PTAB

IPR2018-01089

Zimmer Surgical, Inc. v. Stryker Corporation

Title: Surgical Waste Collection Assembly
Brief Description: The ’428 patent is directed to assemblies for collecting surgical waste fluid. The invention features a removable manifold that connects to a waste canister via a receiver, where rotating the manifold to a locked position causes its outlet to move to a position "below" its initial insertion position to facilitate fluid flow.

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 a base system with a removable, rotatable manifold that locks into a receiver on a waste canister. Petitioner asserted that the key limitation of the manifold outlet moving "below" its initial position upon rotation was an obvious design choice, particularly when combining Dunn with Adahan. Adahan taught angling a fluid entry port to reduce fluid splashing and agitation, which Petitioner argued would lead a person of ordinary skill in the art (POSITA) to angle Dunn's receiver bore. Radford taught using multiple fittings on a single manifold.
- Motivation to Combine: A POSITA would combine Dunn and Adahan to solve known problems of fluid splashing and premature shut-off valve activation in waste canisters. A POSITA would also be motivated to add Radford's multiple fittings to Dunn's manifold to gain the known benefits of servicing multiple surgical sites, providing tubing routing options, and having backup fittings available.
- Expectation of Success: Petitioner contended that these were simple mechanical modifications. Angling Dunn's vertical receiver bore as suggested by Adahan and adding more fittings as taught by Radford were both straightforward design changes within the capability of a POSITA.

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 on the primary combination by adding Blake, which taught using differently sized or shaped tabs and corresponding notches (a bayonet connector) to ensure a component is inserted in only one, correct orientation. This teaching allegedly maps directly to the limitations of dependent claim 4, which requires two arcuately spaced tabs with different arcuate lengths.
- Motivation to Combine: A POSITA would modify the Dunn system with Blake's teaching to ensure the asymmetrical manifold is consistently inserted in the correct orientation. This would be particularly important for a manifold modified with Radford to have dedicated suction and vacuum ports, as it would aid in troubleshooting and ensure optimal performance by preventing incorrect connections.
- Expectation of Success: Petitioner argued that modifying Dunn's existing tabs and slots to have different sizes as taught by Blake was a minor and predictable redesign.

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 built on the primary combination by adding Glenn, which taught a mobile surgical suction system with an integrated, on-cart pump. This mapped to the limitations in claim 10 requiring a suction pump to be mounted to the mobile cart.
- Motivation to Combine: While Dunn taught connecting its mobile cart to a hospital's fixed wall vacuum source, a POSITA would have been motivated to replace this with an on-cart pump as taught by Glenn. The stated motivations included gaining increased mobility, reducing setup time, improving room safety by eliminating tubing to the wall, and enhancing reliability with a self-contained unit.
- Expectation of Success: Petitioner asserted that adding a portable pump like Glenn's to Dunn's cart was a straightforward and well-known modification, as on-cart pump systems were common and Dunn's cart provided ample space for such a component.
Additional Grounds: Petitioner asserted an additional obviousness challenge for claim 25 based on the combination of Dunn, Radford, Adahan, Blake, and Glenn, relying on similar design modification theories.

For the purposes of its invalidity arguments, Petitioner adopted several claim constructions previously advanced by the Patent Owner in related district court litigation, arguing that even under these broad constructions, the claims are obvious.
The term "below" was construed as "Beneath (lower than)." Petitioner argued this broad construction covers any rotation where the outlet moves to a lower point, not just directly beneath, making the feature obvious as a matter of simple design choice in the prior art.
The term "an axis" was construed as "An imaginary longitudinal line that extends through the bore... about which the manifold can rotate." Petitioner used this adopted construction to argue that the rotational features of the claims were disclosed in the prior art combinations.

Petitioner argued that the grounds presented in the petition are new and not cumulative of arguments considered during the original prosecution, thus arguing against a discretionary denial under 35 U.S.C. §325(d).
While the Examiner cited over 90 references, including Dunn and Radford, Petitioner asserted that the key prior art references of Adahan, Blake, and Glenn were not before the Examiner.
Because each asserted ground relies on at least Adahan, Petitioner contended that none of the specific prior art combinations or the arguments based on them were previously considered by the Office, warranting institution of an inter partes review (IPR).

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