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TAKEAWAY: In re: NuVasive Inc. provides a noteworthy reminder that construing claims terms under a broadest reasonable interpretation should focus on intrinsic evidence. 

On May 31, 2017, the Federal Circuit in In re: NuVasive Inc. vacated and remanded a 2015 Patent Trial and Appeal Board (PTAB or “The Board”) decision finding NuVasive’s patent challenged by Medtronic invalid under 35 U.S.C. § 103. NuVasive’s patent, U.S. Patent No. 8,016,767 (the ‘767 patent), is directed to a surgical implant system for spinal procedures. In construing claim 1 of the ‘767 patent, the PTAB held that the broadest reasonable construction of the term “lateral” was lateral to any degree, including posterolateral and anterolateral. The Board noted that the ‘767 patent did not provide a definition for “lateral” and relied on testimony from an inventor of a prior art patent for its construction of claim 1.

The Federal Circuit disagreed and held that the Board’s claim interpretation of the term “lateral” was unreasonably broad. The Federal Circuit stated that the Board’s reliance on a prior art inventor’s testimony, given in the context of his own prior art patent, “runs counter to the specification of the ’767 patent, which, though it does not define the term “lateral,” does provide meaningful guidance.” The Federal Circuit then cited to various passage in the specification supporting a more limited construction of the term “lateral” as a patient’s side. This decision serves as a reminder both in IPRs and during patent prosecution that a broadest reasonable interpretation must be consistent with the specification.