Surgalign Spine Technologies, Inc., Fka Rti Surgical, Inc. v. LIFENET HEALTH, Cross-Appellant 2021-1117, 2021-1118, 2021-1236 Appeals from the…

N OTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
SURGALIGN SPINE TECHNOLOGIES, INC., FKA
RTI SURGICAL, INC.,
Appellant
v.
LIFENET HEALTH,
Cross-Appellant
______________________
2021-1117, 2021-1118, 2021-1236
______________________
Appeals from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in Nos. IPR2019-
00569, IPR2019-00570.
______________________
Decided: April 11, 2022
______________________
D AVID HEADRICK, McAndrews, Held & Malloy, Ltd.,
Chicago, IL, argued for appellant. Also represented by
HERBERT D. HART , III, P ETER L ISH , BEN MAHON.
VINCENT J OHN G ALLUZZO, Crowell & Moring LLP,
Washington, DC, argued for cross-appellant. Also repre-
sented by MICHAEL H. J ACOBS , SHANNON L ENTZ.
______________________
Case: 21-1117 Document: 62 Page: 1 Filed: 04/11/2022

-- 1 of 33 --

SURGALIGN SPINE TECHNOLOGIES v. LIFENET HEALTH 2
Before N EWMAN, SCHALL , and P ROST , Circuit Judges.
Opinion for the court filed by Circuit Judge SCHALL .
Opinion dissenting in part filed by Circuit Judge
N EWMAN.
SCHALL , Circuit Judge.
LifeNet Health (“LifeNet”) is the owner of U.S. Patent
No. 8,182,532 (“the ’532 patent”) and U.S. Patent No.
6,458,158 (“the ’158 patent”). After LifeNet sued Surgalign
Spine Technologies, Inc., formerly known as RTI Surgical,
Inc. (“Surgalign”), for infringement of those patents,
Surgalign petitioned the Patent Trial and Appeal Board
(“Board”) for inter partes review (“IPR”) of both patents.1
In the IPR for the ’532 patent, the Board issued a final writ-
ten decision in which it determined that Surgalign had
proved claims 12–21 to be unpatentable but had not proved
claims 4 and 6–11 to be unpatentable. Surgalign Spine
Techs., Inc. v. LifeNet Health, No. IPR2019-00570, 2020
Pat. App. LEXIS 12593, at *76 (P.T.A.B. Aug. 26, 2020)
(“’532 FWD”). In the final written decision in the IPR for
the ’158 patent, the Board determined that Surgalign had
failed to prove unpatentability for the claims of that patent,
claims 1–15. Surgalign Spine Techs., Inc. v. LifeNet
Health, No. IPR 2019-00569, 2020 Pat. App. LEXIS 12576,
at *48 (P.T.A.B. Aug. 26, 2020) (“’158 FWD”).
Surgalign appeals the Board’s determination that
claims 4 and 6–11 of the ’532 patent and claims 1–15 of the
’158 patent were not proven to be unpatentable. LifeNet
cross-appeals the Board’s determination that claims 12–21
of the ’532 patent were proven to be unpatentable. We af-
firm in part, reverse in part, and remand.
1 LifeNet brought suit for infringement of three ad-
ditional patents, and Surgalign sought IPRs for those pa-
tents as well. Those patents are not at issue in this appeal.
Case: 21-1117 Document: 62 Page: 2 Filed: 04/11/2022

-- 2 of 33 --

SURGALIGN SPINE TECHNOLOGIES v. LIFENET HEALTH 3
BACKGROUND
I. General
Some spinal injuries and diseases can be treated by
surgical removal of all or part of an intervertebral disc and
insertion of an implant that contacts the adjacent verte-
brae. After the implantation procedure, the natural heal-
ing process of bones causes the vertebrae to fuse together
over time. Implants for spinal fusion can be made from
various materials, including bone obtained from the pa-
tient (autologous bone), or bone obtained from a human do-
nor (allogenic bone). A bone graft made from autologous
bone is referred to as an autograft; a graft made from allo-
genic bone is called an allograft.
Bones are comprised of cortical bone tissue and cancel-
lous bone tissue. Cortical bone is strong and dense and
supports the structural weight of the body, but is less re-
ceptive to cellular growth. Cancellous bone is soft, spongy,
and has properties that promote the formation of bone,
such as osteoconductivity.
II. The Patents
The ’532 and ’158 patents have substantially identical
specifications and are both directed to bone grafts for use
in spinal fusion. The patents purport to describe a compo-
site bone graft that can be sized for any application, that
promotes the growth of patient bone at the implantation
site, that provides added stability and mechanical
strength, and that does not shift, extrude, or rotate after
implantation. ’532 patent col. 1 ll. 33–37, col. 2 ll. 5–11;
’158 patent col. 1 ll. 26–33, col. 2 ll. 1–7. Figure 1 of both
patents depicts bone graft 1 having a cancellous bone por-
tion 3 between a first cortical bone portion 2 and a second
cortical bone portion 4. Bone pins 7 are provided in
through holes 5.
Case: 21-1117 Document: 62 Page: 3 Filed: 04/11/2022

-- 3 of 33 --

SURGALIGN SPINE TECHNOLOGIES v. LIFENET HEALTH 4
’532 patent Fig. 1, col. 19 ll. 17–20, 67; ’158 patent Fig. 1,
col. 19 ll. 38–43.
Pertinent to Surgalign’s appeal, independent claim 4 of
the ’532 patent recites a composite bone graft that includes
two cortical bone portions that are “plate-like.” ’532 patent
col. 46 ll. 52–55. Also pertinent to Surgalign’s appeal,
claim 4 of the ’532 patent and all of the independent claims
of the ’158 patent (claims 1, 2, 13, 14, and 15) recite a com-
posite bone graft that includes “bone pins.” Id. col. 46 ll.
60–61; ’158 patent col. 45 ll. 8, 20, col. 46 ll. 47, 66, col. 48
l. 15. These pins are generally made of allogenic cortical
bone.
Pertinent to LifeNet’s cross-appeal, independent claim
12 of the ’532 patent recites that “one or more osteoconduc-
tive substances are disposed between [a] first cortical bone
portion and [a] second cortical bone portion.” ’532 patent
col. 47 ll. 60–62 (emphasis added).
Case: 21-1117 Document: 62 Page: 4 Filed: 04/11/2022

-- 4 of 33 --

SURGALIGN SPINE TECHNOLOGIES v. LIFENET HEALTH 5
III. The Prior Art
Three prior art references are relevant to this appeal:
(1) U.S. Patent Application Publication No. 2002/0138143
to Grooms et al. (“Grooms”), J.A. 2494; (2) U.S. Patent No.
6,258,125 to Paul et al. (“Paul”), J.A. 2580; and (3) Wolter
et al., “Bone Transplantation in the Area of the Vertebral
Column,” Accident Medicine: Scientific and Clinical As-
pects of Bone Transplantation, vol. 185, pp. 166–75
(“Wolter”), J.A. 2657.2
Grooms describes “[a]n implant composed substan-
tially of cortical bone” that is machined to form a “substan-
tially ‘D’-shaped” implant that has “a canal running
therethrough” that may be filled with osteogenic, osteoin-
ductive, or osteoconductive material. Grooms at Abstract,
J.A.2494. Grooms explains that the D-shaped cortical bone
implant can have “flat upper and lower surfaces.” Id. at
¶33, J.A. 2520. Grooms Fig. 8A, below, shows implant 800
composed of two side-by-side halves, 801A and 801B.
2 Citations to Wolter in this opinion refer to the Eng-
lish translation of the original German document. See J.A.
2672–707.
Case: 21-1117 Document: 62 Page: 5 Filed: 04/11/2022

-- 5 of 33 --

SURGALIGN SPINE TECHNOLOGIES v. LIFENET HEALTH 6
Grooms Fig. 8A & ¶ 49, J.A. 2506, 2523.
Paul describes an “allogenic intervertebral implant for
fusing vertebrae” having “top and bottom surfaces [that]
can be flat planar surfaces.” Paul at Abstract & col. 2 ll.
17–18, J.A. 2580, 2589. Paul’s Figure 9, below, shows a
perspective view of one embodiment, where “[f]irst lateral
sides 18 of first and second implants 70, 70’ are scalloped
to have a C-shape.” Id. col. 5 ll. 13–16, J.A. 2591.
Case: 21-1117 Document: 62 Page: 6 Filed: 04/11/2022

-- 6 of 33 --

SURGALIGN SPINE TECHNOLOGIES v. LIFENET HEALTH 7
Paul Fig. 9, J.A. 2585.
Wolter describes a “composite corticospongial block”
made of two or three pieces of autologous iliac crest bone,
fastened together with a metal screw.3 J.A. 2697. Wolter
states that it “appears to be necessary” to use “exclusively”
autologous bone to make a graft because it is “the best
transplant material,” allogenic bone is “exposed to an ele-
vated risk of infection and heal[s] more poorly,” and
“[e]very additional risk from the implant and transplant
material should be avoided in the area of the vertebral col-
umn, since secondary operations have proven to be partic-
ularly difficult.” J.A. 2660; see also J.A. 2665 (“Only
autologous material should be used.”). Figure 1e of Wolter
3 Iliac crest bone is bone harvested from a patient’s
ilium, the uppermost and largest part of the hipbone.
Case: 21-1117 Document: 62 Page: 7 Filed: 04/11/2022

-- 7 of 33 --

SURGALIGN SPINE TECHNOLOGIES v. LIFENET HEALTH 8
shows an exemplary corticospongial block, also referred to
as a “sandwich block”:
J.A. 2666.
IV. The IPRs
In the ’532 FWD, the Board adopted Surgalign’s initial
proposed construction of “plate-like” in the ’532 patent to
mean “generally flat.” ’532 FWD, 2020 Pat. App. LEXIS
12593, at *31. The Board noted that Surgalign had made
clear through its briefing and during the hearing that the
“construction applies to the overall shape of the bone por-
tion.” Id.
Applying this construction and stating that it was con-
sidering the “overall shape, not merely whether [the bone
portions] include a region that is generally flat,” the Board
determined that Surgalign had not shown that Grooms dis-
closes cortical bone portions that are “plate-like.” Id. at
*49. The Board explained that it was not persuaded that
Grooms’s cortical bone portions are “generally flat,” be-
cause they “have a generally flat base with legs or curved
portions that extend away from the base so that the two
Case: 21-1117 Document: 62 Page: 8 Filed: 04/11/2022

-- 8 of 33 --

SURGALIGN SPINE TECHNOLOGIES v. LIFENET HEALTH 9
cortical portions meet away from the flat base portion.” Id.
The Board also determined that Surgalign had not shown
that Paul discloses cortical bone portions that are “plate-
like.” Id. at *53–54. The Board noted that, “[w]hile certain
surfaces of Paul’s cortical bone portions could be considered
generally flat, [it] assess[es] the overall shape of Paul’s cor-
tical bone portions to determine if they are ‘plate-like.’” Do-
ing so, the Board concluded they were not. Id. Having
concluded that Grooms and Paul did not disclose “plate-
like” bone portions, the Board determined that Surgalign
had not proven that claim 4 and its dependent claims 6–11
were obvious.
Relevant to LifeNet’s cross-appeal, in the ’532 FWD,
the Board construed the term “disposed between,” as re-
cited in claim 12 of the ’532 patent, not to require that the
first and second cortical bone portions be completely sepa-
rated throughout the graft. Id. at *29. The Board began
by noting that “[l]ooking only at the words of the claim,
. . . the ordinary meaning of ‘disposed between’ does not re-
quire complete separation.” Id. at *25. The Board found
persuasive that claims 1 and 2 of the related ’158 patent
include the same “disposed between” language and also re-
cite that the first and second cortical bone portions “are not
in physical contact.” ’158 patent col. 45 ll. 5–11. Citing to
Trustees of Columbia University v. Symantec Corp., 811
F.3d 1359, 1369 (Fed. Cir. 2016), and Stumbo v. Eastman
Outdoors, Inc., 508 F.3d 1358, 1362 (Fed. Cir. 2007), the
Board stated that “[i]f ‘disposed between’ required com-
plete separation . . . there would be no need for claims 1
and 2 [of] the ’158 patent to additionally recite that the first
and second cortical bone portions are not in physical con-
tact.” ’532 FWD, 2020 Pat. App. LEXIS 12593, at *25–26.
The Board acknowledged that the “consistent usage” of
“disposed between” in the specification “provides some sup-
port” for a construction requiring complete separation, but
it concluded that that usage was “outweighed by the con-
trary evidence, particularly the breadth of the claim
Case: 21-1117 Document: 62 Page: 9 Filed: 04/11/2022

-- 9 of 33 --

SURGALIGN SPINE TECHNOLOGIES v. LIFENET HEALTH 10
language itself and the differences between claim 12 of the
’532 patent and the claims of the related ’158 patent.” Id.
at *29. Applying this construction, the Board held that
Grooms rendered obvious independent claim 12, and its de-
pendent claims 13–21 of the ’532 patent. Id. at *35–37, 47–
48. It did so because it agreed with Surgalign that Grooms
teaches placing osteoconductive substances in the canal of
the implant, i.e., between the cortical bone portions shown
in Fig. 8A above. The Board thus determined that
Surgalign had shown that claims 12–21 of the ’532 patent
were unpatentable.
In both IPRs, Surgalign challenged the patentability of
various claims over Wolter alone or in combination with
other references. See ’532 FWD, 2020 Pat. App. LEXIS
12593, at *55–56 (claims 4 and 6–11 of the ’532 patent);
’158 FWD, 2020 Pat. App. LEXIS 12576, at *19, 24, 38–41
(claims 1–15 of the ’158 patent). Surgalign’s arguments re-
quired modifying Wolter in two ways: (1) to use allogenic
bone instead of autologous bone; and (2) to use a bone pin
instead of a metal screw. ’532 FWD, 2020 Pat. App. LEXIS
12593, at *56; ’158 FWD, 2020 Pat. App. LEXIS 12576, at
*8, 19, 22–23.4
In its final written decisions, the Board determined
that the challenged claims would not have been unpatent-
able over Wolter. The Board’s conclusion hinged on its
4 Surgalign’s proposed combination required the
first modification even for claims that did not specifically
recite using allogenic bone. ’532 FWD, 2020 Pat. App.
LEXIS 12593, at *57–58 & n.20; ’158 FWD, 2020 Pat. App.
LEXIS 12576, at *19, 22–23 & n.18.
The second modification of Wolter was required be-
cause Wolter describes fastening pieces of bone with a
metal screw, whereas claims 4 and 6–11 of the ’532 patent
and claims 1–15 of the ’158 patent recite using non-metallic
“bone pins.”
Case: 21-1117 Document: 62 Page: 10 Filed: 04/11/2022

-- 10 of 33 --

SURGALIGN SPINE TECHNOLOGIES v. LIFENET HEALTH 11
determination that an ordinarily skilled artisan would not
have been motivated to modify Wolter in the proposed
manner (using allogenic bone instead of autologous bone
and using a bone pin instead of a metal screw) and would
not have had a reasonable expectation of success in doing
so. ’158 FWD, 2020 Pat. App. LEXIS 12576, at *24–37.5
Specifically, the Board determined that an ordinarily
skilled artisan would not have been motivated to modify
Wolter’s sandwich block to use allogenic bone against the
reference’s teachings that autologous bone was preferable.
Rejecting Surgalign’s arguments that Wolter’s teaching
away from allograft in 1987 would be “outdated” by 1999,
the Board credited the explanation of Surgalign’s expert,
Dr. Jeffrey Fischgrund, that allografts were “already
known, available, and used by the time Wolter was pub-
lished.” Id. at *23, 27. The Board also relied on testimony
from LifeNet’s expert, Dr. Mark Shaffrey, that “it makes no
sense to make an allograft by stacking two or three iliac
crest bones” because their irregular surfaces would pro-
hibit a precise fit between the bone blocks. Id. at *30. The
Board also was persuaded that Wolter was “tailored to the
demands of filling a large defect using an autograft that
can be made during surgery.” Id.
Turning to whether one of skill in the art would have
been motivated to replace Wolter’s metal screw with a bone
pin, or would have had success in doing so, the Board con-
cluded that Surgalign had not proved this to be the case.
The Board agreed with LifeNet that substitution of a bone
pin would run counter to Wolter’s goal to fulfill a recog-
nized need for “a transplant that is as large and stressable
as possible,” because bone pins are weaker than metal
screws. Id. at *32–33 (quoting J.A. 2661). The Board also
found persuasive evidence that there would be “technical
5 To avoid duplication, we cite only to the ’158 FWD
when discussing the Board’s analysis of Wolter.
Case: 21-1117 Document: 62 Page: 11 Filed: 04/11/2022

-- 11 of 33 --

SURGALIGN SPINE TECHNOLOGIES v. LIFENET HEALTH 12
difficulties” in making the proposed substitution. Id. at
*31–33. In making this finding, the Board found persua-
sive LifeNet’s arguments and supporting testimony from
Dr. Shaffrey and LifeNet employee Mr. Barton Gaskins
that it would be difficult to line up Wolter’s stack of large,
irregularly shaped pieces of iliac crest bone, and that it is
doubtful that a bone pin could withstand the force needed
to impel it through the three sections and their irregular
interfaces. Id. at *33–35, citing J.A. 4724, J.A. 4769.
As noted, Surgalign appeals the Board’s determination
that claims 4 and 6–11 of the ’532 patent and claims 1–15
of the ’158 patent were not shown to be unpatentable, while
LifeNet cross-appeals the Board’s determination that
claims 12–21 of the ’532 patent were shown to be unpatent-
able. We have jurisdiction under 28 U.S.C. § 1295(a)(4)(A).
D ISCUSSION
We review the Board’s factual findings for substantial
evidence and its legal conclusions de novo. In re Cuozzo
Speed Techs., LLC, 793 F.3d 1268, 1280 (Fed. Cir. 2015).
Thus, we review the Board’s ultimate determination of ob-
viousness de novo and its underlying factual determina-
tions for substantial evidence. Ariosa Diagnostics v.
Verinata Health, Inc., 805 F.3d 1359, 1364 (Fed. Cir. 2015).
The underlying factual findings include “findings as to the
scope and content of the prior art, the differences between
the prior art and the claimed invention, the level of ordi-
nary skill in the art, the presence or absence of a motiva-
tion to combine or modify with a reasonable expectation of
success, and objective indicia of non-obviousness.” Id.
“Claim construction is ultimately a question of law, de-
cided de novo on review, as are the intrinsic-evidence as-
pects of a claim-construction analysis.” Intel Corp. v.
Qualcomm Inc., 21 F.4th 801, 808 (Fed. Cir. 2021) (cita-
tions omitted). However, “we review any underlying fact
findings about extrinsic evidence . . . for substantial-
Case: 21-1117 Document: 62 Page: 12 Filed: 04/11/2022

-- 12 of 33 --

SURGALIGN SPINE TECHNOLOGIES v. LIFENET HEALTH 13
evidence support when the appeal comes from the Board.”
Id. (citations omitted).
I.
Surgalign’s first argument on appeal focuses on claims
4 and 6–11 of the ’532 patent. Surgalign contends that the
Board “incorrectly applied” a claim construction for the
term “plate-like” that was different from the claim con-
struction the Board adopted. Surgalign Br. 35–48. Accord-
ing to Surgalign, the Board’s construction of “plate-like” to
mean “generally flat” was correct, but when the Board pur-
ported to apply that construction to Grooms and Paul, the
Board improperly excluded bone portions in the references
that were “generally flat” in the horizontal plane, i.e., the
plane in which they are inserted. Id. at 29, 37, 40.
Surgalign argues such an effective construction conflicts
with other claim language, the figures of the ’532 patent,
and a prior art reference U.S. Patent No. 5,961,554 to Jan-
son et al., which uses the term “plate-like” to describe spi-
nal spacers with a similar shape to Grooms and Paul. Id.
at 40–48.
Surgalign separately argues that the Board’s fact find-
ings that the Grooms and Paul cortical bone portions are
not “plate-like” lack substantial evidence. This is because,
Surgalign contends, the bone portions of Grooms and Paul
are “generally flat” horizontally, i.e., in the plane in which
the grafts are implanted into the spine. Surgalign Br. 48–
50.
LifeNet responds that, since the Board adopted and ap-
plied the construction that Surgalign requested—that
“plate-like” be construed to mean “generally flat” and that
“plate-like” be tested against the “overall shape” of each
cortical bone portion—what Surgalign actually challenges
is the Board’s findings that Grooms and Paul do not have
“plate-like” cortical bone portions, a factual issue we review
for substantial evidence. LifeNet Br. 28–29, 32. Should we
consider Surgalign’s claim construction argument, LifeNet
Case: 21-1117 Document: 62 Page: 13 Filed: 04/11/2022

-- 13 of 33 --

SURGALIGN SPINE TECHNOLOGIES v. LIFENET HEALTH 14
argues that Surgalign’s position on appeal contradicts
Surgalign’s argument before the Board that “plate-like”
“addresses the ‘overall shape’ of a bone portion.” Id. at 34–
35 (quoting J.A. 1965).
“We have reversed or vacated and remanded final writ-
ten decisions of the Board when the Board departs from the
proper construction [of a claim term] when assessing pa-
tentability in view of the prior art.” Google LLC v. Lee, 759
F. App’x 992, 996 (Fed. Cir. 2019) (citing Corning v. Fast
Felt Corp., 873 F.3d 896, 900–01 (Fed. Cir. 2017), and
D’Agostino v. MasterCard Int’l Inc., 844 F.3d 945, 950 (Fed.
Cir. 2016)). In Corning, the Board construed the claim
term “roofing or building cover material” in a manner that
would “not require an asphalt-coated substrate.” 873 F.3d
at 900. When evaluating obviousness, however, the Board
made clear that it understood its construction to require
materials that either had been or would eventually be
coated with asphalt. Id. We determined this was error. Id.
at 901.
Similarly, here the Board indicated it was applying its
“generally flat” construction and that it was testing that
construction against the “overall shape” of each cortical
bone portion. It is clear, however, that the Board analyzed
the “general flat[ness]” of the Grooms and Paul cortical
bone portions only with respect to the vertical plane. With
respect to Grooms, the Board analyzed only whether the
parts of the bone portions from which the “legs or curved
portions” extend were “generally flat.” ’532 FWD, 2020
Pat. App. LEXIS 12593, at *49–50. The Board did not con-
sider the flatness of the bone portions as they extend in the
horizontal direction. As for its analysis of Paul, the Board
pointed out that, although “certain surfaces of Paul’s corti-
cal bone portions could be considered generally flat,” Paul’s
cortical bone portions have curved surfaces that are “C-
shape[d].” Id. at *53–54. Accordingly, while the Board
again stated it was applying its construction to the “overall
shape” of Paul’s bone portions, it considered only the “C-
Case: 21-1117 Document: 62 Page: 14 Filed: 04/11/2022

-- 14 of 33 --

SURGALIGN SPINE TECHNOLOGIES v. LIFENET HEALTH 15
shape[d]” vertical plane of Paul,” and did not address the
flatness of the bone portions as they extend in the horizon-
tal direction.
Contrary to the Board’s as-applied construction, the
’532 patent clearly contemplates cortical bone portions hav-
ing curvature in the vertical plane. Indeed, the language
of claim 4 itself contemplates cortical bone portions with
vertical curvatures. Claim 4 recites that the bone graft can
be shaped like a “cylinder, a flattened curved block, [and] a
tapered cylinder.” ’532 patent col 46 ll. 60–65. For the cor-
tical bone portions to embody these shapes, there must be
some vertical curvature. In addition, figures 14, 35, 37, 38,
43, and 44, which both parties have asserted show “plate-
like” bone portions, see ’532 FWD, 2020 Pat. App. LEXIS
12593, at *29–30; J.A. 2925 ¶ 38, depict bone portions that
have curved surfaces in the vertical plane. One such figure
is Figure 14, shown in part below:
’532 patent Fig. 14.
Thus, we agree with Surgalign that it was error for the
Board to effectively construe “generally flat” to exclude
Case: 21-1117 Document: 62 Page: 15 Filed: 04/11/2022

-- 15 of 33 --

SURGALIGN SPINE TECHNOLOGIES v. LIFENET HEALTH 16
consideration of the horizontal plane. As the Board ini-
tially noted, the proper construction should consider the
“overall shape” of the cortical bone portion.
The evidence and arguments presented to the Board
support only one possible evidence-supported finding: that
substantial evidence does not support the Board’s determi-
nation that Grooms and Paul do not teach “plate-like” bone
portions when the correct construction is employed. See
Google, 759 F. App’x at 996; Corning, 873 F. 3d at 901–02.
The Board’s obviousness determination for claims 4 and 6–
11 was based solely on this erroneous determination. We
therefore reverse the Board’s obviousness determination
with respect to these claims insofar as it was based on the
Grooms and Paul references failing to teach the “plate-like”
claim limitation.6
II.
Surgalign’s second argument on appeal is that the
Board erred when it held claims 4 and 6–11 of the ’532 pa-
tent and claims 1–15 of the ’158 patent not unpatentable
over several combinations where Wolter is the primary ref-
erence. Surgalign Br. 50–72. Its arguments in that regard
are directed to the Board’s analysis regarding modifying
Wolter to use allogenic bone instead of autologous bone and
modifying Wolter to use a bone pin instead of a metal
screw. As to the first modification, Surgalign contends that
the Board erred because it did not frame its obviousness
analysis in terms of what a person of ordinary skill in the
art would have been motivated to do at the time of the in-
vention in 1999, and instead focused on Wolter’s 1987
statements that autologous bone was preferable to allo-
genic bone. Surgalign’s Br. 52–56. Surgalign also contends
6 On remand, the Board should proceed to analyze
the remaining issues raised by Grounds 2 and 5 of the pe-
tition.
Case: 21-1117 Document: 62 Page: 16 Filed: 04/11/2022

-- 16 of 33 --

SURGALIGN SPINE TECHNOLOGIES v. LIFENET HEALTH 17
that the Board erroneously focused its motivation to com-
bine analysis on whether making a Wolter-type graft from
allogenic bone would have been the preferred solution. Id.
at 56–59. As to the second modification, Surgalign con-
tends that the Board erred when it found lack of motivation
to combine and no reasonable expectation of success with
respect to replacing the metal screw used in Wolter with a
bone pin. According to Surgalign, the Board erroneously
combined these two considerations—motivation to com-
bine, expectation of success—into a single inquiry into
whether the proposed combination would have been “diffi-
cult.” Id. at 60–62. Surgalign also argues that the Board’s
findings of lack of motivation to combine and reasonable
expectation of success are not supported by substantial ev-
idence. Surgalign takes issue with (a) the Board’s finding
that Wolter’s graft lacked a precise fit, because Wolter de-
scribes its iliac crest bone portions as fitting in a “precisely-
fitting manner,” J.A. 2661; (b) the Board’s reliance on Dr.
Shaffrey’s testimony about how an ordinary artisan would
not have expected success in pushing an allograft bone pin
through Wolter’s graft, because Surgalign contends this
testimony was not directed to using a bone pin with an al-
lograft; and (c) the Board’s reliance on fact-witness Mr.
Gaskins’ testimony. Id. at 65–70.
LifeNet responds that the Board properly addressed
the question of whether an ordinarily skilled person in
1999 would have been motivated to modify Wolter’s auto-
graft to an allograft, and that the Board’s factual findings
were supported by substantial evidence. Specifically,
LifeNet contends, the Board found that a skilled artisan in
1999 would not have been motivated to “beg[in] with
Wolter” and to “adapt[] it to an allograft against the refer-
ence’s teachings,” including because the Wolter-style graft
was “tailored to the demands of filling a large defect using
an autograft that can be made during surgery.” LifeNet
Br. 53 (quoting ’158 FWD, 2020 Pat. App. LEXIS 12576, at
*30).
Case: 21-1117 Document: 62 Page: 17 Filed: 04/11/2022

-- 17 of 33 --

SURGALIGN SPINE TECHNOLOGIES v. LIFENET HEALTH 18
With respect to whether one of skill in the art would
have replaced Wolter’s metal screw with a bone pin,
LifeNet argues that the Board simply found that the “tech-
nical difficulties” inherent in Surgalign’s proposed modifi-
cation to Wolter undermined Surgalign’s arguments on
both motivation to combine and reasonable expectation of
success, not that the two findings had been combined. Id.
at 54–60. But, even if the Board did conflate the two issues,
LifeNet urges, the Board made sufficient factual findings
to support its judgment. Id. at 59.
As to whether substantial evidence supports the
Board’s findings of lack of motivation to combine and rea-
sonable expectation of success, LifeNet responds in kind to
each of Surgalign’s arguments. First, LifeNet contends
that the Board’s findings were not premised entirely on a
lack of a precise fit in Wolter. According to LifeNet, it was
just one point of many that undercut Surgalign’s obvious-
ness case. Id. at 61–64. Second, LifeNet contends that Dr.
Shaffrey’s testimony included testimony pertaining to a
bone pin with an allograft, even if the Board quoted a par-
agraph pertaining to an autograft. Id. at 64–65 (citing J.A.
4726–27, J.A. 30–33, J.A. 157–61). Third, LifeNet con-
tends that Surgalign did not move to exclude Mr. Gaskins’
testimony, that there is nothing improper about the
Board’s reliance on fact testimony, and that Surgalign is
improperly seeking a re-weighing of the credibility of the
witnesses and evidence. Id. at 65–67.
We turn to the “bone pin” issue first. We agree with
LifeNet that, even if the Board did conflate motivation to
combine and reasonable expectation of success, the FWDs
contain sufficient factual findings supported by substantial
evidence of no reasonable expectation of success, even if the
Board had held there was a motivation to combine. As
noted above, the Board found that a bone pin is weaker
than a metal screw. ’158 FWD, 2020 Pat. App. LEXIS
12576, at *32–33. The Board also found that “Wolter’s
stack of three large, irregularly shaped pieces of iliac bone
Case: 21-1117 Document: 62 Page: 18 Filed: 04/11/2022

-- 18 of 33 --

SURGALIGN SPINE TECHNOLOGIES v. LIFENET HEALTH 19
would be difficult to precisely line up for a bone pin, and
[that] it is doubtful that a bone pin could withstand the
force needed to impel a bone pin through the three sections
and their irregular surface.” Id. at *33–34.
Substantial evidence supports these findings. Both Dr.
Shaffrey and Mr. Gaskins testified that a bone pin is sig-
nificantly weaker than a metal screw. See id. at *32–33
(quoting J.A. 4724–25 ¶103 (Shaffrey) and J.A. 4769 ¶16
(Gaskins)); see also id. at *33 (stating that Surgalign’s ex-
pert Mr. Sherman also agreed that a small-fragment can-
cellous bone screw is stronger than a cortical bone pin in
all axes). In addition, the Board credited Dr. Shaffrey’s tes-
timony explaining that a person of skill in the art “would
not expect success in pushing an allograft bone pin through
Wolter’s graft because passing a bone pin through ‘the
thick bone tissue and across the irregular interfaces of the
iliac crest would be considered unfeasible.’” Id. at *35
(quoting J.A. 4724–25 ¶103). As the Board noted, Dr. Shaf-
frey specifically explained that “using a bone pin to hold
three stacked iliac crest allografts together would not work
for the same reasons [he] discussed with respect to an au-
tograft.” Id. (quoting J.A. 4727 ¶106). For its part, Mr.
Gaskins’ testimony explains that the technologies known
at the time of the invention would not have resolved the
technical difficulties of inserting a bone pin into a graft. Id.
(citing J.A. 4769–70, J.A. 4772, J.A. 4773–74 ¶¶ 17–18, 22,
26–28). And, finally, we see no error in the Board’s reliance
on Mr. Gaskins’ testimony. See Fanduel, Inc. v. Interactive
Games LLC, 966 F.3d 1334, 1344 (Fed. Cir. 2020) (indicat-
ing that expert testimony is not required for the Board to
make factual findings based on its view of the record).
Thus, even if the Board improperly analyzed motiva-
tion to combine, the Board’s ultimate conclusion that
claims 4 and 6–11 of the ’532 patent and claims 1–15 of the
’158 patent were not rendered obvious by Wolter is sup-
ported by its finding that one of skill in the art would not
have had a reasonable expectation of success in
Case: 21-1117 Document: 62 Page: 19 Filed: 04/11/2022

-- 19 of 33 --

SURGALIGN SPINE TECHNOLOGIES v. LIFENET HEALTH 20
substituting a bone pin for Wolter’s metal screw, which is
itself supported by substantial evidence. See Intelligent
Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359,
1367 (Fed. Cir. 2016) (“[T]his court sits to review judg-
ments, not opinions. And while the Board conflated two
different legal concepts—reasonable expectation of success
and motivation to combine—it nevertheless made suffi-
cient factual findings to support its judgment that the
claims at issue are not invalid.” (internal quotation marks
and citation omitted)). Because the Board found no reason-
able expectation of success, and because that finding is sup-
ported by substantial evidence, the Board’s determination
that the claims are not invalid is supported.
Having found that the Board’s analysis for expectation
of success for replacing Wolter’s screws with bone pins is
not legally erroneous, we need not reach Surgalign’s argu-
ments regarding modification of Wolter to allogenic bone.
III.
In cross-appealing the Board’s holding that Surgalign
had shown claims 12–21 of the ’532 patent to be unpatent-
able, LifeNet challenges the Board’s construction of the
term “disposed between,” as recited in independent claim
12. As noted, that claim requires an osteoconductive sub-
stance that is “disposed between” two cortical bone por-
tions. LifeNet argues that the Board erred when it
construed the term to not require complete separation of
the cortical bone portions. LifeNet Br. 69–74. This is be-
cause, LifeNet contends, the ’532 patent refers to the corti-
cal bone portions as being “disposed apart” from each other,
uses different language such as “disposed in” when describ-
ing a material that does not completely separate the pieces
that surround it, and consistently uses the phrase “dis-
posed between” with reference to figures that show com-
plete separation between the cortical bone portions.
LifeNet Br. 70–74; see also LifeNet Reply Br. 3–4, 8–13 (ar-
guing that the ’532 patent implicitly defined “disposed
Case: 21-1117 Document: 62 Page: 20 Filed: 04/11/2022

-- 20 of 33 --

SURGALIGN SPINE TECHNOLOGIES v. LIFENET HEALTH 21
between” to require complete separation through its re-
peated, consistent, and exclusive use of the term in that
manner).
In addition, LifeNet urges, the Board erred by giving
too much weight to the language of the claims of the ’158
patent without properly analyzing the specification of the
patent. Because the specification of the ’158 patent is sub-
stantially similar to that of the ’532 patent, and because
the Board acknowledged that the specification of the ’532
patent did provide some support for a construction requir-
ing complete separation, LifeNet asserts that the ’158 pa-
tent similarly supports such a construction. LifeNet Br. at
74–76.
Surgalign responds by pointing out that LifeNet has
not challenged the Board’s finding that, looking solely at
the claim language, the ordinary meaning of “disposed be-
tween” does not require complete separation. Surgalign
Resp. & Reply Br. 53. Nor do the specification, prosecution
history, and figures of the ’532 patent clearly redefine the
term to require complete separation, Surgalign contends.
Id. at 54–57. For example, Surgalign argues, as the Board
found when addressing obviousness over Grooms, the pa-
tent’s use of “disposed in” to describe material in a channel
does not suggest that material “disposed between” two cor-
tical bone portions must completely separate them, id. at
58 (citing ’532 FWD, 2020 Pat. App. LEXIS 12593, at *36);
see also id. at 61–63, nor does the use of “disposed apart”
elsewhere in the patent clearly redefine “disposed be-
tween,” id. at 58–59. Surgalign also contends that the
drafters of the ’532 patent knew how to, but chose not to,
claim structures in which the cortical bone portions were
“not in physical contact,” as illustrated by the claims of the
’158 patent. Surgalign Resp. & Reply Br. 60, 63–67.
As we explained in Trustees of Columbia University,
“[o]ur case law does not require explicit redefinition or dis-
avowal.” 811 F.3d at 1363–65. Instead, the specification
Case: 21-1117 Document: 62 Page: 21 Filed: 04/11/2022

-- 21 of 33 --

SURGALIGN SPINE TECHNOLOGIES v. LIFENET HEALTH 22
should be consulted to determine a term’s meaning, since
“a claim term may be clearly redefined without an explicit
statement of redefinition” and “[e]ven when guidance is not
provided in explicit definitional format, the specification
may define claim terms by implication such that the mean-
ing may be found in or ascertained by a reading of the pa-
tent documents.” Id. at 1364 (quoting Philips v. AWH
Corp., 415 F.3d 1303, 1320–21 (Fed. Cir. 2005) (en banc));
see also In re Abbott Diabetes Care Inc., 696 F.3d 1142,
1148–50 (Fed. Cir. 2012) (concluding that the broadest rea-
sonable construction of “electrochemical sensor” would not
include a sensor with external cables and wires where the
patent “repeatedly, consistently, and exclusively” depicted
an electrochemical sensor without external cables or wires
and disparaged sensors with external cables or wires);
Groove Digital Inc. v. United Bank, 825 F. App’x 852, 856
(Fed. Cir. 2020) (concluding that a district court’s construc-
tion of “applet” to require geotargeting was not error,
where the patent “repeatedly, consistently, and exclu-
sively” depicted applets as being geotargeted and the pa-
tent’s Field of the Invention described the “present
invention” as “delivering and serving local content and ad-
vertisements”). Here, it is true that the figures and lan-
guage of the ’532 patent’s specification exclusively show
“disposed between” as completely separating, but, unlike in
Abbott and Groove, there is both an uncontested ordinary
meaning that is not limited as LifeNet urges and evidence
in the form of the claims of the ’158 patent suggesting that
“disposed between” was not so limited, since the separate
“not in physical contact” language was separately and ex-
pressly recited in claims 1 and 2 of the ’158 patent. Thus,
we cannot say that there has been a clear redefinition of
“disposed between,” either explicitly or implicitly, to re-
quire complete separation.
Because we see no error in the Board’s construction of
“disposed between,” we affirm the Board’s obviousness
Case: 21-1117 Document: 62 Page: 22 Filed: 04/11/2022

-- 22 of 33 --

SURGALIGN SPINE TECHNOLOGIES v. LIFENET HEALTH 23
determination with respect to claim 12 of the ’532 patent,
and its dependent claims 13–21.
CONCLUSION
We have considered the parties’ remaining arguments
and do not consider them to be persuasive. For the reasons
set forth above, we affirm the Board’s decision in the ’158
FWD that claims 1–15 of the ’158 patent have not been
proven to be unpatentable. We also affirm the Board’s de-
cision in the ’532 FWD that claims 12–21 have been proven
to be unpatentable and that claims 4 and 6–11 have not
been proven to be unpatentable over Wolter. We reverse
the Board’s decision in the ’532 FWD that claims 4 and 6–
11 have not been proven to be unpatentable over Grooms
and Paul. The case is remanded to the Board for further
proceedings consistent with this opinion.
AFFIRMED-IN-PART, REVERSED-IN-PART, AND
REMANDED
COSTS
No costs.
Case: 21-1117 Document: 62 Page: 23 Filed: 04/11/2022

-- 23 of 33 --

N OTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
SURGALIGN SPINE TECHNOLOGIES, INC., FKA
RTI SURGICAL, INC.,
Appellant
v.
LIFENET HEALTH,
Cross-Appellant
______________________
2021-1117, 2021-1118, 2021-1236
______________________
Appeals from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in Nos. IPR2019-
00569, IPR2019-00570.
______________________
N EWMAN, Circuit Judge, dissenting, in part.
This appeal concerns LifeNet’s invention of a novel
bone graft for implant into the spinal column. LifeNet’s
spinal graft is a composite of layers of cortical bone and
cancellous bone, in a new structure that promotes the
growth of patient bone at the implantation site by pro-
cesses of osteoinductivity and cellularization. The LifeNet
graft is reported to provide enhanced stability and strength
to the spinal column.
Case: 21-1117 Document: 62 Page: 24 Filed: 04/11/2022

-- 24 of 33 --

SURGALIGN SPINE TECHNOLOGIES v. LIFENET HEALTH 2
On LifeNet’s suit for patent infringement, Surgalign
filed petitions for inter partes review of several LifeNet pa-
tents. The two patents on this appeal are U.S. Patent No.
8,182,532 (“the ’532 patent”) and U.S. Patent No. 6,458,158
(“the ’158 patent”). I focus on my colleagues’ erroneous re-
versal of the PTAB’s decision sustaining validity of claims
4 and 6–11 of the ’532 patent.1 The references on which the
majority relies to invalidate claims 4 and 6–11 of the ’532
patent, the Grooms and Paul references, do not show or
suggest the claimed structure of plate-like layers of cortical
and cancellous bone. The novelty of the claimed structure
is undisputed, and the PTAB’s ruling of nonobviousness is
well supported by the specification and the prior art.
I respectfully dissent from my colleagues’ reversal of
the PTAB decision sustaining validity of claims 4 and 6–
11.
Novelty is conceded for the composite spine struc-
ture recited by claims 4 and 6–11 of the ’532 patent
The ’532 patent summarizes its new spine graft struc-
ture as
including a graft unit having one or more
through-holes configured to accommodate [one]
or more pins, the graft unit including a first
plate-like cortical bone, a second plate-like cor-
tical bone, a plate-like cancellous bone disposed
between the first plate-like cortical bone and
the second plate-like cortical bone to form the
graft unit, and one or more cortical bone pins
for holding together the graft unit.
1 Surgalign Spine Techs., Inc. v. LifeNet Health, No.
IPR2019-00570, (P.T.A.B. Aug. 26, 2020) (“’532 Decision”);
No. IPR2019-00569 (P.T.A.B. Aug. 26, 2020 (“’158 Deci-
sion”).
Case: 21-1117 Document: 62 Page: 25 Filed: 04/11/2022

-- 25 of 33 --

SURGALIGN SPINE TECHNOLOGIES v. LIFENET HEALTH 3
’532 patent, col. 6, ll. 4–12. The graft unit is pictured as
follows, showing the outer layers of cortical bone and the
inner layer or cancellous bone:
LifeNet Br. 7 (annotating ’532 patent Figure 1, cancellous
bone (3) in green; cortical bone (2), (4) in red; bone pins (7)
in blue).
The Grooms and Paul references describe spinal bone
graft structures, illustrating the complexity of the problem
and the need for improved solutions. For the ’532 struc-
ture, LifeNet describes the advantage whereby this struc-
ture “distribute[s] the stresses of the spinal column
between the two parallel and flush cortical bone portions,”
resulting in “little to no stress distribution toward the cen-
ter of the graft.” Declaration of Barton Gaskins ¶ 33;
LifeNet Br. 7–8.
Claim 4 of the ’532 patent describes the composite spi-
nal bone graft structure of layers of cortical and cancellous
bone, as follows:
4. A composite spinal bone graft comprising:
Case: 21-1117 Document: 62 Page: 26 Filed: 04/11/2022

-- 26 of 33 --

SURGALIGN SPINE TECHNOLOGIES v. LIFENET HEALTH 4
a graft unit having one or more
through-holes configured to accommodate
one or more pins, said graft unit compris-
ing:
a first plate-like cortical bone portion
configured to contact a portion of the host
bone;
a second plate-like cortical bone portion
configured to contact a portion of the host
bone;
a plate-like cancellous bone portion dis-
posed between said first plate-like cortical
bone portion and said second plate-like cor-
tical bone portion and configured to contact
a portion of the host bone to form said graft
unit; and
one or more cortical bone pins connect-
ing bone portions of said bone graft unit,
said composite spinal bone graft having a
shape selected from the group consisting of
a parallelepiped, a parallel block, a square
block, a trapezoid wedge, a cylinder, a flat-
tened curved block, a tapered cylinder, and
a polyhedron,
wherein said composite spinal bone
graft comprises one or more textured sur-
faces comprising a plurality of closely
spaced continuous protrusions in a linear
arrangement and said spinal bone graft is
configured for implantation into the ante-
rior spinal column of the host.
’532 patent, col. 46, l. 48–col. 47, l. 3.
As the ’532 specification describes and the claims re-
cite, the assembled “composite spinal bone graft” as a
Case: 21-1117 Document: 62 Page: 27 Filed: 04/11/2022

-- 27 of 33 --

SURGALIGN SPINE TECHNOLOGIES v. LIFENET HEALTH 5
whole may have a specified shape such as a cylinder or a
wedge as recited in claim 4, and any of these shapes must
be made of layered bone portions that are “plate-like.” All
the drawings illustrate this essential structure. For exam-
ple, Figure 1 shows a trapezoidal wedge made of two plate-
like cortical bone portions. ’532 Patent, Fig. 1; id. at col.
19, ll. 16–24 (describing same).
The panel majority reverses the Board’s finding that
“the Grooms and Paul references fail[] to teach the ‘plate-
like’ claim limitation.” Maj. Op. at 16. The majority errs,
for the Grooms and Paul grafts are explicitly not plate-like,
and cannot be so viewed. The Grooms and Paul references,
separately or together, do not show or suggest the structure
described and claimed in the ’532 patent.
The Grooms reference, United States Patent Appl.
2002/0138143, does not render obvious the ’532 struc-
ture, alone or in combination other references
Grooms describes a spinal bone graft that “is machined
to form a symmetrically or asymmetrically shaped (e.g. a
substantially “D”-shaped) implant having a canal running
therethrough.” Grooms, Abstract. The Grooms spinal
graft is pictured as follows:
Case: 21-1117 Document: 62 Page: 28 Filed: 04/11/2022

-- 28 of 33 --

SURGALIGN SPINE TECHNOLOGIES v. LIFENET HEALTH 6
Grooms Reference, Figure 8A.
The Grooms spinal graft is composed substantially of
cortical bone, with “a canal running therethrough” that
may be “packed” with “[o]steogenic, osteoinductive, or oste-
oconductive materials.” Grooms, Abstract.
The Board defined the claim term “plate-like” as mean-
ing “generally flat,” as the parties agree. The Board found
that “plate-like” refers to “overall shape, not merely
whether [the bone portion] include[s] a region that is gen-
erally flat.” ’532 Decision at 48.
The Board explained that Grooms teaches “cortical
bone portions [that] have a generally flat base with legs or
curved portions that extend away from the base so that the
two cortical portions meet away from the flat base portion.”
’532 Decision at 47. The Board found that Grooms does not
describe or teach a plate-like structure of cortical bone, for
the Grooms spinal implant is “D- or bread loaf-shaped.”
’532 Decision at 48 (citing Grooms, ¶ 9). The Board further
found that the bone portions of Grooms do not meet at the
generally flat faces of the bone portions of the implant, but
Case: 21-1117 Document: 62 Page: 29 Filed: 04/11/2022

-- 29 of 33 --

SURGALIGN SPINE TECHNOLOGIES v. LIFENET HEALTH 7
at the legs and curved ends of the bone portions. ’532 De-
cision at 48. Error has not been shown in these Board find-
ings.
The Board stated “that in considering whether Grooms’
cortical bone portions are ‘plate-like,’ we consider their
overall shape, not merely whether they include a region
that is generally flat.” ’532 Decision at 47–48. It is beyond
debate that Grooms’ “bread-loaf-shaped” structure in not
“generally flat.” The Board’s analysis was consistent with
the testimony of Mr. Michael Sherman, Surgalign’s expert,
who identified only “the top” of the Grooms bone portion as
“generally flat.” Sherman Dep. 85:10–86:25, No. IPR2019-
00570, Ex. 2032; Appx4924–Appx4925. The Board consid-
ered the “overall shape” of the cortical bone portions of
Grooms and Paul and found that they were not “generally
flat.” ’532 Decision at 48.
The Paul reference, U.S. Patent No. 6,258,125,
does not render obvious the ’532 structure,
alone or in combination with other references
Paul describes a “C-shaped” “allogenic intervertebral
implant” of cortical bone. ’532 Decision at 52. The Paul
structure is depicted as follows:
Case: 21-1117 Document: 62 Page: 30 Filed: 04/11/2022

-- 30 of 33 --

SURGALIGN SPINE TECHNOLOGIES v. LIFENET HEALTH 8
Paul, Figure 9.
Paul’s structure consists of two cortical half-shell por-
tions that are “scalloped to have a C-shape” with a deep
concave surface; and when placed together they “form ‘cy-
lindrical space 72’ between them.” Paul, col. 5, ll. 13–15;
’532 Decision at 52 (quoting id.); see also ’532 Decision at
52 (“[W]e assess the overall shape of Paul’s cortical bone
portions to determine if they are ‘plate-like.’”).
The Board recognized that “certain surfaces” of the
Paul reference “could be considered generally flat.” ’532
Decision at 52. However, as Surgalign states: “A single flat
surface would not make a bone portion generally flat.”
Surgalign Br. 40. The Board found that Paul’s overall
Case: 21-1117 Document: 62 Page: 31 Filed: 04/11/2022

-- 31 of 33 --

SURGALIGN SPINE TECHNOLOGIES v. LIFENET HEALTH 9
structures are not plate-like, as the ’532 claims require.
’532 Decision at 72–73.
The panel majority errs in ruling that since “plate like”
may include some curvature, the Grooms and Paul struc-
tures are therefore plate-like. The panel majority agrees
that the Board’s construction of “plate like” as meaning
“generally flat” is correct, and appears to agree that “the
proper construction should consider the ‘overall shape’ of
the cortical bone portion.” Maj. Op. at 16. However, the
majority holds that the curved portions of the Grooms and
Paul structures render obvious the ’532 structure.
The majority finds that “the ’532 patent clearly con-
templates cortical bone portions having curvature in the
vertical plane,” citing claim 4’s recitation that the bone
graft can be shaped like a “cylinder, a flattened curved
block, a tapered cylinder, a trapezoid . . . .” Maj. Op. at 15.
The majority appears to misunderstand the ’532 invention,
for the specification states and the drawings illustrate that
the term “plate-like” refers to the layers of cortical and can-
cellous bone within the bone graft. E.g., ’532 patent, col. 6,
ll. 6–11 (“the graft unit including a first plate-like cortical
bone, a second plate-like cortical bone, a plate-like cancel-
lous bone disposed between the first plate-like cortical bone
and the second plate-like cortical bone to form the graft
unit . . . .”).
The panel majority states that the Board “did not ad-
dress the flatness of the bone portions as they extend in the
horizontal direction.” Maj. Op. at 15. That statement does
not accord with the record: The Board treated this aspect
at length, for it was the core of Surgalign’s invalidity argu-
ment. While Surgalign now argues that the Board “disre-
gard[ed] the horizontal plane,” that argument cannot be
squared with the Board’s discussion of the horizontal
planes of the various structures and the Board’s determi-
nation that the bone portions of Grooms and Paul are not
generally flat. ’532 Decision at 48; 52; Surgalign Br. 37.
Case: 21-1117 Document: 62 Page: 32 Filed: 04/11/2022

-- 32 of 33 --

SURGALIGN SPINE TECHNOLOGIES v. LIFENET HEALTH 10
The parties generally agreed that “plate-like” means “gen-
erally flat.” The majority’s finding that the Grooms and
Paul “C-” and “D-shaped” grafts are plate-like does not
withstand analysis.
LifeNet’s expert, Dr. Shaffney, explained the ad-
vantages of the ’532 structure, and that the grafts of
Grooms and Paul “have proven to be less efficacious” be-
cause they “do not have consistent mechanical strength
and load-bearing along their entire length.” Second Decla-
ration of Dr. Mark Shaffney, ¶ 129, No. IPR2019-00570,
Ex. 2028; Appx4738. These advantages, in a field of com-
plex medical physiology, contribute to the factual premises
of nonobviousness.
CONCLUSION
The Board’s findings are supported by substantial evi-
dence. See, e.g., Medtronic, Inc. v. Barry, 891 F.3d 1368,
1375 (Fed. Cir. 2018). Substantial evidence “means such
relevant evidence as reasonable minds might accept as ad-
equate to support a conclusion.” Consol. Edison Co. of New
York v. N.L.R.B., 305 U.S. 197, 229 (1938). My colleagues
err in reversing the Board’s decision and holding claims 4
and 6–11 of the ’532 patent unpatentable on the ground of
obviousness over Grooms and Paul. I respectfully dissent.
Case: 21-1117 Document: 62 Page: 33 Filed: 04/11/2022

-- 33 of 33 --