PTAB

IPR2016-00329

DePuy Synthes Sales Inc v. Acantha LLC

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Orthopedic Implant Assembly
  • Brief Description: The ’008 patent relates to an orthopedic implant assembly used to join bone segments. The system features a stabilizing member (bone plate) with at least one through-hole, a securing member (bone screw), and a flexible stopping member (e.g., a snap-ring) positioned in an annular groove within the through-hole to prevent the securing member from backing out of the bone after implantation.

3. Grounds for Unpatentability

Ground 1: Claims 1-5, 9-22, and 29-37 are obvious over Errico in view of Koshino.

  • Prior Art Relied Upon: Errico (Patent 5,876,402) and Koshino (Patent 5,879,389).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Errico disclosed a polyaxial locking screw plate assembly that taught nearly all elements of the challenged claims, including a bone plate, a through-hole, and a snap-ring in a channel to prevent screw back-out. However, Errico utilized a separate "coupling element" that fit around the screw head to engage and expand the snap-ring. Petitioner asserted that Koshino taught a similar orthopedic implant with a "stopper ring," but crucially, it disclosed using the integral head of the bone screw itself—not a separate coupling element—to expand the ring and secure the screw. The combination of Errico's foundational system with Koshino's integral screw head allegedly rendered the claims of the ’008 patent obvious.
    • Motivation to Combine: A Person of Ordinary Skill in the Art (POSA) would combine Errico's plate system with Koshino's integral screw head design to achieve well-known and desirable improvements in the field. The primary motivations cited were simplifying the implant design by reducing the total number of components and minimizing the overall profile (thickness) of the bone plate. Reducing components was known to lower manufacturing costs, reduce inventory, and simplify the surgical procedure. A lower profile was clinically important to avoid disruption of or interference with surrounding anatomical structures.
    • Expectation of Success: Petitioner contended that substituting Koshino's integral screw head for Errico's more complex screw-and-coupling-element assembly was a simple and predictable design choice. A POSA would have had a high expectation of success because it involved replacing one known mechanical component with another to perform the same function (preventing screw back-out) in a predictable manner.

Ground 2: Claims 36 and 37 are obvious over Errico in view of Campbell.

  • Prior Art Relied Upon: Errico (Patent 5,876,402) and Campbell (Patent 6,258,089).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground specifically targeted method claims 36 and 37, which Petitioner argued were distinct from claim 1 by only requiring the "enlarged integral portion" of the screw, rather than the entire head, to be retained. As in the first ground, Errico provided the basic plate and snap-ring retention system. Campbell was presented as an alternative secondary reference to Koshino that also taught an orthopedic plate system using an integral screw head to prevent back-out. Petitioner argued that the combination of Errico's method of use with the screw head design from Campbell would have made the claimed methods obvious.
    • Motivation to Combine: The motivations to combine Errico and Campbell were identical to those asserted for combining Errico and Koshino. A POSA would have been driven by the same goals of design simplification, component reduction, and profile minimization. Both Errico and Campbell expressly address the problem of preventing screw back-out, making them logical sources for a POSA to consult and combine to create an improved system.
    • Expectation of Success: Petitioner argued there was a reasonable expectation of success for the same reasons as in Ground 1. Modifying Errico's device to incorporate the integral screw head taught by Campbell was a straightforward application of known design principles to achieve a predictable improvement in the implant's function and clinical utility.

4. Key Claim Construction Positions

  • Petitioner submitted that the claim term “orthopedic implant assembly” should be construed as “an assembly for attachment to one or more bones.” This construction was argued to be consistent with the patent’s specification and statements made by the Patent Owner during the patent’s reissue prosecution, which allegedly described this as a fundamental characteristic of the invention.

5. Relief Requested

  • Petitioner requests the institution of an inter partes review (IPR) and the cancellation of claims 1-5, 9-22, and 29-37 of Patent RE43,008 as unpatentable under 35 U.S.C. §103.