PTAB Issues Order Concerning Proceeding on Remand Post-SAS

September 6, 2018 – Medtronic PLC and Medtronic, Inc. had filed a petition for inter partes review against Mark Barry. The PTAB instituted the IPR and subsequently a final written decision on certain grounds but not others that were asserted by Petitioner. While on appeal at the Federal Circuit, the Supreme Court in SAS Institute Inc. v. Iancu held that a final written decision must decide the patentability of all claims challenged in the petition. The Federal Circuit then remanded back to the PTAB to account for the SAS decision.

On September 4, 2018, the PTAB issued an order concerning proceedings on remand. Because the final written decisions relating to the appeal did not address every ground raised in the petitions, the PTAB is now considering the previously non-considered grounds on remand. Therefore, the IPR is re-instituted for anticipation and obviousness on Claims 1-5 of the petitioned patent for those grounds that were not previously addressed.

The patent at issue is U.S. Patent No. 7,670,358, entitled “System and method for aligning vertebrae in the amelioration of aberrant spinal column deviation conditions.” The case is captioned Medtronic, Inc. et al v. Barry, Mark, Case Nos. IPR2015-00780.

By: Julian G. Pymento