NOTE: This disposition is nonprecedential.

United States Court of Appeals 

for the Federal Circuit ______________________ 

NUVASIVE, INC.,

Appellant

v.

ANDREI IANCU, UNDER SECRETARY OF 

COMMERCE FOR INTELLECTUAL PROPERTY 

AND DIRECTOR OF THE UNITED STATES 

PATENT AND TRADEMARK OFFICE,

Intervenor

______________________ 

2017-1666

______________________ 

Appeal from the United States Patent and Trademark 

Office, Patent Trial and Appeal Board in No. 95/001,888.

______________________ 

Decided: November 9, 2018

______________________ 

MICHAEL T. ROSATO, Wilson, Sonsini, Goodrich & 

Rosati, PC, Seattle, WA, argued for appellant. Also 

represented by SONJA ROCHELLE GERRARD; GRACE J. PAK,

PAUL DAVID TRIPODI, II, Los Angeles, CA; RICHARD 

TORCZON, Washington, DC. 

 BENJAMIN T. HICKMAN, Office of the Solicitor, United 

States Patent and Trademark Office, Alexandria, VA, 
2 NUVASIVE, INC. v. IANCU

argued for intervenor. Also represented by THOMAS W.

KRAUSE, FRANCES LYNCH. 

 ______________________ 

Before NEWMAN, CHEN, and HUGHES, Circuit Judges.

CHEN, Circuit Judge 

NuVasive, Inc. (NuVasive) appeals from the decision 

of the U.S. Patent and Trademark Office, Patent Trial 

and Appeal Board (Board) in an inter partes reexamination proceeding holding claims 17–22 and 24–27 of U.S. 

Patent No. 7,691,057 obvious. The ’057 patent is directed 

to a surgical access system and related methods for creating minimally invasive operative corridors through tissue 

with significant neural structures. ’057 patent col. 2 l. 

61–col. 3 l. 7. Because the PTO admits that its construction of “lateral, trans-psoas path to the targeted lumbar

spinal disc” was too broad, we modify its construction to 

align with the construction we adopted in In re NuVasive, 

Inc., 693 F. App’x 893 (Fed. Cir. 2017) (NuVasive I) for a 

very similar term. As to secondary considerations, we 

conclude that the Board erred in finding no nexus between NuVasive’s claimed method and its commercial 

“eXtreme Lateral Interbody Fusion” (XLIF) surgical 

technique. And we conclude that further fact finding is 

needed as to whether WIPO Publication No. WO 01/37728 

(Kelleher) teaches a nerve-monitoring technique for the 

iliohypogastric and ilioinguinal nerves. Accordingly, we 

vacate the Board’s obviousness determination and remand for the Board to conduct a new analysis consistent 

with this opinion. 

BACKGROUND

A 

Interbody fusion is a commonly used surgical procedure to address pain associated with damaged intervertebral discs. The procedure involves removing some or all of 
NUVASIVE, INC. v. IANCU 3

a damaged disc and inserting an implant in place of the 

disc. There are three primary approaches to this spinal 

surgical area: posterior, anterior, and lateral. While the 

lateral approach (from the side of the patient’s body) 

provides the most direct route to the disc space, one major 

obstacle is the lumbar plexus, a network of nerves originating in the spinal column and exiting through the 

opening of the lumbar vertebra. The lumbar plexus runs 

through the psoas muscle and is found in the posterior 

portion of the muscle. The nerves of the lumbar plexus 

innervate (i.e., supply) the leg and pelvic region with 

sensory and motor neurons. Surgery through the lumbar 

plexus is challenging because the nerves are anatomically 

tethered to the spinal column so they cannot be easily 

moved out of the surgical path. And damage to the nerves 

in the lumbar plexus can have serious side effects, including motor function impairment and extreme pain. 

As a result, before the patented method, surgeons 

traditionally performed interbody fusion procedures from 

the posterior aspect (back) or anterior aspect (front) of a 

patient. These approaches, however, also had their 

drawbacks. The posterior approach required removing 

the bony processes from the spine and was associated 

with a higher incidence of neural complications from 

damage to the paraspinal nerves emanating from the rear 

of the spinal column. The anterior approach risked damaging internal organs and major blood vessels. 

NuVasive’s ’057 patent addressed these challenges by 

making a lateral approach through the psoas muscle 

safer. NuVasive markets this trans-psoas surgical system 

and procedure under the tradename “eXtreme Lateral 

Interbody Fusion” or “XLIF.” 

The ’057 patent, entitled “Surgical Access System and 

Related Methods,” covers a surgical access system and 

related methods for creating a minimally invasive operative corridor through tissue with significant neural struc-
4 NUVASIVE, INC. v. IANCU

tures. ’057 patent col. 2 l. 61–col. 3 l. 7. This access 

system and related method involve: (1) distracting the 

tissue between the patient’s skin and surgical target site 

to create a distraction corridor, (2) retracting the distraction corridor to establish and maintain an operative 

corridor, and (3) detecting the existence of neural structures before and during the establishment of the operative corridor. Id. at col. 3 ll. 8–19. Nerve-monitoring (i.e., 

electromyography (EMG)) is accomplished with electrodes 

attached to the instruments used to create the operative 

corridor. Id. at col. 12 ll. 17–52. These electrodes emit a 

charge as the instruments advance through the body. Id. 

When the charge reaches a nerve, the nerve stimulates 

the muscle group it controls, and a surgeon observes the 

associated muscle twitch. Id. This muscle twitch data 

can also be fed into a graphical user interface that displays information about an instrument’s direction and 

relation relative to nearby nerves. Id. 

Claim 17, from which all of the challenged claims depend, covers NuVasive’s surgical access system and 

related methods. It reads: 

A method of accessing a surgical target site within 

a spine, comprising the steps of:

(a) creating a distraction corridor along a lateral, trans-psoas path to a targeted lumbar spinal 

disc in a lumbar spine using a distraction assembly comprising at least two dilators that are sequentially inserted along the lateral, transpsoas path to the targeted lumbar spinal 

disc, and performing neuromonitoring during at 

least a portion of the time the distraction assembly is used in creating the distraction corridor 

along the lateral, trans-psoas path, wherein 

the neuromonitoring comprises causing the emission of a plurality of electrical stimulation signals 

from a stimulation electrode provided on a distal 
NUVASIVE, INC. v. IANCU 5

portion of at least one component of the distraction assembly and monitoring for resulting electromyographic (EMG) activity after the emission 

of each stimulation signal, and wherein the component of the distraction assembly is coupled to a 

control unit of a neuromonitoring system that is 

capable of displaying to a user an indication of at 

least one of proximity and direction of a nerve to 

the stimulation electrode provided on the component of the distraction assembly based on the 

monitored resulting electromyographic (EMG) activity;

(b) slidably advancing a plurality of retractor 

blades of a retraction assembly along an outermost dilator of the at least two dilators of the distraction assembly, the retraction assembly 

comprising a handle assembly coupled to the plurality of retractor blades such that the retractor 

blades extend generally perpendicularly relative 

to arm portions of the handle assembly, each of 

said plurality of retractor blades having a generally concave inner face and a generally convex exterior face, said handle assembly being capable of 

moving said plurality of retractor blades from a 

closed position to an open position, said closed position being characterized by said plurality of retractor blades being positioned to abut one 

another and form a closed perimeter, said open 

position characterized by said plurality of retractor blades being positioned generally away from 

one another and forming an open perimeter;

(c) simultaneously introducing said plurality 

of retractor blades over the outermost dilator of 

said distraction assembly along the lateral, 

trans-psoas path to the targeted lumbar spinal disc while in said closed position;
6 NUVASIVE, INC. v. IANCU

(d) actuating said handle assembly to move 

said plurality of retractor blades to the open position so that the plurality of retractor blades create 

an operative corridor along the lateral, transpsoas path to the targeted lumbar spinal disc;

(e) releasably engaging a fixation element 

with at least one of the plurality of retractor 

blades so that a distal portion of the fixation element extends distally from the at least one retractor blade and penetrates into a lateral aspect of 

the lumbar spine, wherein the fixation element 

secures the at least one retractor blade to the 

lumbar spine;

(f) inserting an implant through the operative 

corridor created by the plurality of retractor 

blades along the lateral, trans-psoas path to 

the targeted lumbar spinal disc. 

Id. at col. 16 l. 28–col. 17 l. 3 (emphases added). 

Like the method claimed in the ’057 patent, NuVasive’s XLIF procedure involves inserting an implant 

through a trans-psoas operative corridor. The operative 

corridor is created by inserting sequential dilators along a 

lateral trans-psoas path to the lumbar spine. A retractor 

instrument is then advanced over the last inserted dilator, and a fixation element is engaged to maintain the 

operative corridor. During this process, EMG electrodes 

mounted on the surgical instruments and connected to 

NuVasive’s NeuroVision® System allows surgeons to 

monitor the placement of the surgical instruments relative to nearby neural structures. 

B 

NuVasive sued Globus Medical, Inc. for infringement 

of the ’057 patent on October 5, 2010, and Globus filed a 

request for an inter partes reexamination on February 8, 
NUVASIVE, INC. v. IANCU 7

2012, relying on several prior art references. The Examiner ordered a reexamination on claims 17–22 and 24–27. 

1. Prior Art

Kossmann1 describes establishing a narrow operative 

corridor from the side of the patient’s body to repair 

injuries to the spine. After making an incision, surgeons 

used a table-fixed retractor system to open the path to the 

affected vertebra. “To reach the vertebral bodies of the 

lumbar spine, the psoas muscle was mobilized at least in 

part and pushed backwards to reach the lateral aspect of 

the vertebra. . . . Splitting of the psoas muscle along its 

fibers had to be done in very athletic patients, since the 

excessive size of the muscle did not allow a direct lateral 

access to the vertebra.” J.A. 12636. This splitting was 

performed using a “blunt dissection” technique involving 

the surgeon’s finger or a wet sponge mounted on a stick to 

carefully separate the tissue. J.A. 12635–36.

Branch2 discloses using a retractor for creating surgical access channels and specifically contemplates interbody fusion and disc replacement surgeries. ’933 patent

(Branch) col. 2 ll. 47–51. After a surgeon makes an initial 

incision, she sequentially advances dilators through the 

incision to gradually widen the space of the operative 

corridor. Id. Once the operative corridor is the desired 

size, the surgeon positions a retractor over the last inserted dilator to maintain a working channel. Id. 

 

1 Thomas Kossmann et al., Minimally Invasive Vertebral Replacement with Cages in Thoracic and Lumbar 

Spine, 6 Euro. J. of Trauma 292–300 (2001). 

2 U.S. Patent No. 6,945,933, entitled “Instruments 

and Methods for Minimally Invasive Tissue Retraction 

and Surgery.” 
8 NUVASIVE, INC. v. IANCU

Koros3 teaches a variable length retractor designed to 

“hold organs, muscles, arteries, and other tissue out of the 

way” during surgery. ’139 patent (Koros) col. 1 ll. 34–50. 

Kelleher4 describes a system for “detecting the presence of a nerve near a surgical tool or probe.” WO 

01/37728 (Kelleher), Abstract. Kelleher observes that “it 

is especially important to sense the presence of spinal 

nerves when performing spinal surgery, since these 

nerves are responsible for the control of major body functions.” Id. at col. 1 ll. 15–17. The detection system relies 

on EMG to detect responses in the muscles controlled by 

the relevant nerves. Id. at col. 10 ll. 7–9. The system 

employs surgical tools with electrified cannuale through 

which other surgical tools are introduced into the patient. 

Id. at col. 16 ll. 15–27. These electrified cannulae emit an 

electric charge, which stimulates nerves, and these nerves 

in turn stimulate certain muscle groups to twitch. Id. at 

col. 12 ll. 21–34. The relevant muscle groups for lumbar 

spinal surgery are those in the patient’s legs. Id. at col. 

21 ll. 15–25. NuVasive is the assignee of the Kelleher 

application. 

2. First Office Action and Board Decision

In the first office action in the reexamination, the Examiner rejected the claims as obvious over Kossmann, 

Branch, Koros, and Kelleher. The Examiner found that 

Kossmann discloses a trans-psoas approach to spinal 

surgery; Branch teaches using a series of sequential

dilators and a retractor assembly for creating an operative corridor; Koros describes fixation screws that screw 

into the vertebrae at opposite sides of an affected disc; 

 

3 U.S. Patent No. 5,928,139, entitled “Retractor 

with Adjustable Length Blades and Light Pipe Guides.” 

4 WIPO Publication No. WO 01/37728, entitled 

“Electromyography Systems.” 
NUVASIVE, INC. v. IANCU 9

and Kelleher discloses EMG nerve-monitoring. Because

all these references pertain to minimally invasive surgical 

techniques, the Examiner found that it would have been 

obvious to a skilled artisan to combine them to arrive at 

the claimed surgical system and related method. 

In response, NuVasive presented two theories of nonobviousness and testimony from Dr. Jim Youssef, an 

orthopedic surgeon, to support these theories. First, 

NuVasive argued that none of the prior art taught creating an operative corridor along a lateral, trans-psoas path

using dilators and retractors, as recited in the claims of 

the ’057 patent. Kossmann primarily discussed moving 

the psoas muscle aside and only mentioned splitting the 

psoas muscle along its fibers in athletic patients with 

large psoas muscles. Even in those patients, surgeons 

split the psoas muscle with blunt dissection (using a 

finger or sponge on a stick), not with dilators and retractors. Blunt dissection, NuVasive asserted, was safer than 

dilation and retraction because surgeons viewed a sponge 

or finger as a safer tool than a dilator or retractor. Second 

NuVasive argued that while Kelleher is directed to systems for detecting the presence of nerves during surgical 

procedures, it does not teach monitoring nerves along a 

“lateral, trans-psoas path to the targeted lumbar spinal 

disc.” J.A. 348. NuVasive also argued that there was no 

reasoned explanation in the office action or reexamination 

request to support Globus’s motivation to combine Kelleher with Branch, Kossmann, and Koros. 

Globus responded with expert testimony from Dr. 

Isador Lieberman, an orthopedic surgeon specializing in 

spinal surgery. Dr. Lieberman rejected NuVasive’s theory 

that “blunt dissection” was safer than using dilators and 

retractors. Dr. Lieberman explained that “both techniques do the exact same thing for the exact same purpose” and that “one of ordinary skill in the art would have 

understood how to penetrate a distractor and retractor 

assembly through the psoas muscle.” J.A. 435. This is 
10 NUVASIVE, INC. v. IANCU

because skilled artisans were familiar with how to split 

psoas-muscle tissue in line with its fibers to minimize 

damage to the nerves, and NuVasive’s approach merely 

used ubiquitous surgical tools such as retractors to do so. 

Dr. Lieberman also opined that, because “Kelleher discloses a nerve detection system for use with surgical tools 

or probes for spinal surgery, one of ordinary skill in the 

art would understand how to [use it to] achieve an even 

greater ability to negotiate around important neuronal 

structures during trans-psoas operations.” J.A. 436. 

After considering the evidence, the Examiner concluded that the challenged claims would not have been 

obvious. The Examiner found that the prior art did not 

expressly teach dissection of the psoas muscle using a 

dilator and retractor, and “Kossman[n] [taught] using a 

trans-psoas approach for only a few patients and even 

then, using blunt dissection.” J.A. 530–31. The Examiner 

also found that Kelleher did not explicitly teach using 

nerve-monitoring in the lateral, trans-psoas context even 

though Kelleher did teach its use in lumbar spinal surgery. Globus appealed to the Board. 

The Board reversed the Examiner, finding the “bluntdissection” methods described in Kossmann not meaningfully different from the ’057 patent’s dilators and retractor. Specifically, the Board found that the Examiner 

“erred in concluding that one of ordinary skill in the art 

would not have considered the use of a dilator, as taught 

by Branch, to be an alternative ‘blunt instrument’ suitable for use in a ‘blunt dissection’ of the psoas muscle.” 

J.A. 955. “Branch evinces that a dilator is an alternative 

‘blunt instrument’ that would appear to provide a more 

precise and gradually increasing pathway as compared to 

a surgeon’s finger or wet sponge on a stick, as taught by 

Kossmann.” J.A. 856. The Board also disagreed with the 

weight the Examiner placed on the fact that Kossmann 

disclosed only splitting the psoas muscle in very athletic 

patients. “[A]ny need or problem known in the field of 
NUVASIVE, INC. v. IANCU 11

endeavor at the time of the invention and addressed by 

the patent can provide a reason for combining the elements in the manner claimed.” KSR Int’l Co. v. Teleflex 

Inc., 550 U.S. 398, 420 (2007). Thus, the Board determined that the problem of providing a lateral approach in 

“very athletic patients” is a reason that the skilled artisan 

would have used a lateral trans-psoas approach as taught 

by Kossmann. 

The Board also disagreed with the Examiner’s findings on Kelleher. The Board found that it would have 

been obvious to a skilled artisan to look to Kelleher’s 

nerve-monitoring system because Branch and Kossmann 

both teach the desirability of avoiding nerves in spinal 

surgery, and Kelleher itself discloses use in a minimallyinvasive spinal surgical system. 

3. Claim Amendment

The Board’s reversal of the Examiner’s decision created a new ground of rejection. 37 C.F.R. § 41.77(f) (2016). 

NuVasive chose to reopen prosecution rather than seek 

reconsideration of the Board’s decision. NuVasive 

amended claim 17 to include the use of nerve-monitoring 

technology—a limitation already recited in some of the 

other challenged claims—and offered objective evidence of 

nonobviousness supported by the declarations of three 

witnesses. After NuVasive submitted its new evidence, 

and before the Examiner issued the next office action, 

NuVasive and Globus settled, and Globus ended its 

participation in the reexamination. 

4. Second Board Decision

After the claim amendment, the Examiner once again 

found the claims to be nonobvious. Specifically, the 

Examiner found that none of the references taught nervemonitoring during a lateral, trans-psoas spinal procedure. 

For Kelleher to be properly combined with the other 

references, the Examiner stated that, “Kelleher must 
12 NUVASIVE, INC. v. IANCU

provide some suggestion or teaching to apply the taught 

neuromonitoring during a lateral trans-psoas spinal 

procedure.” J.A. 2801. And Kelleher, the Examiner 

concluded, does not. Id. The Examiner also found NuVasive’s objective evidence of nonobviousness persuasive. 

The Examiner cited an article touting “the use of realtime directional neuromonitoring to ensure a safe passage 

through the psoas-muscle,” as “a feature contributing to 

the success of the patent under reexamination.” J.A. 

2802. 

Although Globus had ceased its participation in the 

reexamination proceedings, the Examiner’s patentability 

decision returned to the Board for review under 37 C.F.R. 

§ 41.77(f). The Board once again reversed the Examiner. 

In its second decision, the Board offered three additional 

rationales and reiterated its previous reasoning to support its obviousness findings. 

First, the Board construed the phrase “lateral, transpsoas path to the targeted lumbar spinal disc.” J.A. 8–10. 

While it previously did not feel the need to construe the 

term, the Board found construction necessary after NuVasive introduced objective evidence of nonobviousness. Id. 

The Board concluded that the broadest reasonable interpretation of the phrase “encompasses a path, to the lumbar spinal disc, which passes through any portion of the 

psoas muscle, regardless of the portion, and which is to 

the lateral side of the body, to any significant degree, as 

compared to an anterior puncture.” J.A. 10. 

Second, the Board once again disagreed with the Examiner that Kelleher must provide some suggestion or 

teaching to apply neuromonitoring to a lateral transpsoas spinal procedure. The Board found that Kelleher’s 

neuromonitoring technology achieves Kossmann’s and 

Branch’s desire to avoid nerves, and Kelleher itself discloses the use of nerve-monitoring in a minimally invasive 

spinal surgical system. The Board found that it “is of no 
NUVASIVE, INC. v. IANCU 13

moment that the nerves sought to be avoided in 

Kossmann[‘s lateral approach] are the iliohypogastric and 

ilioinguinal nerves[;] these are still nerves that Kossmann 

teaches should be avoided in a lateral approach.” J.A. 12. 

While these nerves may not be present in the psoas 

muscle, both are still part of the lumbar plexus, which the 

’057 patented method seeks to avoid. The Board also 

rejected NuVasive’s argument that Kossmann only teaches traversing a “safe zone” of the psoas muscle where the 

important neural structures do not reside. The ’057 

patent does not define any particular “lateral, trans-psoas 

path to the targeted lumbar spinal disc,” and the claims 

themselves do not recite the step of navigating through

the lumbar plexus or any particular nerves. Thus even if 

Kossmann’s lateral trans-psoas path does not implicate 

the majority of the lumbar plexus, because Kossmann 

expressly teaches avoiding the iliohypogastric and ilioinguinal nerves, the Board found that no additional 

nerves need be avoided for the prior art to suggest that a 

skilled artisan would be motivated to include a nervemonitoring step during the creation of the operative 

corridor. 

Third, the Board found that NuVasive’s objective evidence carried little weight due to a lack of nexus with the 

challenged claims. “For objective evidence to be accorded 

substantial weight, its proponent must establish a nexus 

between the evidence and the merits of the claimed invention.” In re GPAC Inc., 57 F.3d 1573, 1580 (Fed. Cir. 

1995). In particular, the objective indicia “must be tied to 

the novel elements of the claim at issue” and “be reasonably commensurate with the scope of the claims.” Institut 

Pasteur & Universite Pierre Et Marie Curie v. Focarino, 

738 F.3d 1337, 1347 (Fed. Cir. 2013). The Board concluded that NuVasive had failed to prove this nexus based on 

two grounds. Using its construction of “lateral, transpsoas path,” the Board noted that claim 17 of the ’057 

patent is not limited to the lateral approach used in the 
14 NUVASIVE, INC. v. IANCU

XLIF procedure, but instead encompasses any psoastraversing approach that is lateral to the midline to any 

significant degree. The Board thus found that the XLIF 

procedure, is not reasonably commensurate with the scope 

of the claims. J.A. 19–20. 

Next, the Board found that NuVasive’s evidence failed 

to adequately establish what actually comprises the XLIF 

procedure and whether it is encompassed by claim 17 of 

the ’057 patent. While NuVasive did provide a claim 

chart mapping the features of claim 17 to its XLIF system 

and procedure, the Board concluded it was unable to 

discern whether the MaXcess® II Access System and 

NeuroVision® System, to which the chart refers, were part 

of the XLIF system. The Board also noted that NuVasive’s marketing materials at times used XLIF as a marketing term to identify a surgical technique and used 

XLIF at other times to identify groups of products. The 

Board concluded that, “when [NuVasive] uses the shorthand term ‘XLIF’ in its Request [to Reopen Prosecution], 

without clarification, we are unable to associate [NuVasive’s] objective evidence with particular products or 

features.” J.A. 18. Thus, while NuVasive presented 

evidence of long-felt need, skepticism followed by praise 

and recognition, and commercial success, the Board was 

not persuaded by NuVasive’s evidence due to this lack of 

nexus. The Board additionally found NuVasive’s objective 

evidence of nonobviousness insufficient. 

Taking all of the evidence into consideration, the 

Board concluded that claim 17 as amended, and the 

claims that depend therefrom, would have been obvious. 

NuVasive appeals the Board’s second decision under 

35 U.S.C. §§ 141 and 142. We have jurisdiction under 

28 U.S.C. § 1295(a)(4)(A). 
NUVASIVE, INC. v. IANCU 15

DISCUSSION

A 

“Obviousness is a question of law based on underlying 

findings of fact.” In re Kubin, 561 F.3d 1351, 1355 (Fed. 

Cir. 2009). We review the Board’s decisions under the 

standards set forth in § 706 of the Administrative Procedure Act (APA). We set aside the Board’s decisions if they 

are “arbitrary, capricious an abuse of discretion, or otherwise not in accordance with law” or “unsupported by 

substantial evidence.” 5 U.S.C. § 706(2) (2012). We 

review the Board’s legal conclusions de novo and its 

factual findings for substantial evidence. In re Gartside, 

203 F.3d 1305, 1316 (Fed. Cir. 2016). A finding of fact is 

supported by substantial evidence if a reasonable mind 

might accept the evidence as adequate support for the 

finding. Consol. Edison Co. v. NLRB, 305 U.S. 197, 229 

(1938). “If the evidence in [the] record will support several reasonable but contradictory conclusions, we will not 

find the Board’s decision unsupported by substantial 

evidence simply because the Board chose one conclusion 

over another plausible alternative.” In re Jolley, 308 F.3d 

1317, 1320 (Fed. Cir. 2002). 

B 

NuVasive presents three primary arguments on appeal. First, NuVasive contends that the Board erred in its 

construction of the term “lateral, trans-psoas path to the 

targeted lumbar spinal disc.” Specifically, NuVasive 

argues that the Board erred by failing to consider how the 

term “lateral” was used in the context of the ’057 patent. 

Second, NuVasive claims the Board erred in disregarding 

the evidence of secondary considerations by using its 

overly broad claim construction of “lateral, trans-psoas 

path to the targeted lumbar spinal disc” to conclude that 

the claims were not reasonably commensurate with the 

objective evidence and that the Board misunderstood the 

scope of the XLIF procedure. Third, NuVasive argues 
16 NUVASIVE, INC. v. IANCU

that the Board committed legal error because its obviousness determination lacks a motivation to combine the 

prior art references. We address each of these issues in 

turn below.

C 

Because NuVasive’s appeal turns in part on the construction of “lateral, trans-psoas path to the targeted 

lumbar spinal disc,” we address the claim construction 

issue below first.

The Board construed the term “lateral, trans-psoas 

path to the targeted lumbar spinal disc” as encompassing 

“a path to the lumbar spinal disc, which passes through 

any portion of the psoas muscle, regardless of the portion, 

and which is to the lateral side of the body, to any significant degree, as compared to an anterior puncture.” J.A. 

10. NuVasive contends that this construction is unreasonably broad, and on appeal, the PTO concedes that the 

Board’s construction might be too broad in light of our 

opinion in In re NuVasive, Inc., 693 F. App’x 893 (Fed. 

Cir. 2017) (NuVasive I). We issued a non-precedential 

opinion in NuVasive I shortly after NuVasive filed its 

notice of appeal in this case. NuVasive I was an appeal 

from an inter partes review filed by Medtronic, Inc. on 

U.S. Patent No. 8,016,767, which shares a very similar 

specification with the ’057 patent. 693 F. App’x at 894–

95. We concluded there that the broadest reasonable 

interpretation of the phrase “lateral, trans-psoas path to 

the lumbar spine” was “an approach to the lumbar spine 

that (1) approaches from the patient’s lateral aspect; and 

(2) goes through the psoas muscle.” 693 F. App’x at 900–

901. 
NUVASIVE, INC. v. IANCU 17

In light of the similarities between the ’767 and ’057 

patents,5 and because the parties agree that the appropriate construction of “lateral, trans-psoas path to the 

targeted lumbar spinal disc” is that which we enumerated 

for “lateral, trans-psoas path to the lumbar spine” in 

NuVasive I, we adopt that construction here. See Oral 

Arg. 1:33–2:00, 3:57–4:19; Intervenor Br. at 33. We 

review the Board’s obviousness decision in accordance 

with that construction below. 

D 

Because this new construction is directly implicated 

in the Board’s analysis of secondary considerations, we 

address this issue next. The Board concluded that NuVasive’s evidence of secondary considerations was unpersuasive because NuVasive had failed to establish a nexus 

between the claimed invention and the XLIF surgical 

technique. The Board provided two separate grounds for 

its conclusion. 

Under the first ground, the Board concluded that the 

XLIF procedure was not reasonably commensurate to the 

scope of the claims because the claims broadly covered a 

“lateral, trans-psoas path” that “encompasses a path to 

 

5 The ’057 and ’767 patents both disclose a surgical 

access system that includes a tissue distraction assembly, 

a tissue retraction assembly, and nerve-monitoring. ’057 

patent, abstract; ’767 patent, abstract. They also share 

many similar specification passages as well as figures. 

Compare ’057 Patent, Figures 2–5 and 16–18 with ’767 

Patent, Figures 9–12 and 20–22. The fields of invention 

in both patents are identical, the discussion of the prior 

art is substantially similar, and the surgical systems and 

related methods described in the preferred embodiments 

are likewise substantially similar. See ’057 patent col. 1 l. 

30–col. 2 l. 57; ’676 patent col. 1 34–col. 2 l. 60. 
18 NUVASIVE, INC. v. IANCU

the lumbar spinal disc, which passes through any portion 

of the psoas muscle, regardless of the portion, and which 

is to the lateral side of the body, to any significant degree, 

as compared to an anterior puncture.” J.A. 10, 20. On 

appeal, the PTO acknowledged that that this particular 

finding might be in error after our construction of the 

term in NuVasive I. Intervenor’s Br. at 47. And we find it 

to be in error because the Board’s construction is broader 

than that which we adopt in this opinion. 

Second, the Board found that the record NuVasive 

produced contained insufficient evidence to demonstrate 

whether its XLIF surgical technique is, in fact, what the 

’057 patent claims. Characterizing the evidence as “nebulous,” the PTO argues on appeal that the XLIF Surgical 

Technique Guide (Guide) NuVasive submitted uses the 

XLIF tradename at times in a manner that excludes 

limitations of the ’057 patent claims. For example, the 

Guide depicts dilators but does specify that these dilators 

are part of the XLIF instrument system; rather, these 

dilators are part of the MaXcess® II System. J.A. 2636. 

And the guide does not consistently identify nervemonitoring as a component of the XLIF system. J.A. 

2638. Rather, the NeuroVision® System appears to be a 

standalone nerve-monitoring product that can be used 

with XLIF. Id. We disagree. 

After reviewing the Guide, we conclude that there is a 

nexus between the claimed invention and the XLIF surgical technique. The Board and PTO suggest that only 

surgical tools and techniques labeled with the XLIF 

tradename are part of the XLIF surgical technique. But 

the Guide reveals otherwise. The Guide describes the 

“XLIF® technique” as utilizing “a direct lateral, retroperitoneal approach to access the intervetebral disc without 

muscular disruption or trauma to nearby structures.” 

J.A. 2631. It does not describe any other surgical procedures. And the Guide specifically identifies the MaXcess®

II Access System, MaXcess® XLIF System, and Neuro-
NUVASIVE, INC. v. IANCU 19

Vision® System as part of the required instruments to 

successfully complete the technique. J.A. 2639 (“To 

successfully complete this technique, the following instruments are required: Radiolucent bendable surgical 

table, C-Arm, Light source, MaXcess® II Access System, 

MaXcess XLIF® System, Triad® General Instrument Tray, 

and NeuroVision® JJB System.”). While the Guide does 

list the components of the “XLIF Instrument System,” it 

is very clear that the actual XLIF surgical technique

requires more than just these instruments; it utilizes the 

MaXcess® II Access, MaXcess® XLIF, and NeuroVision®

Systems in addition to general surgical tools such as 

nerve retractors, disc cutters, and curettes that are traditionally employed in interbody fusion procedures. J.A. 

2633. 

At oral argument the PTO argued that the Board 

found insufficient nexus due to the “overlapping nature of 

the products in the field.” Oral Arg. at 29:13–29:18. The 

’057 patent covers method claims whereas NuVasive’s 

XLIF-related products cover methods, devices, and systems. Id. at 29:18–29:31. While we agree with this 

characterization, it does not speak to whether the scope of 

the claimed invention is reasonably commensurate with 

the XLIF surgical technique. Due to the various devices 

and systems used in the XLIF procedure such as the 

MaXcess® II Access, MaXcess® XLIF, and NeuroVision®

Systems, it is possible that the commercial success evidence NuVasive presented did not come entirely from the 

XLIF surgical technique but rather also from the sales of 

these devices/systems for use in other surgical procedures. 

However, this does not mean that there is no nexus 

between the claimed invention and the XLIF surgical 

procedure. 

Moreover, “[w]hen the patentee has presented undisputed evidence that its product is the invention disclosed 

in the challenged claims, it is error for the Board to find to 

the contrary without further explanation.” PPC Broad-
20 NUVASIVE, INC. v. IANCU

band, Inc. v. Corning Optical Communications RF, 815 

F.3d 734, 747 (Fed. Cir. 2016). Here, while the Board did 

provide further explanation in finding the evidence 

NuVasive produced too nebulous to associate NuVasive’s 

objective evidence of nonobviousness with the XLIF 

surgical technique, we find this explanation unpersuasive. 

As explained above, we find that the Guide clearly lays 

out the devices and systems used in the XLIF surgical 

technique, some of which are not necessarily labeled with 

the XLIF tradename but are nonetheless utilized in the 

surgical technique. 

On remand, the Board should reevaluate NuVasive’s 

objective evidence of nonobviousness such as long-felt 

need, skepticism followed by praise and recognition, and 

commercial success under our finding that there is a 

nexus between the claimed invention and the XLIF surgical technique. Our nexus finding, of course, does not 

mean that these secondary considerations require a 

finding of nonobviousness. We simply require the Board 

to evaluate these secondary considerations when considering the obviousness inquiry as a whole. Further, we note 

that “evidence that widespread efforts by ordinarily 

skilled artisans had failed” is not necessarily required to 

show long-felt need. Millennium Pharm. Inc. v. Sandoz, 

Inc., 862 F.3d 1356, 1369 n. 5 (Fed. Cir. 2017) (“Although 

‘[e]vidence is particularly probative of obviousness when 

it demonstrates both that a demand existed for the 

patented invention, and that others tried but failed to 

satisfy that demand,’ a patent owner may establish a 

long-felt need without presenting evidence of failure of 

others.”) (quoting In re Cyclobenzaprine Hydrochloride 

Extended-Release Capsule Patent Litig., 676 F.3d 1063, 

1082 (Fed. Cir. 2012)). And we also note that the Board 

should not dismiss the testimony of paid experts. While 

the Board can and should weigh the credibility of any 

expert testimony, it should not outright disregard expert 

testimony from a witness simply because that individual 
NUVASIVE, INC. v. IANCU 21

is compensated for his time and expense in testifying. 

Nothing in our opinion in InTouch Techs., Inc. v. VGo 

Communications, Inc., cited in the Board’s decision, 

stands for the proposition that paid expert testimony 

cannot be used to establish nonobviousness. 751 F.3d 

1327, 1352 (Fed. Cir. 2014). 

E 

Finally, we address the Board’s analysis of the scope 

of the prior art and motivation to combine Kossmann, 

Branch, Koros, and Kelleher to arrive at the claimed 

invention in the ’057 patent. NuVasive makes two primary challenges to the Board’s obviousness analysis on 

appeal. First, NuVasive argues that there is no motivation to combine the surgery of Kossmann with the surgical tools of Branch and Koros. Second, NuVasive 

contends that there is no motivation to use the EMG 

nerve-monitoring technology taught in Kelleher during a 

lateral, trans-psoas surgical approach to the lumbar 

spine. We address each argument in turn. 

As an initial matter, we note that the Board’s overly 

broad construction of the term “lateral, trans-psoas path 

to the targeted lumbar spinal disc” did not disturb its 

motivation to combine the prior art references analysis. 

In NuVasive I, the primary dispute between the parties 

centered on the meaning of the word “lateral.” 693 F. 

App’x at 898. The specification of the patent in that case 

distinguished the “lateral” approach from the “posterolateral” and “antero-lateral” approaches. ’767 patent col. 

7 ll. 43–51. And all nine figures in the ’767 patent showing a path from the surgical incision to the spine depicted 

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,” which is much more restrictive than the Board’s 

interpretation that covered any approach “lateral, to any 

degree, as compared to an anterior puncture.” 693 F. 
22 NUVASIVE, INC. v. IANCU

App’x at 899 (citing the ’767 patent, Figs. 1, 9–10, 12–15, 

and 17–18). Accordingly, we concluded in NuVasive I that 

the broadest reasonable interpretation of “lateral” was an 

“approach to the lumbar spine that (1) approaches from 

the patient’s lateral aspect (or side); and (2) goes through 

the psoas muscle.” Id. at 900–901. Here, it is undisputed 

that Kossmann teaches a lateral approach to the spine. 

J.A. 12634 (Figure 1G), J.A. 12635. Moreover, when 

asked at oral argument, NuVasive’s attorney did not 

identify any part of the obviousness analysis other than 

objective evidence of nonobviousness analysis that relied 

on the Board’s overly broad construction of “lateral, transpsoas path to the targeted lumbar spinal disc.” Oral Arg. 

at 5:50–6:55. 

1. Kossmann, Branch, and Koros

With this in mind, we do not find that the Board erred 

in concluding that a skilled artisan would be motivated to 

combine the surgery described in Kossmann with the tools 

described in Branch and Koros. NuVasive argues on 

appeal that Kossmann does not teach a trans-psoas 

surgical approach using retractors and dilators. Rather,

NuVasive posits that Kossmann teaches retracting the 

psoas muscle in most patients and only uses blunt dissection with a surgeon’s finger or a sponge on a stick to 

create a path through the psoas muscle in very athletic 

patients. As a result, NuVasive argues that a skilled 

artisan would not have been motivated to modify the 

blunt dissection techniques in Kossmann with the dilation 

and retraction technique disclosed in Branch because 

blunt dissection is safer for patients. During blunt dissection, a surgeon carefully feels for nerves and can easily 

back off when near a nerve. Blunt dissection also splits 

the muscle along its fibers, thus ensuring that no muscle 

fibers are cut in the process of dissection. In NuVasive’s 

view, this technique is not interchangeable with the 

dilator-retractor approach taught in Branch because a 
NUVASIVE, INC. v. IANCU 23

dilator is a hollow tube that cuts through fibers as it is 

pushed through muscle. 

While NuVasive’s argument is not meritless, the 

Board’s finding that a skilled artisan would have been 

motivated to combine Kossmann with Branch and Koros 

is supported by substantial evidence. Dilators and retractors are ubiquitous surgical tools that skilled artisans 

knew how to use to penetrate tissue. J.A. 435–438. We 

are not persuaded that these instruments are inherently 

less safe means for dissection than a surgeon’s finger or a 

wet sponge on a stick, particularly when the skilled 

artisan also simultaneously employs nerve-monitoring 

technology. Instead, the Board’s finding to the contrary is 

reasonable in light of Dr. Lieberman’s testimony that 

“[t]he use of instruments such as dilation and retraction 

assemblies is no more invasive than the use of blunt 

dissection, both techniques do the exact same thing for 

the exact same purpose.” J.A. 435. Further, Branch itself 

teaches a technique that uses sequential dilators to slowly 

increase the size of a surgical site, and it teaches that this 

technique is broadly applicable in the field of spinal 

surgery. This, the PTO argued, is precisely what a surgeon’s finger or a sponge on a stick accomplishes. 

NuVasive also argues that the Board failed to demonstrate why a skilled artisan would be motivated to modify 

Branch’s retractor to incorporate a fixation element as 

taught in Koros. According to NuVasive, Koros discloses 

a retractor with protruding screws that are specifically 

designed for an anterior surgical approach and cannot be 

used along a “lateral, trans-psoas path” without significant redesign. See J.A. 4547. We do not find NuVasive’s

argument persuasive. Our case law does not require that 

the Board explain exactly how the fixation elements of 

Koros physically incorporate into Branch’s retractor. We 

agree with the Board that a skilled artisan would have 

recognized the stability and support the fixation element 

in Koros could add to the retractor assembly taught in 
24 NUVASIVE, INC. v. IANCU

Branch. “[I]f a technique has been used to improve one 

device, and a person of ordinary skill in the art would 

recognize that it would improve similar devices in the 

same way, using the technique is obvious unless its actual 

application is beyond his or her skill.” KSR, 550 U.S. at 

417. NuVasive has not shown why adding a fixation 

element to Branch would be beyond the abilities of a 

skilled artisan. NuVasive’s expert testimony regarding 

the inoperability of the combination of Branch and Koros 

is mere speculation and conclusory. Accordingly, the 

Board’s finding that a skilled artisan would have been 

motivated to combine Kossmann, Branch, and Koros is 

supported by substantial evidence. 

2. Kossmann and Kelleher

Next, as to whether a skilled artisan would be motivated to use the EMG nerve-monitoring technology taught 

in Kelleher during a lateral trans-psoas surgery, we 

remand this issue to the Board for the parties to address 

whether Kelleher could be used to monitor the presence of 

the iliohypogastric and ilioinguinal nerves. We emphasize that the scope of this remand on motivation to combine references is for the parties to address this narrow 

question. NuVasive asserts on appeal that a skilled 

artisan would not use the EMG nerve-monitoring taught

in Kelleher in the Kossmann procedure because: (1) 

Kossmann teaches an approach to the lumbar spine 

through the anterior-most fibers of the psoas, which is a 

“safe zone” where the important structures of the lumbar 

plexus do not typically reside, and for which visual detection of nerves is adequate; and (2) Kelleher does not teach 

that its nerve-monitoring technology can be used for 

detecting the iliohypogastric and ilioinguinal nerves 

Kossmann teaches to avoid. 

We disagree with NuVasive that a skilled artisan 

would not be motivated to use neuromonitoring in the 

Kossmann procedure. Both Kossmann and Branch teach 
NUVASIVE, INC. v. IANCU 25

the desirability of avoiding nerves for patient safety. 

Moreover, the ’057 patent does not require that the transpsoas approach go through a specific part of the psoas, 

such as the lumbar plexus. Simply because surgeons 

could perform the procedure described in Kossmann with 

visual detection alone does not mean that a skilled artisan would not be motivated to use neuromonitoring to 

further ensure patient safety. 

However, we conclude that the Board’s position that a 

skilled artisan would be motivated to use Kelleher’s 

nerve-monitoring technique to detect the presence of the 

iliohypogastric and ilioinguinal nerves should be remanded for further development. The Board’s original rationale was that nerve-monitoring in general would be 

beneficial in spinal surgeries due to the need to avoid 

nerves, and thus a skilled artisan would be motivated to 

use Kelleher’s nerve-monitoring technique in Kossmann, 

even if Kossmann does not traverse the lumbar plexus. 

J.A. 962–63. In its Request to Reopen Prosecution, 

NuVasive argued that Kossmann does not mention any 

danger of encountering nerves when splitting the psoas 

muscle. J.A. 1064. The two nerves Kossmann mentions, 

the iliohypogastric and ilioinguinal nerves, do not reside 

within the psoas muscle but rather are nerves that lie in 

the vicinity of the abdomen. Id. In response to this, the 

Board acknowledged in its second decision that the iliohypogastric and ilioinguinal nerves are not located in the 

psoas muscle, but noted that they are both still part of the 

lumbar plexus, which is what the trans-psoas approach 

taught in the ’057 patent seeks to avoid. J.A. 12 n. 4. 

Thus, the Board found it “of no moment that the nerves 

sought to be avoided in Kossmann are the iliohypogastric 

and ilioinguinal nerves[;] these are still nerves that 

Kossmann teaches should be avoided in a lateral approach, which includes the approach taught by Kossmann 

that involves splitting the psoas muscle.” J.A. 12. The 

Board’s second decision thus appears to rest on a specific
26 NUVASIVE, INC. v. IANCU

theory: that a skilled artisan would be motivated to use 

Kelleher’s nerve-monitoring technology to detect the 

presence of the iliohypogastric and ilioinguinal nerves. 

On appeal to us, NuVasive argues that Kelleher’s 

EMG nerve-monitoring method is ineffective for monitoring these two nerves because these nerves do not supply 

motor neurons to the legs. The iliohypogastric and ilioinguinal nerves supply sensory neurons to the leg and 

pubic region and motor neurons to the internal and transverse abdominal muscles. J.A. 2503–2504. EMG, the 

nerve-monitoring technique taught in Kelleher, relies on 

the detection of motor neurons, not sensory neurons, and 

Kelleher teaches that the relevant muscles for nerve 

detection in lumbar spinal surgery are those in a patient’s 

legs. J.A. 10200, 10215. Thus, according to NuVasive, 

Kelleher does not teach that the iliohypogastric and 

ilioinguinal nerves are among those that may be detected 

with EMG nerve-monitoring technology. The PTO does 

not directly respond to this argument. It generally asserts that nerves in the psoas muscle are no different 

from other nerves in the body and that surgeons would

have viewed existing nerve-monitoring technology as 

appropriate for a lateral, trans-psoas approach. 

While we understand the PTO’s position that the 

Board was only responding to NuVasive’s arguments 

regarding the iliohypogastric and ilioinguinal nerves in its 

second decision, the question of whether Kelleher’s nervemonitoring technique is applicable to the iliohypogastric 

and ilioinguinal nerves is a new finding that NuVasive 

has not had an adequate opportunity to address in the 

midst of this ever-evolving proceeding. Accordingly, we 

remand this very narrow issue to the Board. We also note

that there is nothing in our opinion precluding the Board 

from returning to its original position—a finding that we 

do not review in this appeal—that a skilled artisan would 

have been motivated to use Kelleher’s nerve-monitoring 

technique in Kossmann’s lateral, trans-psoas procedure 
NUVASIVE, INC. v. IANCU 27

because Kossmann generally teaches that it is desirable 

to avoid nerves during surgical procedures. 

CONCLUSION

We have considered NuVasive’s remaining arguments 

and find them unpersuasive. We modify the Board’s 

claim construction of “lateral, trans-psoas path to the 

targeted lumbar spinal disc” and construe the term in 

accordance with our opinion in NuVasive I. We reverse 

the Board’s finding of a lack of nexus between the method 

claimed in the ’057 patent and NuVasive’s XLIF surgical 

technique and remand for the Board to conduct a new 

analysis of secondary considerations consistent with our

nexus finding. And we affirm the Board’s remaining 

obviousness analysis except for its finding that a skilled 

artisan would have been motivated to use the nervemonitoring technique taught in Kelleher to detect the 

iliohypogastric and ilioinguinal nerves. We remand this 

narrow issue pertaining to the motivation to combine 

Kossmann, Branch, and Koros with Kelleher to the Board

for further consideration. 

AFFIRMED-IN-PART, REVERSED-IN-PART, AND 

REMANDED 

COSTS

No costs.