In re NuVasive, Inc.
United States Court of Appeals for the Federal Circuit
842 F.3d 1376 (2016)
NuVasive, Inc. (NuVasive) held a patent on a spinal implant using radiopaque markers near its medial plane for alignment. Medtronic, Inc. (Medtronic) petitioned the Patent Trial and Appeal Board (PTAB), arguing it would have been obvious to a person having ordinary skill in the art (PHOSITA) to combine four existing implant devices with known information about radiopaque markers. The PTAB agreed and invalidated the claim for obviousness, relying on expert testimony about benefits recognized only after NuVasive's patent priority date, without explaining what specifically would have motivated a PHOSITA to make the combination before that date. Medtronic appealed, arguing the PTAB's reasoning was inadequate.
Whether determining that a person having ordinary skill in the art would have combined prior art references to achieve a patented invention requires a specific, detailed explanation of what would have motivated the combination, supported by substantial factual findings.