PTAB

IPR2016-00505

Smith & Nephew Inc v. Arthrex Inc

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Petition
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1. Case Identification

2. Patent Overview

  • Title: Suture Anchor with Internal Suture Securing Feature
  • Brief Description: The ’186 patent discloses a suture anchor assembly for attaching soft tissue to bone. The assembly features an anchor body with a central bore containing a rigid, transverse pin for securing a suture internally, which is designed to prevent suture abrasion, and a cannulated driver for insertion.

3. Grounds for Unpatentability

Ground 1: Obviousness over Dreyfuss and Foerster - Claims 1-20 are obvious over Dreyfuss in view of Foerster.

  • Prior Art Relied Upon: Dreyfuss (Application # 2003/0065361) and Foerster (Patent 7,090,690).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Dreyfuss disclosed a nearly identical suture anchor assembly that addressed the same prior art problem of suture abrasion by using a recessed, internal suture loop instead of a rigid pin. Dreyfuss also taught the claimed cannulated driver with a hexagonal drive socket. Petitioner asserted that Foerster disclosed a suture anchor with a hollow body containing a rigid transverse pin for securing a suture, teaching the final missing element. The combination of Dreyfuss’s anchor body and driver with Foerster’s rigid pin allegedly rendered all limitations of claim 1 obvious. Dependent claims were argued to be obvious as they recited features also found in Dreyfuss (e.g., metal body, tapered shape, threads) or were obvious design choices (e.g., making the pin from metal).
    • Motivation to Combine: A Person of Ordinary Skill in the Art (POSA) would combine the references because Foerster’s rigid pin and Dreyfuss’s suture loop were known, interchangeable suture-securing structures. A POSA would substitute Foerster’s pin for Dreyfuss’s loop as a simple design choice to achieve the predictable result of a protected internal suture securing structure. Additional motivation was provided by the asserted advantages of a pin, including reduced manufacturing complexity and cost, streamlined regulatory approval (by using a single material for the anchor), reduced friction on the suture, and greater tensile strength compared to a knotted loop.
    • Expectation of Success: A POSA would have a high expectation of success, as the combination involved a simple substitution of one known element for another to perform the same function in a predictable manner.

Ground 2: Obviousness over Dreyfuss and Goble ’397 - Claims 1-20 are obvious over Dreyfuss in view of Goble ’397.

  • Prior Art Relied Upon: Dreyfuss (Application # 2003/0065361) and Goble ’397 (Patent 5,702,397).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground presented an alternative substitution for the "rigid member" of claim 1. Petitioner contended that Dreyfuss taught all elements of the claimed assembly except for the specific type of rigid member. Goble ’397 disclosed a suture anchor with an internal, rigid gear-and-axle assembly that secures a suture within a central bore. Petitioner argued that substituting the gear assembly from Goble ’397 for the suture loop in Dreyfuss would result in an anchor meeting all limitations of the challenged claims.
    • Motivation to Combine: A POSA would be motivated to replace the suture loop of Dreyfuss with the gear assembly of Goble ’397 as a simple substitution of known internal suture-securing mechanisms. The primary motivation was the specific performance advantage taught by Goble ’397: its uni-directional gear prohibited suture slippage, allowing a surgeon to secure tissue with better control and without maintaining constant tension, an improvement over the simple loop in Dreyfuss.
    • Expectation of Success: A POSA would expect success in making this substitution, as it combined known elements to achieve a predictable result with the added, known benefit of the uni-directional gear.

Ground 3: Obviousness over Morgan and Dreyfuss - Claims 1-20 are obvious over Morgan in view of Dreyfuss.

  • Prior Art Relied Upon: Morgan (Application # 2002/0056269) and Dreyfuss (Application # 2003/0065361).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner argued that Morgan disclosed a suture anchor with a recessed internal rigid member (retainer 40) for securing a suture, but featured a male drive head at its proximal end—the very design that the ’186 patent and Dreyfuss sought to improve. Dreyfuss taught the solution to problems associated with male drive heads (e.g., tissue abrasion, need for countersinking) by replacing them with a female drive socket. The combination allegedly taught all limitations, with Morgan providing the internal rigid pin and Dreyfuss providing the improved female drive socket and cannulated driver.
    • Motivation to Combine: A POSA would combine these references to solve a known problem. Recognizing that Morgan’s male drive head required countersinking, which led to suture abrasion, a POSA would have been motivated to apply the known solution taught by Dreyfuss: replacing the male drive head with Dreyfuss’s female drive socket. This modification would predictably result in an anchor that did not require countersinking and better protected the suture, achieving the exact objective of the ’186 patent. Petitioner noted that the Board reached this same conclusion in a related prosecution.
    • Expectation of Success: Success would be expected, as the combination represented applying a known solution (Dreyfuss's drive mechanism) to a known problem (Morgan's male drive head) to yield predictable results.

  • Additional Grounds: Petitioner asserted additional obviousness challenges, primarily targeting claim 3’s requirement that the rigid member be metal by adding Morgan as a tertiary reference to the combinations of Ground 1 and Ground 3. Further grounds challenged claims 1-20 as obvious over Pierson (Patent 6,648,903) in view of Goble ’523 (Patent 5,411,523).

4. Key Claim Construction Positions

  • "a central bore" (claim 1): Petitioner proposed this term be construed as "a fully surrounded hole situated in the center of the anchor body." This construction was argued to be consistent with the specification and dictionary definitions and was important for mapping the bores of Dreyfuss and Morgan to the claims.
  • "rigid member" (claim 1): Petitioner proposed this term be construed as "a distinct and inflexible part of the suture anchor assembly." This construction supported the argument that the suture loop of Dreyfuss was distinct from the rigid pins of Foerster and Morgan or the gear assembly of Goble ’397.
  • "cannula" (claim 1): Petitioner proposed this term be construed to mean "a tube." This plain meaning was argued to be consistent with the patent's usage and essential for showing that the drivers in the prior art, particularly Dreyfuss, met this claim limitation.

5. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of claims 1-20 of Patent 8,343,186 as unpatentable under 35 U.S.C. §103.