Medtronic, Inc. v. NuVasive, Inc.

The U.S. Patent and Trademark Office Patent Trial and Appeal Board (PTAB or Board) dismissed a patent owner’s improper motions for observation, agreeing with the petitioner that the observations cited too much testimony and were overly argumentative.  Medtronic, Inc. v. NuVasive, Inc., Case Nos. IPR2013-00506; IPR2013-00507; IPR2013-00508 (PTAB, Oct. 15, 2014) (Medley, ALJ).

Patent owner NuVasive filed motions for observation in each of the above inter partes reviews (IPRs) to draw the PTAB’s attention to cross-examination testimony of petitioner Medtronic’s reply declarant.  The petitioner opposed the motions and argued that the motions were improper because they contained new arguments and new evidence, essentially constituting a sur-reply to the petitioner’s reply.

The PTAB found that the petitioner’s motions for observation violated the PTAB’s guidelines, which state that each observation should be a concise statement of the relevance of precisely identified testimony to a precisely identified argument or portion of an exhibit (including another part of the same testimony).  Further, the PTAB explained that an observation is not an opportunity to raise new issues, to re-argue issues or to pursue objections.  Each observation should not exceed one short paragraph, should not contain argument and should be presented in the following format:

In exhibit __, on page __, lines __, the witness testified __. That testimony is relevant to the __ [stated or argued] on page __, lines __ of __. The testimony is relevant because __.

The PTAB also warned that in considering whether a motion for observation is improper, the entire motion might be dismissed (and consequently not considered) if even one excessively long or argumentative observation is presented.  The PTAB found that at least some of the patent owner’s observations in each motion were improper as they cited several pages of testimony (not one portion of testimony as required), and presented an overly argumentative explanation of the testimony’s relevance.

Because the PTAB found at least one improper observation in each motion, it dismissed the motions (in their entirety) but did so without prejudice, and authorized the patent owner to file corrected motions.  The PTAB also noted that the guidelines apply equally to responses to motions for observation.