PTAB

IPR2016-00334

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 for joining bone segments. The technology includes a stabilizing member (bone plate) with a through-hole, a securing member (bone screw), and a flexible stopping member (e.g., a snap-ring) positioned in a groove within the through-hole to prevent the screw from backing out of the bone.

3. Grounds for Unpatentability

Ground 1: Claims 59-91 are obvious over Errico in view of Koshino or Campbell.

  • Prior Art Relied Upon: Errico (Patent 5,876,402), Koshino (Patent 5,879,389), and Campbell (Patent 6,258,089).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Errico, the primary reference, disclosed a polyaxial locking screw plate assembly that taught nearly all limitations of the challenged claims. Errico’s assembly included a plate with a tapered hole and a flexible snap-ring in a channel to prevent a bone screw from backing out. However, Errico utilized a separate “coupling element” surrounding the screw head to engage the snap-ring. The challenged claims of the ’008 patent, in contrast, used the integral head of the screw itself to perform this function. Petitioner asserted that both Koshino and Campbell remedied this deficiency by disclosing orthopedic plates with securing screws that have integral heads designed to prevent screw back-out, without a separate coupling element.
    • Motivation to Combine: Petitioner contended a person of ordinary skill in the art (POSA) would combine Errico with Koshino or Campbell for several reasons. First, a POSA would be motivated by the well-known design principle of minimizing the number of components in an orthopedic implant to reduce manufacturing costs, simplify inventory and surgical procedures, and decrease the risk of crevice corrosion. Replacing Errico's screw and separate coupling element with an integral-head screw from Koshino or Campbell would achieve this simplification. Second, a POSA would seek to reduce the implant's profile. The coupling element in Errico necessarily increased the plate's thickness, which is clinically undesirable in areas near critical anatomy. Modifying Errico with the integral screw head from Koshino or Campbell would create a thinner, lower-profile device.
    • Expectation of Success: Petitioner argued a POSA would have a reasonable expectation of success. The function of using a screw head to expand a retaining ring was a known, predictable mechanical interaction. A POSA would understand that substituting the screw-and-coupler from Errico with an integral-head screw from Koshino or Campbell, which has a posterior surface shaped to expand the snap-ring, would predictably achieve the desired anti-back-out function. The required dimensional relationships—a screw head larger than the undeflected ring but smaller than the expanded ring—were standard and would predictably result in a functional assembly.
    • Key Aspects: Petitioner emphasized that while Errico was cited during prosecution of the ’008 patent, the Examiner never considered it as part of an obviousness combination with other references. The arguments presented in the petition were therefore distinct from those previously considered by the USPTO.

4. Key Claim Construction Positions

  • Petitioner proposed that the term “orthopedic attachment assembly” should be construed as “an assembly for attachment to one or more bones.”
  • This construction was argued to be supported by the patent’s specification, which describes the invention as an orthopedic implant for joining bone segments, and by statements made by the Patent Owner during prosecution.

5. Relief Requested

  • Petitioner requests institution of an inter partes review (IPR) and cancellation of claims 59-91 of the ’008 patent as unpatentable.