`Trials@uspto.gov
`571-272-7822
`
`
`
`Paper No. 78
`Date: June 3, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`SURGALIGN SPINE TECHNOLOGIES, INC.,
`Petitioner,
`
`v.
`
`LIFENET HEALTH,
`Patent Owner.
`____________
`
`IPR2019-00570
`Patent 8,182,532 B2
`____________
`
`
`
`Before GEORGE R. HOSKINS, CHRISTOPHER C. KENNEDY, and
`ALYSSA A. FINAMORE, Administrative Patent Judges.
`
`HOSKINS, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding on Remand
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`IPR2019-00570
`Patent 8,182,532 B2
`
`
`DISCUSSION
`I.
`The United States Court of Appeals for the Federal Circuit entered
`a judgment on April 11, 2022, which affirmed in part, reversed in part, and
`remanded the Board’s Final Written Decision in this proceeding. 1 See
`Surgalign Spine Techs., Inc., f/k/a RTI Surgical, Inc. v. Lifenet Health,
`Nos. 2021-1117, 2021-1118, 2021-1236, 2022 WL 1073606 (Fed. Cir.
`Apr. 11, 2022) (“Federal Circuit Decision”)2; Papers 71 & 74 (sealed and
`public versions of “Board Decision”). The Federal Circuit then issued its
`mandate on May 18, 2022.
`“The Board has established a goal to issue decisions on remanded cases
`within six months of the Board’s receipt of the Federal Circuit’s mandate.”
`PTAB Standard Operating Procedure 9 (“SOP 9”), 1. 3 “Parties in remanded
`trial cases are to contact the Board within ten (10) business days after the
`mandate issues to arrange a teleconference with the panel.” Id. at 5. In
`preparation for this teleconference, “the Parties shall meet and confer in a
`reasonable and good faith attempt to propose a procedure on remand,”
`including attempts to reach agreement on eleven potential remand procedures
`specified in SOP 9. Id. at 5–7.
`The parties have conferred accordingly, and proffered via an email
`communication to the Board several periods of availability for a
`teleconference with the panel. The panel will hold a telephone conference
`
`1 The Federal Circuit also affirmed the Board’s Final Written Decision in a
`related proceeding, IPR2019-00569 concerning U.S. Patent No. 6,458,158 B1.
`2 This was a 2-1 decision by a three-judge panel. Our discussion refers to the
`two-judge, majority opinion.
`3 Available at https://www.uspto.gov/sites/default/files/documents/
`sop_9_%20procedure_for_decisions_remanded_from_the_federal_circuit.pdf.
`
`2
`
`
`
`IPR2019-00570
`Patent 8,182,532 B2
`
`with the parties on June 14, 2022 at 10 a.m. Eastern Time, using a telephone
`number and passcode that will be provided to the parties via email.
`We have reviewed the Federal Circuit Decision and compared it with
`the Board Decision. Our preliminary views regarding what we must do on
`remand, subject to receiving the parties’ input, are set forth below. We invite
`the parties to consider these preliminary views and determine whether they
`agree with them.
`In this proceeding, Petitioner presented Grounds 1–9 of unpatentability.
`See Board Decision, 9–10. It appears that we must reconsider only Grounds 2
`and 5 on remand.
`Ground 1 posited the unpatentability of claims 12–21 of the ’532 patent
`under 35 U.S.C. § 103(a) over Grooms, which the Board held was supported
`by a preponderance of the evidence. See Board Decision, 9, 29–45, 72.
`Patent Owner appealed from that decision to the Federal Circuit. See
`Paper 76. The Federal Circuit affirmed as to Ground 1. See Federal Circuit
`Decision, Section III. Therefore, we conclude we do not need to reconsider
`Ground 1 here on remand.
`Ground 2 posited the unpatentability of claims 4 and 6–11 of the
`’532 patent under 35 U.S.C. § 103(a) over Grooms and McIntyre, and
`Ground 5 posited the unpatentability of claims 4, 6–9, and 11 of the
`’532 patent under 35 U.S.C. § 103(a) over Paul, McIntyre, and Coates. See
`Board Decision, 9. The Board held Petitioner had not demonstrated
`unpatentability in these two grounds. See id. at 46–49 (Ground 1), 51–53
`(Ground 5), 72. Petitioner appealed from that decision to the Federal Circuit.
`See Paper 75.
`
`3
`
`
`
`IPR2019-00570
`Patent 8,182,532 B2
`
`
`The Federal Circuit reversed the Board Decision as to these two
`grounds, focusing on the Board’s application of the “plate-like” claim
`limitation to Grooms and Paul. See Federal Circuit Decision, Section I. In
`particular, the Federal Circuit stated: “The evidence and arguments presented
`to the Board support only one possible evidence-supported finding: that
`substantial evidence does not support the Board’s determination that Grooms
`and Paul do not teach ‘plate-like’ bone portions when the correct construction
`is employed,” and “[o]n remand, the Board should proceed to analyze the
`remaining issues raised by Grounds 2 and 5.” Id. at pg. 16 & n.6 (emphasis
`added).
`Therefore, we conclude we need to reconsider Grounds 2 and 5 here on
`remand. Specifically, we must take as given that Grooms and Paul both
`disclose plate-like first and second cortical bone portions, as recited in
`’532 patent claim 4. Then, we must evaluate the remainder of Petitioner’s
`case for unpatentability of claims 4 and 6–11 as set forth in Grounds 2 and 5,
`and Patent Owner’s opposition to those grounds.
`The Patent Owner Response appears to raise four arguments in
`opposition: [1] the Grooms and Paul cancellous bone portions are both not
`“disposed between” first and second cortical bone portions as required by
`claim 4; [2] Grooms and Paul both lack plate-like cortical bone portions;
`[3] Grooms and Paul both lack through-holes in a graft unit to accommodate
`one or more pins; and [4] secondary considerations of non-obviousness. See
`Paper 29, 14–26 (claim construction), 34–39 (Ground 2), 41–43 (Ground 5),
`66–76 (secondary considerations). We preliminarily conclude the Federal
`Circuit Decision resolved the first argument against Patent Owner in
`Section III, and resolved the second argument against Patent Owner in
`
`4
`
`
`
`IPR2019-00570
`Patent 8,182,532 B2
`
`Section I. Thus, on remand, we will not consider Patent Owner’s first and
`second arguments, but we will consider Patent Owner’s third and fourth
`arguments.
`As to Grounds 3, 4, 6, and 7, the Board Decision did not reach any of
`these grounds, because all of the claims subject to these grounds were also
`subject to Ground 1 in which Petitioner had prevailed in showing
`unpatentability. See Board Decision, 50–51 (Grounds 3 and 4), 54–55
`(Grounds 6 and 7), 72–73. As discussed above, the Federal Circuit affirmed
`the Board Decision as to Ground 1. Therefore, we conclude we do not need to
`reconsider Grounds 3, 4, 6, and 7 on remand.
`Grounds 8 and 9 posited obviousness theories based on Wolter as a
`leading prior art reference. See Board Decision, 10. The Board held
`Petitioner had not demonstrated unpatentability in these two grounds. See,
`e.g., id. at 73. Petitioner appealed from that decision to the Federal Circuit.
`See Paper 75. The Federal Circuit affirmed as to these two grounds. See
`Federal Circuit Decision, Section II (affirming the Board Decision as to
`claims 4 and 6–11 of the ’532 patent being “not unpatentable over several
`combinations where Wolter is the primary reference”). Therefore, we
`conclude we do not need to reconsider Grounds 8 and 9 on remand.
`
`II. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that the Board will hold a telephone conference with the
`parties on June 14, 2022 at 10 a.m. Eastern Time, using a telephone number
`and passcode that will be provided to the parties via email;
`FURTHER ORDERED that, if either party desires to discuss any
`additional issues regarding this proceeding during the teleconference, the
`
`5
`
`
`
`IPR2019-00570
`Patent 8,182,532 B2
`
`party shall identify the issue(s) in an email communication to the Board and
`counsel of record at least two business days prior to the telephone conference.
`
`FOR PETITIONER:
`
`Herbert D. Hart III
`David D. Headrick
`Steven J. Hampton
`Gregory C. Schodde
`Scott P. McBride
`Peter J. Lish
`McANDREWS, HELD & MALLOY, LTD.
`hhart@mcandrews-ip.com
`dheadrick@mcandrews-ip.com
`shampton@mcandrews-ip.com
`gschodde@mcandrews-ip.com
`smcbride@mcandrews-ip.com
`plish@mcandrews-ip.com
`
`FOR PATENT OWNER:
`
`Michael H. Jacobs
`Deborah H. Yellin
`Vincent J. Galluzzo
`Shannon Lentz
`Ali H.K. Tehrani (pro hac vice)
`Jacob Zambrzycki (pro hac vice)
`CROWELL & MORING LLP
`mjacobs@crowell.com
`dyellin@crowell.com
`vgalluzzo@crowell.com
`slentz@crowell.com
`atehrani@crowell.com
`jzambrzycki@crowell.com
`
`6
`
`
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