
Petitioner contends that a person having ordinary skill in the art “at
the time of the alleged invention would have had at least a Bachelor of
Science degree in the field of Mechanical, Biomechanical or Biomedical
engineering with at least 5–10 years of experience designing and developing

4 WO 00/66045, published Nov. 9, 2000 (Ex. 1006, “Michelson”).
5 US 6,432,106 B1, issued Aug. 13, 2002 (Ex. 1007, “Fraser ’106”).
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orthopedic implants and/or spinal interbody devices.” Pet. 14–15 (citing
Sherman Pet. Decl. ¶ 22).6
In the Decision on Institution, we adopted Petitioner’s proposed level
of ordinary skill in the art, stating that it “appear[ed] consistent with the
record at th[at] stage of the proceeding, including the prior art.” Dec.
Inst. 12. Patent Owner now proposes a different level, stating, “[a] person of
ordinary skill in the relevant art as of April 2003 would be a biomedical
engineer with a bachelor’s degree in mechanical engineering or biomedical
engineering and two or more years of experience in biomechanical
engineering, biomedical engineering, and/or spinal implant devices.” PO
Resp. 6 (citing Drewry Decl. ¶¶ 9–10). According to Patent Owner,
[a] person could also have qualified as a person of ordinary skill
in the art with some combination of (1) more formal education
(such as an M.D. in addition to a bachelor’s degree in mechanical
engineering) and less technical experience or (2) less formal
education and more technical or professional experience in the
fields listed above.
PO Resp. 6 (citing Drewry Decl. ¶¶ 9–10). The parties did not further
address this issue at trial. See generally Pet. Reply; PO Sur-reply.
Although the level of ordinary skill in the art proposed by Patent
Owner (and applied by Mr. Drewry (see, e.g., Drewry Decl. ¶¶ 8–11))
differs slightly from the level adopted in the Decision on Institution, Patent
Owner stated, at the oral argument, that the differences are not “material”

6 In IPR2020-00265, Petitioner stated the same level of ordinary skill in
the art, except included “at least 5 years of experience” rather than, as here,
“at least 5–10 years of experience.” See -00265 Pet. 13–14; Pet. 14–15. We
view these proposed levels of skill as the same in scope.
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and that Patent Owner’s and Mr. Drewry’s positions would be the same
under either level. See Tr. 56:17–57:4.
Because we agree that the differences in the two levels are immaterial,
in the analysis below, we continue to apply the level of ordinary skill in the
art adopted in the Decision on Institution. Moreover, the analysis would be
the same under Patent Owner’s proposed level.
B. Claim Construction
1. Overview
In inter partes reviews, the Board interprets claim language using the
same claim construction standard that would be used in a civil action under
35 U.S.C. § 282(b), as described in Phillips v. AWH Corp., 415 F.3d 1303
(Fed. Cir. 2005) (en banc). See 37 C.F.R. § 42.100(b) (2019). Under that
standard, we generally give claim terms their ordinary and customary
meaning, as would be understood by a person of ordinary skill in the art at
the time of the invention, in light of the language of the claims, the
specification, and the prosecution history. See Phillips, 415 F.3d at 1313–
14. Although extrinsic evidence, when available, may also be useful when
construing claim terms under this standard, extrinsic evidence should be
considered in the context of the intrinsic evidence. See id. at 1317–19.
Petitioner proposes constructions for the following terms: (1) “base
plate”; (2) “lip osteophyte”/“lip osteophite”; and (3) “bone screw retaining
means.” Pet. 15–20. In the claim construction section of its Response,
Patent Owner addresses only the term “base plate.” PO Resp. 6–12; see also
id. at 7 (stating that Patent Owner “addresses the constructions of other
terms, as proposed by Petitioner[] or preliminarily adopted by the Board, as
necessary, in the sections that follow”).
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Based on the full record developed at trial, we construe only the term
“base plate.” We do not discern a need to construe explicitly any of the
other claim language discussed in this section or any other claim terms
because doing so would have no effect on the analysis below. See Nidec
Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017
(Fed. Cir. 2017) (stating that “we need only construe terms ‘that are in
controversy, and only to the extent necessary to resolve the controversy’”
(quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803
(Fed. Cir. 1999))).
2. “Base Plate”
Petitioner originally proposed that “base plate” be construed as “[a]
fixation plate to stabilize adjacent vertebrae for fusion, which is distinct
from bone graft material deployed across a bone graft site and is not used
with a load-bearing fusion cage.” Pet. 15. This proposed construction
included a negative limitation—not in Patent Owner’s proposed construction
(and shown with Petitioner’s emphasis above)—requiring that the “base
plate” not be “used with a load-bearing fusion cage.” Id. Patent Owner, on
the other hand, proposes that “base plate” be construed as “a fixation plate of
a bone plate stabilization system to stabilize adjacent vertebrae for fusion
and distinct from a spacer and bone graft material deployed across a bone
graft site.” PO Resp. 7 (emphasis added). This proposed construction
includes an additional limitation—not included in Petitioner’s originally
proposed construction (and shown with our emphasis above)—requiring that
the “base plate” is “distinct from a spacer.” Id.
In the Decision on Institution, we preliminarily construed “base plate”
as a “fixation plate to stabilize adjacent vertebrae for fusion.” Dec. Inst. 13–
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23. The preliminary construction comprises language common to both
Petitioner’s and Patent Owner’s currently proposed constructions. See id. at
23; Pet. Reply 15 (citing Sherman Reply Decl. ¶ 73); PO Resp. 7. Below,
we address (1) the negative limitation proposed as part of Petitioner’s
originally proposed construction (“not used with a load-bearing fusion
cage”), (2) the additional limitation proposed as part of Patent Owner’s
currently proposed construction (“distinct from a spacer”), (3) a requirement,
included in both Petitioner’s originally proposed and Patent Owner’s
currently proposed constructions (that a “base plate” is “distinct from” “bone
graft material deployed across a bone graft site”), and (4) an additional
requirement, included in Patent Owner’s proposed construction (that the
“base plate” is part “of a bone plate stabilization system”).
a. “not used with a load-bearing fusion cage”
As discussed above, Petitioner originally proposed a requirement that
a “base plate” “is not used with a load-bearing fusion cage.” Pet. 15
(emphasis omitted). For the reasons in the Decision on Institution, we did
not include that requirement in the preliminary construction. See Dec.
Inst. 14–17. In the Reply, Petitioner does not continue to assert this
requirement and instead revises its proposed construction in line with the
preliminary construction of “base plate” (at least for purposes of this
proceeding (Tr. 7:21–8:7)). See Pet. Reply 15 (arguing that the Board
should “find that the term base plate is a ‘fixation plate to stabilize adjacent
vertebrae for fusion’” (citing Sherman Reply Decl. ¶ 73)). Based on the
complete record, and for the reasons in the Decision on Institution, which we
adopt, we do not include the negative limitation (“is not used with a load-
bearing fusion cage”) in the construction of “base plate.”
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b. “distinct from a spacer”
Patent Owner provides several arguments as to why the proposed
requirement that a “base plate” is “distinct from a spacer” is allegedly in
accordance with the “plain and ordinary meaning” and supported by the
intrinsic and extrinsic evidence. PO Resp. 7–11 (emphasis omitted). As an
initial matter, we question the need to directly address this proposed
requirement in that, even under the construction of “base plate” applied
below—which does not include this requirement—we determine that
Petitioner has not prevailed in showing that the relied-upon embodiment
includes a “base plate.” See infra §§ II.C.2.a, II.C.2.c.1. Regardless, to
provide a full discussion of the issues, we address this proposed requirement.
First, Patent Owner highlights aspects of both the ’234 patent at issue
in this proceeding and the related ’537 patent. See PO Resp. 8–10. As
background, the ’537 patent relates to the ’234 patent via five generations of
continuation-in-part applications. See Ex. 1002, code (63). The ’537 patent
shares Figures 1–7 with the ’234 patent, but adds Figures 8 through 44. In
addition, the ’537 patent shares aspects of its written description with the
’234 patent, but the ’537 patent adds over twenty columns of additional
disclosures. Compare Ex. 1001, with Ex. 1002.
In support of the proposed “distinct from a spacer” requirement,
Patent Owner argues that the ’234 patent “discloses a spacer (bone graft 12)
that is separate from the base plate (20).” PO Resp. 8 (citing Ex. 1001,
4:16–22, 6:47–50, Figs. 1–3; Drewry Decl. ¶ 42). As to the ’537 patent,
Patent Owner argues that, “[i]n embodiments depicted in Figures 35–38, a
primary member (i.e., a base plate) is separate from a ‘detachable chamber
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member 696’ (i.e., a spacer) to be packed with fusion material.” Id. at 10
(citing Ex. 1002, Figs. 35–38; Drewry Decl. ¶ 42).
Petitioner responds that the ’234 patent “directly contradicts” this
proposed requirement. Pet. 17; see Pet. 17–18; Pet. Reply 1–15.
Specifically, Petitioner argues that “[t]he entire disclosure of the ’234 patent
is directed to a base plate 20 . . . that includes an integrated spacer 60.”7
Pet. 17. Petitioner highlights testimony of Patent Owner’s declarant, Mr.
Drewry, who testified that, “if there becomes a loss of disc height or one
vertebral body moves down towards the other, [lateral tabs] 60 and [nubs] 66
may come into contact and provide a spacer or subsidence control, as it
states in the patent, at that point.” Ex. 1024, 89:23–90:4, quoted at Pet.
Reply 3. As to the ’537 patent, Petitioner contends that the additional
disclosures only present in the ’537 patent cannot be used to “change” the
meaning of “base plate.” See Pet. Reply 4–13. Petitioner notes that the
additional disclosures do not refer to a “base plate.” See id. at 6–7.
We are not persuaded by Patent Owner’s arguments based on the ’234
and ’537 patents. As to the ’234 patent, we note that although it shows base
plate 20 as distinct from bone graft 12, nowhere is bone graft 12 referred to
as a “spacer.” See, e.g., Ex. 1001, 4:16–22, 6:47–50, cited at PO Resp. 8. In
fact, the term “spacer” is not used anywhere in the ’234 patent (or the ’537
patent). In cited paragraph 42 of Mr. Drewry’s Declaration, he relies on
Exhibit 2022, which provides an example of “spacers composed of bone
graft compositions.” Ex. 2022, 4:66–5:1, quoted at Drewry Decl. ¶ 42.

7 The ’234 patent identifies element 60 as “lateral tabs,” not as
“integrated spacers.” See, e.g., Ex. 1001, 6:33–38.
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Even considering this exemplary disclosure in Exhibit 2022, however, we
are not persuaded that the disclosure in the ’234 patent as to bone graft
material defines the term “base plate” as distinct from all spacers.8
We are also not persuaded by Patent Owner’s arguments based on the
’537 patent. First, the discussion of the embodiments in Figures 35–38
highlighted by Patent Owner expressly refers to a “primary member,” not a
“base plate” as recited in the claim language at issue. See, e.g., Ex. 1002,
34:50–36:8 (discussing Figures 35–38); Pet. Reply 6 (“Even if the Board
considers the new matter in the ’537 patent, none of it refers to a ‘base
plate.’ The descriptions of other structures do not change the meaning of the
term base plate.”). Patent Owner does not persuasively explain why
disclosed “primary member 600” in Figures 35–38 would have been
considered a “base plate” as recited in the claim language at issue, especially
given that other disclosures in the ’537 patent use the precise term at issue—
i.e., “base plate.” See, e.g., Ex. 1002, 8:31–60 (discussing “base plate 20”
shown in Figure 1, common to both the ’234 patent and ’537 patent). In an
effort to show the alleged connection between “primary member 600” and
“base plate,” Patent Owner references language that seems to distinguish the
“unitary implant structure” in Figure 34 from embodiments such as those in
Figures 35–38; but even that discussion uses the term “plate” rather than
“base plate.” See Ex. 1002, 34:39–44, quoted at PO Resp. 9–10. Mr.
Drewry presents the same statement purportedly linking “primary member”
and “base plate” but does not explain his position. See Drewry Decl. ¶ 42

8 As discussed below (see § II.B.2.c), we also reject Patent Owner’s
related proposed requirement that a “base plate” must be “distinct from”
“bone graft material deployed across a bone graft site.”
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(also stating that “the embodiments depicted in Figures 35–38 show a
primary member (i.e., a base plate)”); 37 C.F.R. § 42.65(a) (“Expert
testimony that does not disclose the underlying facts or data on which the
opinion is based is entitled to little or no weight.”).
Second, given that the parties agree that “base plate” should be
construed the same in the ’234 patent and the ’537 patent, we question
whether the additional disclosures of the ’537 patent should be considered
for claim construction purposes. See Sinorgchem Co., Shandong v. Int’l
Trade Comm’n, 511 F.3d 1132, 1139 n.5 (Fed. Cir. 2007) (“All parties
agreed before the ITC that the disputed term ‘controlled amount’ must be
construed to mean the same thing in the claims of the [patent issuing via
CIP] as in the [parent] patent. Additional examples included in the
specification of the continuation-in-part application that led to the [patent
issuing via CIP] cannot alter the meaning of the term as it appears in the
[parent] patent.”)9; see also Pet. Reply 5 (arguing that “base plate” “must be
interpreted consistently in both patents”); PO Sur-reply 9–10 (“PO’s
construction interprets the ‘base plate’ term consistently across both patents
and thus does not run afoul of the principle articulated in SightSound
Tech[nologies], LLC v. Apple, Inc., 809 F.3d 1307, 1316 (Fed. Cir. 2015).”).

9 Patent Owner cites footnote 5 in Sinorgchem for the proposition that
“[n]ew subject matter in the child CIP patent may be used to construe claim
terms shared between the child CIP and parent patents, provided the
disclosures do not broaden the scope of the claim terms within the parent
patent.” PO Resp. 9 n.2. Unlike Patent Owner, we read the footnote as
precluding the use of additional disclosures in a patent such as the ’537
patent, regardless of whether those disclosures are used to “broaden” the
scope of the claim term at issue. Id.
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We turn now to Petitioner’s request—presented in response to Patent
Owner’s “distinct from a spacer” requirement—that we “confirm that an
integrated spacer is within the scope of [the] construction of a base plate.”
Pet. Reply 4. On the full record developed at trial, we decline Petitioner’s
request. Even assuming that, as argued, lateral tabs 60 in the ’234 patent are
one type of “integrated spacer”10—i.e., because they are integrally formed
with and part of the “base plate”11 and can, in certain configurations, bear at
least some vertebral weight12—the record does not support Petitioner’s
open-ended request that we construe “base plate” to include all “integrated
spacers.”
Here, dependent claims 37 and 38 in the ’234 patent expressly recite
“lateral tabs” as part of the “base plate” (see Ex. 1001, 12:32–41) and
dependent claims 20, 21, 32, and 33 more generally recite “tabs” as part of

10 See IPR2020-00264, Paper 24 at 28–29 (“Because the evidence of
record fails to support Patent Owner’s position that the claimed ‘base plate’
must be ‘distinct from a spacer,’ and because Patent Owner’s own ‘base
plate’ appears to be a ‘spacer,’ we decline to adopt Patent Owner’s
proposed requirement.” (emphasis added)).
11 For example, the ’234 patent discloses that “[i]n the depicted
embodiment, the base plate 20 further includes a pair of lateral tabs 60
integrally formed with the primary member 21 and extending outwardly
from opposite ends of the bottom surface 26 of the primary member to form,
together with the primary member, a unitary substantially U-shaped
structure.” Ex. 1001, 6:33–38 (emphasis added).
12 For example, the ’234 patent discloses that “[i]f the base plate 20
includes lateral tabs 60 with nubs 66, the nubs will also share in the weight-
bearing during settling of the vertebral bodies. Specifically, as the vertebral
bodies move toward each other during settling, the pointed nubs 66 will
contact and slowly enter the second vertebral body 16 to a limited extent.”
Ex. 1001, 7:55–60.
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the “base plate” (see id. at 10:28–36, 11:33–40), but no claim uses
“integrated spacers” or even “spacer” more generally. The written
description also does not use the term “spacer” or indicate that “base plate”
includes all “integrated spacers.” By declining Petitioner’s request, we do
not exclude a preferred embodiment as seemingly argued (see Pet. Reply 4);
instead, we refrain from expanding the disclosures in the ’234 patent from a
potential example of “integrated spacer” (i.e., the “lateral tabs”) to a broader
category (i.e., all “integrated spacers”) not mentioned.
Second, having discussed the intrinsic evidence presented by Patent
Owner in support of this proposed requirement, we turn now to extrinsic
evidence, specifically, the testimony of the declarants.13 See Phillips, 415
F.3d at 1317 (discussing expert testimony as a form of extrinsic evidence on
claim construction). Patent Owner cites Mr. Drewry’s testimony to contend
that this proposed requirement “makes clear that base plates and spacers are
two different devices and while they might be used in conjunction with one
another, they are in fact distinct.” PO Resp. 8 (citing Drewry Decl. ¶¶ 39–
41). According to Patent Owner, “[a] spacer is configured to maintain disc
space across the bone graft site and bears weight from the vertebral bodies in
the spinal column to promote fusion of the bone graft material, but not so
much weight as to cause structural collapse,” whereas “base plates” “are
fixation plates that are used to stabilize adjacent bones for fusion, which may

13 Patent Owner relies upon various dictionary definitions of the term
“plate” (see, e.g., PO Resp. 18 (citing Exs. 2007–2010)) but discusses them
in the context of applying the construction. We do the same, and discuss
that extrinsic evidence below. See infra §§ II.C.2.a, II.C.2.c.1.
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or may not be inserted between vertebral bones.” Id. at 8 (citing Drewry
Decl. ¶ 39).
We are not persuaded by Patent Owner’s argument. Mr. Drewry cites
several exhibits but we do not find adequate evidence (in the exhibits or the
testimony) to support the assertion that a skilled artisan would understand
that a “base plate” must be distinct from a “spacer.” As an initial matter,
none of the exhibits actually use the term at issue—“base plate.”
Specifically, Exhibits 2001, 2002, and 2022 appear to describe examples of
plates that are separate from spacers (see, e.g., Ex. 2002, Figs. 7, 8, cited at
Drewry Decl. ¶ 39), yet none of these documents defines “base plate” or
establishes that one of ordinary skill in the art would have understood that a
“base plate” must be distinct from a “spacer,” as argued by Patent Owner.
As to paragraphs 40 and 41 from Mr. Drewry’s Declaration (relying
on Exhibit 202314), we first note that they are cited only once by Patent
Owner in a statement not mentioning the substance of the testimony. See
PO Resp. 8 (“The construction makes clear that base plates and spacers are
two different devices and while they might be used in conjunction with one
another, they are in fact distinct. [Drewry Decl.] ¶¶39-41.”); 37 C.F.R.
§ 42.6(a)(3) (“Arguments must not be incorporated by reference from one
document into another document.”); Cisco Sys., Inc. v. C-Cation Techs.,
LLC, IPR2014-00454, Paper 12 at 8–10 (PTAB Aug. 29, 2014)
(informative) (discussing improper incorporation by reference of declarant
testimony). Moreover, we are not persuaded that the referenced product
coding guidelines from the North American Spine Society adequately

14 Exhibit 2023 is an excerpt from the November/December 2007 issue
of “SpineLine” from the North American Spine Society.
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support the specific proposed requirement as to “base plate”—a term not
mentioned in the exhibit at all. See generally Ex. 2023. Based on the
complete record, and for the reasons here and in the Decision on Institution,
we do not include a requirement that a “base plate” is distinct from a spacer.
c. “distinct from” “bone graft material deployed
across a bone graft site”
Petitioner originally proposed and Patent Owner currently proposes a
common requirement: that a “base plate” is “distinct from” “bone graft
material deployed across a bone graft site.” Pet. 15; PO Resp. 7. For the
reasons explained in the Decision on Institution, we did not include that
requirement in the preliminary construction. See Dec. Inst. 19–21. In the
Reply, Petitioner does not continue to assert this requirement and instead
revises its proposed construction in line with the preliminary construction of
“base plate” (at least for purposes of this proceeding (Tr. 7:21–8:7)). See
Pet. Reply 15.
Patent Owner continues to propose this requirement. See PO Resp. 7.
Although Patent Owner explains an alleged distinction between a “spacer”
(which allegedly could be made of bone graft material) and a “base plate,”
Patent Owner does not adequately present argument or evidence in support
of the alleged distinction between a “base plate” and “bone graft material
deployed across a bone graft site.” Id. at 8–11 (discussing how “Patent
Owner’s construction recognizes that a base plate is distinct from a ‘spacer’”
and arguing in support of that requirement); see generally PO Sur-reply (not
addressing claim construction issues); see also Dec. Inst. 19 (stating that
“neither Petitioner nor Patent Owner provides argument or identifies
evidence to support” this asserted requirement). Moreover, Patent Owner
does not present any arguments that rely on the presence of this proposed
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requirement in the construction of “base plate.” See PO Resp. 12–73; PO
Sur-reply 2–26; Dec. Inst. 21 n.12. Based on the complete record, and for
the reasons explained here and in the Decision on Institution, we do not
include a requirement that a “base plate” is distinct from bone graft material
deployed across a bone graft site.
d. “of a bone plate stabilization system”
Finally, Patent Owner includes as part of its proposed construction
that a “base plate” is part “of a bone plate stabilization system.” PO Resp. 7.
For the reasons explained in the Decision on Institution, we did not include
that requirement in the preliminary construction. See Dec. Inst. 21–23.
Patent Owner does not adequately present argument or evidence in
support of this alleged requirement. See PO Resp. 8–11 (discussing only the
proposed requirement that a “base plate” is “distinct from a spacer”); see
generally PO Sur-reply (not addressing claim construction issues).
Moreover, Patent Owner does not present any arguments that rely on the
presence of this alleged requirement in the construction of “base plate.” See
PO Resp. 12–73; PO Sur-reply 2–26; Dec. Inst. 23 n.13. Based on the
complete record, and for the reasons explained here and in the Decision on
Institution, we do not include a requirement that the “base plate” is part of a
bone plate stabilization system.
e. Construction of “Base Plate”
For the reasons above and based on the complete record, we maintain
our construction of “base plate” as a “fixation plate to stabilize adjacent
vertebrae for fusion.”
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C. Asserted Obviousness of Claims 1–10, 13, 14, 16, 18–20, 22, 24,
25, 28, 29, 31, and 32 Based on Michelson
Petitioner asserts that claims 1–10, 13, 14, 16, 18–20, 22, 24, 25, 28,
29, 31, and 32 of the ’234 patent are unpatentable under 35 U.S.C. § 103(a)
based on Michelson. Pet. 4, 21–67; Pet. Reply 15–26. Patent Owner
provides arguments addressing this asserted ground of unpatentability. PO
Resp. 12–63; PO Sur-reply 2–22. We first summarize aspects of Michelson
and then address the arguments.
1. Michelson
According to Michelson, certain spinal instabilities can be treated by
fusion, which is “the joining together permanently of the unstable vertebrae
via a bridge of bone so as to eliminate all motion along [a] portion of the
spine.” Ex. 1006 at 2.15 Michelson discloses various “interbody spinal
fusion implants” that are “placed at least in part within a disc space and in
contact with each of the vertebral bodies adjacent that disc space for spacing
apart and aligning those vertebral bodies and for allowing for the growth of
bone in continuity from vertebral body to adjacent vertebral body.” Id.
Michelson provides this summary of the process:
In order to perform anterior interbody spinal fusion, a
significant amount of disc material is removed from the
interspace to be fused. After removing the disc material, the disc
space is filled with an implant, which generally includes bone or
bone in combination with a reinforcing structure, such as an
artificial (other than bone) interbody spinal fusion implant.
Ex. 1006 at 3.

15 Both Petitioner and Patent Owner cite to the internal pagination in
Michelson rather than the page numbers added by Petitioner (e.g.,
“Petitioners 1006-1” on the first page). For consistency, we do the same.
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Figures 24 and 25 of Michelson are reproduced below:

Figure 24 is “a side elevation view of the fourth embodiment implant
with opposed bone engaging screws.” Ex. 1006 at 7. Figure 25 is “a trailing
end view of the implant of Figure 24 with screws and screw locks in place.”
Id. Michelson describes implant 400 as including convex leading end 402
and opposite trailing end 404, both of which are “highly perforate to allow
for vascular access to hollow interior 426 of implant 400, and to allow for
the growth of bone therethrough.” Id. at 16. Implant 400 also includes
opposed upper and lower vertebral body engaging surfaces 406 and 408,
respectively, and bone screws 442. Id. at 16–17. Figure 25 also depicts
“threaded lock members 462, preventing screws 442 from backing out.” Id.
at 17.
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Figures 23 and 21 are reproduced below:

Figure 23 is a “trailing end view” and Figure 21 is a “top plan view”
of the same embodiment shown in Figures 24 and 25 above. Ex. 1006 at 6.
Figure 23 shows two common holes 440 (which receive threaded lock
members 462 shown in Figure 25) as well as four holes 430, each of which
is “adapted to receive a bone screw 442” that is directed “into [a] vertebral
body itself at an angle preferably between 25° and 75°.” Id. at 17. As
shown in Figure 21, Michelson discloses that “[i]mplant upper and lower
surfaces 406 and 408 have large windows or slots 424 therethrough, each in
communication with the central hollow chamber 426 of the implant and each
forming a direct path to its counterpart on the opposite surface through
implant 400.” Id. at 16–17. Michelson also discloses that “[t]o the extent
that such implants are hollow and have openings through the surfaces, those
openings and those hollows can preferably be filled with fusion promoting
substances, including substances that are osteogenic, osteo-inductive, or
osteo-conductive, whether naturally occurring, or artificially produced.” Id.
at 9.
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2. Analysis
a. Independent Claim 1
Petitioner contends that Michelson, as modified, satisfies each of the
limitations of claim 1. Pet. 21–30. To support its arguments, Petitioner
identifies certain passages in the cited references and explains the
significance of each passage with respect to the corresponding claim
limitation. Id. Below, we discuss the parties’ positions with respect to the
requirement, in claim 1, for a “base plate.” Ex. 1001, 8:65–9:1. This issue
is dispositive as to claim 1.
Petitioner asserts that Michelson discloses a “base plate.” Pet. 23–24;
Pet. Reply 15–16. Patent Owner disagrees. PO Resp. 12–39; PO Sur-reply
2–11. Addressing this limitation, Petitioner provides the following side-by-
side comparison of Figure 25 of Michelson and Figure 4 of the ’234 patent:

Pet. 24. Figure 25 of Michelson is “a trailing end view of the implant of
Figure 24 with screws and screw locks in place.” Ex. 1006 at 7. Figure 4 of
the ’234 patent is a “top view of the bone stabilization plate system” of
Figure 1. Ex. 1001, 3:54–55. Referring to these Figures, Petitioner states
that, “like the ’234 patent, Michelson . . . discloses a fixation plate 404 to
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stabilize adjacent vertebrae for fusion.” Pet. 24.16 In the Decision on
Institution, we addressed Patent Owner’s arguments relating to proposed
requirements not adopted in the preliminary construction (or the construction
above) and determined that Petitioner had made a sufficient showing, at that
stage of the proceeding, that Michelson discloses a “base plate.” See Dec.
Inst. 26–30.
In the Response, Patent Owner argues that “Michelson implant 400 is
not a ‘base plate’” under the construction above “because it is not a fixation
plate.” PO Resp. 18. According to Patent Owner, the term “plate” in the
construction “does not broadly encompass all structures of any shape or
form (e.g., rods, screws, rings, boxes, etc.) or any generic structure (e.g., a
fixation ‘member,’ ‘body,’ ‘implant,’ etc.) that could be used to stabilize
adjacent vertebrae for fusion.” Id. at 17–18 (citing Drewry Decl. ¶ 57).
Patent Owner presents certain alleged shape-based definitions of “plates”:
(1) “A ‘plate’ is characterized in part by its thinness relative to its other
dimensions” (id. at 18 (citing Drewry Decl. ¶¶ 58–59; Ex. 2007–2010
(dictionary definitions of “plate”); Ex. 2012 ¶ 35)) and (2) “Due to its
relative thinness, a ‘plate’ is further characterized as generally having two
opposed, ‘primary’ surfaces—i.e., its top and bottom or front and back
surfaces—with relatively large areas in comparison to its connecting side
surfaces” and the “opposed, comparatively large primary surfaces of a plate
are external or outwardly facing (relative to the plate itself)” (id. at 18 (citing

16 As noted in the Decision on Institution, we view Petitioner’s use of
reference numeral 404 in this statement as a typographical error, and we
understand Petitioner to identify implant 400 as the “base plate.” See Dec.
Inst. 27 n.15. Petitioner did not address this issue at trial.
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Drewry Decl. ¶ 61)). Patent Owner then provides the following depiction of
an exemplary “plate”:

PO Resp. 19. According to Patent Owner, “the depicted plate has two
opposed primary surfaces (i.e., the surfaces parallel to the ‘Workplane’),
which are outwardly facing and relatively large in comparison to its
connecting side surfaces (i.e., the surfaces perpendicular to the
‘Workplane’).” Id. (citing Drewry Decl. ¶ 62; Ex. 2017, 77:5–20).
Patent Owner also argues that “plates” can be functionally defined in
that they are “often used or configured to cover, reinforce, or protect
something else.” PO Resp. 20 (citing Drewry Decl. ¶ 65; Exs. 2010–2011
(dictionary definitions of “plate”)). According to Patent Owner, implant 400
in Michelson is not a “plate” because it does not possess the identified
shape- and function-based definitions. See id. at 31 (arguing that implant
400 “is not a plate” as it is “not a relatively thin structure that is
characterized by two opposed, outwardly-facing surfaces that are relatively
large compared to its connecting side surfaces” (citing Drewry Decl. ¶ 80)),
32–33 (arguing that implant 400 “cannot be inserted onto the anterior face of
a solid bone graft (e.g., bone graft 12 in the ’234 patent) or fusion cage that
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has been placed between two vertebral bones in order to cover the
graft/cage” (citing Drewry Decl. ¶ 81)).
Although structures within the definitions identified by Patent Owner
may be considered “plates” in a general sense, the particular definitions
presented conflict with the “base plate” in the only depicted embodiment in
the ’234 patent. Below, we reproduce an annotated version of Figure 2 of
the ’234 patent, with the “base plate” shown in orange:

Pet. 18. Figure 2 of the ’234 patent provides “a perspective view of the bone
stabilization plate system” shown in Figure 1. Ex. 1001, 3:49–50. In the
annotated version, base plate 20 is shown overlaid in orange. Pet. 18. The
description of this embodiment makes clear that lateral tabs 60 and nubs
66—shown in orange here—are, when present, part of the “base plate.” See
Ex. 1001, 6:33–38. The same description identifies the “base plate” as a
“unitary substantially U-shaped structure.” Id.
Notably, in addressing why the shape-based definitions allegedly
align with the description in the ’234 patent, Patent Owner discusses certain
structural components of the “base plate” but does not discuss lateral tabs 60
(which contribute to the U shape of the structure, as shown above). See PO
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Resp. 21–23. Although the “tabs” are not required to be present in the “base
plate,” when present, they are part of the “base plate” (as shown in the
annotated version of Figure 2 above). Compare Ex. 1001, 8:62–9:16
(independent claim 1, reciting a “base plate” but not requiring “tabs”), with
id. at 10:28–30 (dependent claim 20 adding that the “base plate” includes
“first and second tabs”); compare id. at 10:38–56 (independent claim 22,
reciting a “base plate” but not requiring “tabs”), with id. at 11:32–37
(dependent claim 32, adding that the “base plate” includes “first and second
tabs”). Because Patent Owner’s shape-based definitions conflict with the
“base plate” shown in the ’234 patent, we do not adopt them as part of the
construction. See PPC Broadband, Inc. v. Corning Optical Commc’ns RF,
LLC, 815 F.3d 747, 755 (Fed. Cir. 2016) (“We have often remarked that a
construction which excludes the preferred embodiment is rarely, if ever
correct. A construction which reads the preferred embodiment out of the
scope of the claims would generally seem at odds with the intention of the
patentee as expressed in the specification.” (internal quotations and citations
omitted)).
We are also not persuaded to adopt Patent Owner’s function-based
definition of a “base plate” as “used or configured to cover, reinforce, or
protect something else.” PO Resp. 20 (citing Drewry Decl. ¶ 65; Exs. 2010–
2011 (dictionary definitions of “plate”)). As an initial matter, we hesitate to
functionally define a structural claim element. See Toro Co. v. White
Consol. Indus., Inc., 266 F.3d 1367, 1371 (Fed. Cir. 2001) (“An invention
claimed in purely structural terms generally resists functional limitation.”
(citing Ecolab, Inc. v. Envirochem, Inc., 264 F.3d 1358, 1367 (Fed. Cir.
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2001) (“Where the function is not recited in the claim itself by the patentee,
we do not import such a limitation.”) (citations omitted))).
Moreover, Patent Owner does not identify intrinsic evidence
supporting its position, and we find the intrinsic evidence in conflict with the
presented extrinsic evidence. Here, Patent Owner relies on bone graft 12 as
the “something else” being covered or protected in the context of this
functional requirement. PO Resp. 32–33. Although “bone graft material” is
expressly recited in independent claim 35 (as well as independent claims 40
and 41), it is not recited in independent claims 1 and 22, both of which,
however, do recite a “base plate.” See Ex. 1001, 8:62–9:16 (claim 1),
10:38–56 (claim 22). See InterDigital Commc’ns, LLC v. ITC, 690 F.3d
1318, 1324 (Fed. Cir. 2012) (“The doctrine of claim differentiation is at its
strongest in this type of case, ‘where the limitation that is sought to be “read
into” an independent claim already appears in a dependent claim.’” (quoting
Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 910 (Fed. Cir. 2004)).
Thus, because the “base plate” in certain independent claims need not cover
or protect bone graft material (because it is not required), we do not adopt
this proposed functional definition into the construction of a “base plate.”
For these reasons, we do not adopt Patent Owner’s shape- and function-
based definitions of “base plate.”
We agree, however, with Patent Owner’s more general argument that
Petitioner has not satisfied its burden to show by a preponderance of the
evidence that one of ordinary skill in the art would have understood implant
400 in Michelson as a “base plate”—i.e., a fixation plate to stabilize adjacent
vertebrae for fusion. See PO Resp. 38. In the only statement in the Petition
that addresses the requirements in the construction of “base plate” provided
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above, Petitioner states that, “like the ’234 patent, Michelson . . . discloses a
fixation plate 404 to stabilize adjacent vertebrae for fusion.” Pet. 23–24.17
Although this statement does not rely on any declaration testimony, in the
relevant testimony, Mr. Sherman merely presents the same statement as his
opinion, without any additional explanation. See Sherman Pet. Decl. ¶ 63;
37 C.F.R. § 42.65(a). In the Reply, Petitioner contends that Patent Owner’s
“arguments for patentability over Michelson require accepting its claim
construction positions concerning ‘base plate’” and then simply states that
under the construction above (agreed to by Petitioner) “Michelson renders
the claims obvious, as is summarized in the Petition” and shown in the
figures reproduced on page 26 in this Decision. Pet. Reply 15–16 (citing PO
Resp. 12–38; Sherman Reply Decl. ¶ 78). In the relevant testimony, Mr.
Sherman merely presents the same statements without any additional
explanation. See Sherman Reply Decl. ¶ 78.
As an initial matter, it is not Patent Owner’s ultimate burden to
demonstrate patentability of the challenged claims. See Dynamic
Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378–79 (Fed. Cir.
2015) (“In an inter partes review, the burden of persuasion is on the
petitioner to prove ‘unpatentability by a preponderance of the
evidence,’ 35 U.S.C. § 316(e), and that burden never shifts to the
patentee.”); see also In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364,
1376 (Fed. Cir. 2016) (discussing how “it is inappropriate to shift the burden
to the patentee after institution to prove that the patent is patentable”); Pet

17 As mentioned above (note 16), Petitioner identifies implant 400—not
element 404—as the “base plate.”
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Reply 15 (discussing Patent Owner’s “arguments for patentability over
Michelson”).
Further, although (as discussed above) we do not adopt Patent
Owner’s shape- and function-based definitions as to “base plate,” we agree
with Patent Owner’s more general argument that Petitioner has not satisfied
its burden to show that one of ordinary skill in the art would have
understood implant 400 in Michelson as a “base plate.” See PO Resp. 38
(“In their Petition, Petitioners simply identify the Michelson implant 400 as
the ‘base plate’ (see Pet. at 23–24), and they do not explain why this
structure purportedly is a ‘plate,’ under a proper understanding of this term.”
(citing Drewry Decl. ¶ 87)); see also PO Sur-reply 1 (arguing that, in the
Reply, Petitioner “ignore[s] that they failed to show that the Michelson
implant is a plate and thus fail[s] to show that it is a ‘base plate’ under the
Board’s preliminary construction”), 3 (“As discussed in detail in the
[Response], [one of ordinary skill in the art] would not have considered the
Michelson implant to be a ‘base plate’ or ‘fixation plate’ because it is not a
plate.” (citing PO Resp. 17–39)).
Petitioner bears the burden in this proceeding to explain why implant
400 would have been considered a “base plate” under the construction
above, which Petitioner has adopted. See Pet. Reply 13, 15; see also PO
Sur-reply 4 (“Having chosen to adopt the Board’s construction of ‘base
plate,’ Petitioner[] w[as] required to show that the Michelson implant 400 is
a ‘fixation plate to stabilize adjacent vertebrae for fusion.’”). The parts of
the Petition and Reply summarized above are the entirety of Petitioner’s
argument and evidence addressing whether one of ordinary skill in the art
would have understood implant 400 in Michelson as a “base plate.” Having
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considered the argument and evidence presented by Petitioner on this issue
in the complete record as developed at trial (as summarized above), we agree
with Patent Owner that Petitioner has not satisfied its burden on this issue.
See PO Sur-reply 6 (“In the[] Petition, and now again in the[] Reply,
Petitioner[] simply identif[ies] the Michelson implant 400 as the ‘base plate,’
and fail[s] to explain why this device purportedly is a ‘fixation plate’ under a
proper understanding of this term.” (citing Pet. 23–24; Pet. Reply 15)).
We turn now to one additional issue. Even if we had agreed with
Petitioner that “an integrated spacer is within the scope of [the] construction
of a base plate” (Pet. Reply 4; see supra § II.B.2.b), that would not
necessarily indicate that any structure with an integrated spacer would have
been understood as a “base plate” in the context of the ’234 patent. See PO
Sur-reply 4 (arguing that Petitioner “improperly treat[s] the term ‘plate’ in
th[e] construction as a nonce word, having no particular meaning or
import”). Instead, as discussed above, Petitioner had the burden to
demonstrate by a preponderance of the evidence why the relied-upon
structure—i.e., implant 400 in Michelson—would have been understood as a
“base plate” under the construction above—i.e., a fixation plate to stabilize
adjacent vertebrae for fusion. Because Petitioner has not carried this burden,
we determine, based on the complete record, that Petitioner has not
demonstrated by a preponderance of the evidence that claim 1 would have
been obvious based on Michelson.
b. Dependent Claims 2–10, 13, 14, 16, and 18–20
Claims 2–10, 13, 14, 16, and 18–20 depend from claim 1. See
Ex. 1001, 9:17–49, 9:56–67, 10:11–26, 10:20–33. For the reasons discussed
above as to claim 1 in the context of this asserted ground, we determine,
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based on the complete record, that Petitioner has not demonstrated by a
preponderance of the evidence that claims 2–10, 13, 14, 16, and 18–20
would have been obvious based on Michelson. Further, we discuss below an
additional reason that Petitioner has not demonstrated by a preponderance of
the evidence that claim 20 would have been obvious based on Michelson.
Claim 20 recites, among other limitations, that the “base plate
includes a first member that sits on a top surface of the bone graft and first
and second tabs extending from the first member . . . .” (“the ‘tabs’
limitation”). Ex. 1001, 10:28–33. Addressing this limitation, Petitioner
provides the following annotated version of Figure 21 of Michelson:

Pet. 48–49. For the annotated version of Figure 21, Petitioner added (1)
yellow overlay to three interior spaces within implant 400, (2) blue vertical
lines and text with blue arrows identifying two portions of implant 400 as
“First Tab” and “Second Tab,” respectively, and (3) brown curved lines and
text with a blue arrow identifying a portion of implant 400 as “First
Member.” Id. Referring to this annotated Figure, Petitioner states that
Michelson “discloses a first member that sits on a top surface (brown) of the
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bone graft (yellow) and first and second tabs extending from the first
member along first and second side surfaces (teal) of the bone graft.”
Pet. 48.
Patent Owner argues that Petitioner has failed to show that Michelson
discloses the “tabs” limitation. See PO Resp. 61–63. Patent Owner argues
that Petitioner, when addressing this limitation, “point[s] to the sides of the
Michelson implant 400” and “thereby improperly conflate[s] a ‘tab’—i.e., a
projection, flap, or short strip attached to an object—with the side(s) of an
object.” Id. at 61–62 (citing Pet. 47–50, 64–65; Drewry Decl. ¶¶ 125–126).
According to Patent Owner, Petitioner and Mr. Sherman “effectively seek to
replace the word ‘tab’ with ‘side’” and do not “explain why these contiguous
sides of the Michelson implant 400 are ‘tabs’ under a proper understanding
of this term.” Id. at 63 (citing Drewry Decl. ¶ 127).
We are persuaded by Patent Owner’s argument. Petitioner identifies
portions of implant 400 in Michelson as the recited “tabs,” but does not
adequately explain why those portions are “tabs” under a proper
understanding of that term. Patent Owner’s asserted understanding of a
“tab”—as “a projection, flap, or short strip attached to an object” (PO Resp.
62)—(1) is consistent with the “tabs” depicted in Figure 2 of the ’234 patent
and the related description, (2) aligns with Petitioner’s proposed
construction in the Delaware Litigations (which has not been proposed by
Petitioner in this proceeding), and (3) is supported by the testimony of Mr.
Drewry. See Ex. 1001, 6:33–38 (describing lateral tabs 60 as “integrally
formed with the primary member 21 and extending outwardly from opposite
ends of the bottom surface 26 of the primary member to form, together with
the primary member, a unitary substantially U-shaped structure”); Ex. 1009
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at 4 (Petitioner proposing to construe “lateral tabs” as “projections extending
from the bottom surface of the primary member and fitting around the bone
graft”); Drewry Decl. ¶ 126.
Even if Petitioner had relied on testimony from Mr. Sherman in the
Petition’s discussion as to the scope of “tabs,” Mr. Sherman merely presents
the same statement as his opinion, without any additional explanation. See
Sherman Pet. Decl. ¶ 157; 37 C.F.R. § 42.65(a); see also Pet. 48–49 (not
citing to the Mr. Sherman’s original Declaration on this issue).
In the Reply, Petitioner seeks to shift the burden to Patent Owner to
prove that the identified structures are not “tabs,” stating that Patent Owner
“identifies no specific reason why the identified sides of the implant are not
tabs other than simply claiming that they are not.” Pet. Reply 24 (citing PO
Resp. 61–63). As an initial matter, Petitioner’s argument is improper in that
it seeks to shift the burden on this issue. See Dynamic Drinkware, 800 F.3d
at 1378–79; see also PO Sur-reply 22 (arguing that Petitioner is “incorrectly
suggesting that [Patent Owner] bears or shares Petitioner[’s] burden on this
issue”). Moreover, Petitioner is incorrect on the merits in that (as noted
above) Patent Owner provides a definition of “tabs” and persuasively argues,
with support from Mr. Drewry, why the identified structure would not be
understood as “tabs.” See PO Resp. 61–63 (citing Drewry Decl. ¶¶ 125–
127); see also PO Sur-reply 22 (arguing that Patent Owner “provided
evidence of how [one of ordinary skill in the art] would have understood the
term ‘tabs’ to be different from the sides of the Michelson implant” (citing
PO Resp. 62–63)).
Petitioner also argues that the identified “‘tabs’ on the Michelson
implant meet the descriptions of ‘tabs’ in the ’234 patent” because (1)
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“[c]laims 20 and 32 further describe the tabs as ‘extending from the first
member along first and second side surfaces of the bone graft in a direction
generally transverse to the first and second vertebral bodies’” and (2) the
“’234 patent describes tabs as ‘lateral tabs integrally formed with the
primary member and extending outwardly from opposite ends of the bottom
surface of the primary member to form, together with the primary member, a
unitary substantially U-shaped structure.’” Pet. Reply 24–25 (quoting
Ex. 1001, 6:34–38, 10:30–33, 11:35–37).
We do not view these arguments as assisting Petitioner in meeting its
burden. Even assuming that the identified structures in Michelson have
certain similarities with the relative configuration or function of the “tabs”
as described in the ’234 patent, as argued by Patent Owner, Petitioner has
still not adequately explained why the identified structures in Michelson
would have been understood as “tabs.” See PO Sur-reply 22 (“Petitioner[’s]
argument that the lateral ‘side walls’ of Michelson perform similar functions
to those performed by the recited lateral ‘tabs’ . . . is likewise unavailing.
Even if true, it fails to give meaning to the structural term ‘tabs.’”). The
testimony of Mr. Sherman on this issue again mirrors Petitioner’s Reply and
thus suffers from the same infirmity. Compare Pet. Reply 24–25, with
Sherman Reply Decl. ¶¶ 94–95.
For the reasons above, Petitioner has not persuasively shown that
Michelson discloses the “tabs” limitation. For this additional reason, we
determine that Petitioner has not demonstrated by a preponderance of the
evidence that claim 20 would have been obvious based on Michelson.
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c. Independent Claim 22
Petitioner contends that Michelson, as modified, satisfies each of the
limitations of claim 22. Pet. 50–59. To support its arguments, Petitioner
identifies certain passages in the cited references and explains the
significance of each passage with respect to the corresponding claim
limitation. Id.
For the recitations of “base plate” in claim 22, Petitioner refers to its
arguments provided for claim 1. See Pet. 51 (“With respect to the base plate,
as discussed in Section VIII.A.2, Michelson . . . discloses a base plate.”); see
also Pet. Reply 15–16 (addressing “base plate” in claims 1 and 22 together).
Patent Owner’s arguments summarized above, addressing the “base plate”
recited in claim 1, also addressed the “base plate” in claim 22. See PO
Resp. 12–39; PO Sur-reply 2–11. For the reasons discussed above (see
supra § II.C.2.a), Petitioner had the burden to demonstrate by a
preponderance of the evidence why the relied-upon structure—i.e., implant
400 in Michelson—would have been understood as a “base plate” under the
construction above—i.e., a fixation plate to stabilize adjacent vertebrae for
fusion. Because Petitioner has not carried this burden, we determine, based
on the complete record, that Petitioner has not demonstrated by a
preponderance of the evidence that claim 22 would have been obvious based
on Michelson.
d. Dependent Claims 24, 25, 28, 29, 31, and 32
Claims 24, 25, 28, 29, 31, and 32 depend from claim 22. See
Ex. 1001, 10:66–11:6, 11:15–11:24, 11:29–11:37. For the reasons discussed
above as to claim 22 in the context of this asserted ground, we determine,
based on the complete record, that Petitioner has not demonstrated by a
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preponderance of the evidence that claims 24, 25, 28, 29, 31, and 32 would
have been obvious based on Michelson. Further, we discuss below an
additional reason that Petitioner has not demonstrated by a preponderance of
the evidence that claim 32 would have been obvious based on Michelson.
For the recitations of “tabs” in claim 32, Petitioner refers to its
arguments provided for claim 1. See Pet. 65 (stating that “[t]he features of
this claim are identical to those found in claim 20”); see also Pet. Reply 24–
25 (addressing “tabs” in claims 20 and 32 together). Patent Owner’s
arguments summarized above, addressing the “tabs” limitation in claim 20,
also addressed the “tabs” limitation in claim 32. See PO Resp. 61–63; PO
Sur-reply 21–22. For the reasons discussed above (see supra § II.C.2.b),
Petitioner has not persuasively shown that Michelson discloses the “tabs”
limitation. For this additional reason, we determine that Petitioner has not
demonstrated by a preponderance of the evidence that claim 32 would have
been obvious based on Michelson.
D. Asserted Obviousness of Claims 2–8 and 16 Based on Michelson
and Fraser ’106
Petitioner asserts that claims 2–8 and 16 of the ’234 patent are
unpatentable under 35 U.S.C. § 103(a) based on Michelson and Fraser ’106.
Pet. 4, 67–82. Patent Owner provides arguments addressing this asserted
ground of unpatentability. PO Resp. 63–72; PO Sur-reply 2–22. We first
summarize aspects of Fraser ’106.
1. Fraser ’106
In this ground, Petitioner relies on Fraser ’106 in addition to
Michelson (summarized above (see supra § II.C.1)). Fraser ’106 describes
its invention as “an implantable structure for promoting fusion of adjacent
vertebral bodies.” Ex. 1007, 1:14–16.
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Figures 1 and 2 are reproduced below:

Figure 1 is a “plan view of a fusion cage,” and Figure 2 is a “view of
the anterior face of the fusion cage” of Figure 1. Ex. 1007, 1:62–65. The
depicted “cage” includes body 10, which, in turn, “includes an anterior face
12, a posterior face 14, a superior face 16, and an inferior face 18.” Id. at
2:23–27. “The cage further includes a plate 20 that is matable with the body
10.” Id. at 2:34–35. Fraser ’106 discloses that “[a]lthough the plate 20 can
be bonded firmly to the body 10 so that the plate and body cannot move with
respect to each other, they can also be mated to allow movement with
respect to each other.” Id. at 2:43–46. Figure 2 shows bone screw holes 36,
38, 40, and 42. Id. at 2:67–3:2.
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Figures 3 and 8 are reproduced below:

Figure 3 is “a side view of the fusion cage of [Figure] 1 with bone
screws” inserted and Figure 8 “depicts a portion of the spine following
placement of the fusion cage” of Figure 1. Ex. 1007, 1:66–67, 2:9–10.18
Fraser ’106 discloses:
Prior to inserting a fusion cage between vertebral bodies,
the space bounded by the body 10 and transverse elements 28
and 30 (if included) can be filled with autograft or allograft bone,
or demineralized bone matrix (DBM) to promote fusion. Over a
period of about three months the vertebral bodies fuse.
Ex. 1007, 4:38–43.
2. Analysis
Claims 2–8 and 16 depend from claim 1. See Ex. 1001, 9:17–43,
10:11–16. In the context of this asserted ground, Petitioner continues to rely
on Michelson’s implant 400 as the “base plate” recited in claim 1. See
Pet. 67–76. For the same reasons discussed above (see § II.C.2.a), we

18 As to Figure 8, Fraser ’106 explains that “portions of the vertebral
bodies are shown cut-away to illustrate the penetration of the bone screws 58
and 60 into the bodies.” Ex. 1007, 4:13–15.
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determine, based on the complete record, that Petitioner has not
demonstrated by a preponderance of the evidence that claims 2–8 and 16
would have been obvious based on Michelson and Fraser ’106.
E. Petitioner’s Motion to Exclude Evidence
Petitioner moves to exclude certain testimony in the deposition
transcript of Patent Owner’s declarant, Mr. Drewry, elicited on redirect. See
Paper 35 at 1. Specifically, Petitioner seeks to exclude page 197, line 20
through page 205, line 16 of Exhibit 1024 as improper redirect testimony
based on allegedly leading questions from Patent Owner’s counsel. See id.
at 4–15. In its opposition, Patent Owner notes that neither party relied upon
the portions of Mr. Drewry’s testimony identified by Petitioner. See
Paper 36 at 1–2.
We dismiss Petitioner’s motion as moot because in this Decision we
do not rely on the portion of Mr. Drewry’s deposition testimony identified
by Petitioner. See TPG 79–80 (“In the Board’s experience, consideration of
the objected-to evidence is often unnecessary to resolve the patentability of
the challenged claims, and the motion to exclude is moot.”).
III. CONCLUSION
Upon consideration of the Petition, Response, Reply, Sur-reply and
the evidence of record, we determine that Petitioner (1) has not proven by a
preponderance of the evidence that claims 1–10, 13, 14, 16, 18–20, 22, 24,
25, 28, 29, 31, and 32 would have been obvious based on Michelson and
(2) has not proven by a preponderance of the evidence that claims 2–8 and
16 would have been obvious based on Michelson and Fraser ’106. We
dismiss as moot Petitioner’s motion to exclude evidence.
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IV. ORDER
For the reasons above, it is:
ORDERED that Petitioner has not proven by a preponderance of the
evidence that any of claims 1–10, 13, 14, 16, 18–20, 22, 24, 25, 28, 29, 31,
and 32 of the ’234 patent are unpatentable;
FURTHER ORDERED that Petitioner’s Motion to Exclude Evidence
(Paper 35) is dismissed as moot; and
FURTHER ORDERED that, because this is a Final Written Decision,
parties to the proceeding seeking judicial review of the decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

In summary:
Claims 35 U.S.C. § Reference(s)/Basis
Claims
Shown
Unpatentable
Claims Not
Shown
Unpatentable
1–10, 13, 14,
16, 18–20,
22, 24, 25,
28, 29, 31,
32
103(a) Michelson
1–10, 13, 14,
16, 18–20, 22,
24, 25, 28, 29,
31, 32
2–8, 16 103(a) Fraser ’106, Michelson 2–8, 16
Overall
Outcome
1–10, 13, 14,
16, 18–20, 22,
24, 25, 28, 29,
31, 32

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FOR PETITIONER:

Jeffrey N. Costakos (lead counsel)
Matthew W. Peters (pro hac vice)
FOLEY & LARDNER LLP
jcostakos@foley.com
mpeters@foley.com

Dion M. Bregman
Jason C. White
Scott D. Sherwin (pro hac vice)
James J. Kritsas
MORGAN, LEWIS & BOCKIUS LLP
dion.bregman@morganlewis.com
jason.white@morganlewis.com
scott.sherwin@morganlewis.com
james.kritsas@morganlewis.com

Timothy Devlin
Stephanie Berger (pro hac vice)
DEVLIN LAW FIRM LLC
td-ptab@devlinlawfirm.com
sberger@devlinlawfirm.com

FOR PATENT OWNER:

Erik B. Milch (lead counsel)
Frank Pietrantonio
Jennifer Volk-Fortier
Joseph Van Tassel
Dustin M. Knight
COOLEY LLP
emilch@cooley.com
fpietrantonio@cooley.com
jvolkfortier@cooley.com
jvantassel@cooley.com
dknight@cooley.com