The Federal Circuit Will Not Re-Weigh Evidence Considered By The Board in IPR Appeals

Federal CircuitIn re Warsaw Orthopedic, Inc. (Fed. Cir. Aug. 9, 2016) (Before Bryson, Wallach, and Prost, CJ.) (Opinion for the court, Wallach, J.) Click Here for a copy of the opinion.

Warsaw owns a patent directed to methods of performing a spinal surgery that includes inserting an artificial implants between adjacent vertebrae from a side of the spine.  NuVasive, Inc. filed two petitions for inter partes review (IPR), which was instituted for all claims of the patent. The Patent Trial and Appeal Board (“Board”) found that a combination of three references rendered all but nine of the challenged claims obvious.

The claimed implant is “sized to occupy substantially the full traverse width of the vertebral bodies,” where the length of the implants is greater than a depth of the disc space and a maximum height of the implant.  Claim 17 further recited elongated portions “positioned over” part of adjacent vertebrae.

On appeal, Warsaw argued that the references do not disclose an implant spanning substantially the full width of the vertebrae body.  Rather, Warsaw asserted that the references disclosed an implant “shaped and sized to conform with the disc space between adjoining vertebrae,” which meant sized to fit only a central portion of a vertebral body known as an “endplate.”  Warsaw argued that an implant sized to an endplate did not “occupy substantially the full traverse width of the vertebral bodies,” and, in any case, the vague description failed to disclose any dimensions of the implant.  Warsaw further asserted that the reference teaches away from the claimed implant dimensions because the reference teaches an implant that can be “rotated or reversed.”

Warsaw further argued that the Board’s motivation to combine analysis was insufficient because it focused on whether a person of ordinary skill could combine references, and not on whether they would be motivated to do so.  In addition, Warsaw asserted that the asserted references failed to disclose the “elongated portions” of claim 17.  Finally, Warsaw raised several arguments not presented to the Board.


The Court noted that all of Warsaw’s arguments related to the Board’s findings of fact, and were therefore reviewed for “substantial evidence.”  Under that standard, the Board’s holding that an implant “shaped and sized to conform to the disc space” would have substantially occupied the width of the vertebral bodies was supported by substantial evidence.  Likewise, the Board’s ruling that the prior art taught away from the claimed dimensions was also supported by substantial evidence.  A reference teaches away only if it discourages a path set out by the reference – which it did not.  However, the Board’s reconciliation of the potentially conflicting descriptions in the reference amounted to a re-weighing of evidence, which is not permitted under the standard of review.

The Court also affirmed the Board’s motivation to combine analysis. The Board specifically held that a person of ordinary skill would have been motivated to combine the references because the combination would have resulted in the predictable and expected result.  The Court found that Warsaw’s true argument was a challenge to the factual findings of the Board, and again asked the Court to improperly reweigh facts considered by the Board.

Reviewing the Board’s analysis of whether the references taught the “elongated portions” of claim 17, the Court found the reasoning lacking.  The Board must provide a record “showing the evidence on which the findings are based, accompanied by the [Board’s] reasoning in reaching its conclusions.”  Here, the Board’s analysis consisted of a single, conclusory sentence that the prior art “appears to” disclose the claimed elongated portions.  Without taking a position, the Court remanded the issue to the Board for additional review and explanation.

Finally the Court summarily rejected Warsaw’s arguments presented for the first time on appeal, because Warsaw’s failure to present them the Board waived those arguments.

The Court’s opinion reiterates the necessity of presenting all arguments to the Board in order to preserve them for potential appeal.  In addition, while conclusory statements are insufficient in providing the Board’s reasoning for its findings, such findings will only by remanded for further review by the Board.  Finally, while “substantial evidence” is not an insurmountable barrier to overturning the Board’s decisions, evidence will not be reweighed by the Federal Circuit.

Lindsay Henner, Parker Hancock, and Puja Dave also contributed to this summary.



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