PTAB

IPR2016-00854

Smith & Nephew Inc v. Arthrex Inc

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Surgical Instrument for Installing Suture Anchors
  • Brief Description: The ’451 patent is directed to a surgical instrument, specifically a cannulated drill guide, for installing suture anchors during arthroscopic ligament repair. The invention features a drill guide with a V-shaped indentation at its distal tip for straddling a bone formation and at least one window for viewing the suture anchor and driver during insertion.

3. Grounds for Unpatentability

Ground 1: Anticipation of Claims 1, 5-7, and 11 by Schmieding '677

  • Prior Art Relied Upon: Schmieding (Patent 5,690,677).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Schmieding, which is assigned to the Patent Owner but was not disclosed during prosecution of the ’451 patent, discloses every limitation of independent claims 1 and 7. Schmieding allegedly teaches a cannulated tissue-shifting guide for arthroscopic Bankart repair that functions as the claimed drill guide. Petitioner contended Schmieding discloses a V-shaped tip for straddling the glenoid rim, an "open side window" for viewing the anchor, and a handle that a POSITA would understand to be "cylindrical" in the same manner as the embodiment in the ’451 patent. For claim 7, Petitioner asserted Schmieding shows a suture anchor driver slidably disposed within the guide that is calibrated with a depth gauge or drill stop, meeting all assembly limitations. The arguments for dependent claims 5, 6, and 11 followed from the mapping of the independent claims.

Ground 2: Obviousness of Claims 2-4 and 8-10 over Schmieding '677

  • Prior Art Relied Upon: Schmieding (Patent 5,690,677), Mini-Revo (a 1994 product brochure), and Wortrich (Patent 5,458,608).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground asserted that the dependent claims add only conventional features or obvious numerical values to the device taught by Schmieding.
      • Claims 2 & 8 (50° angle): Schmieding teaches a "preferably 80 degrees" angle for its V-shaped tip. Petitioner argued the angle is a result-effective variable, and optimizing this angle to the claimed 50° to achieve the same result of precisely seating the guide would have been a matter of routine experimentation for a POSITA.
      • Claims 3 & 9 (two windows): Schmieding teaches a single window. Petitioner argued that adding a second window is a simple duplication of parts to achieve the same function (viewing) more effectively. It was well-known in endoscopy that multiple windows provide better visibility when the viewing angle is constrained. Mini-Revo and Wortrich were cited as examples of prior art endoscopic devices using two windows for this purpose.
      • Claims 4 & 10 (140° separation): Petitioner argued that the specific 140° radial separation between the two windows is not critical and represents an obvious design choice derived from routine experimentation to optimize visibility for a given surgical procedure.
    • Motivation to Combine (for §103 grounds): The motivation to modify Schmieding to include a second window was to improve the surgeon's ability to visualize the suture anchor and driver from a wider range of radial orientations, overcoming known constraints in arthroscopic procedures.
    • Expectation of Success: A POSITA would have a high expectation of success, as adding a second window is a simple, predictable modification that enhances a known function without altering the device's fundamental operation.

Ground 3: Obviousness of Claims 1-11 over Mini-Revo and Schmieding '626

  • Prior Art Relied Upon: Mini-Revo (a 1994 product brochure from Linvatec, Inc.) and Schmieding (Patent 5,320,626).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that the Mini-Revo brochure discloses a cannulated drill guide for arthroscopic shoulder repair that meets every limitation of the independent claims except for a cylindrical handle. Mini-Revo allegedly shows a guide with a "pronged tip" having multiple V-shaped indentations for positioning on the glenoid ridge, a pair of windows for viewing the anchor and driver, and a driver with a "depth indicator" for calibrated insertion. To supply the missing handle, Petitioner pointed to Schmieding ’626, which teaches a drill guide for arthroscopic procedures with a cannulated, cylindrical handle.
    • Motivation to Combine (for §103 grounds): A POSITA would combine these references because the Mini-Revo guide, as depicted, lacks a handle needed for surgical control. Schmieding '626 provides a known and suitable handle for an arthroscopic instrument. A POSITA would have been motivated to add the known cylindrical handle from Schmieding '626 to the drill guide of Mini-Revo to achieve the predictable result of providing necessary manipulation and stability during surgery.
    • Expectation of Success: Success was predictable, as both references relate to arthroscopic joint surgery, and adding a standard handle to a surgical tool is a straightforward modification.

4. Key Claim Construction Positions

  • "V-shaped indentation": Petitioner argued this term should be construed according to its plain meaning as an indentation in the shape of a "V," not limited to a single indentation that spans the entire tip of the drill guide. This construction was asserted to be critical for the obviousness ground over Mini-Revo, which discloses multiple V-shaped indentations on its tip. Petitioner contended that a narrower construction adopted in a prior district court litigation was based on legal error and improperly imported limitations from the specification.
  • "window": Petitioner argued for the plain and ordinary meaning of "opening." This was to counter a potentially narrower construction requiring a "framed" opening that is "spaced" from the V-shaped indentation. Such a narrow construction would be an attempt to circumvent the "open side window" taught by the Schmieding ’677 prior art, which is not spaced from the tip in the same manner as the embodiment of the ’451 patent.

5. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of claims 1-11 of Patent 5,993,451 as unpatentable.