## Facts

- NuVasive owned U.S. Patent No. 8,361,156, directed to spinal fusion implants and insertion instruments, including implants with radiopaque markers to aid imaging and alignment during surgery.
- Claim 1 required, among other elements, first and second radiopaque markers oriented generally parallel to the implant height, each extending into a sidewall at a position near the implant’s medial plane.
- Medtronic petitioned for inter partes review, asserting obviousness under 35 U.S.C. § 103 based on combinations including a Synthes vertebral spacer brochure, Telamon brochures/guides, and the Baccelli publication.
- NuVasive challenged whether certain brochures/guides qualified as “printed publications” (publicly accessible) under 35 U.S.C. § 102 and disputed the asserted motivation to combine the references to reach the claimed marker configuration.
- The PTAB instituted review and, in a final written decision, held claims 1–14, 19–20, and 23–27 unpatentable as obvious.
- NuVasive appealed; the petitioner withdrew from the appeal and the USPTO Director intervened.

## Issues

1. Whether substantial evidence supported, and the PTAB adequately explained, its finding that a person of ordinary skill would have been motivated to combine the cited references to achieve the claimed radiopaque marker configuration.
2. Whether the PTAB properly handled expert testimony and alleged benefits recognized after the patent’s priority date, including whether it tied any such evidence to what would have been understood at the relevant time.
3. Whether the PTAB adequately explained its findings that certain brochures and guides were publicly accessible “printed publications” under § 102.

## Decision

- The Federal Circuit vacated the PTAB’s unpatentability determinations and remanded.
- The court held that the PTAB’s obviousness analysis, especially the motivation-to-combine rationale, was inadequately explained and relied on conclusory statements.
- The court directed the PTAB to provide a reasoned explanation that permits meaningful judicial review, including clarifying how any relied-upon evidence reflects what would have been known to a skilled artisan at the priority date.
- The court also required a fuller explanation of the PTAB’s public-accessibility determinations for the brochure and guide references.

## Legal Principles

- The PTAB must articulate a reasoned explanation for its obviousness conclusions, including a rational connection between the facts found and the choice made, sufficient for meaningful appellate review.
- A motivation-to-combine finding cannot rest on bare conclusions; the Board must explain why a skilled artisan would have combined the specific prior-art teachings to arrive at the claimed invention.
- Post-priority-date evidence is not categorically barred in an obviousness analysis, but the Board must explain how such evidence relates to what a skilled artisan would have understood at the relevant time based on the prior art.
- Whether a reference is a “printed publication” turns on public accessibility, a factual determination the Board must support with an adequately explained record-based finding.

## Conclusion

The Federal Circuit vacated the PTAB’s obviousness ruling because the Board did not sufficiently explain its motivation-to-combine reasoning and did not clearly tie credited expert assertions—particularly those reflecting later-recognized benefits—to what a skilled artisan would have understood at the priority date, and it required clearer findings on public accessibility of asserted printed publications.


In re NuVasive, Inc., 842 F.3d 1376 (Fed. Cir. 2016)