RSB Spine, LLC

Patent Trials and Appeals Board

Apr 15, 2021

IPR2020-00265 (P.T.A.B. Apr. 15, 2021)

Trials@uspto.gov Paper 47
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.
_______________

IPR2020-00265
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 35, 37, and 39 (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 2 (“Pet.”). Patent Owner filed a Preliminary
Response. Paper 14. We instituted a trial as to all challenged claims.
Paper 24 (“Decision on Institution” or “Dec. Inst.”).
During the trial, Patent Owner filed a Response (Paper 27, “PO
Resp.”), Petitioner filed a Reply (Paper 31, “Pet. Reply”), and Patent Owner
filed a Sur-reply (Paper 34, “PO Sur-reply”). Petitioner filed a motion to
exclude evidence (Paper 39; see also Paper 41 (Petitioner’s reply brief)),
which Patent Owner opposed (Paper 40).
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.
Ex. 2006 (“Drewry Decl.”). A consolidated oral argument in this

1 We refer to the “corrected” version of Exhibit 1005, filed on
December 14, 2019.
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proceeding and two related proceedings (IPR2020-00264 and IPR2020-
00274) was held on February 23, 2021, and a copy of the transcript of that
argument was entered into the record. Paper 46 (“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 5 (Patent Owner’s Mandatory Notices) at 2.2 The Delaware
Litigations also involve U.S. Patent No. 9,713,537 B2 (Ex. 1002, “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 1–10, 13, 14, 16, 18–20, 22, 24, 25, 28, 29, 31, and 32 of the ’234
patent in IPR2020-00274. Medacta USA, Inc. v. RSB Spine, LLC, IPR2020-
00274, Paper 4 (PTAB Dec. 13, 2019) (Petition) (“-00274 Pet.”). We
granted institution in that proceeding. See IPR2020-00274, Paper 22 (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. 1–2. Patent Owner
does not list this litigation (Paper 5 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 5 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. 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
discloses that, “[i]n use, the lateral tabs 60 extend around the bone graft 12
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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 Claim
Petitioner challenges claims 35, 37, and 39, of which only claim 35 is
independent. Claims 37 and 39 each depend directly from claim 35. Claim
35 is reproduced below, reformatted from the version in the ’234 patent:
35. A bone stabilization plate system including
a base plate for retaining bone graft material
between first and second longitudinally-aligned,
adjacent bone bodies and for permitting force
transmission between the first and second bone
bodies through the bone graft material, the base
plate being sized to have an inter-fit between the
first and second adjacent bone bodies and adjacent
to lateral extents of the bone graft material such that
the first and second bone bodies engage the bone
graft material, and
at least first and second bone screws for
extending into the first and second bone bodies,
respectively, to retain the base plate between the
first and second bone bodies,
the base plate having means for interacting
with the first and second bone screws, the means for
interacting including means for permitting
movement of at least one of the first and second
bone bodies relative to the base plate.
Ex. 1001, 12:10–25.
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
35, 37, 39 103(a) Michelson4
35, 37, 39 103(a) Fraser ’1065, Michelson
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 years of experience designing and developing
orthopedic implants and/or spinal interbody devices.” Pet. 13–14.6

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”).
6 In IPR2020-00274, Petitioner stated the same level of ordinary skill in
the art, except included “at least 5–10 years of experience” rather than, as
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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. 11. 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. 7 (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. 7–8 (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”
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

here, “at least 5 years of experience.” See -00274 Pet. 14–15; Pet. 13–14.
We view these proposed levels of skill as the same in scope.
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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”; (3) “means for interacting”; and (4) “means for
permitting movement.” Pet. 14–20. In the claim construction section of its
Response, Patent Owner addresses only the term “base plate.” PO Resp. 8–
13; see also id. at 8 (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”).
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
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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. 8 (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. 12–
22. The preliminary construction comprises language common to both
Petitioner’s and Patent Owner’s currently proposed constructions. See id. at
21; Pet. Reply 18 (citing Sherman Reply Decl. ¶¶ 68–73); PO Resp. 8.
Below, we address (1) the negative limitation proposed as part of
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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. 13–16. 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 18 (arguing that the Board
should “construe base plate as ‘fixation plate to stabilize adjacent vertebrae
for fusion’” (citing Sherman Reply Decl. ¶¶ 68–73)). Based on the complete
record, and for the reasons in the Decision on Institution, which we adopt
here, we do not include the negative limitation (“is not used with a load-
bearing fusion cage”) in the construction of “base plate.”
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
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intrinsic and extrinsic evidence. PO Resp. 9–12 (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 two of the three relied-upon
embodiments include a “base plate.” See infra §§ II.C.2.a, II.D.2.a.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. 9–11. 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. 10 (citing Ex. 1001,
4:16–22, 6:47–50, Figs. 1–3; Drewry Decl. ¶ 43). 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
member 696’ (i.e., a spacer) to be packed with fusion material.” Id. at 11
(citing Ex. 1002, Figs. 35–38; Drewry Decl. ¶ 43).
Petitioner responds that the ’234 patent “directly contradicts” this
proposed requirement and that the ’537 patent does not support it. Pet. 16;
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see Pet. 16–18; Pet. Reply 6–18. 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. 16–17. 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 8. 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 9–18. Petitioner notes that the additional disclosures do not refer to a
“base plate.” See id. at 11–12.
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. 10.
In fact, the term “spacer” is not used anywhere in the ’234 patent (or the
’537 patent). In cited paragraph 43 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. ¶ 43.
Even considering this exemplary disclosure in Exhibit 2022, however, we

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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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 11 (“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. 11. Mr. Drewry
presents the same statement purportedly linking “primary member” and
“base plate” but does not explain his position. See Drewry Decl. ¶ 43 (also
stating that “the embodiments depicted in Figures 35–38 show a primary

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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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 9 (arguing that “base plate” “must be
interpreted consistently in both patents”); PO Sur-reply 9 (“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. 10 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 9 (citing Sherman Reply Decl. ¶¶ 53–56). 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.”

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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Here, dependent claims 37 and 38 in the ’234 patent expressly recite
“lateral tabs” as part of the “base plate”13 (see Ex. 1001, 12:32–41), 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 9); 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.14 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. 9 (citing Drewry Decl. ¶¶ 40–
42). According to Patent Owner, “[a] spacer is configured to maintain disc
space across the bone graft site and bear 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

13 Dependent claims 20, 21, 32, and 33 more generally recite “tabs” as
part of the “base plate.” See Ex. 1001, 10:28–36, 11:33–40.
14 Patent Owner relies upon various dictionary definitions of the term
“plate” (see, e.g., PO Resp. 19 (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.D.2.a.1.
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fixation plates that are used to stabilize adjacent bones for fusion, which may
or may not be inserted between vertebral bones.” Id. at 9–10 (citing Drewry
Decl. ¶ 40).
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. ¶ 40), 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 41 and 42 from Mr. Drewry’s Declaration (relying
on Exhibit 202315), 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. 9 (“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.] ¶¶40-42.”); 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

15 Exhibit 2023 is an excerpt from the November/December 2007 issue
of “SpineLine” from the North American Spine Society.
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coding guidelines from the North American Spine Society adequately
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. 8. For the
reasons explained in the Decision on Institution, we did not include that
requirement in the preliminary construction. See Dec. Inst. 17–19. 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 18.
Patent Owner continues to propose this requirement. See PO Resp. 8.
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 9–12 (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. 18 (stating that
“neither Petitioner nor Patent Owner provides argument or identifies
evidence to support” this asserted requirement). Moreover, Patent Owner
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does not present any arguments that rely on the presence of this proposed
requirement in the construction of “base plate.” See PO Resp. 14–77; PO
Sur-reply 2–28; Dec. Inst. 19 n.11. 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. 8.
For the reasons explained in the Decision on Institution, we did not include
that requirement in the preliminary construction. See Dec. Inst. 19–21.
Patent Owner does not adequately present argument or evidence in
support of this alleged requirement. See PO Resp. 9–12 (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. 14–77; PO Sur-reply 2–28; 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 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
the construction of “base plate” as a “fixation plate to stabilize adjacent
vertebrae for fusion.”
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C. Asserted Obviousness of Claims 35, 37, and 39 Based on
Michelson
Petitioner asserts that claims 35, 37, and 39 of the ’234 patent are
unpatentable under 35 U.S.C. § 103(a) based on Michelson. Pet. 4, 21–60;
Pet. Reply 20–22. Patent Owner provides arguments addressing this
asserted ground of unpatentability. PO Resp. 14–41; PO Sur-reply 2–12.
We 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 2.16 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.

16 Both Petitioner and Patent Owner refer to Michelson using the
internal pagination 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; see also Pet. 22
(stating that “[t]his ground relies on Michelson[’s] fourth embodiment,
namely implant 400”). Figure 25 is “a trailing end view of the implant of
Figure 24 with screws and screw locks in place.” Ex. 1006 at 7. 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 35
Petitioner contends that Michelson, as modified, satisfies each of the
limitations of claim 35. Pet. 25–42. 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 35, for a “base plate.” Ex. 1001, 12:10–11. This issue
is dispositive as to claim 35.
Petitioner asserts that Michelson discloses a “base plate.” Pet. 26–28;
Pet. Reply 20–21. Patent Owner disagrees. PO Resp. 14–38; PO Sur-reply
2–11. Addressing this limitation, Petitioner provides the following side-by-
side comparison of annotated versions of Figure 4 of the ’234 patent and
Figure 25 of Michelson:

Pet. 27. For the annotated version of Figure 4 of the ’234 patent, Petitioner
added orange overlay to base plate 20, and for the annotated version of
Figure 25 of Michelson, Petitioner added orange overlay to implant 400—
i.e., all the depicted structure, except bone screws 442 and threaded lock
members 462. Id. Petitioner states that, “like the ’234 patent, Michelson . . .
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discloses a fixation plate 404 to stabilize adjacent vertebrae for fusion.” Id.
at 26–27.17 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. 25–29.
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. 19. 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. (citing Drewry Decl. ¶ 55). 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.
(citing Drewry Decl. ¶¶ 59–60; 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

17 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,” as overlaid
in orange in the annotated version of Figure 25 of Michelson shown above.
See Dec. Inst. 26 n.14. Petitioner did not address this issue at trial.
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facing (relative to the plate itself)” (id. at 20 (citing Drewry Decl. ¶ 62)).
Patent Owner then provides the following depiction of an exemplary “plate”:

PO Resp. 21. 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. 22 (citing Drewry Decl. ¶ 66; 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 33 (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)),
34 (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. 17. 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. 17. 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. 23–25. Although the “lateral 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, 12:10–25
(independent claim 35, reciting a “base plate” but not requiring “lateral
tabs”), with id. at 12:32–37 (dependent claim 37, adding that “the base plate
includes two lateral 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. 22 (citing Drewry Decl. ¶ 66; 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.
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
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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. 34. 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. 37. In the only statement in the Petition
that addresses the requirements in the construction of “base plate” provided
above, Petitioner states that, “like the ’234 patent, Michelson . . . discloses a
fixation plate 404 to stabilize adjacent vertebrae for fusion.” Pet. 26–27.18

18 As mentioned above (note 17), Petitioner identifies implant 400—not
element 404—as the “base plate.”
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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. ¶ 82;
37 C.F.R. § 42.65(a). In the Reply, Petitioner contends that Patent Owner’s
“arguments for patentability over Michelson require accepting its base plate
positions” and then simply states that under the construction above (agreed
to by Petitioner) “Michelson renders the claims obvious as explained in the
Petition.” Pet. Reply 20 (citing PO Resp. 8–37; Pet. 26–28; Sherman Reply
Decl. ¶ 78). In the relevant testimony, Mr. Sherman merely presents the
same statements without any additional explanation. See Sherman Reply
Decl. ¶ 81.
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
Reply 20 (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
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understood implant 400 in Michelson as a “base plate.” See PO Resp. 37
(“In their Petition, Petitioners simply identify the Michelson implant 400 as
the ‘base plate’ (see Pet. at 26–28), and they do not explain why this
structure purportedly is a ‘plate,’ under a proper understanding of this term.”
(citing Drewry Decl. ¶ 84)); 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”), 2 (“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. 19–38)).
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 18, 20; 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
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 5–6 (“In the[] Petition, and now again in the[] Reply,
Petitioner[] simply identif[ies] the Michelson implant 400 as the ‘base plate,’
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and fail[s] to explain why this device purportedly is a ‘fixation plate’ under a
proper understanding of this term.” (citing Pet. 26–28; Pet. Reply 20)).
We turn now to one additional statement by Petitioner. In the Reply,
after stating that Patent Owner’s “arguments for patentability over
Michelson require accepting its base plate positions,” Petitioner asserts that
“a base plate is not limited to a specific shape and can include a spacer.”
Pet. Reply 20 (emphasis added). Even if we had agreed with Petitioner that
“an integrated spacer is within the scope of [the] construction of a base
plate” (id. at 9; 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 35 would have been obvious based on Michelson.
b. Dependent Claims 37 and 39
Claims 37 and 39 depend directly from claim 35. See Ex. 1001,
12:32–37, 12:42–57. For the reasons discussed above as to claim 35 in the
context of this asserted ground, we determine, based on the complete record,
that Petitioner has not demonstrated by a preponderance of the evidence that
claims 37 and 39 would have been obvious based on Michelson. Further, we
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discuss below an additional reason that Petitioner has not demonstrated by a
preponderance of the evidence that claim 37 would have been obvious based
on Michelson.
Claim 37 recites, among other limitations, that the “base plate
includes two lateral tabs” (“the ‘lateral tabs’ limitation”). Ex. 1001, 12:32–
37. Addressing this limitation, Petitioner provides the following annotated
version of Figure 21 of Michelson:

Pet. 43. For the annotated version of Figure 21, Petitioner added (1) orange
overlay to implant 400, (2) yellow overlay to three interior spaces within
implant 400, and (3) text with red arrows identifying two portions of implant
400 as “Lateral Tab[s].” Id. Referring to this annotated Figure, Petitioner
states that Michelson “discloses two lateral tabs in [F]igure 21 (a top cross-
sectional []view).” Id. In the Decision on Institution, we agreed with Patent
Owner that Petitioner had not made a sufficient showing, at that stage of the
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proceeding, that Michelson discloses the “lateral tabs” limitation. See Dec.
Inst. 30–33.
Patent Owner argues that Petitioner has failed to show that Michelson
discloses the “lateral tabs” limitation. See PO Resp. 38–41. Patent Owner
begins by stating that “[t]he embodiment of the base plate depicted in Figure
2 of the ’234 patent illustrates an example of a base plate having such lateral
tabs, designated as element 60 in the specification” and by providing the
following annotated version of Figure 2. Id. at 39.

PO Resp. 39. In the annotated version of Figure 2, Patent Owner added
yellow highlight to reference numeral 60. Id. Patent Owner argues that
Petitioner, when addressing this limitation, “point[s] to the lateral sides of
the implant” and “thus improperly seek[s] to conflate a ‘tab’—i.e., a
projection, flap, or short strip attached to an object—with the side(s) of an
object.” Id. at 39–40 (citing Drewry Decl. ¶¶ 86–89). Patent Owner also
contends that Petitioner’s position “is contrary to the understood meanings
of these terms and to how these two terms (‘tabs’ versus ‘side’) are used in
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the ’234 patent to describe two different types of structures.” Id. at 40
(citing Ex. 1001, 4:24–28 (describing side wall 32), 6:33–38 (describing
lateral tabs 60)). 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 41 (citing Drewry Decl. ¶ 90).
We are persuaded by Patent Owner’s argument. Petitioner identifies
portions of implant 400 in Michelson as the recited “two lateral 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.
40)—(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
at 4 & Ex. 1017 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. ¶ 89.
Even if Petitioner had relied on testimony from Mr. Sherman in the
Petition’s discussion as to the scope of “lateral tabs,” Mr. Sherman simply
rephrases Petitioner’s assertion as comporting with the understanding of one
of ordinary skill in the art. Compare Sherman Pet. Decl. ¶ 124 (“A [person
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of ordinary skill in the art] would understand that Michelson . . . figure 21,
below, discloses two lateral tabs.”), with Pet. 43 (stating that Michelson
“discloses two lateral tabs in figure 21”); see also Pet. 42–44 (not citing to
the Mr. Sherman’s original Declaration on this issue). Lacking adequate
explanation or support, Mr. Sherman’s testimony on this issue is entitled to
little or no weight. See 37 C.F.R. § 42.65(a).
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 reason why Michelson’s identified sides of the implant are not
tabs other than simply asserting that they are not.” Pet. Reply 21 (citing PO
Resp. 71–73). 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 12 (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. 38–41 (citing Drewry Decl. ¶¶ 86–90);
see also PO Sur-reply 12 (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.
40–41)).
Petitioner also argues that the identified “lateral sides of the
Michelson implant meet the descriptions of ‘a lateral tab’” in the ’234 patent
because (1) “[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
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direction generally transverse to the first and second vertebral bodies’” and
(2) the ’234 patent “describes the tabs as ‘extend[ing] around the bone graft
12 to prevent lateral shift of the graft and control subsidence of adjacent
vertebrae as they set during healing.’” Pet. Reply 21 (quoting Ex. 1001,
10:67–11:3).
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 12 (“Petitioner[’s]
argument that the lateral sides 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 21–22, with Sherman
Reply Decl. ¶¶ 82–83.
For the reasons above, Petitioner has not persuasively shown that
Michelson discloses the “lateral tabs” limitation. For this additional reason,
we determine that Petitioner has not demonstrated by a preponderance of the
evidence that claim 37 would have been obvious based on Michelson.
D. Asserted Obviousness of Claims 35, 37, and 39 Based on Fraser
’106 and Michelson
Petitioner asserts that claims 35, 37, and 39 of the ’234 patent are
unpatentable under 35 U.S.C. § 103(a) based on Fraser ’106 and Michelson.
Pet. 4, 60–90; Pet. Reply 22–37. Patent Owner provides arguments
addressing this asserted ground of unpatentability. PO Resp. 42–77; PO
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Sur-reply 13–28. We summarize aspects of Fraser ’106 and then address the
arguments.
1. Fraser ’106
In this ground, Petitioner relies on Fraser ’106 in addition to
Michelson (summarized above (see § II.C.1)). Fraser ’106 describes its
invention as “an implantable structure for promoting fusion of adjacent
vertebral bodies.” Ex. 1007, 1:14–16.
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
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respect to each other.” Id. at 2:43–46.19 Figure 2 shows bone screw holes
36, 38, 40, and 42. Id. at 2:67–3:2.
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, 2:9–10.20

19 We refer to the embodiment in which plate 20 is “bonded firmly” to
body 10 as the “one-piece embodiment,” as does Petitioner. See, e.g.,
Pet. 65; cf. PO Resp. 43 (referring to this as the “single-piece implant
embodiment”). We refer to the embodiment in which plate 20 and body 10
are “mated to allow movement with respect to each other” as the “two-piece
embodiment,” as does Petitioner. See, e.g., Pet. 64–65; cf. PO Resp. 64
(referring to this as the “two-piece implant embodiment”).
20 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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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
a. Independent Claim 35
Petitioner contends that the proposed combination of Fraser ’106 and
Michelson satisfies each limitation. Pet. 60–77. Specifically, Petitioner
presents arguments applying the one-piece embodiment of Fraser ’106 in
combination with Michelson and, in the alternative, the two-piece
embodiment in combination with Michelson.21 See id. 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 as to (1)
whether the one-piece embodiment in Fraser ’106 satisfies the requirement
for a “base plate” (Ex. 1001, 12:10–11) and (2) whether the two-piece

21 As noted in the Decision on Institution (at page 44), Petitioner appears
to only rely on the two-piece embodiment of Fraser ’106 in the alternative
and to the extent we construe “base plate” to include the “distinct from a
spacer” requirement proposed by Patent Owner. See Pet. 63–64 (“Therefore,
for the sake of completeness in this petition, and to the extent that the Patent
Owner argues and the Board agrees that the claims require both a base
plate and a separate spacer (i.e., a two-piece implant), this ground also
explains how Fraser ’106 discloses a two-piece implant.” (emphasis added)).
Although we do not adopt the “distinct from a spacer” requirement, to fully
address any potential argument by Petitioner, we address the proposed
combination of the two-piece embodiment of Fraser ’106 and Michelson.
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embodiment in Fraser ’106 satisfies the requirement that the “base plate” is
“adjacent to lateral extents of the bone graft material such that the first and
second bone bodies engage the bone graft material” (id. at 12:14–18) (“the
‘adjacent to lateral extents’ limitation”).
(1) “Base Plate”
In the context of the relied-upon combination of Fraser 106’s one-
piece embodiment and Michelson, Petitioner asserts that the one-piece
embodiment in Fraser ’106 discloses a “base plate.” Pet. 61–63; Pet. Reply
22. Patent Owner disagrees. PO Resp. 43–55; PO Sur-reply 13–15.
Addressing this limitation, Petitioner provides the following side-by-side
comparison of annotated versions of Figure 3 of the ’234 patent and Figure 8
of Fraser ’106:

Pet. 62. For the annotated version of Figure 3 of the ’234 patent, Petitioner
added (1) tan overlay to vertebral bodies 14 and 16, (2) orange overlay to
base plate 20, (3) green overlay to bone screw 24, and (4) purple overlay to
bone screw 25. Id. For the annotated version of Figure 8 of Fraser ’106,
Petitioner added (1) tan overlay to the vertebral bodies, (2) orange overlay to
body 10/plate 20 together, (3) green overlay to bone screw 60, and (4) purple
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overlay to bone screw 58. Id. Referring to these annotated Figures,
Petitioner states:
[L]ike the ’234 patent, Fraser ’106 discloses a fixation plate 66
to stabilize adjacent vertebrae for fusion. Fraser ’106 explains
that “[t]he plate is configured to receive, retain and orient bone
screws, thereby holding the fusion cage and adjacent vertebral
bodies in a stable relationship to promote fusion.” Ex.1007,
1:36–42; see Ex.1005, ¶171 (describing how the plate stabilizes
the bones for fusion).
Pet. 61.22 Petitioner also provides this annotated version of Figure 1 of
Fraser ’106:

Pet. 62. For the annotated version of Figure 1 of Fraser ’106, Petitioner
added (1) orange overlay to body 10/plate 20 together and (2) yellow
overlay to areas identified as “Bone Graft.” Id. Petitioner identifies the
orange structure in this annotated figure—i.e., body 10/plate 20 together—as

22 As noted in the Decision on Institution, we view Petitioner’s use of
reference numeral 66 in this statement as a typographical error, and we
understand Petitioner to identify body 10/plate 20 together as the “base
plate” (as overlaid in orange in the annotated versions of Figures 1 and 8 of
Fraser ’106 above). See Dec. Inst. 38 n.21. Petitioner did not address this
issue at trial.
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the “base plate” in the context of reliance on Fraser ’106’s one-piece
embodiment. Pet. 63. 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 the one-piece embodiment of Fraser discloses a “base plate.” See Dec.
Inst. 37–42.
In the Response, Patent Owner argues that, “[d]ue to its similarities in
shape and form to the Michelson implant 400, the single-piece implant
embodiment of Fraser ’106 is not a ‘base plate’ because it is not a fixation
plate” for many of the same reasons discussed above in context of the prior
asserted ground. PO Resp. 45 (citing id. at 19–38); see supra § II.C.2.a.
Again, although we do not adopt Patent Owner’s shape- and function-based
definitions as to “base plate,” we are persuaded by 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 body 10/plate 20 of Fraser ’106 together as a “base
plate”—i.e., a fixation plate to stabilize adjacent vertebrae for fusion. See
PO Resp. 54.
In the only statements in the Petition that address the requirements
currently in the construction of “base plate,” Petitioner first states that, “like
the ’234 patent, Fraser ’106 discloses a fixation plate 66 to stabilize adjacent
vertebrae for fusion.” Pet. 61.23 Although this statement does not rely on

23 As mentioned above (note 23), Petitioner identifies body 10/plate
20—not element 66—as the “base plate” when relying on the one-piece
embodiment in Fraser ’106.
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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. ¶ 171 (stating that “like the ’234
patent, Fraser ’106 discloses a fixation plate 66 to stabilize adjacent
vertebrae for fusion”); 37 C.F.R. § 42.65(a). Petitioner also quotes a
disclosure from the Summary of the Invention in Fraser ’106 that “[t]he
plate is configured to receive, retain and orient bone screws, thereby holding
the fusion cage and adjacent vertebral bodies in a stable relationship to
promote fusion.” Ex. 1007, 1:36–42, quoted at Pet. 61 (citing Sherman Pet.
Decl. ¶ 171)). As clarified at the oral argument, however, this passage
relates to just the “plate” as that term is used in Fraser ’106, not to body
10/plate 20 together—i.e., the “base plate” identified by Patent Owner. See
Tr. 43:14–26.
In the Reply, Petitioner contends that Patent Owner’s “arguments for
patentability over Fraser [’106] in view of Michelson require accepting its
base plate positions” and then simply states that under the construction
above (agreed to by Petitioner) “Fraser [’106] in view of Michelson renders
the claims obvious as explained in the Petition.” Pet. Reply 22 (citing PO
Resp. 9–12, 42–45, 65–73; Pet. 61–65; Sherman Reply Decl. ¶ 84). In the
cited declaration testimony, Mr. Sherman presents the same statement as his
opinion, without any additional explanation. See Sherman Reply Decl. ¶ 84.
As an initial matter, it is not Patent Owner’s ultimate burden to
demonstrate patentability of the challenged claims. See Dynamic
Drinkware, 800 F.3d at 1378–79; In re Magnum Oil, 829 F.3d at 1376; Pet.
Reply 22 (discussing Patent Owner’s “arguments for patentability over
Fraser [’106] in view of Michelson”).
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Further, although (as discussed in the context of the prior asserted
ground), 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 body 10/plate 20 in Fraser
’106 together as a “base plate.” See PO Resp. 54 (“In their Petition,
Petitioners simply identify the entire Fraser ’106 [one-piece] embodiment
(i.e., fusion cage body 10 combined with plate 20) as the claimed ‘base
plate’ (see Pet. at 24–27), and they do not explain why this combined
structure—as opposed to plate 20 alone—purportedly is a ‘plate,’ under a
proper understanding of this term.” (citing Drewry Decl. ¶ 114)); see also
PO Sur-reply 1 (arguing that, in the Reply, Petitioner “ignore[s] that they
failed to show that the . . . Fraser ’106 [one-piece] embodiment is a plate and
thus fail to show that it is a ‘base plate’ under the Board’s preliminary
construction”), 13 (“As detailed in the [Response], [one of ordinary skill in
the art] would not have considered the Fraser [one-piece] embodiment to be
a ‘base plate’ or ‘fixation plate’ because it is not a plate.” (citing PO Resp.
45–55)).
Petitioner bears the burden in this proceeding to explain why body
10/plate 20 together24 would have been considered a “base plate” under the
construction above, which Petitioner has adopted. See Pet. Reply 18, 22.
Having considered the argument and evidence presented by Petitioner on

24 See PO Resp. 49 (“The fact that [one of ordinary skill in the art]
would not have viewed the Fraser [one-piece] embodiment as a plate is
further demonstrated by the terminology used in Fraser ’106 itself. While
Fraser ’106 uses the term ‘plate’ to describe a particular component, it does
not use this term to describe the implant as a whole.”); Tr. 64:21–65:17.
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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 15 (“In the[] Petition, and now again
in the[] Reply, Petitioner[] simply identif[ies] the [one-piece] embodiment as
a ‘base plate,’ and [Petitioner] fail[s] to explain why this combined
assembly—as opposed to plate 20 alone—purportedly is a ‘fixation plate’
under a proper understanding of this term.” (citing Pet. 61–63; Pet. Reply
22)).
We turn now to one additional statement by Petitioner. In the Reply,
after stating that Patent Owner’s “arguments for patentability over Fraser in
view of Michelson require accepting its base plate positions,” Petitioner
asserts that “a base plate is not limited to a specific shape and can include a
spacer.” Pet. Reply 22 (emphasis added). Even if we had agreed with
Petitioner that “an integrated spacer is within the scope of [the] construction
of a base plate” (id. at 9; 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. Instead, as
discussed above, Petitioner had the burden to demonstrate by a
preponderance of the evidence why the relied-upon structure—i.e., body
10/plate 20 together in the one-piece embodiment in Fraser ’106—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 35 would have been obvious based on Fraser ’106 and Michelson.
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(2) The “Adjacent to Lateral Extents” Limitation
In the context of the alternative proposed combination of Fraser
’106’s two-piece embodiment and Michelson, Petitioner asserts that the
“base plate” in the two-piece embodiment in Fraser ’106 satisfies the
“adjacent to lateral extents” limitation. Pet. 71–73; Pet. Reply 34–36.
Patent Owner disagrees. PO Resp. 73–76; PO Sur-reply 25–27.
In the context of the alternative proposed combination of Fraser
’106’s two-piece embodiment and Michelson, Petitioner relies solely on
plate 20 in Fraser ’106 as the recited “base plate.” See Pet. 64–65. For the
“adjacent to lateral extents” limitation, Petitioner presents arguments as to
the combination of Fraser ’106’s one-piece embodiment and Michelson and
then relies on those same arguments as to the alternative proposed
combination of Fraser ’106’s two-piece embodiment and Michelson. See
Pet. 73 (“For the same reasons discussed above with respect to the single-
piece embodiment, Fraser ’106 teaches the remaining claim elements with
respect to the two-piece embodiment.”).
Addressing the “adjacent to lateral extents” limitation in the context of
the combination of Fraser ’106’s one-piece embodiment and Michelson,
Petitioner states that “Fraser ’106 teaches that bone graft can be filled with
fusion promoting substances.” Pet. 71. Petitioner highlights Fraser ’106’s
disclosure that “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.” Ex. 1007, 4:37–42,
quoted at Pet. 71–72 (citing Sherman Pet. Decl. ¶ 197). According to
Petitioner, one of ordinary skill in the art “would understand that when the
Fraser ’106 implant engages the surfaces of the vertebrae, the first and
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second bone bodies would be in direct contact with the bone graft material”
and thus would also “understand that Fraser ’106 discloses that the first and
second bone bodies engage the bone graft material.” Pet. 72 (citing
Sherman Pet. Decl. ¶ 197). In the Decision on Institution, we did not
substantively address this limitation in the context of the alternative
proposed combination of Fraser ’106’s two-piece embodiment and
Michelson. See Dec. Inst. 43–44.
In the Response, Patent Owner presents two arguments as to why
Petitioner has failed to show that Fraser ’106’s two-piece embodiment
satisfies the requirement that the “base plate” is “adjacent to lateral extents
of the bone graft material.” See PO Resp. 73–76. First, Patent Owner
argues that Petitioner “do[es] not provide a specific argument showing how
the identified ‘base plate’ in the two-piece implant embodiment—i.e., Fraser
’106’s plate 20—satisfies this limitation” and argues that Petitioner’s
reliance on the statements as to the one-piece embodiment in Fraser ’106 to
address the two-piece embodiment (Pet. 73) is merely an “unsupported,
conclusory assertion.” PO Resp. 73.
We agree with this argument. “In an IPR, the petitioner has the
burden from the onset to show with particularity why the patent it challenges
is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363
(Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3)); see also Intelligent Bio-
Systems, Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir.
2016) (“It is of the utmost importance that petitioners in the IPR proceedings
adhere to the requirement that the initial petition identify ‘with particularity’
the ‘evidence that supports the grounds for the challenge to each claim.’”
(quoting 35 U.S.C. § 312(a)(3))). Given the differences in the structure
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identified as the “base plate” in the context of the two relied-upon
embodiments of Fraser ’106—body 10/plate 20 together for the one-piece
embodiment (Pet. 62 (orange structure)) versus plate 20 alone for the two-
piece embodiment (Pet. 65 (orange structure))—we are persuaded of the
inadequacy of the Petition’s discussion of the one-piece embodiment in
Fraser ’106 to address the two-piece embodiment as to the “adjacent to
lateral extents” limitation. See Pet. 73. Notably, in the Reply, Petitioner
devotes over two pages to addressing this issue, which stands in contrast to
the brief discussion in the Petition. See Pet. Reply 34–36.
Second, turning to the merits, Patent Owner argues that the two-piece
embodiment in Fraser ’106 does not satisfy the requirement that the “base
plate” is “adjacent to lateral extents of the bone graft material” when
applying Petitioner’s implied construction of that phrase. See PO Resp. 73–
76. Specifically, Patent Owner provides the annotated version of Figure 1 of
Fraser ’106 below and states that Petitioner “effectively contend[s] that the
‘base plate’ in the [one-]piece embodiment is ‘adjacent to lateral extents of
the bone graft material’ because the lateral extents of the bone graft material
are next to, contained within, and/or bounded by the alleged ‘base plate,’
fusion cage body 10 combined with plate 20.” Id. at 74 (emphasis added)
(citing Drewry Decl. ¶ 139).
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PO Resp. 74. For the annotated version of Figure 1 of Fraser ’106, Patent
Owner maintained the (1) orange overlay on body 10 and plate 20 and (2)
yellow overlay on areas identified as “Bone Graft” previously added by
Petitioner (see Pet. 62) and added (1) two vertical green dotted lines and an
arrow identifying the “Lateral extents of the bone graft material” and (2)
green text and an arrow identifying “Fusion case body 10.” PO Resp. 74.
Patent Owner then provides an additional annotated version of Figure 1 of
Fraser ’106 and states that, for the two-piece embodiment—in which the
identified “base plate” is only plate 20 (in orange below)—“Petitioner[]
ha[s] failed to show that the base plate . . . is ‘adjacent to lateral extents of
the bone graft material.’” Id. at 74–75 (citing Drewry Decl. ¶ 140).
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PO Resp. 75. For this annotated version of Figure 1 of Fraser ’106, Patent
Owner maintained the orange overlay on plate 20 previously added by
Petitioner (see Pet. 65) and added (1) two vertical green dotted lines and an
arrow identifying the “Lateral extents of the bone graft material” and (2)
green text and arrows identifying “Fusion case body 10” and “‘base plate’
(plate 20).” Id. According to Patent Owner, the identified “base plate”—
plate 20—“is not next to, does not form the boundary of, intersect with, or
extent beyond the lateral extents of the bone graft material.” Id. (citing
Drewry Decl. ¶ 140).
In the Reply, Petitioner presents two arguments. See Pet. Reply 34–
36. First, Petitioner asserts that “adjacent” in the claim language at issue
means “nearby” and that the identified “base plate”—plate 20 alone—“is
nearby the lateral extents of the bone graft.” Id. at 35 (citing Sherman Reply
Decl. ¶¶ 122–124). Second, Petitioner provides the following annotated
versions of Figures 1 and 2 from Fraser ’106, asserting that, in these Figures
(provided in the Petition), Petitioner “identified the direct contact region
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between the bone graft material (yellow) and the base plate (orange) in
depression 34.” Id. (citing Pet. 68, 70–73).

Pet. Reply 36. For the annotated version of Figure 1, Petitioner added (1)
orange overlay to plate 20 and (2) yellow overlay to three interior spaces
within body 10. Id. For the annotated version of Figure 2, Petitioner added
(1) orange overlay to plate 20 and (2) yellow overlay to hole 44. Id.
According to Petitioner, “[t]enon 24 is ‘next’ to the bone graft material, and
by ‘intersecting’ with it, the tenon forms the anterior ‘boundary’ of the bone
graft material.” Id.
We are not persuaded by either of Petitioner’s arguments. As to the
first, even assuming that “adjacent” means “nearby,” the record does not
support Petitioner’s assertion that plate 20 is “nearby” the “lateral extents of
the bone graft material”—i.e., the two vertical dotted lines in the annotated
figures above (the location of which Petitioner does not contest)—under any
reasonable understanding of “nearby.” See, e.g., Pet. Reply 34 (reproducing
the annotated figure from PO Resp. 75); PO Sur-reply 27 (“It appears from
Petitioner[’s] contentions that any base plate or spinal fixation device would
be ‘nearby’ the lateral extents of the bone graft materials under Petitioner[’s]
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expansive use of this term, thereby improperly rendering this limitation
superfluous and meaningless.”). Instead, we agree with Patent Owner that
“nearby” is a “relative term[]” and that, if anything, “plate 20 is next to and
nearby the anterior and medial extents—not the lateral extents—of the bone
graft material” as required by the claim language. PO Sur-reply 26; see also
PO Resp. 75 (showing annotated Figure 1 of Fraser ’106). The testimony of
Mr. Sherman on this issue largely mirrors Petitioner’s Reply and does not
adequately support why plate 20 would be considered “nearby” the
identified “lateral extents of the bone graft material.” Compare Pet. Reply
34–35, with Sherman Reply Decl. ¶¶ 122–124; see also Sherman Reply
Decl. ¶ 124 (“As shown in PO’s figure, above, Fraser’s plate 20 is nearby
the lateral extents of the bone graft.”).
We are also not persuaded by Petitioner’s second argument, which
essentially reads out “lateral extents of” from the claim language at issue.
See PO Sur-reply 26 (arguing that “Fraser’s plate 20 is next to and nearby
the anterior and medial extents—not the lateral extents—of the bone graft
material”). The testimony of Mr. Sherman on this issue again mirrors
Petitioner’s Reply and thus suffers the same infirmity. Compare Pet. Reply
35–36, with Sherman Reply Decl. ¶¶ 125–128. For the reasons above,
Petitioner has not persuasively shown that the two-piece embodiment in
Fraser ’106 satisfies the “adjacent to lateral extents” limitation.
(3) Conclusion
For the reasons above, Petitioner has not persuasively shown that
either of the two proposed combinations in the context of this asserted
ground—the combination of Fraser ’106’s one-piece embodiment and
Michelson as well as the combination of Fraser ’106’s two-piece
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embodiment and Michelson—satisfy each limitation of claim 35. Thus, we
determine, based on the complete record, that Petitioner has not
demonstrated by a preponderance of the evidence that claim 35 would have
been obvious based on the combination of Fraser ’106 and Michelson.
b. Dependent Claims 37 and 39
Claims 37 and 39 depend directly from claim 35. See Ex. 1001,
12:32–37, 12:42–57. For the reasons discussed above as to claim 35 in the
context of this asserted ground, we determine, based on the complete record,
that Petitioner has not demonstrated by a preponderance of the evidence that
claims 37 and 39 would have been obvious based on Fraser ’106 and
Michelson. Further, we discuss below an additional reason that Petitioner
has not demonstrated by a preponderance of the evidence that claim 37
would have been obvious based on Fraser ’106 and Michelson.
Addressing the “lateral tabs” limitation in claim 37, Petitioner
provides the following annotated version of Figure 1 of Fraser ’106:

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Pet. 78–79. For the annotated version of Figure 1, Petitioner added (1)
orange overlay to body 10/plate 20 together, (2) curved green lines to
portions of the three interior spaces within body 10, and (3) text with red
arrows identifying two portions of body 10 as “Lateral Tab[s].” Id.
Referring to this annotated Figure, Petitioner states that “Fraser ’106
discloses two lateral tabs that extend from opposite ends of the bottom
surface (green) of the base plate.” Id. at 78. In the Decision on Institution,
we agreed with Patent Owner that Petitioner had not made a sufficient
showing, at that stage of the proceeding, that Fraser ’106 discloses the
“lateral tabs” limitation. See Dec. Inst. 50–53.
Patent Owner argues that Petitioner has failed to show that either of
the two relied-upon embodiments in Fraser ’106 discloses the “lateral tabs”
limitation. See PO Resp. 61–63 (discussing the one-piece embodiment), 76–
77 (discussing the two-piece embodiment). As to the one-piece
embodiment, Patent Owner argues that (as with claim 37 in the context of
the prior asserted ground) Petitioner again “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 62 (citing Drewry Decl. ¶ 124). According to Patent
Owner, “[t]he structures on fusion cage body 10 identified by Petitioner[] as
‘lateral tabs’ in Fraser ’106 Figure 1 are not ‘tabs’ or ‘projections’ but rather
are sides that connect the front portion of the body 10 to the rear portion of
the body in a contiguous manner.” Id. (citing Drewry Decl. ¶ 124).
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 [one-]piece implant embodiment of Fraser ’106 are ‘tabs’ under
a proper understanding of this term.” Id. at 63 (citing Drewry Decl. ¶ 125).
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As to the two-piece embodiment of Fraser ’106, Patent Owner asserts
that “Petitioner[] do[es] not even argue that the base plate in this
embodiment (i.e., plate 20 alone) has two lateral tabs that are spaced apart
from each other to provide an open space for location of the bone graft
material therein.” PO Resp. 76 (citing Pet. 77–80). According to Patent
Owner, “Fraser ’106’s plate 20 clearly does not have these structures.” Id.
(citing Pet. 65; Drewry Decl. ¶¶ 143–144).
We agree with Patent Owner. As to the one-piece embodiment in
Fraser ’106, similar to the situation in the context of the prior ground,
Petitioner identifies portions of body 10 in Fraser ’106 as the “two lateral
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; Ex. 1009 at 4; Ex. 1017 at 4; Drewry Decl.
¶ 124.
Even if Petitioner had relied on testimony from Mr. Sherman in the
Petition’s discussion as to the scope of “lateral tabs,” Mr. Sherman simply
rephrases Petitioner’s assertion as comporting with the understanding of one
of ordinary skill in the art. Compare Sherman Pet. Decl. ¶¶ 214–215, with
Pet. 78–79; see also Pet. 78–79 (not citing to the Mr. Sherman’s original
Declaration on this issue). Lacking adequate explanation or support, Mr.
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Sherman’s testimony on this issue is entitled to little or no weight. See
37 C.F.R. § 42.65(a).
In the Reply, Petitioner merely references its arguments as to the
“lateral tabs” limitation in the context of the prior asserted ground. See Pet.
Reply 26–27 (discussing Sherman Reply Decl. ¶¶ 96–97). Patent Owner
does the same. See PO Sur-reply 18–19 (discussing PO Resp. 61–63;
Drewry Decl. ¶¶ 124–125). For reasons similar to those discussed above
(see § II.C.2.b), we are not persuaded by Petitioner’s arguments as to the
one-piece embodiment of Fraser ’106, as Petitioner improperly seeks to shift
the burden to Patent Owner and has not met its burden on the issue. The
testimony of Mr. Sherman on this issue mirrors his prior testimony as to the
prior asserted ground and suffers from the same infirmities discussed above.
Compare Sherman Reply Decl. ¶¶ 96–96, with id. ¶¶ 82–83.
Turning to the two-piece embodiment in Fraser ’106, we agree with
Patent Owner that Petitioner does not present arguments in the Petition that
plate 20 alone satisfies the “lateral tabs” limitation. See PO Resp. 76. In the
relevant part of the Petition, Petitioner makes no reference to any portion of
plate 20 alone—i.e., the “base plate” identified in the context of the two-
piece embodiment. See Pet. 77–79. Instead, Petitioner only addresses this
limitation as to the “base plate” identified in the context of the one-piece
embodiment of Fraser ’106—i.e., body 10/plate 20 together. See Pet. 79.
In the Reply, Petitioner merely references its discussion as to the
“lateral tabs” limitation in the context of reliance on the one-piece
embodiment of Fraser ’106 and states that “[t]his same analysis applies to
Fraser’s two-piece embodiment in view of Michelson.” Pet. Reply 37
(citing Sherman Reply Decl. ¶ 130).
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We are not persuaded by Petitioner’s argument. As an initial matter,
Petitioner’s reliance on the two-piece embodiment of Fraser ’106 as to the
“lateral tabs” limitation is untimely because (as discussed above) it was not
presented in the Petition. See Consolidated Trial Practice Guide (Nov.
2019), available at https://www.uspto.gov/TrialPracticeGuideConsolidated
(“TPG”), 73 (“Petitioner may not submit new evidence or argument in reply
that it could have presented earlier, e.g. to make out a prima facie case of
unpatentability.”). Further, Petitioner’s position defies reason in that the
structure identified as the “lateral tabs” in the context of the one-piece
embodiment of Fraser ’106 is a portion of body 10 (Pet. 79), which is not
part of the “base plate” identified in the context of Petitioner’s reliance on
the two-piece embodiment. See Pet. 63–65 (identifying only plate 20 as the
“base plate”).
For these reasons, Petitioner has not persuasively shown that Fraser
’106 discloses the “lateral tabs” limitation. For this additional reason, we
determine that Petitioner has not demonstrated by a preponderance of the
evidence that claim 37 would have been obvious based on Fraser ’106 and
Michelson.
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 39 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
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the portions of Mr. Drewry’s testimony identified by Petitioner. See
Paper 40 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 35, 37, and 39 would have been
obvious based on Michelson and (2) has not proven by a preponderance of
the evidence that claims 35, 37, and 39 would have been obvious based on
either relied-upon embodiment of Fraser ’106 and Michelson. We dismiss
as moot Petitioner’s motion to exclude evidence.
IV. ORDER
For the reasons above, it is:
ORDERED that Petitioner has not proven by a preponderance of the
evidence that any of claims 35, 37, and 39 of the ’234 patent are
unpatentable;
FURTHER ORDERED that Petitioner’s Motion to Exclude Evidence
(Paper 39) 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.
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In summary:
Claims 35 U.S.C. § Reference(s)/Basis
Claims
Shown
Unpatentable
Claims Not
Shown
Unpatentable
35, 37, 39 103(a) Michelson 35, 37, 39
35, 37, 39 103(a) Fraser ’106, Michelson 35, 37, 39
Overall
Outcome 35, 37, 39

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FOR PETITIONER:

Dion M. Bregman (lead counsel)
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

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