Medtronic, Inc. v. Moskowitz Family LLC

This case, IPR2026-00163, involves Medtronic, Inc. as the petitioner challenging the validity of U.S. Patent No. 11,376,136 owned by Moskowitz Family LLC. Medtronic is a leading American-Irish medical device company that develops and manufactures a wide array of healthcare technologies and therapies, including devices for cardiovascular, neuroscience, medical surgical, and diabetes care. Moskowitz Family LLC is a patent-holding entity associated with the innovations of Dr. Norman Moskowitz, a spinal surgeon and inventor, focusing on spinal implant and interbody fusion technologies. The patent at issue, U.S. Patent No. 11,376,136, generally pertains to intervertebral fusion devices, which are spinal implants designed to be inserted into the disc space between vertebrae to facilitate bone fusion, often incorporating features like bi-directional screws and zero-profile configurations. While the specific accused product is not detailed in the provided information for this IPR, Medtronic's petition likely targets one of its spinal interbody fusion products that Moskowitz Family LLC alleges infringes the patent.

The procedural posture of this case is an Inter Partes Review (IPR) proceeding before the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office. IPRs are adversarial trials where a third party can challenge the patentability of claims in an issued patent based on prior art consisting of patents or printed publications. This IPR is likely linked to an underlying patent infringement lawsuit, as Moskowitz Family LLC previously filed suit against Medtronic in the District of Minnesota (case number 0:25-cv-00769) on February 28, 2025, alleging patent infringement. The venue of the PTAB is significant as it provides an alternative forum to district court for challenging patent validity, often seen as a more efficient and cost-effective route for petitioners.

This case is notable in the current intellectual property landscape for several reasons. First, Moskowitz Family LLC is characterized as a non-practicing entity (NPE) or patent assertion entity (PAE), a common type of patent owner that derives revenue primarily from licensing or enforcing patents rather than manufacturing products. The PTAB's institution rate against NPEs has been lower than against operating companies, a trend that continued into Q1 2026. Second, the timing of this IPR falls within a period of significant shifts in PTAB policy, with a notable increase in discretionary denials of IPR petitions since mid-2025. These changes, influenced by Director Squires' March 2026 memo, emphasize factors like U.S. manufacturing footprint and "settled expectations," making it potentially more challenging for petitioners like Medtronic to secure institution of an IPR, especially if there has been a significant delay in challenging the patent. Medtronic previously rejected a licensing demand from Moskowitz in 2016 and developed its spinal interbody devices without being sued by Moskowitz for nearly a decade, a factor that Moskowitz could leverage in arguing against institution based on "settled expectations."

Medtronic, Inc. filed an Inter Partes Review (IPR) petition, IPR2026-00163, challenging U.S. Patent No. 11,376,136, owned by Moskowitz Family LLC. This IPR is part of a broader dispute that includes a co-pending district court patent infringement lawsuit.

Here's a chronological overview of the key legal developments:

Parallel District Court Litigation

• 2025-02-28 - Complaint Filed: Moskowitz Family LLC initiated a patent infringement lawsuit against Medtronic Inc. in the U.S. District Court for the District of Minnesota, case number 0:25-cv-00769. U.S. Patent No. 11,376,136 is among the patents asserted in this case.
• 2025-03-20 - Stipulation for Extension: A stipulation extending the time for Medtronic (including Medtronic Sofamor Danek USA, Inc., Medtronic Sofamor Danek, Inc., Medtronic, Inc., Titan Spine, Inc., and Warsaw Orthopedic, Inc.) to respond to Moskowitz Family LLC's complaint was filed and ordered by Magistrate Judge Douglas L. Micko.
• 2026-02-27 - Motion to Stay: Medtronic filed a motion to stay the district court litigation pending the outcome of the IPR proceedings. Moskowitz Family LLC filed an opposition to this motion on February 27, 2026 (document filing date April 22, 2026). The status of the district court case 0:25-cv-00769 is listed as "Closed" in one record, which may indicate a specific phase or an outdated status, particularly given the recent motion to stay filings.

PTAB IPR Proceedings (IPR2026-00163)

• 2025-12-01 - IPR Petition Filed: Medtronic Inc. filed the Inter Partes Review petition, IPR2026-00163, against Moskowitz Family LLC, challenging claims of U.S. Patent No. 11,376,136. The challenged patent is titled "Expandable spinal implant and tool system."
• 2026-04-01 - Institution Decision Due Date: The due date for the Patent Trial and Appeal Board (PTAB) to issue its institution decision for IPR2026-00163 was April 1, 2026. As of May 29, 2026, the case status for IPR2026-00163 is "Pending", indicating that the proceeding is ongoing. However, the specific outcome of the institution decision (whether the IPR was instituted or denied) is not publicly available in the provided search results.

Other Related PTAB Proceedings

• 2026-01-16 - IPR2026-00217 Filed: Medtronic Inc. filed another IPR petition, IPR2026-00217, against Moskowitz Family LLC, challenging U.S. Patent No. 10,426,633. This demonstrates Medtronic's strategy of challenging Moskowitz Family LLC's patents at the PTAB.

The ultimate outcome of IPR2026-00163 and its effect on the related district court litigation is still pending, as the IPR process is ongoing and the outcome of the motion to stay the district court case is not yet public.

As of May 29, 2026, specific outside counsel of record representing Medtronic, Inc. in IPR2026-00163 against Moskowitz Family LLC are not explicitly available through the initial web searches. This may be due to the IPR being a very recent filing, or the detailed docket information not being immediately publicly available through general search engines.

However, Medtronic has a robust in-house intellectual property litigation team that would oversee and direct any engaged outside counsel for such a proceeding. Key individuals within Medtronic's in-house IP legal department include:

• Mark Blake

  • Role: Head of IP Litigation (in-house)
  • Firm: Medtronic, Inc., Irvine, California
  • Note: Oversees all intellectual property litigation for Medtronic, managing its portfolio of over 43,000 active patents. He has a strong background in patent litigation across various technologies and has secured significant wins, including the reversal of a $125 million judgment at the Federal Circuit.

• Thomas Beaton

  • Role: Strategic Legal Counsel - IP; Chief IP Counsel for Medtronic ENT (in-house)
  • Firm: Medtronic, Inc.
  • Note: A seasoned legal professional with extensive experience in intellectual property law, including prosecution, litigation, licensing, and due diligence. He previously served as Associate General Counsel and VP of Covidien LP and worked as an associate at Baker Botts LLP.

• Paik Saber

  • Role: Vice President and Chief IP Counsel (in-house)
  • Firm: Medtronic, Inc.
  • Note: Responsible for all IP matters across Medtronic, overseeing the protection and deployment of IP assets, IP litigation, and licensing. Prior to joining Medtronic, Saber was Senior Corporate Counsel at IBM, where he managed IP policies, patent quality, and IP monetization programs.

It is common for companies like Medtronic to work with external law firms for IPR proceedings, but the specific firm and attorneys engaged for this particular IPR are not yet publicly identified in the available search results.

Moskowitz Family LLC is represented by Avantech Law, LLP in the IPR proceedings against Medtronic. Additionally, past patent litigation for Moskowitz Family LLC against other entities indicates representation by Fish & Richardson, PC, and Clark Hill, PLC, in district court, while Susman Godfrey, LLP represented a defendant against Moskowitz Family LLC.

Here is the identified counsel of record for Moskowitz Family LLC:

Avantech Law, LLP

• Eric A. Zelepugas
  • Role: Lead Counsel
  • Firm: Avantech Law, LLP, Minneapolis, MN
  • Note: Represents Moskowitz Family LLC in IPR proceedings, including IPR2026-00163 and IPR2025-01598.
• Robert A. Conley
  • Role: Back-up Counsel
  • Firm: Avantech Law, LLP, Minneapolis, MN
  • Note: Serves as back-up counsel for Moskowitz Family LLC in IPR proceedings.

Other Identified Counsel in Related Matters (District Court)
While not explicitly counsel for the ongoing IPR2026-00163, the following attorneys have represented Moskowitz Family LLC in the parallel district court litigation, 0:25-cv-00769, or in previous patent litigation:

• Sabrina Wilson
  • Role: Attorney (admission pro hac vice)
  • Firm: Not specified in the provided snippets, but granted pro hac vice admission in Moskowitz Family LLC v. Medtronic Inc. (0:25-cv-00769).
• Timothy Riffe
  • Role: Principal
  • Firm: Fish & Richardson, PC
  • Note: Lead counsel for Moskowitz Family LLC in securing denial of eight IPR petitions filed by Globus Medical Inc. challenging spinal surgery patents.
• Joseph Colaianni
  • Role: Principal
  • Firm: Fish & Richardson, PC
  • Note: Part of the Fish & Richardson team that successfully defended Moskowitz Family LLC's patents against IPR challenges from Globus Medical.
• Ahmed J. Davis
  • Role: Lead Counsel (Plaintiff Counsel)
  • Firm: Clark Hill, PLC
  • Note: Identified as lead plaintiff counsel for Moskowitz Family LLC in Moskowitz Family, LLC v. Globus Medical, Inc. (2:20-cv-03271).

No information was found regarding any in-house counsel for Moskowitz Family LLC or any sealed filings that would prevent identification of counsel.