In Re: Nuvasive, Inc.

NOTE: This disposition is nonprecedential.

United States Court of Appeals
for the Federal Circuit
______________________

IN RE: NUVASIVE, INC.,
Appellant
______________________

2015-1841
______________________

Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2014-
00075.
______________________

Decided: May 31, 2017
______________________

MICHAEL T. ROSATO, Wilson, Sonsini, Goodrich &
Rosati, PC, Seattle, WA, argued for appellant. Also repre-
sented by ANDREW SWANSON BROWN, SONJA ROCHELLE
GERRARD; PAUL DAVID TRIPODI, II, GRACE J. PAK, Los
Angeles, CA; RICHARD TORCZON, Washington, DC.

SARAH E. CRAVEN, Office of the Solicitor, United
States Patent and Trademark Office, Alexandria, VA,
argued for intervenor Michelle K. Lee. Also represented
by NATHAN K. KELLEY, THOMAS W. KRAUSE, JOSEPH
MATAL, SCOTT WEIDENFELLER.
______________________

Before DYK, O’MALLEY, and TARANTO, Circuit Judges.
2 IN RE: NUVASIVE, INC.

TARANTO, Circuit Judge.
NuVasive, Inc.’s U.S. Patent No. 8,016,767 (filed. Apr.
23, 2007) describes and claims surgical methods for
inserting a spinal fusion implant along a lateral, trans-
psoas path to the spine using nerve monitoring to avoid
damaging sensitive motor neurons (particularly those in
nerve-rich portions of the psoas muscle). After NuVasive
asserted the ’767 patent against Medtronic, Inc. in War-
saw Orthopedic Inc. v. NuVasive Inc., No. 3:12-cv-02738-
CAB-MDD (S.D. Cal.), Medtronic filed with the Patent
and Trademark Office (PTO), under 35 U.S.C. §§ 311–312,
a petition for an inter partes review (IPR) of claims 1, 2, 4,
5, 10, 15, 17, and 18 of the ’767 patent. Acting as the
delegee of the PTO’s Director, 37 C.F.R. § 42.4(a), the
Patent Trial and Appeal Board instituted a review of all
of the challenged claims. Institution of Inter Partes
Review, Medtronic, Inc. v. NuVasive, Inc., No. IPR2014-
00075, 2014 WL 1410362, at *13 (P.T.A.B. Apr. 8, 2014)
(Institution Decision). After conducting the review, the
Board held all the claims in the IPR to be unpatentable
for obviousness under 35 U.S.C. § 103. Final Written
Decision, Medtronic, Inc. v. NuVasive, Inc., No IPR2014-
00075, 2015 WL 1546572, at *23 (P.T.A.B. Apr. 5, 2015)
(Final Written Decision).
In the present appeal, NuVasive challenges the
Board’s construction of the claim phrase “lateral, trans-
psoas path,” focusing its challenge on the term “lateral” in
that phrase. NuVasive also challenges the Board’s find-
ing of a motivation to combine the prior-art references
and its treatment of objective-indicia evidence, concerning
commercial success, industry praise, and other non-prior-
art considerations, that NuVasive presented in arguing
against obviousness. We hold that the Board’s claim
construction was incorrect. We vacate the Board’s deci-
sion and remand the matter.
IN RE: NUVASIVE, INC. 3

I
A
One common treatment for chronic back pain is inter-
body spinal fusion surgery, in which the surgeon removes
damaged disc material between vertebrae and inserts an
implant in its place. According to the patent, prior-art
methods of interbody fusion surgery generally required
approaching the spine from the front (anterior) or back
(posterior) of the patient. ’767 patent, col. 2, lines 38–43.
Those approaches each had recognized disadvantages—
anterior approaches often required an additional surgeon
to assist in navigating around the bowels and major blood
vessels, while posterior approaches often required remov-
ing portions of the bony processes of the spine. Id., col. 2,
lines 44–57. Approaching from the side of the patient
might avoid those particular problems, but the patent
explains the risks of doing so: the insertion of instruments
to create an operative corridor might damage the lumbar
plexus, a bundle of leg-control nerves in the psoas muscle,
which runs along the side of the lower spine. Id., col. 2,
lines 29–38.
The ’767 patent proposes techniques that, in one fea-
tured application, would enable lateral access to a pa-
tient’s spine “in spite of the neural structures required to
be passed through (or near) in order to establish an opera-
tive corridor to the surgical target site.” Id., col. 6, lines
12–16. This is accomplished by equipping the surgical
instruments used to create the operative corridor with
electrodes. Id., col. 6, lines 16–21; id., col. 9, lines 61–66.
The electrodes emit electrical signals that cause nearby
nerves to depolarize, which in turn cause the muscles
controlled by those nerves to contract. Id., col. 9, line 66,
through col. 10, line 11; id., col. 11, lines 29–38. The
effect on the muscles can be electromyographically moni-
tored and communicated to the surgeon, enabling adjust-
4 IN RE: NUVASIVE, INC.

ment of the path of the instruments to avoid the nerves.
Id., col. 10, lines 12–28.
The instruments that may be so equipped are: an
“elongate stimulation instrument,” including an inner
wire housed within a narrow, initial dilating cannula,
which is the first instrument advanced through the pa-
tient’s body to the spine, id., col. 8, line 67, through col. 9,
line 26; a series of sequentially larger dilators, which are
inserted over the initial dilator to widen the opening to
the spine, id., col. 9, lines 27–40; and a retraction assem-
bly, which is inserted over the dilating cannulas and used
to hold the operative corridor open when the dilating
cannulas are removed, id., col. 9, lines 40–66.
Claim 1 is representative but lengthy; we will not re-
produce it here. It generally claims a “method of access-
ing a surgical target site” comprising the steps of
inserting a nerve-sensing “elongate stimulation instru-
ment . . . along a lateral, trans-psoas path to the lumbar
spine”; activating the nerve monitoring capability of the
elongate stimulation instrument; displaying received
nerve-monitoring information on a screen; positioning an
inner wire from the elongate stimulation instrument into
the disc annulus “at the lateral aspect of the targeted
spinal disc”; “advancing a plurality of sequential dilators
to further dilate tissue along the lateral, trans-psoas path
to the lumbar spine while the inner wire member remains
engaged with the disc annulus”; advancing retractor
blades over the dilators; removing the dilators; “remova-
bly engaging a fixation element” on the retractor; and
“inserting an implant through the lateral operative corri-
dor formed by the plurality of retractor blades along the
lateral, trans-psoas path.” ’767 patent, col. 12, line 63,
through col. 14, line 3 (emphasis added). Only the initial
“elongate stimulation instrument” is required to have
nerve-monitoring capability. All instruments are inserted
“along a lateral, trans-psoas path,” a limitation that is
recited eight times in the claim.
IN RE: NUVASIVE, INC. 5

B
In its petition, Medtronic rested its challenge on the
following claim construction of “lateral, trans-psoas path
to the lumbar spine”: a “lateral approach refers to a path
to the spine starting from the side of the patient, and a
trans-psoas path is a path in which the surgical instru-
ment(s) passes through the psoas muscle.” J.A. 95–96
(explaining that, for purposes of its IPR challenge, Med-
tronic was accepting the claim constructions asserted by
NuVasive in the related litigation). In its preliminary
response, NuVasive specifically contested only one con-
struction, not at issue here. Patent Owner NuVasive,
Inc.’s Preliminary Response at 14, Medtronic, Inc. v.
NuVasive, Inc., No. IPR2014-00075 (P.T.A.B. Jan. 31,
2014), Paper No. 10.
The Board instituted a review on one ground—that
claims 1, 2, 4, 5, 10, 15, 17, and 18 would have been
obvious over a combination of U.S. Patent No. 6,945,933
(Branch); U.S. Patent No. 6,139,493 (Koros); International
Publication No. WO 03/005887 (Blewett); and U.S. Patent
No. 5,313,962 (Obenchain ’962). Institution Decision,
2014 WL 1410362, at *10–13. Of the five claim terms for
which Medtronic had proposed constructions in its peti-
tion, the Board addressed only the one NuVasive had
specifically contested, giving other terms their ordinary
meaning. Id. at *5–6.
NuVasive did not address the construction of “lateral,
trans-psoas path” in its patent owner’s response filed
after the review was instituted. But it argued that
Obenchain ’962 did not disclose a “lateral, trans-psoas
path” but instead was limited in its teachings to an “ante-
rior or anterolateral” approach that traversed only the
psoas muscle’s “most anterior fibers,” which do not con-
tain the sensitive nerves that NuVasive’s patent was
designed to avoid. J.A. 429–30. NuVasive also presented
evidence to support its contentions that there was a long-
6 IN RE: NUVASIVE, INC.

felt need for a safe and reproducible lateral, trans-psoas
approach before the priority date and that NuVasive’s
eXtreme Lateral Interbody Fusion (XLIF) surgical tech-
nique, which uses nerve monitoring to achieve safe pas-
sage through the psoas muscle, had first met with
skepticism but later was praised, commercially successful,
and the object of copying by competitors.
In its final written decision, the Board held that “the
broadest reasonable construction, consistent with the
specification of the ’767 patent, of ‘lateral, trans-psoas
path to the lumbar spine,’ encompasses a path, to the
lumbar spine, which passes through any portion of the
psoas muscle, regardless of the portion, degree, or extent
of passage through the psoas, and which is lateral, to any
degree, as compared to an anterior puncture.” Final
Written Decision, 2015 WL 1546572, at *6. With respect
to the word “lateral,” the Board’s analysis was limited. It
said that the specification did not define that word, and it
relied on the deposition testimony of Dr. Obenchain, the
inventor of the Obenchain ’962 reference, that “[l]ateral
would be anything that’s basically lateral to an anterior
puncture. I mean, again, you get into anterolateral or
lateral, but it’s a fairly broad basis as to what ‘lateral’
means.” Id. (alteration in original).
The Board found that Obenchain ’962 taught an ap-
proach “along the lateral, trans-psoas path,” as the Board
had construed that claim phrase. The Board explained
that even if, as NuVasive contended, those of ordinary
skill in the art would have understood the approach
disclosed in Obenchain ’962 as traversing only the neuro-
logically safe, anterior-most portion of the psoas muscle,
the challenged claims were not limited to traversing the
dangerous, nerve-rich part of the psoas. Id. at *11.
Furthermore, the Board found that “the Obenchain refer-
ence teaches expressly the suitability of a lateral, psoas-
traversing pathway when performing minimally invasive
surgery on the lumbar spine.” Id. at *10. The Board cited
IN RE: NUVASIVE, INC. 7

the following passage in Obenchain ’962 as that “express”
teaching:
If desired, the surgery may traverse through the
psoas muscle. Where the surgery site is between
L5 and S-1, the dissection is preferably generally
close to the midline[1] between the iliac branches
of the great vessels. Alternatively, for example,
where the patient has extensive abdominal adhe-
sions, it may be preferred to use a lateral punc-
ture of the abdomen to avoid bowel perforation,
and entry into the disc space is lateral, traversing
the psoas muscle, or immediately in front of it.
Obenchain ’962, col. 6, lines 22–31.
The Board relied on Branch to disclose a method for
accessing a surgical site on a spine using a guidewire,
sequential dilators, and retractor blades; on Koros for
teaching the use of fixation screws on retractor blades;
and on Blewett to disclose the use of nerve-monitoring
electrodes on tissue-distracting instruments. The Board
found that “because Blewett teaches that its nerve moni-
toring system was desirable when performing spinal
surgery potentially encountering nerve roots associated
with the lumbar spine, . . . Blewett would have prompted
an ordinarily skilled artisan, performing lumbar spinal
surgery, to equip an initial tissue distracting instrument
with an electrode for use in a nerve-monitoring system, as
required by claim 1 of the ’767 patent, when using the
Obenchain reference’s lateral trans-psoas approach.”
Final Written Decision, 2015 WL 1546572, at *12. The
Board gave little weight to NuVasive’s evidence of long-

1 Obenchain ’962 defines the “midline” as “a spatial-
ly defined line extending from the sternum through the
umbilicus to the center of the pubic bone.” Obenchain
’962, col. 7, lines 11–13.
8 IN RE: NUVASIVE, INC.

felt need, commercial success, etc., because NuVasive had
“not show[n] a sufficient nexus between the claimed
subject matter and the objective indicia.” Id. at *22. The
Board concluded that Medtronic had “shown by a prepon-
derance of the evidence that an ordinarily skilled artisan
would have considered the processes recited in claims 1, 2,
4, 5, 10, 15, 17, and 18 obvious in view of Branch,
Obenchain, Blewett, and Koros.” Id.
NuVasive appeals. While the appeal was being
briefed, Medtronic withdrew, and the PTO’s Director
intervened to defend the Board’s decision. Medtronic,
Inc.’s Motion to Withdraw as Appellee, ECF No. 47 (Aug.
25, 2016); Order, ECF No. 48 (Aug. 30, 2016) (granting
motion to withdraw); Notice of Intervention by the United
States Patent and Trademark Office, ECF No. 49 (Sept.
29, 2016); see 35 U.S.C. § 143. We have jurisdiction. 28
U.S.C. § 1295(a)(4)(A).
II
NuVasive contends that the Board’s construction of
“lateral, trans-psoas path to the spine” is unreasonably
broad. We agree.
A
The Board gives claims their broadest reasonable in-
terpretation in light of the specification. 37 C.F.R.
§ 42.100(b); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct.
2131, 2142 (2016). “Even under the broadest reasonable
interpretation, the Board’s construction cannot be di-
vorced from the specification and the record evidence and
must be consistent with the one that those skilled in the
art would reach. A construction that is unreasonably
broad . . . will not pass muster.” Microsoft Corp. v. Proxy-
conn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015) (internal
quotation marks and citations omitted). Here, the Board
relied on expert testimony in reaching its claim construc-
tion, and we review its interpretation of that testimony, a
IN RE: NUVASIVE, INC. 9

factual matter, for reasonableness under the substantial-
evidence standard. See Teva Pharm. USA, Inc. v. Sandoz,
Inc., 135 S. Ct. 831, 841 (2015); Apple, Inc. v. Ameranth,
Inc., 842 F.3d 1229, 1236 (Fed. Cir. 2016).
The Board was unreasonable in relying on Dr.
Obenchain’s testimony, given in response to questions
about the meaning of the word “lateral” in the context of
his own, prior-art patent, as establishing how a person of
ordinary skill would understand “lateral” when consider-
ing the subject of the ’767 patent. It is clear from the
testimony surrounding the passage cited by the Board
that his interpretation of “lateral” was specific to the
context of one of his own patents, which he maintained
discloses a species of anterior approach that does not
involve traversing the nerve-rich part of the psoas. After
quoting from U.S. Patent No. 5,195,541, a different
Obenchain patent with a disclosure similar to that of the
Obenchain ’962 reference, NuVasive’s attorney asked:
Q. And in that context the term “lateral,” are you
referring to a true lateral, posterolateral?
A. I’m referring to a puncture that’s generally in
the lateral direction in the abdominal wall, not the
disc space, but the abdominal wall.
Q. How would you equate this term “lateral” with
respect to the terms we just refer to as respect to
true lateral, posterolateral, anterolateral?
MR. KANE: Object to the form.
A. In referring to an abdominal puncture, it’s less
precise. Lateral would be anything that’s basical-
ly lateral to an anterior puncture. I mean, again,
you get into anterolateral or lateral, but it’s a fair-
ly broad basis as to what “lateral” means.
Videotape Deposition of Theodore Obenchain, M.D. at p.
35, line 16, through p. 36, line 5, Medtronic, Inc. v. NuVa-
10 IN RE: NUVASIVE, INC.

sive, Inc., No. IPR2014-00075 (P.T.A.B. Dec. 3, 2014), Ex.
No. 1039 (Obenchain Dep.) (emphases added). As this
exchange illustrates, the word “lateral” can mean differ-
ent things in different contexts. Indeed, when asked
about the term “lateral” in the context of NuVasive’s XLIF
system, Dr. Obenchain had a different answer:
Q. When you say “lateral,” you’re talking about a
true lateral?
A. Yeah, you could say 9 o’clock, 3 or 9 o’clock
technique. I mean, there may be minor variations
in that, but basically it’s a lateral approach.
Obenchain Dep. p. 96, lines 11–21. Thus, even if we
accept the Board’s determination that Dr. Obenchain’s
testimony was credible, Final Written Decision, 2015 WL
1546572, at *6 (“Given Dr. Obenchain’s qualifications, we
credit his testimony on this issue.” (citation omitted)), it
was error for the Board to interpret Dr. Obenchain’s
statement that “lateral” meant “anything that’s basically
lateral to an anterior puncture” as establishing how a
person of ordinary skill would read the term “lateral” in
the context presented by the ’767 patent.
In this court, the Director points to a portion of Dr.
Obenchain’s deposition not invoked by the Board. When
asked “Is there a bright line distinction as to where a true
lateral ends and a posterolateral begins?,” Dr. Obenchain
answered: “Not really. It’s a continuum. 9 o’clock is pure
lateral by my—by my nomenclature. 12 o’clock is pure
posterior. Everything in between there is posterolateral,
but it’s not more further defined that that.” Obenchain
Dep. p. 34, line 20, through p. 35, line 2. But that testi-
mony, like the excerpt the Board relied on, is not about
“lateral” in the setting addressed in the ’767 patent. The
testimony simply responded to questioning about how to
align a clock face with a patient’s body to ensure that the
attorney and Dr. Obenchain were referring to the same
anatomical locations, unconnected to any particular
IN RE: NUVASIVE, INC. 11

surgical technique. Immediately after this exchange, Dr.
Obenchain specifically contrasted his statement that
“lateral” is a “continuum” going all the way around a
patient’s body to how “lateral” is used in his own patent:
“I’m referring to a puncture that’s generally in the lateral
direction in the abdominal wall, not the disc space”; “In
referring to an abdominal puncture, it’s less precise.” The
testimony reinforces the idea that “lateral” can mean
different things in different contexts.
Beyond relying on an unreasonable interpretation of
Dr. Obenchain’s testimony, the Board had no meaningful
basis for its interpretation. And that interpretation not
only departs from the construction Medtronic accepted for
purposes of its patentability challenges. It also runs
counter to the specification of the ’767 patent, which,
though it does not define the term “lateral,” does provide
meaningful guidance.
The specification refers to a lateral approach as one
that goes through the lumbar plexus nerves. ’767 patent,
col. 2, lines 36–38 (“[N]eural plexus structures in the
psoas muscle have rendered a lateral or far lateral access
path (so-called trans-psoas approach) to the lumbar spine
virtually impossible.”). It is relevant, in understanding
the language of the just-quoted passage, that Dr.
Obenchain testified about “a general understanding”
before 2003 that “[f]ar lateral could . . . mean coming in,
say, anywhere from maybe 8 to 10 o’clock. Somewhere in
the . . . general 9 o’clock area.” Obenchain Dep. p. 38,
lines 3–6. The specification also distinguishes the “lat-
eral” approach depicted in Figure 1 from “postero-lateral”
and “antero-lateral” approaches. Id., col. 7, lines 43–51
(“Moreover, although described and shown herein with
reference to a generally lateral approach to a spinal
surgical target site . . . , it will be appreciated that the
retractor assembly 10 of the present invention may find
use in any number of different surgical approaches,
including generally posterior, generally postero-lateral,
12 IN RE: NUVASIVE, INC.

generally anterior and generally antero-lateral.”). And all
nine figures that show a path from the surgical incision to
the spine depict what amounts to a 3 o’clock or 9 o’clock
approach to the spine—essentially along a line 90° to a
plane defined by the (roughly parallel) front-of-body
midline and the spine. See ’767 patent, figs.1, 9–10, 12–
15, 17–18.
Those disclosures indicate that the proper scope of
“lateral” is more restrictive than the Board’s interpreta-
tion, which covers any approach “lateral, to any degree, as
compared to an anterior puncture.”
The Director points to another part of the specifica-
tion, which refers to the “surgical access system” as being
“particularly suited for establishing an operative corridor
to an intervertebral target site in a postero-lateral, trans-
psoas fashion so as to avoid the bony posterior elements of
the spinal column.” ’767 patent, col. 11, lines 50–54. The
Director argues that the described postero-lateral ap-
proach is a preferred embodiment that should not be
excluded from the claims, all of which recite a “lateral,
trans-psoas approach.” But the specification elsewhere
distinguishes “lateral” from “postero-lateral”; and the
specification describes many matters that are manifestly
not covered by the claims, thus confirming that NuVasive
has chosen not to claim all that the patent discloses. See
’767 patent, col. 12, lines 31–44 (explaining that the
“surgical access system of the present invention can be
used in any of a wide variety of surgical or medical appli-
cations . . . including but not limited to discectomy, fusion
(including PLIF [posterior lumbar interbody fusion], ALIF
[anterior lumbar interbody fusion], TLIF [transforaminal
lumbar interbody fusion] and any fusion effectuated via a
lateral or far-lateral approach . . .), total disc replacement,
etc”); id. passim (describing the “surgical access system”
but claiming only methods). In these circumstances, the
reference to a “postero-lateral” approach must be under-
stood as distinct from, not included in, the claim term
IN RE: NUVASIVE, INC. 13

“lateral.” See PPC Broadband, Inc. v. Corning Optical
Commc’ns RF, LLC, 815 F.3d 747, 755 (Fed. Cir. 2016).
Stripped of Dr. Obenchain’s supporting testimony and
read in conjunction with the specification, the Board’s
interpretation of the term “lateral” as “lateral, to any
degree, as compared to an anterior puncture” is unrea-
sonably broad. Indeed, the Board’s construction seeming-
ly drains the term of meaning in the claim phrase. The
psoas muscle does not cross the midline, so any approach
that traverses the psoas to get to the spine would seem to
be “lateral” in the Board’s sense. By claiming a “lateral,
trans-psoas approach”—not a “trans-psoas approach” or a
“postero-lateral, trans-psoas approach”—NuVasive must
be taken to have limited its claim beyond what “trans-
psoas approach” would cover. Merck & Co., Inc. v. Teva
Pharm. USA, Inc., 395 F.3d 1364, 1372 (Fed. Cir. 2005)
(“A claim construction that gives meaning to all the terms
of the claim is preferred over one that does not do so.”).
The Board’s interpretation does not give “lateral” that
limiting function.
We note that NuVasive’s brief repeatedly suggests
that an approach “from the side” is necessarily one that
passes through the nerve-rich portion of the psoas muscle.
Appellant’s Br. 43 (“Because the approach is from the side
of the patient, the approach passes through the nerve-rich
portion of the psoas muscle.”); Appellant’s Br. 46 (“[T]his
Court should determine that ‘lateral, trans-psoas path to
the spine’ as recited in the claims requires a lateral
approach to the lumbar spine through the nerve-rich
portion of the psoas muscle—in other words, an approach
from the patient’s lateral aspect (or side).”); Appellant’s
Br. 48 (“[T]he ‘lateral, trans-psoas path to the lumbar
spine,’ as recited in the claims, requires an approach from
the patient’s lateral aspect (or side) to the lumbar spine
through the nerve-rich portion of the psoas muscle.”). But
at oral argument in this court, NuVasive confirmed that it
was not seeking to construe the phrase to require an
14 IN RE: NUVASIVE, INC.

approach through the nerve-rich part of the psoas. Oral
Arg. 12:49–13:41, http://oralarguments.cafc.uscourts.gov/
default.aspx?fl=2015-1841.mp3.
A proper construction must be consistent with the
specification, which demonstrates at least that a “lateral”
approach is one that—without the claimed nerve monitor-
ing—was rendered “virtually impossible” by “the exiting
nerve roots and neural plexus structures in the psoas
muscle.” ’767 patent, col. 2, lines 34–38. While the patent
does not specify numerically what range of degrees
around 90º (or around 270º) is covered by “lateral,” Med-
tronic itself proposed that the term means from the pa-
tient’s side. On the record before us, we conclude that the
broadest reasonable interpretation is an “approach to the
lumbar spine that (1) approaches from the patient’s
lateral aspect (or side); and (2) goes through the psoas
muscle.”
B
In finding that Obenchain ’962 in fact discloses a “lat-
eral, trans-psoas” approach, the Board relied on the claim
construction we have concluded is unreasonably broad.
We cannot say that the error was harmless in assessing
what Obenchain ’962 discloses—and there was no other
reference found to have disclosed that claim element. We
remand for the Board to apply the proper (broadest rea-
sonable) construction in the first instance.
We briefly mention one aspect of Obenchain ’962 that
warrants attention on remand. Obenchain ’962 states:
[T]he patient is positioned in the supine or lithot-
omy position. While it is contemplated that the in-
cision site for entry of the apparatus shown in
FIGS. 1–6 can be located anywhere along the ab-
domen surface, the incision is preferably made be-
low the epigastric and hypochondriac regions of
the abdomen and is preferably lateral, that is, to
IN RE: NUVASIVE, INC. 15

the right or left of the abdominal midline. More
preferably, the incision is directly adjacent to the
abdominal midline. . . . As understood to those
skilled in the art, laparoscopic trocars are punc-
tured through the abdominal wall for insertion of
multiple instruments for dissection and exposure
of the front of the spine.
Obenchain ’962, col. 7, lines 2–17 (emphasis added). This
passage may suggest three things of possible relevance to
whether the reference as a whole teaches what the ’767
patent requires. One is that the patient is lying on his
back. See also id., col. 6, lines 5–7 (placing the patient on
his back prior to the alleged “lateral, trans-psoas” disclo-
sure in Obenchain ’962); compare J.A. 6466 (showing, in
the context of NuVasive’s XLIF procedure, how to place
the patient on his side in the “direct lateral decubitus
(90°) position,” and showing the surgeon leaning over the
table to access the upward-facing side of patient). A
second is that the passage may be defining “lateral,” at
least in the context of this example and perhaps for the
entire patent, as simply to one side of the midline but still
from the patient’s front, not his side. A third is that the
terms “abdomen” and “abdominal wall” may refer to
anatomical locations on the front of the patient.
In highlighting the above passage and possible mean-
ings, we are not drawing conclusions of our own. We note
what the passage “may” suggest to focus attention on an
aspect of Obenchain ’962 that at present seems relevant
and requires attention. We leave questions about what
Obenchain ’962 discloses to be answered initially by the
Board.
III
For the foregoing reasons, we hold that the Board
misconstrued “lateral, trans-psoas path,” and we remand
for consideration of whether Obenchain ’962 discloses
such a path under the proper construction. Although
16 IN RE: NUVASIVE, INC.

NuVasive also contests the Board’s finding of a motivation
to combine and its treatment of NuVasive’s objective
evidence of nonobviousness, we do not address those
matters here. The Board should reconsider those matters
on remand in light of what it finds about Obenchain ’962
using the proper claim construction.

VACATED AND REMANDED