The patent-at-issue relates to spinal surgery involving implanting an artificial implant between two adjacent vertebrae from a patient’s side.  The PTAB, in an IPR proceeding, found claims to be invalid as being obvious.  Warsaw challenges the PTAB’s factual findings regarding the teachings of the prior art as well as its finding of a motivation to combine references.  The Federal Circuit affirmed all issues, except for one pertaining to claim 17, wherein the PTAB contends that the “elongated portions” claim limitation was present in a reference.  The Federal Circuit reversed as to this issue, because it held that the PTAB’s findings were limited to a single, conclusory sentence, which was insufficient to meet its duty to articulate its reasoning in reaching its conclusions.  Accordingly, the court remanded to the PTAB for additional explanation on this issue.  

In re: Warsaw Orthopedic, Inc., Case Nos. 2015-1050, -1058 (August 9, 2016); Opinion by: Wallach, joined by Prost and Bryson; Appealed From: United States Patent and Trademark Office, Patent Trial and Appeal Board.  Read the full opinion here.

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