California Federal Judge Invalidates Spinal Surgery Patents Due To Lack Of Objective Boundaries

On November 19, 2014, a federal district court in California invalidated claims in two spinal surgery patents, finding the claims indefinite under the U.S. Supreme Court's recent Nautilus1 standard. In Abdou v. Alphatec Spine, the Southern District of California granted summary judgment of invalidity regarding U.S. Patents 7,951,153 and 8,172,855 asserted by surgeon Dr. Samy Abdou against defendant Alphatec Spine, Inc. ("Alphatec").2 The court found that the patent claims at issue lack the objective boundaries required under Nautilus for meeting the public notice function of patents. Notably, the court found that the claims would have survived under the old "insolubly ambiguous" test that was the applicable law until June 2014, so this case appears to show the effect of the change in law.3 The summary judgment ruling in Abdou is likely to be particularly significant because indefiniteness is frequently (and increasingly) presented as a defense in patent litigation.

The Claims at Issue for the Court's Indefiniteness Analysis

Defendant Alphatec contended that independent claims 1, 6, 8, 12 and 21 of U.S. Patent 7,951,153 ("the '153 Patent") and independent claims 6 and 28 of U.S. Patent 8,172,855 ("the '855 Patent") are indefinite.4 The relevant claim terms in the '153 Patent are: "defined anatomical position," "defined anatomical relationship" and "defined spatial relationship." The relevant claim terms in the '855 Patent are: "attaches on to a first surface" and "in proximity to the first vertebral bone."

The Court's Reasoning for Finding the Claims Indefinite Under the Nautilus Standard

The requirement for "definiteness" in the patent claims at issue is found in 35 U.S.C. § 112 ¶25: "[t]he specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention." The court in Abdou explained that the "reasonable certainty" standard for definiteness under Nautilus requires clarity to "[apprise] the public of what is still open to them" that is more than providing "some meaning" or "some standard" for measuring claim scope, but is less than absolute or mathematical precision.6 In applying this more rigorous standard, the court accepted certain limitations of claim scope put forth by the patentee's expert but found that the absence of identified, objective boundaries in terms of proximity, distance or location respectively rendered the claim terms at...