Zimmer Surgical Inc v. Stryker Corp

1. Case Identification

• Case #: IPR2018-01089
• Patent #: 9,579,428
• Filed: May 21, 2018
• Petitioner(s): Zimmer Surgical, Inc.
• Patent Owner(s): Stryker Corporation
• Challenged Claims: 1-6, 8, 10, 12, 14-16, 18, 20, 22-25, and 28-30

2. Patent Overview

• Title: Medical/Surgical Waste Collection Assembly
• Brief Description: The ’428 patent discloses an assembly for collecting medical waste using a suction system. The system features a removable manifold that connects to a waste canister via a receiver, wherein the manifold rotates upon insertion to a locked position where its outlet is below its initial position.

3. Grounds for Unpatentability

Ground 1: Obviousness over Core System References - Claims 1-3, 5-6, 8, and 12 are obvious over Dunn in view of Radford and Adahan.

• Prior Art Relied Upon: Dunn (Application # 2003/0164600), Radford (Patent 6,027,490), and Adahan (Patent 5,419,687).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Dunn taught the foundational medical waste collection system, including a mobile cart, waste canisters, and a removable manifold that inserts and rotates into a receiver using alignment features (tabs and slots). The key limitation of claim 1, requiring the manifold's outlet to move to a position "below" its initial position upon rotation, was asserted to be an obvious design choice. Petitioner contended that Adahan's teaching of angling the receiver bore to reduce fluid agitation, when combined with Dunn, would result in such movement. Further, incorporating Radford’s teaching of multiple outlet openings would make it a near certainty that at least one outlet moves lower during rotation, thus satisfying the "below" limitation.
  • Motivation to Combine: A POSITA would combine these references to solve known problems in the art. A POSITA would modify Dunn's vertical bore with Adahan's angled bore to reduce fluid splashing and premature activation of shut-off mechanisms. A POSITA would also incorporate Radford's teachings to add multiple suction fittings for redundancy and flexibility and to add a valve to prevent backflow and seal the container—all well-known improvements for such systems.
  • Expectation of Success: The proposed modifications were described as straightforward implementations of known solutions to common problems in medical fluid collection, involving predictable mechanical principles. Therefore, a POSITA would have a high expectation of success.

Ground 2: Obviousness over Alignment Feature Reference - Claims 4, 14, 15, and 22 are obvious over Dunn, Radford, and Adahan in view of Blake.

• Prior Art Relied Upon: Dunn (Application # 2003/0164600), Radford (Patent 6,027,490), Adahan (Patent 5,419,687), and Blake (Patent 4,737,148).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon the combination in Ground 1, adding Blake to address limitations in claims 4 and 14 requiring specific alignment features. Blake taught the use of differently sized tabs and corresponding notches to ensure a component is inserted in only one, correct orientation. Petitioner argued that modifying the alignment tabs of Dunn's manifold as taught by Blake would result in the claimed "two arcuately spaced apart tabs that...have different arcuate lengths."
  • Motivation to Combine: A POSITA would be motivated to incorporate Blake’s teaching into the Dunn system to ensure the asymmetrical manifold is consistently inserted in the correct orientation. This would aid in troubleshooting and ensure optimal performance, such as directing suction and vacuum ports correctly to minimize fluid splashing. This modification was presented as a simple and known method for ensuring proper alignment.
  • Expectation of Success: Altering the shapes of Dunn’s pre-existing tabs was argued to be a minimal redesign within the capabilities of a POSITA, with a clear path to success based on Blake's disclosure.

Ground 3: Obviousness over On-Cart Pump Reference - Claims 10, 16, 18, 20, 23, 24, and 28-30 are obvious over Dunn, Radford, and Adahan in view of Glenn.

• Prior Art Relied Upon: Dunn (Application # 2003/0164600), Radford (Patent 6,027,490), Adahan (Patent 5,419,687), and Glenn (Patent 4,857,063).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground added Glenn to the combination from Ground 1 to address limitations requiring the suction pump to be mounted on a mobile cart. While Dunn disclosed a mobile cart connected to a hospital's central vacuum system, Glenn taught a mobile suction system with on-cart pumps. Combining these teachings would result in a mobile cart with a mounted suction pump, as recited in claim 10.
  • Motivation to Combine: A POSITA would combine Glenn's on-cart pump with Dunn's mobile cart to improve mobility, reduce setup time, eliminate hazardous cart-to-wall tubing, and enhance reliability. Petitioner argued this was a known design alternative, as portable pumps were a well-known substitute for fixed, in-hospital vacuum sources.
  • Expectation of Success: Adding a relatively small pump, like that in Glenn, to Dunn's cart would not require significant redesign. A POSITA would have readily understood how to mount the pump and connect it to the system with a high expectation of success.
• Additional Grounds: Petitioner asserted an additional obviousness challenge against claim 25 over the combination of Dunn, Radford, Adahan, Blake, and Glenn, relying on similar modification theories.

4. Key Claim Construction Positions

• Petitioner adopted, for the purposes of the IPR, the claim constructions proposed by the Patent Owner in a related district court litigation.
• A central construction was for the term "below" (from claims 1, 14, and 23), which was construed as "Beneath (lower than)." Petitioner argued this broad construction supported its obviousness positions, as it meant any downward movement of the manifold's outlet upon rotation, no matter how slight, would meet the claim limitation.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under 35 U.S.C. §325(d) would be inappropriate. It contended that because key prior art references—Adahan, Blake, and Glenn—were not before the Examiner during the original prosecution, none of the asserted prior art combinations were previously considered by the USPTO. Therefore, the grounds presented were not cumulative of arguments made during prosecution.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-6, 8, 10, 12, 14-16, 18, 20, 22-25, and 28-30 of the ’428 patent as unpatentable.