Background
Globus Medical owns U.S. Patent No. 8,845,731, directed to an expandable intervertebral fusion device—a spinal implant placed between vertebrae to assist in fusion surgeries. The patent’s key claimed feature is that the device has two endplates with “ramped portions” that are “complementary with one another,” allowing the implant to be expanded after insertion into the spine, making installation easier than with static implants.
Life Spine petitioned for inter partes review (IPR), challenging claims 10–14 as obvious. The dispute hinged entirely on claim construction: whether “complementary with one another” means the ramps must “complete one another” (like interlocking puzzle pieces) or whether the term also encompasses ramps at mirrored angles that do not necessarily interlock. Under Life Spine’s broader construction, the claims were concededly obvious over the prior art.
The Patent Trial and Appeal Board (PTAB) adopted Globus’s narrower “completing one another” construction and held claims 10–14 not unpatentable. Life Spine appealed.
The Court’s Holding
Judge Stark, writing for the panel, reversed the Board’s claim construction and adopted Life Spine’s broader reading. Although the court acknowledged that the claim language alone (referencing “complementary” and “completing”) might favor Globus’s construction, the specification and prosecution history strongly supported the broader interpretation.
The specification’s Figure 40 embodiment proved decisive. It depicts an expandable fusion device with first and second ramped portions at mirrored angles that do not “complete” one another under Globus’s construction. The court applied the principle that claims should not normally be construed to exclude embodiments expressly disclosed in the specification. Globus’s attempt to recharacterize Figure 40’s relevant features failed when its counsel conceded at oral argument that its own annotation did not identify the actual “ramped portions” as described in the specification.
The prosecution history provided additional support. Throughout prosecution, the patent examiner consistently understood “complementary with one another” to include mirrored angles, rejecting claims on that basis. The applicant itself pointed the examiner to the Figure 40 embodiment as illustrative of the claimed “complementary” limitation—confirming that the applicant intended the term to encompass mirrored-angle configurations. Since Globus conceded obviousness under Life Spine’s construction, the Board was reversed.
Key Takeaways
- Claim constructions must not exclude embodiments expressly disclosed and depicted in the specification; the principle from Oatey v. IPS Corp. remains a powerful tool for broadening constructions in PTAB proceedings.
- An applicant’s explicit citation of a specification embodiment as illustrative of amended claim language during prosecution effectively estops the patentee from later arguing that embodiment falls outside claim scope.
- Dictionary definitions of claim terms must be considered in context; the general meaning of “complementary” (completing something) gives way to the specification’s broader usage when the intrinsic record supports it.
Why It Matters
For medical-device patent owners facing IPR challenges, this case underscores the risk of relying on narrow claim constructions that exclude specification embodiments. When the patent itself discloses a broader range of implementations than the patentee’s preferred construction allows, the Federal Circuit will side with the challenger’s broader reading—even when the claim language standing alone might support a narrower scope.
For IPR petitioners, the decision demonstrates the importance of building arguments around disclosed-but-excluded embodiments and prosecution-history admissions. When a patent applicant affirmatively directed the examiner to a specific embodiment during prosecution, that admission effectively locks in a construction broad enough to cover it. In the competitive spinal-implant market, this reversal renders Globus’s patent claims vulnerable to prior art that would otherwise have been avoided under the Board’s narrower construction.