Decision Date: March 21, 2014 -

Court: Patent Trial and Appeal Board -

Patents: D652,922 -

Holding: Petition to Institute Inter Partes Review DENIED -

Opinion:

Medtronic, Inc. filed a petition requesting inter partes review of U.S. Design Patent No. D652,922 (“the ‘922 Patent”), entitled “Dilator.” NuVasive, Inc. owns the ‘922 Patent, which claims “[t]he ornamental design for a dilator, as shown and described” in the sole figure of the ‘922 Patent. The ‘922 Patent is interestingly a continuation of a utility patent application that has resulted in two utility patents (U.S. Patent Nos. 7,582,058 and 7,935,051). The sole figure in the design patent is Figure 3 in these utility patents. Medtronic’s petition challenged the sole claim of the ‘922 Patent on anticipation and obviousness grounds. Specifically, Medtronic argued that U.S. Patent No. 6,159,179 (“Simonson”) and U.S. Patent No. 5,171,279 (“Mathews”) each anticipated the ‘922 Patent and that various combinations of Simonson, Mathews, U.S. Patent No. 6,228,052 (“Pohndorf”), WIPO Publication No. WO 00/38574 (“Marino”), and U.S. Patent No. 6,719,692 (“Kleffner”) rendered the ‘922 Patent obvious...