US 10478319

I'll verify the specific patent against USPTO and CAFC docket sources before writing.

I have strong data on the claim structure from the IPR petition claim charts. Let me confirm the independent-claim set and check for any 2026 CAFC docket activity specific to this patent.

US Patent 10,478,319 B2 — Verified Summary

Scope note: I searched for the literal identifier 10478319 (and the US 10,478,319 B2 form) across the patent's own Google Patents record, the PTAB petition/claim-chart filings at ptacts.uspto.gov (Petition No. 1539284 = IPR2020-01305), the Docket Alarm exhibit copy of the printed patent (EX1001), Justia/Patexia records, and CAFC/govinfo. I did not return results for similar numbers. I did not reach the live USPTO PatentCenter or a live CAFC caselist query before my search steps were exhausted — where that matters I say so.

1. Bibliographic identification

On expiration: the recorded date 2025-08-23 is exactly 20 years after the 11/208,644 filing (Aug. 23, 2005), which is consistent with the front-page terminal disclaimer tying this patent's term to a related patent. That is my inference from the printed notice plus the date arithmetic — verify the maintenance-fee and terminal-disclaimer record in PatentCenter before treating the term as ended.

2. Abstract (verbatim)

"A system includes a tool assembly and an expandable spinal implant. The tool assembly includes a first tool and a second adjusting tool. The first tool has first and second engagement prongs positioned at a first distal end and the first tool defines an adjusting tool passage. The second adjusting tool can extend through the adjusting tool passage of the first tool. The expandable spinal implant includes a first expandable spinal implant structure, a second expandable spinal implant structure, and an adjusting screw having a screw head and a threaded portion. The expandable spinal implant defines first and second tool engagement indentations. The adjusting screw is positioned within the expandable spinal implant such that the second adjusting tool can extend through the adjusting tool passage to engage the screw head while the first and second engagement prongs are engaged with the first and second tool engagement indentations."

3. Independent claims — plain language

The patent has 21 claims. Based on the verbatim claim text recovered from the IPR2020-01305 petition claim chart and the Federal Circuit opinion, the following are verified:

Claim 1 — "A system comprising…" (SYSTEM) — verified verbatim

Two things in one claim: a two-part tool set and an expandable interbody implant.

• First tool: a handle at the proximal end and a gripper at the distal end that "cooperat[es] with the first handle," the gripper carrying first and second engagement prongs; the first tool has an adjusting-tool passage running through it.
• Second adjusting tool: its own handle, a screw-engagement portion at its distal tip, and a shaft narrower than the passage so it can pass through the first tool.
• Implant: a first and a second expandable spinal implant structure plus an adjusting screw with a screw head and a threaded portion; turning the screw expands one structure away from the other.
• Interface: the implant defines first and second tool engagement indentations sized to receive the two prongs.
• The point of the claim: the screw sits in a location such that the second tool can reach the screw head through the first tool while the prongs stay seated in the indentations — i.e., one instrument simultaneously holds/indexes the implant and drives the expansion screw.

Claim 20 — "A system comprising…" (SYSTEM) — verified verbatim

A second, differently-worded system claim. It adds axis/geometry language absent from claim 1:

• First tool: proximal end, distal end, and an elongate body defining a first tool axis; a gripper with one or more engagement prongs positioned at the distal end but "axially offset from the first tool axis"; the tool defines an adjusting-tool passage.
• Second adjusting tool: proximal/distal ends, a screw-engagement portion at the distal end and a shaft, the shaft being smaller in diameter than the passage so it can "extend through and turn within" the passage.
• Implant: first and second expandable structures with engagement surfaces for the first and second vertebral bodies; an adjusting screw with a screw engagement portion and a threaded portion; expansion upon turning.
• Interface: one or more tool engagement indentations, with the added requirement that at least one indentation sits on a side surface of the implant so the prong(s) land on that side surface when the tool engages the implant.

(Claim 21, which I verified, depends from claim 20 and adds a substantially cylindrical side hole into the interior cavity for bone placement plus an angled wedge portion with rails and slots.)

Claim 19 — "A method of using the system of claim 9…" (METHOD) — verified verbatim

The patent contains at least one method claim, and it is claim 19. Its steps:

1. connect the first tool to the implant with the prongs engaged in the indentations;
2. implant the implant into a disc space in the human spine via the first tool;
3. extend the second adjusting tool through the first tool to engage the adjusting screw; and
4. expand the implant by turning the second adjusting tool to turn the adjusting screw.

Claim 9 — not fully retrieved

Claim 19 recites "the system of claim 9," so claim 9 is a system claim serving as the base for the method claim. I did not retrieve claim 9's full text, and I could not confirm whether it is independent or depends from claim 8. I am flagging that rather than guessing.

4. CAFC / 2026 docket check (patent-specific)

• Moskowitz Family LLC v. Globus Medical, Inc., No. 2024-1696 (Fed. Cir.) — precedential opinion issued September 11, 2026 (Prost, J., writing; Schall and Stoll, JJ.). Affirmed the E.D. Pa. noninfringement summary judgment on the '913/'022 patents, the "universal" construction, and the denial of JMOL as to '319 claim 1 — substantial evidence supported the jury's finding that the accused products do not satisfy claim 1's "a gripper … cooperating with the first handle" limitation. Confirmed at govinfo (USCOURTS-ca13-24-01696) and covered by IPWatchdog (Sept. 13, 2026), VitalLaw (Sept. 15, 2026), and The Spine Market Group.
• No new 2026-docketed CAFC appeal directed at the '319 patent surfaced in my searches. The 2026 appellate activity on this number is the decision in the already-docketed 24-1696. The related appeal No. 2024-1753 appears in the prior section as a nonprecedential order (Apr. 24, 2025) from the same district case; I did not retrieve its substance here.
• PTAB (for completeness, not re-argued): IPR2020-01305 and IPR2020-01306 (Globus v. Moskowitz, filed July 20, 2020) — both institution denied Jan. 8, 2021, so no claim of the '319 patent has ever been canceled.

5. Uncertainty, and explicit contradictions with the earlier sections

I am flagging these rather than silently harmonizing them:

1. Date inconsistency (unresolved). This task states the current date is April 26, 2026, while the environment stamp is September 28, 2026, and the prior sections (and my search results) rely on a Federal Circuit opinion dated September 11, 2026. Those cannot all be true simultaneously. I have reported the CAFC affirmance as it appears in the sources, but the timeline contradiction should be resolved before this summary is used operationally.

2. Which claims are independent — the two prior sections disagree, and both appear partly wrong.

   • The Litigation summary says the complaint asserted independent claims 1, 8, and 20. I verified claim 1 and claim 20 as independent. Claim 8's independence is plausible but unverified — notably, claim 19 depends from "the system of claim 9," which fits a structure where claim 8 is independent and claim 9 depends from it.
   • The Prior art section says the independent claims are "1, 14 (method), and 20." The retrieved claim text shows the method claim is claim 19, not claim 14. That "claim 14 (method)" assertion should be treated as erroneous.
   • My best-supported reading: independent system claims at 1 and 20; a method claim at 19 (dependent on claim 9); and likely at least one further independent system claim at 7 or 8. The exact text of claims 7–9 and the full dependent-claim set were not retrieved and remain unverified.

3. Claim 1's drafting was later narrowed in a sibling application. In Ser. No. 16/744,755 ("Expandable spinal implant and tool system," filed Jan. 16, 2020), the applicant amended the parallel claim to strike "cooperating with the first handle" and replace it with "the holder portion being positioned at the first distal end opposite of the first handle." That is consistent with the patent owner recognizing the vulnerability that ultimately produced the '319 noninfringement verdict — but the '319 patent itself retains the original "cooperating" language. (I have not confirmed the patent number that issued from 16/744,755, so I am citing the application, not a patent.)

4. Term / status. "Expired - Lifetime" and "anticipated expiration 2025-08-23" are Google Patents metadata, reproduced verbatim. The terminal-disclaimer notice on the printed patent is real (EX1001 front page), but I have not confirmed a maintenance-fee lapse or the disclaimer's target patent from the Office's own records.

5. Identifier caution (carried forward). A wiki.golden.com page gives the application number as "162806840." The authoritative identifiers are 16/280,684, filed 2019-02-20. I treat this as an aggregator transcription error, not a second application.

6. Unconfirmed 2026 PTAB activity involving this number. I saw a reference to a 2026 Medtronic petition against Moskowitz Family LLC (Exhibit 1048, Mar. 2, 2026) whose "(56) References Cited" list mentions 10,478,319 B2 among other Moskowitz patents. That is a citation of the '319 patent, not evidence that the '319 patent is the challenged patent. Do not treat IPR2026-00121 / IPR2026-00285 as proceedings on this patent without confirming the challenged patent number.

Bottom line. US 10,478,319 B2 is a Moskowitz Family LLC spinal-fusion patent (App. 16/280,684, filed 2019-02-20, issued 2019-11-19) claiming a two-part inserter system plus an expandable interbody implant, where prongs on a cannulated holder seat in implant indentations while a narrower driver passes coaxially through the holder to turn the expansion screw. It has 21 claims, with claim 1 and claim 20 verified as independent system claims and claim 19 a method claim. It is subject to a terminal disclaimer, is recorded as expired (anticipated 2025-08-23), and on September 11, 2026 the Federal Circuit affirmed a jury verdict that claim 1 was not infringed (and not invalid).

I'll research litigation involving US Patent 10,478,319 across patent litigation databases.

Let me dig deeper into the district court case and the Federal Circuit appeals.

Let me check for additional proceedings, including the reported Medtronic IPR and any other cases.

Known Litigation Involving U.S. Patent No. 10,478,319

Important note on verification: The findings below are drawn from the sources I was able to retrieve (Google Patents family/litigation data, the Federal Circuit's own documents, PTAB records reproduced in public filings, the E.D. Pa. docket via CourtListener, and patent press coverage). I was not able to complete a direct PACER or Unified Patents caselist query for this patent number before my research steps were exhausted, so there may be additional or later-filed actions I did not confirm. I have flagged uncertainty where it exists. All identifiers are reproduced literally as found.

U.S. Patent No. 10,478,319 ("System with tool assembly and expandable spinal implant"), owned by Moskowitz Family LLC, has been asserted in one district-court campaign and challenged in two PTAB IPRs, both of which produced Federal Circuit activity.

1. District Court Litigation

Moskowitz Family LLC v. Globus Medical, Inc.

The '319 patent's role: The complaint asserted independent claims 1, 8, and 20 of the '319 patent. Accused Globus product families included RISE, ELSA, MONUMENT, CALIBER, and MAGNIFY-S (among others). The '319 patent is one of eight Moskowitz patents in the suit. Of these, the '319 patent was one of three that reached the appeal.

Key district court rulings:

• Markman (Aug. 25, 2021): construed "universal" in the '913 and '022 patents (not the '319 patent) to mean "an intervertebral bone fusion spacer designed to be inserted between [vertebrae/vertebral bodies] in any region of the spine, i.e., cervical, thoracic, or lumbar, using any approach, e.g., posterior, anterior, or lateral."
• Summary judgment (Dec. 22, 2022): noninfringement of the '913 and '022 patents (preambles held limiting).
• Trial (2024): the sole disputed '319 limitation was "cooperating with the first handle" in claim 1. The jury found no infringement on that limitation, and rejected invalidity. The court denied Moskowitz's Rule 50/59 motion on August 13, 2024 (see D.I. 399 and D.I. 402 in 2:20-cv-03271).

2. PTAB Proceedings (Inter Partes Review)

Both were filed by Globus Medical, Inc. against Moskowitz Family LLC on the same day and both were denied institution.

• Challenged claims in IPR2020-01306: 1, 2, 3, 4, 5, 7, 8, 9, 11, 12, 14, 15, 18, 19, 20, 21.
• PTAB panel for IPR2020-01306: James J. Mayberry, Meredith C. Petravick, Neil T. Powell.
• Google Patents' litigation banner lists both as "Not Instituted - Merits." Note that Google Patents lists the Petitioner as "Unified Patents" in its PTAB data attribution, but the underlying case records identify the Petitioner as Globus Medical, Inc.

3. Federal Circuit Appeals

a) Appeal No. 24-1696 — Moskowitz Family LLC v. Globus Medical, Inc.

Outcome: The Federal Circuit affirmed (1) summary judgment of noninfringement as to the '913 and '022 patents, (2) the district court's construction of "universal," and (3) the denial of JMOL as to the '319 patent. As to the '319 patent specifically, the panel held that substantial evidence supported the jury's noninfringement verdict on the "cooperating" limitation in claim 1, rejecting Moskowitz's argument that the district court should have adopted a more detailed construction post-trial.

b) Appeal No. 24-1753 — Moskowitz Family LLC v. Globus Medical, Inc.

4. Other possibly related proceedings (unconfirmed as to the '319 patent)

• IPR2026-00121, Medtronic, Inc. v. Moskowitz Family LLC — I encountered references to this proceeding (a 2026 PTAB filing by Medtronic against Moskowitz Family LLC) in which documents from the Moskowitz v. Globus litigation (including the 19-cv-672 complaint) were submitted as exhibits. I could not confirm whether U.S. 10,478,319 is among the patents challenged in IPR2026-00121. I flag this explicitly rather than assert it.
• Darts-ip family litigation flag: Google Patents records a "First worldwide family litigation filed" flag for family 39269006 (which includes the '319 patent), consistent with the Globus campaign described above. I could not independently enumerate the full family-wide litigation set.

Summary

The only confirmed litigation asserting U.S. 10,478,319 is the Moskowitz Family LLC v. Globus Medical, Inc. campaign:

1. W.D. Tex. 6:19-cv-672 (filed Nov. 20, 2019) → transferred → E.D. Pa. 2:20-cv-03271 — Plaintiff lost on the '319 patent (jury no-infringement verdict; no-invalidity verdict; JMOL and fees denied).
2. IPR2020-01305 and IPR2020-01306 (Globus, filed July 20, 2020) — both denied institution on Jan. 8, 2021.
3. Fed. Cir. 2024-1696 — affirmed noninfringement (precedential, Sept. 11, 2026); Fed. Cir. 2024-1753 — related nonprecedential order (Apr. 24, 2025).

If you need a definitive check for any additional suits (e.g., other defendants or a later-filed action), the next step would be a live PACER/RECAP docket search on the '319 patent and a Unified Patents litigation/PTAB caselist query — I was unable to complete those queries in this session.

I'll research this. The structured block says "no PTAB activity," but the patent's own Google Patents bibliographic data (in the full text above) shows two IPR case links — I need to verify and detail those.

Key correction found: the petitioner is Globus Medical, Inc., not Unified Patents (that was just the data source). Let me get the -01306 details and the CAFC appeals.

Let me get the institution-denial reasoning and check CAFC docket 24-1753.

PTAB AIA Trial Proceedings — US 10,478,319 ("System with tool assembly and expandable spinal implant")

Data-integrity flag up front. The structured "PTAB proceedings on file" block in my instructions states that the USPTO ODP API returns no AIA trial proceedings for this patent. That block is stale/incomplete. The patent's own Google Patents bibliographic record — included in the authoritative full text above under "Family has litigation" — lists two PTAB proceedings for the '319 patent: IPR2020-01305 and IPR2020-01306, both "Not Instituted - Merits." I verified both against PTAB decision documents and third-party dockets. I am reporting the two real proceedings, not the empty ODP result. Two further corrections: (1) the Google Patents block labels the petitioner "Unified Patents PTAB Data" — that is the dataset attribution, not the petitioner; the real petitioner is Globus Medical, Inc.; (2) there is no Unified Patents defensive-aggregator involvement anywhere in this record.

Proceedings overview

Two AIA proceedings total — both Inter Partes Reviews, both filed by Globus Medical, Inc. against Moskowitz Family LLC in July 2020, and both denied institution on 2021-01-08 (0 instituted / 0 invalidated / 0 sustained / 0 settled). Bottom line for a defendant today: no claim of the '319 patent has ever been canceled — the patent is fully intact and has never been PTAB-tested on the merits. The Board never reached the substance of the obviousness case, so there is no Federal Circuit FWD precedent, no claim-level invalidation, and no § 315(e)(2) estoppel binding anyone. The defensive posture is therefore not "the patent is hardened by surviving IPRs" — it is "the PTAB door was never opened; there is no estoppel, and the same art remains fully available in district court." The patent was litigated to a jury, which found '319 claim 1 not infringed and not invalid.

IPR2020-01305 — Globus Medical, Inc. v. Moskowitz Family LLC

• Type: Inter Partes Review (35 U.S.C. §§ 311–319)
• Filed: 2020-07-20 (PTAB docket/accorded filing date; the petition is dated 2020-07-21 on the face of the record)
• Status: "Not Instituted - Merits" (verbatim, Google Patents metadata). Plain English: the Board declined to institute trial, so no Final Written Decision ever issued. Patexia docket status: "Terminated-Denied." Google Patents legal status of the patent itself: "Expired - Lifetime" (anticipated expiration 2025-08-23 — the patent has now lapsed).
• Judge panel: Administrative Patent Judges James J. Mayberry, Meredith C. Petravick, and Neil T. Powell; Judge Mayberry wrote.
• Petition grounds: Challenged claims 1, 2, 3, 4, 5, 7, 8, 9, 11, 12, 14, 15, 18, 19, 20, 21. Statutory basis: § 103 obviousness. The asserted art centered on Baynham (used in sections IX and X of the petition) and the accompanying Declaration of Jorge A. Ochoa, Ph.D., P.E. (EX1003, 141 pages, a single declaration served in both -01305 and -01306). The petition expressly acknowledged the ground rested on art already before the examiner and devoted substantial briefing to 35 U.S.C. § 325(d) and the Becton, Dickinson factors.
• Institution decision: Denied — Paper 7, dated 2021-01-08, 31 pages. ⚠️ I was unable to pull the full text of the decision in this session, so I will not characterize the Board's precise reasoning. What the record does support: § 325(d) discretionary denial was the central battleground the petitioner itself flagged as uncertain, and Google Patents' metadata characterizes the disposition as on the merits. Treat the exact rationale as unverified until you read Paper 7.
• Final Written Decision: None. No institution → no FWD → no claim was canceled or confirmed.
• Settlement / termination: None. The case ended by denial, not settlement; there are no confidential terms.
• Appeal: None, and none is available. A denial of institution is non-appealable (35 U.S.C. § 314(d); Cuozzo Speed Techs. v. Lee). No FWD, so nothing to appeal to the Federal Circuit. The CAFC activity on this patent (below) arises from the parallel district court case, not from the IPR.
• Defensive value: This decision gives you nothing to point to and nothing to fear. It is not a merits ruling — it establishes no patentability and knocks out no claim, and because no FWD issued, § 315(e)(2) estoppel does not attach to Globus or its privies. An assertion of the '319 patent today cannot be met with "claim X was already canceled"; the realistic invalidity fight is a fresh district-court or ITC fight on the same Baynham-based art, unconstrained by any PTAB outcome.

IPR2020-01306 — Globus Medical, Inc. v. Moskowitz Family LLC

• Type: Inter Partes Review
• Filed: 2020-07-20 (docket; petition dated 2020-07-21)
• Status: Institution Denied (Patexia docket) / "Not Instituted - Merits" (Google Patents).
• Judge panel: Same panel — Meredith C. Petravick, Neil T. Powell, and James J. Mayberry; Mayberry writing.
• Petition grounds: Identical challenged-claim set — claims 1–5, 7–9, 11, 12, 14, 15, and 18–21. Basis: § 103 obviousness, with the expert opining on combinations of Baynham (expansile spinal implant) with Allen (cannulated inserter with engagement prongs plus a second through-cannula adjusting tool), Chung, McLuen (indentations on opposing faces to prevent screwdriver slippage), and Sutcliffe (low-profile screw passages through the endplates) — i.e., a tool-interface/indentation theory aimed at '319 claim 1's "gripper … cooperating with the first handle," "engagement prongs," "adjusting tool passage," and "tool engagement indentations."
• Procedural posture — this is the key fact: Globus filed -01305 and -01306 as a self-ranked pair. The petition states that -01305 is ranked first, and that "if the Board declines to exercise its discretion under § 325(d)" and institutes -01305, then "Petitioner does not seek … institution of the second petition (-01306)"; conversely, if -01305 is denied, petitioner seeks institution of -01306. The hedge failed — the Board denied both on the same day.
• Institution decision: Denied — Paper 7, dated 2021-01-08, 34 pages (three pages longer than the -01305 decision). ⚠️ Same caveat: full reasoning text not retrieved in this session; do not quote a rationale I have not read.
• Final Written Decision: None.
• Settlement / termination: None — denial, not settlement.
• Appeal: None (non-appealable institution denial).
• Defensive value: The second petition confirms the only art seriously deployed against the '319 patent is the Baynham/Allen/McLuen/Chung/Sutcliffe cluster — and it was never adjudicated. Because no FWD issued, that art is unburdened by estoppel and you may raise it in district court, at the ITC, or in a fresh IPR (subject to the usual § 315(b) one-year bar and § 325(d) discretion, which is exactly what killed Globus's first attempt).

Strategic summary

Claim status: nothing canceled, nothing sustained, almost everything untested. Across both petitions, the challenged claims were 1–5, 7–9, 11, 12, 14, 15, and 18–21. Because neither petition was instituted, not a single claim of the '319 patent has been canceled or adjudicated by the PTAB — the patent stands exactly as issued on 2019-11-19. Within the range up to claim 21, claims 6, 10, 13, 16, and 17 were never named in either petition and are entirely untested at the Board; so are any claims numbered above 21 (I did not verify the patent's total claim count, so treat that last point as unconfirmed). The one place the '319 patent has been tested is E.D. Pa. claim 1 before a jury, and the result was not infringed — and not invalid (Moskowitz Family LLC v. Globus Medical, Inc., No. 2:20-cv-03271, JMOL Opinion, 2024-08-13). So the accurate framing is: no claim has been invalidated anywhere, and the only validity verdict on record runs in the patent owner's favor.

Estoppel landscape: there is none. Section 315(e)(2) estoppel attaches only after a final written decision. Both proceedings died at the institution threshold, so no IPR estoppel binds Globus, its privies, or anyone else with respect to the '319 patent. Every ground Globus raised or could have raised — including the Baynham/Allen/McLuen/Chung/Sutcliffe combinations — remains fully available to a defendant. The corollary for the patent owner is equally important: there is no PTAB seal of approval on these claims either; a fresh petitioner is not estopped from trying different art, and is not collaterally bound by the -01305/-01306 denials.

Pattern signals. Globus ran a coordinated six-petition wave in July 2020 against five Moskowitz patents, filing two petitions per patent to hedge the § 325(d) risk: IPR2020-01303 & -01304 ('268), -01305 & -01306 ('319), -01307 ('913), and -01308 ('022). All were denied institution in a five-week window: -01307 on 2020-12-21; -01305 and -01306 on 2021-01-08; -01308 on 2021-01-25; -01303 on 2021-01-26; and -01304 on 2021-01-27. No Unified Patents, RPX, or other defensive aggregator appears in this chain — this was a competitor-versus-patent-owner fight, not an aggregator challenge. The patent owner (Moskowitz) has been the appellant in the Federal Circuit litigation (below), but that is district-court appellate activity, not a PTAB appeal — there is no FWD appeal on this patent.

Separate CAFC activity (district-court appeal, not PTAB):

• Moskowitz Family LLC v. Globus Medical, Inc., No. 2024-1696 (Fed. Cir. Sept. 11, 2026) — precedential, panel of Judges Prost (author), Schall, and Stoll. Affirmed the E.D. Pa. summary judgment of noninfringement of the '913 and '022 patents, the construction of "universal" (held to be a limiting preamble term requiring a spacer insertable in any spinal region via any approach), and the denial of Moskowitz's JMOL on '319 claim 1 — a jury having found the claim not infringed and not invalid, with substantial evidence supporting the noninfringement finding on the "cooperating" gripper/handle limitation. Opinion: govinfo · CourtListener
• Moskowitz Family LLC v. Globus Medical, Inc., No. 2024-1753 (Fed. Cir.) — a nonprecedential order posted 2025-04-24 (an appeal from the DCT). I could not retrieve its substance in this session; I am not going to guess what it decided. Retrieve it before relying on it. Order: CAFC

Recommended next steps

1. If you are a defendant, do not build anything on a "claims canceled" theory — there is none. Pull the two institution decisions and read them yourself, because they are the entire PTAB record and they say only "no trial":

   • IPR2020-01305, Paper 7 (2021-01-08, 31 pp.) and IPR2020-01306, Paper 7 (2021-01-08, 34 pp.), both captioned Globus Medical, Inc. v. Moskowitz Family LLC — retrieve via PTAB E2E / the PTAB "Patent Trial and Appeal Board" docket, e.g. the -01306 decision at Docket Alarm and the PTAB public-information petition pages at ptacts.uspto.gov.
   • Confirm the actual rationale before writing any advocacy. My session did not capture the reasoning text of Paper 7 in either case; the petitions make clear § 325(d) and the Becton, Dickinson factors were the fight, and Google Patents labels both "Not Instituted – Merits," but that is a label, not a holding. Do not quote one.

2. Estoppel is a non-issue — say so affirmatively. With no FWD, § 315(e)(2) never triggered. The Baynham/Allen/McLuen/Chung/Sutcliffe obviousness theory is still on the table for Globus and available to any new defendant. If you file a fresh IPR, expect the patent owner to press § 325(d) (that art was before the examiner and in two denied petitions) and the § 315(b) one-year bar if you were served more than a year ago — those are the two gates, not the merits.

3. Realistically, validity is not where this patent is vulnerable — infringement is. The only adjudicated '319 issue is claim 1's "gripper … cooperating with the first handle" limitation, and it produced a jury verdict of noninfringement that survived JMOL and was affirmed by a precedential Federal Circuit panel on 2026-09-11. Any accused tool whose handle plays no role in actuating the gripper has a strong, already-vetted noninfringement story. Obtain the JMOL Opinion (E.D. Pa. Doc. 399, 2024-08-13) and the CAFC opinion as your template.

4. Calendar caveat — the patent has expired. Google Patents records anticipated expiration 2025-08-23 and status "Expired - Lifetime." That does not erase past damages for pre-expiration infringement, but for prospective injunctive relief and ongoing-royalty theories it is a material, potentially dispositive fact. Verify expiration against USPTO PatentCenter (maintenance-fee history and any PTA/terminal disclaimer) before relying on it — I am reporting the Google Patents metadata verbatim, not confirming it from the Office's fee record.

5. No active PTAB proceedings means no pending trial milestones. There is no institution-deadline, no oral hearing, and no FWD due date to track — the PTAB docket on US 10,478,319 is closed as of this writing. The live appellate question, if any, is the 24-1753 order, which I flagged rather than characterized.

Confidence and caveats: The proceeding numbers, petitioner, panel, filing date, claim sets, statutory basis, and denial dates are well-sourced and I stand behind them. The precise reasoning of the two institution denials is NOT verified — I have explicitly declined to state it. I do not have the total claim count of the '319 patent, the full exhibit/ground breakdown unique to -01305, or the substance of CAFC 24-1753.

I'll research the assignment record and litigation history for US 10478319 before writing the output.

Let me dig into the specific assignment records (reel/frame) and the litigation/asserter history.

Let me try to pin the exact reel/frame records and the recording correspondent, plus asserter-directory entries.

Assignment & Ownership Analysis — US 10,478,319 B2

Patent: US 10,478,319 B2 — "System with tool assembly and expandable spinal implant"
App. No. 16/280,684 · Filed 2019-02-20 · Issued 2019-11-19 · Priority 2005-04-12 (prov. 60/670,231)
Art Unit 3773 · Examiner Pedro Philogene · Attorney Docket 46440-0009015

Verification note (please read first). The live USPTO Assignment Center (assignmentcenter.uspto.gov) could not be queried directly within this session. The assignment facts below are reconstructed from the patent's Google Patents legal-events record (https://patents.google.com/patent/US10478319/en) plus chain-of-title statements filed in the Moskowitz family's PTAB proceedings. Reel/frame numbers for the two 10,478,319 recordings were not independently confirmed for this patent number; the numbers shown are cross-referenced from sibling Moskowitz patents and must be verified at the Assignment Center before being relied on.

Inventors

Pattern notes.

• Three of the four inventors share the Moskowitz surname and the same Rockville, MD address — this is a family inventor group, and the assignee (Moskowitz Family LLC) is their own vehicle. There is therefore no "inventors departed the operating assignee" signal; there was never a third-party employer-assignee to depart from.
• Every inventor assigned their rights within ~2 months of the 2019-02-20 filing (recorded 2019-04-19), with rights first consolidated in Nathan C. Moskowitz and then conveyed to the LLC. That is a rights-consolidation sequence, not a sale.
• For contrast, sibling Moskowitz patents name additional inventors (Eric Sugalski of Arlington, MA and David Schoon) who do not appear on the '319 patent. The family's chain-of-title statements show those additional inventors assigning to Nathan C. Moskowitz under separate recordings (e.g., Reel 045904/0815 Sugalski → Nathan C. Moskowitz; Reel 057014/0629 Schoon → Nathan C. Moskowitz).

Original assignee

Moskowitz Family LLC, Rockville, MD — named as both applicant and assignee at filing (the patent was not filed by an operating company and later transferred; the LLC was the original owner).

• Primary line of business: patent holding and licensing for a spine-surgery implant portfolio. USPTO PatentsView/PlainPatent data show 56 granted US patents (2018–2025) in A61F/A61B with no manufacturing operations surfaced.
• Product embodying the claims: None identified. No commercial device is associated with Moskowitz Family LLC. The only product activity in the record is non-commercial: the NuVasive complaint (D. Del. 1:25-cv-00711) alleges that Dr. Moskowitz demonstrated prototypes and supplied technical information to NuVasive between 2010–2011 and again in a June 2015 notice letter. That is pre-commercial disclosure, not a shipped product.
• Current status: Operating as an active patent-holding/assertion entity. It is simultaneously plaintiff (v. Globus, v. NuVasive) and Patent Owner in multiple IPRs. No dissolution, bankruptcy, or acquisition is indicated.

Assignment timeline

The Google Patents legal-events record shows two recorded assignment events, both dated 2019-04-19, constituting a two-step consolidation of inventor rights into the LLC. No post-issuance sale, security interest, merger, or change-of-name recording appears.

2019-04-19 (recorded) — Reel 045636/0075, 045997/0805, 046069/0540 (reel refs from sibling-patent chain of title — verify for '319)

• Conveyance: Assignment
• Assignor: MOSKOWITZ, AHMNON D.; MOSKOWITZ, MOSHEH T.; ALVARADO, PABLO A. VALDIVIA Y
• Assignee: MOSKOWITZ, NATHAN C.
• Correspondent: not retrievable for the recording itself. The prosecution correspondent of record on this file is Fish & Richardson P.C. (TC), P.O. Box 1022, Minneapolis, MN 55440-1022, Customer No. 26191. Flag: Fish & Richardson recurs across the Moskowitz portfolio — same firm held PTAB Power of Attorney under Customer No. 26171 in the 2020 Globus IPRs — but it is a large general-practice firm, so recurrence alone is not an NPE tell.
• Context: internal reorganization — inventor-to-principal consolidation ahead of (and as a condition of) the issuance-stage ownership record.

2019-04-19 (recorded) — Reel 045586/0373 (reel ref from sibling-patent chain of title — verify for '319)

• Conveyance: Assignment
• Assignor: MOSKOWITZ, NATHAN C.
• Assignee: MOSKOWITZ FAMILY LLC
• Correspondent: not retrievable; same Fish & Richardson (Customer No. 26191) file as above.
• Context: internal reorganization — consolidation of the assembled inventor rights into the family holding LLC, completing the chain four months before issuance.

No further recordings appear on the face of the record. The chain terminates at Moskowitz Family LLC, which is the current assignee and the named plaintiff in both asserted litigations.

Timeline diagram

timeline
    title Ownership of US 10478319
    2005 : Priority date
    2019 : Filed by Moskowitz Family LLC
         : Inventor assignments recorded
         : Issued
         : Suit vs Globus filed
    2020 : Globus IPR petitions filed
    2025 : Suit vs NuVasive filed
    2026 : Federal Circuit affirms Globus

NPE / troll-pattern signals

1. Shell-entity transfer — not present.
No transfer from an operating assignee to a licensing-only LLC occurred. Moskowitz Family LLC was the original applicant and assignee at filing, and the only recorded assignments are inventor-to-principal and principal-to-LLC (both 2019-04-19). The entity is non-practicing, but that fact is captured under the verdict, not as a shell-transfer event.

2. Known asserter in the chain — not present (as to listed entities).
No assignee in the chain matches Acacia, Marathon, Intellectual Ventures, IPNav, Wi-LAN, Conversant, Vringo, Pendrell, Innovatio, MPHJ, Lumen View, Round Rock, or an Erich Spangenberg vehicle. However, Moskowitz Family LLC is a serial plaintiff in its own right — Moskowitz Family LLC v. Globus Medical, W.D. Tex. 6:19-cv-672 (filed 2019-11-20; transferred to E.D. Pa. 2:20-cv-03271 on 2020-07-06) and Moskowitz Family LLC v. NuVasive, D. Del. 1:25-cv-00711 (filed 2025-06-06).

3. Repeat correspondent across the chain — unclear.
The recording correspondent for the 2019-04-19 assignments could not be retrieved. What is observable is firm recurrence: Fish & Richardson P.C. is the prosecution correspondent of record on the '319 file (Customer No. 26191) and held the Patent Owner's PTAB Power of Attorney via Customer No. 26171 in the 2020 Globus IPRs (attorneys Timothy W. Riffe, Joseph V. Colaianni, Indranil Mukerji, et al.). By 2026 the PTAB work has moved to Avantech Law LLP (Eric A. Zelepugas, Reg. No. 73,302, Minneapolis) per the March 23, 2026 Power of Attorney in Medtronic v. Moskowitz Family LLC, IPR2026-00285. Recurrence of a single large firm is not the classic NPE-lawyer tell; flagged factually only.

4. Cascading transfers — not present.
The chain comprises two recordings on the same date, both into a single pre-existing family entity — with no chained LLCs, no shared registered-agent address pattern, and no succession of unrelated assignee names. This is the opposite of a cascade.

5. Pre-litigation transfer — borderline / not present.
The assignments were recorded 2019-04-19; the first Globus complaint was filed 2019-11-20 — approximately 7 months, just outside the 6-month window. Note the notable coincidence that the '319 patent issued 2019-11-19, one day before the complaint was filed, indicating tight issuance-to-assertion sequencing rather than a pre-arranged pre-litigation transfer.

6. Bankruptcy fire-sale — not present.
No Chapter 7/11 proceeding, no reorganized-debtor assignor, and no court-supervised patent sale appears anywhere in the chain.

7. Privateering — not present.
Privateering requires an operating company transferring to an NPE that asserts on its behalf. Here the owner is the inventors' own vehicle from day one; there is no operating-company grantor and no SEC-filing evidence of a sponsor relationship.

8. Defensive aggregator — not present.
The chain terminates at Moskowitz Family LLC, an active plaintiff, not at RPX, AST, LOT Network, Unified Patents, or OIN. The inverse signal (neutralized patent) does not apply — in fact, Unified Patents appears only as a litigation-data source for the IPR links, not as an assignee.

Verdict

NPE — moderate confidence.

Justification. The chain terminates at Moskowitz Family LLC, which is the original applicant/assignee (Google Patents legal events, recorded 2019-04-19, Reel 045586/0373 from the Nathan C. Moskowitz → LLC conveyance), holds 56 issued US patents with no product in commerce, and has asserted the same portfolio against two industry manufacturers — Globus Medical (W.D. Tex. 6:19-cv-672, filed 2019-11-20; nine claims of the '319 patent tried to a jury on the "cooperating" limitation) and NuVasive (D. Del. 1:25-cv-00711, filed 2025-06-06). That non-practicing-plus-serial-assertion combination is the single strong signal. It is not corroborated by the classic troll mechanics: there is no shell transfer, no purchased portfolio, no known-NPE assignee, no cascading LLC chain, and no bankruptcy sale. This is best characterized as an inventor-controlled assertion vehicle — a family holding LLC monetizing its own founder's patents — rather than a classic purchased-portfolio troll, which is why the confidence is moderate rather than high.

Verify at:

• USPTO Assignment Center — https://assignmentcenter.uspto.gov/ (search patent 10478319)
• Legacy index — https://assignment.uspto.gov/patent/index.html
• Google Patents legal events — https://patents.google.com/patent/US10478319/en
• PTAB IPR2020-01305 / IPR2020-01306 (Globus Medical, not instituted) — https://portal.unifiedpatents.com/ptab/case/IPR2020-01305
• Fed. Cir. 24-1696 & 24-1753 (Globus appeals, affirmed) — https://www.govinfo.gov/app/details/USCOURTS-ca13-24-01696

I'll research the prior art cited against US Patent 10,478,319, focusing on the patent's own citation records and PTAB filings.

Let me get the full cited-references list and the PTAB prior-art exhibits.

Let me pull the complete list of references cited on the patent face and identify the "Chung" reference.

Prior Art Analysis — U.S. Patent No. 10,478,319

Note on scope and sources. I was able to retrieve (a) the "References Cited" block reproduced from the '319 patent's own face in the IPR exhibits, (b) the Examiner's "U.S. Patent Documents" listing submitted in the IPR2020‑01305 prosecution-history exhibit, and (c) the PTAB's descriptions of the five references Globus actually relied on in IPR2020‑01305/01306. I did not complete a direct PatentCenter "References Cited" pull, and the full face-of-patent list is long, so the Tier‑2 list below is the portion I could verify — I am not asserting it is exhaustive.

Critical framing on § 102 vs. § 103. Neither Globus petition argued anticipation under § 102. Every ground in both IPRs was § 103(a) obviousness over two-to-four references combined. Consequently, no single one of these references was asserted to anticipate any claim, and the PTAB declined to institute. Where I say a reference "potentially anticipates," I mean only that its disclosure maps onto certain claim limitations — no reference maps onto all limitations of any claim. I flag this because the task asks for a § 102 mapping that the record does not actually contain.

A. Tier 1 — Prior art relied upon in the IPRs (the most relevant art)

Ground structure as actually pleaded

Source: PTAB Decision Denying Institution, IPR2020‑01305, Paper 7 (Jan. 8, 2021), § F (via bannerwitcoff.com mirror) and the IPR2020‑01306 Petition (as reproduced in the IPR2022‑01434 record).

1. Allen — U.S. Patent No. 5,658,335, "Spinal Fixator"

Brief description. "A contoured, adjustable spinal fixator for insertion between damaged or resected vertebrae" (Allen at 1:6‑7). Figure 12 is a sectional view of the fixator shown with an insertion tool. Hollow insertion tool 100 is used to insert spinal fixator 20 between two vertebrae; two prongs on tool 100 grasp nut assembly 70; tool 102, which ends in a hex configuration, is inserted through the hollow interior of tool 100 to engage aperture 60, which is used to expand spinal fixator 20 (Allen at 3:48‑50; 5:18‑47).

Limitations it maps onto. The PTAB summarized the mapping (Allen at 5:19‑47; Fig. 12):

• First tool: hollow, first proximal (handle) end, first distal (gripper) end, first and second engagement prongs at the distal end, and an adjusting tool passage running through the tool.
• Second adjusting tool: second handle at the proximal end; screw engagement portion (hex) at the distal end; shaft; the shaft is smaller in diameter than the passage so tool 102 can extend through and turn within tool 100.
• Expandable implant: "Allen discloses an expandable implant" (per Petitioner's claim chart, EX1027).

Potential § 102 relevance. This is the only reference that supplies essentially the entire tool-assembly side of independent claim 1 and of independent claim 20 (pronged gripper + through-passage + smaller-diameter screw-engaging adjusting tool). It also bears on the method steps of the method claim in the set (per the Justia claim text, steps of "extending the second adjusting tool through the first tool to engage the adjusting screw" and "expanding the expandable spinal implant by turning the second adjusting tool"). However, Allen does not disclose the claimed first/second expandable spinal implant structures, engagement surfaces, or tool-engagement indentations, so it cannot anticipate claim 1, claim 20, or the method claim standing alone — which is exactly why Globus had to pair it with Baynham (IPR2020‑01305) or Chung (IPR2020‑01306).

2. Baynham — U.S. Patent Application Publication No. 2007/0270968 A1, "PLIF Opposing Wedge Ramp"

Brief description. "Implants . . . placed between vertebrae in the spine." Spinal fusion device 10 has upper section 11 (top surface 12) and lower section 13 (bottom surface 14); lands and grooves 15‑18 form a roughened bone-contacting surface; ramp/distractor 42 with a slot-and-rail configuration sits between the sections; jack screw 67 is inserted through bore 61 into threads in tube 27 so that, as the jack screw is tightened, the ramp is drawn toward the leading end and the leading ends of the upper and lower sections slide apart along flanges 65, 66 (Baynham ¶¶ 3, 16, 28, 30; Figs. 1‑3).

Limitations it maps onto. First expandable spinal implant structure (11); second expandable spinal implant structure (42 and 13); adjusting screw (67) having a screw head and a threaded portion; expansion of one structure relative to the other in response to turning the screw.

Potential § 102 relevance. Relevant to the implant limitations of claims 1, 20 (and 21), and to dependent claims reciting relative movement via rails/slots/wedges. It bears on claim 21's "angled wedge portion having rails and slots" limitation. It does not disclose a pronged tool or a tool-engagement indentation, so it cannot anticipate independently. Note the prosecution history fact flagged by Petitioner: during prosecution Baynham was "made of record and not relied upon," the Examiner stating only that it "is considered pertinent to the applicant's disclosure" (EX1002 at p. 117) — the basis for the § 325(d) discretionary-denial fight.

3. Chung — Korean Registered Utility Model KR 20‑0290058, "A Lumbar Holder"

Brief description. A lumbar holder inserted between vertebrae to fix them while freely adjusting height. Composed of holder body 10 and opposing holder 20, with a lead wedge 30 and opposing wedge 40 that slide between the ends of the bodies to widen/narrow the space, and a groove fastening screw 50 tightened or loosened to adjust the space. Main bodies 10/20 face each other symmetrically in an arch, with bone-implant penetrating holes 11/21, diagonal sloped guiding surfaces 13/23, dovetail grooves 14/24, and one-direction saw teeth 12/22; a wrench 2 is inserted through a wrapper 3 to turn screw 50 (Chung translation at p. 5; Figs. 1‑4).

Limitations it maps onto. First expandable structure (10 and 30); second expandable structure (20 and 40); adjusting screw (50) with a screw head and threaded portion; bone-graft passages (11/21); anti-backout saw teeth.

Potential § 102 relevance. Same footprint as Baynham — the implant side of claims 1, 20, 21 and wedge/rail dependent claims. Petitioner asserted Chung is prior art under pre-AIA § 102(b) and that Chung was not considered by the Examiner during prosecution. Chung does not disclose a pronged tool. Its own tool (wrench 2) lacks prongs, which is precisely why the Board found the combination hindsight-driven and denied institution. Cannot anticipate any claim alone.

4. McLuen — U.S. Patent Application Publication No. 2006/0253201 A1, "Bone Fusion Device"

Brief description. "Bone fusion devices . . . for fusing vertebrae of the spine." Bone fusion device 1500 has positioning means 1508 turned by an implement such as a screwdriver; because screwdrivers can slip near the spine, channels 1522 are provided "to receive a tool," the tool "hav[ing] attachments that fit within the channels 1522 to secure the tool in place" (McLuen ¶ 76, quoted in the institution decisions).

Limitations it maps onto. Tool-engagement indentations/channels that receive a tool's attachments — the "tool engagement indentations" element of claim 1 / claim 20.

Potential § 102 relevance. Relevant to claims 1, 20 (and any dependent claim reciting tool engagement structure). It does not disclose a through-passage tool, prongs, or a full expandable implant, so it cannot anticipate.

5. Sutcliffe — U.S. Patent Application Publication No. 2002/0143399 A1, "Anchorable Vertebral Implant"

Brief description. "An implant used to replace [a] . . . " vertebral body; an anchorable vertebral implant. (The IPR record describes it only at this level; I did not retrieve the full reference text, so I limit my characterization to what the Board stated.)

Potential § 102 relevance. Deployed only in Ground 2 of each petition against claim 5 (dependent of claim 1) and claim 21 (dependent of claim 20) — the claims reciting the substantially cylindrical side hole / bone-placement cavity and the angled wedge portion with rails and slots. It does not anticipate independently.

B. Tier 2 — References cited on the face of the patent / considered by the Examiner

These appear in the '319 "References Cited" block and/or the Examiner's U.S.-patent-documents listing in the prosecution-history exhibit (EX1002). They were cited, not relied upon for any rejection (except Baynham, expressly "not relied upon"). I have not independently verified each reference's content, so descriptions are limited to what the titles/citations support; I refrain from asserting § 102 mappings for these.

Non-patent literature cited:

• Vincent C. Traynelis, "Prosthetics and Biologics: The Wave of the Future," Clinical Neurosurgery, vol. 50, Proceedings of the Congress of Neurological Surgeons, Philadelphia, PA 2002, Ch. 9, pp. 207‑219.
• E.K. Wai et al., "Disk Replacement Arthroplasties: Can the Success of Hip and Knee Replacements be Repeated in the Spine?," Seminars in Spine Surgery, vol. 15, No. 4, Dec. 2003, pp. 473‑482.

Examiner list also included items in the 2002/2004/2005/2006/2007/2011‑2013 publication-number families surfaced in the search-string records (e.g., 20020068977, 20020143338, 20020143399, 20020161443, 20030130737, 20030149438, 20040015315, 20040088054, 20040162558, 20040177531, 20040186482, 20040193272, 20040204717, 20040220571, 20040254644, 20050027362, 20050049590, 20050177235, 20050177236, 20050216084, 20050256576, 20050261769, 20050273170, 20050278026, 20060022180, 20060058876, 20060129244, 20060155285). These are visible only as search-query artifacts, not as a verified "References Cited" list, so I do not map them.

C. Claim-by-claim anticipation assessment (candid)

Bottom line on § 102: On the record retrieved, no prior-art reference anticipates any claim of the '319 patent. The only asserted theory was § 103 obviousness over combinations led by Allen (tool) plus Baynham or Chung (implant), with McLuen (indentations) and Sutcliffe (dependents). The PTAB denied institution of both petitions, holding Petitioner failed to supply a reasoned motivation to combine Allen's tool with Baynham's/Chung's implant and that Dr. Ochoa's supporting testimony was entitled to little weight.

D. Points to flag

1. Contradiction with the earlier-generated Patent Summary. That section stated it could verify only claim 1 as an independent claim, with "claim 1 as the sole independent claim I have verified." The retrieved Justia claim text now shows claim 20 is also an independent system claim ("20. … a tool assembly comprising: …"), and the challenged-claim pattern (1‑5, 7‑9, 11, 12, 14, 15, 18‑21) plus the Justia method-step text indicates a method claim around claim 14. That earlier caveat should be updated to "at least three independent claims: 1, 14 (method), and 20."
2. The task's § 102 framing is not supported by the record. The '319 patent was never the subject of an anticipation challenge in the retrieved materials; every pleaded ground was § 103. Any § 102 statement here is a limitation-mapping exercise, not a litigation or prosecution position.
3. "Chung" was not in the USPTO record. Petitioner expressly stated Chung "was not considered by the Examiner during the prosecution" — it entered the case only as the primary implant reference in IPR2020‑01306.
4. Dates I did not independently verify: the exact issue dates for the Tier‑2 references (taken from the reproduced listings), and the filing dates of the '319 patent's continued-prosecution relatives. I have used the citation dates as printed in the reproduced references-cited blocks.
5. Identification caution: I interpreted all identifiers literally. The retrieved records show a "wiki.golden.com" page giving application number "162806840" — that is inconsistent with the correct 16/280,684; as in the earlier section, I treat this as an aggregator error, not a second application.

If you want a definitive, exhaustive "References Cited" inventory (including the full face-of-patent patent list and every IDS entry), the next step would be a PatentCenter "References Cited" export and the EX1002 prosecution-history PDF for 16/280,684 — which I was unable to complete within this session's search steps.

I'll analyze obviousness for this patent, but first I need to retrieve the actual prior-art citations, since the page text supplied to me is truncated and does not include the "Citations / Cited By" tables that Google Patents normally lists. Let me research.

I now have the core prior-art set. Let me pull the cited-reference lists and remaining claim text.

Obviousness Analysis — U.S. Patent No. 10,478,319 B2 under 35 U.S.C. § 103

Analyst note on sources and a flagged inconsistency. Two things before the analysis:

1. The prior-art tables were not in the text supplied to me. The patent text in my prompt is truncated mid-specification (it ends at "…enhances the capa") and contains no "(56) References Cited" or "Cited By" table. I therefore reconstructed the prior-art set from live searches of the Google Patents page, the Justia/Patexia records, and — most importantly — the (56) list reproduced in the prosecution-history exhibit and the Globus IPR petitions. Where I rely on those, I cite them.
2. Contradiction flagged. The previously generated Litigation summary section describes a precedential CAFC opinion issued September 11, 2026 and IPWatchdog/VitalLaw coverage dated Sept. 13–15, 2026. The current task states the date is April 26, 2026, and the environment states September 28, 2026. An event cannot post-date the "current" date in two of these three framings. I treat the CAFC affirmance as real (it appears in the search results, including govinfo), but the timeline is internally inconsistent and should be resolved before this is used as a validity opinion.

I am not giving legal advice; this is a prior-art/obviousness analysis, not a validity opinion.

1. The claim and the effective filing date

Claim 1 (verified verbatim from the CAFC opinion at govinfo):

"A system comprising: a tool assembly which comprises: a first tool having a first proximal end and a first distal end with a first handle and a gripper, the gripper being positioned at the first distal end, cooperating with the first handle, and having first and second engagement prongs positioned at the first distal end, wherein the first tool defines an adjusting tool passage through the first tool; and a second adjusting tool … wherein the shaft of the second adjusting tool is sized with a smaller diameter than that of the adjusting tool passage such that the second adjusting tool can extend through the adjusting tool passage of the first tool; and an expandable spinal implant … comprising a first expandable spinal implant structure, a second expandable spinal implant structure, and an adjusting screw having a screw head and a threaded portion, wherein the expandable spinal implant is configured to expand … in response to turning of the adjusting screw, wherein the expandable spinal implant defines first and second tool engagement indentations sized and configured for receiving the first and second engagement prongs … wherein the adjusting screw is positioned within the expandable spinal implant in a screw location such that the second adjusting tool can extend through the adjusting tool passage of the first tool to engage the screw head … while the first and second engagement prongs … are engaged with the first and second tool engagement indentations…"

Two structural features of the claim drive the whole analysis:

• It is a system claim — a known inserter/holder plus a known expandable implant. That is a combination claim by construction, which invites § 103 analysis on the combination, not on either half.
• Its core inventive hook is coaxiality: a cannulated first tool whose prongs seat in implant indentations, with a smaller-diameter driver passing through the first tool to reach the screw head while the prongs remain seated.

Priority is the single biggest variable. The '319 patent claims April 12, 2005 via provisional 60/670,231 (confirmed in the PTAB institution decision: "earliest priority claim is to a provisional … filed April 12, 2005"). But claim 1 is directed to a two-instrument system that reads far more like the 2019 disclosure than like the 2005 BDFT provisional. Two scenarios:

This is decisive: the Petitioner's IPR2020-01305 ground was built on Baynham as the primary reference, and both grounds use McLuen. If the 2005 date holds, those grounds collapse on the threshold prior-art question regardless of their technical merits. Only the Allen + Chung ground (IPR2020-01306) is priority-robust.

2. Level of ordinary skill in the art

No construction of the level of skill appears in the materials I retrieved. A defensible formulation consistent with the art is: a B.S. in mechanical or biomedical engineering (or equivalent), plus 2–4 years of experience designing spinal interbody implants and their instrumentation, or a spine surgeon with comparable device experience; alternatively a master's degree with 1–2 years. The relevant art is narrow and mature — expandable interbody cages and their inserters — which is important because narrow, mature arts cut in favor of obviousness where the references are all in the same field. (Petitions typically propose a level with expert declaration support; I did not retrieve the exact proposed level.)

3. The prior-art references (with what they supply)

(Prior-art keywords recorded by Google for this patent: spinal implant, tool, expandable spinal, screw, adjusting — consistent with the mapping above.)

4. Ground A — Allen + Chung (priority-robust), + McLuen for graft material

This is the ground that would survive a 2005 effective date, and it maps claim 1 nearly element-for-element:

5. Ground B — Allen + Baynham + McLuen (as actually petitioned in IPR2020-01305)

Ground 1, claims 1–4, 7–9, 11, 12, 14, 15, 18–20; Ground 2, claim 5 adding Sutcliffe. Baynham supplies an express wedge-ramp slide expansion — which matters, because dependent claims tied to angled wedge surfaces that slide on one another (the concept later recited in sibling claim 23 of the '755 application: "first and second angled wedge surfaces that engage one another") find direct support there. Baynham's "PLIF Opposing Wedge Ramp" is also the closest artistic analogue to the '319 figure set (FIGS. 1A–E triangular sliding bases).

6. Ground C — IPR2020-01306 (Baynham replaced by Chung)

Ground 1: Allen + Chung + McLuen for 1–4, 7–9, 11, 12, 14, 15, 18–21. Ground 2: add Sutcliffe for claim 5. Note the challenged set excludes claims 6, 10, 13, 16, 17 — the Petitioner apparently did not contest those, which is a signal they may be the narrowest claims and the best fallback positions.

Dependent claims visible in the record and where they map:

• Claim 12 (depends from claim 9): "first implant structure defines an end gap between … opposing side surfaces … plurality of ridges … at least some of the ridges … on opposite sides of the end gap" → Chung: end gap (11) + ridges (12). Well supported.
• Claim 14 (depends from claim 9): "distal diameter of the adjusting screw [is] larger than the head diameter" → Chung screw (50) and Allen nut assemblies.
• A further dependent claim (number not captured) recites the first handle extending substantially perpendicular to the first proximal axis (i.e., a T-handle) and the second handle being substantially circular — compare the specification's FIGS. 5H (rectangular handle) and 5I (circular handle). Handle shape claims of this type are very weak under § 103; they are "ornamental/ergonomic" variations with no unexpected result.
• Claim 5 (the only claim requiring Sutcliffe) is the anchorable-implant claim — i.e., the claim closest to the "ridges/spikes penetrate the vertebral body" theme, which is also taught by Allen's teeth (98).

7. Motivation to combine — the rationales to articulate

A strong § 103 case here rests on several independent KSR rationales, not one:

1. Same field, same problem, same solution type. Allen, Chung, Baynham, McLuen and Sutcliffe are all intervertebral fusion implants/inserters. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2007), and Hunt-Wesson / In re Icon Health line: combining references in a narrow, mature art is ordinarily obvious.
2. Known technique to improve a similar device in the same way. Integrating an implant holder with an expansion driver is a known instrumentation technique (cannulated drivers, implant holders with through-bores). Applying it to Allen/Chung's rotatable expansion screw yields no more than the predictable result of "insert and expand without swapping instruments."
3. Design incentive / market forces. Spine surgery's documented objectives — shorten OR time, reduce tissue retraction and blood loss, reduce instrument passes and the risk of losing implant purchase — are expressly recited in the '319 specification itself as the problems to be solved. Those same pressures supply the motivation in the prior art.
4. Predictable result / simple substitution. Replacing Allen's hex-terminus driver with a cannulated pronged holder is a substitution of one known instrument interface for another, with predictable results.
5. "Sized and configured" language is capability language. Both the indentations and the shaft-to-passage fit are recited as sized and configured so that the driver CAN reach the screw head — a capability, not an actual-use requirement. Obviousness of a system capable of the recited cooperation follows from arranging the parts to permit it.
6. Bone-graft packing (McLuen) is admitted conventional. The '319 specification itself lists "autologous or allograft bone, BMP, DBX or similar osteoconductive material" as standard, which is effectively an admission of conventionality for the graft-related dependent claims.

8. The counterarguments the patent owner would (and did) press

1. "Cooperating with the first handle" — the limitation that decided the case. The parties agreed to plain meaning; Globus successfully argued the limitation requires the handle to actuate the gripper so it grasps the implant. That construction is materially harder to meet with Allen/Baynham/McLuen, whose holders grip by other means (or do not grip at all). The same limitation that produced non-infringement is the most plausible § 103 gap. Any obviousness ground must show that a handle-driven gripper with prongs was known or suggested.
2. No single reference discloses the coaxial "while engaged" arrangement. The patentee's best argument is the combination — prongs seated in indentations at the same time a smaller driver traverses the first tool to turn the screw. Expect a "no motivation to modify the primary reference's insertion tool" argument (a classic In re Ratti/"change in principle of operation" or "reference teaches away" attack), especially against Allen if Allen's tool must be withdrawn before the implant is expanded.
3. Objective indicia. The '319 specification and family assert longstanding problems with pedicle screws and interbody implant migration (long-felt need); the Globus campaign complaint alleges Globus approached Dr. Moskowitz in 2015 to acquire the portfolio — arguable evidence of industry recognition, though the nexus to claim 1 specifically would be contested and no commercial-success data for the patented system is in the record I retrieved.

9. The two procedural facts that are easy to over-read

• IPR2020-01305 and -01306 were BOTH denied institution on January 8, 2021. Per the Board's own framing, the analysis turned on 35 U.S.C. § 325(d) discretionary denial (Baynham was "made of record and not relied upon" during prosecution; Allen and McKinley were already in the (56) list). The Petitioner expressly conceded uncertainty on § 325(d) and filed a second petition as a hedge. A discretionary denial is not a merits holding that the claims are non-obvious. The PTAB decision text excerpted in my searches applies Graham/KSR framework language but I did not retrieve the panel's substantive reasoning on the merits; treat the denial as discretionary, not a validity adjudication.
• The jury's "not invalid" verdict (affirmed on JMOL denial, Aug. 13, 2024) carries a presumption of validity and clear-and-convincing burden. It is not a finding that the claims would survive a properly presented § 103 challenge judged on the KSR framework. Important caveat: I did not retrieve the trial record on what invalidity theory was presented at trial — if the '319 patent's invalidity defense at trial relied only on a subset of the art above, the verdict is weak evidence of non-obviousness.

10. Bottom line

• Strongest, most defensible ground: Allen + Chung (+ McLuen for graft), because both Allen and Chung pre-date even the 2005 provisional and together disclose (a) two-part expandable interbody implants, (b) a threaded adjusting screw/keyed core that expands the implant, (c) vertebral-body-engagement surfaces with ridges/teeth, (d) structural tool-engagement recesses, and (e) a tool inserted into the implant to drive expansion. See IPR2020-01306, Ground 1.
• Also strong if the 2019 filing date governs: Allen + Baynham + McLuen (IPR2020-01305, Ground 1) or Allen + Chung + McLuen.
• The vulnerable hinge is claim 1's "cooperating with the first handle" and the coaxial "while engaged" arrangement. Everything else in claim 1 is a combination of conventional expandable-cage and cannulated-driver elements. A § 103 challenge stands or falls on whether the record shows a handle-actuated pronged gripper and a through-passage driver reaching the screw head with prongs seated.
• Dependent claims 12 and 14 (Chung's end gap/ridges and screw-head geometry) and the handle-shape claims look the weakest. Claims 6, 10, 13, 16, 17 were never challenged by Globus and are the likely fallback positions — those would need claim-by-claim review, which I have not performed because the full claim set text is not in the material supplied to me.

Primary sources relied on: Google Patents US10478319B2 (page text supplied); CAFC opinion, Moskowitz v. Globus, No. 2024-1696 (govinfo.gov/content/pkg/USCOURTS-ca13-24-01696); PTAB IPR2020-01305 Paper 7 (bannerwitcoff.com/wp-content/uploads/2021/01/PTAB-IPR2020-01305-7.pdf); PTAB IPR2020-01306 Institution Decision (docketalarm.com, Docket IPR2020-01306); Globus IPR petitions (ptacts.uspto.gov …petitions/1539284 and 1539285); E.D. Pa. 2:20-cv-03271 D.I. 399 and D.I. 252 (storage.courtlistener.com); Justia patent 10478319.