PTAB

IPR2021-01451

Stryker Corp v. OsteoMed LLC

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Petition
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1. Case Identification

2. Patent Overview

  • Title: Bone Plate with a Transfixation Screw Hole
  • Brief Description: The ’776 patent relates to a system and plate for securing two discrete bones across a joint, such as a metatarsophalangeal joint in the foot. The invention is directed toward a bone plate featuring a thickened bridge portion and a specific trajectory for a transfixation screw to manage load forces and provide stable fixation.

3. Grounds for Unpatentability

Ground 1: Anticipation by Slater - Claims 1-5 and 9-13 are anticipated by Slater

  • Prior Art Relied Upon: Slater (WO 2007/131287).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Slater, which discloses an ankle fusion plate, teaches every limitation of the challenged independent claims. Slater’s plate was described as having an elongate spine with first and second ends configured with fixation points and inner surfaces that conform to bone anatomy. Petitioner asserted that Slater’s unbroken section spanning the ankle joint constitutes a "bridge portion" and that Slater explicitly teaches making this portion thicker ("maximum thickness") than the plate ends to handle high loads, thereby meeting the claimed "depth" limitation. Furthermore, Slater's opening for an angled screw that passes through two separate bones (tibia and talus) was identified as the claimed "transfixation screw hole" and corresponding "transfixation screw."
    • Key Aspects: Petitioner emphasized that Slater was cited during prosecution but never substantively addressed by the Examiner, despite disclosing the key "thickened bridge" feature that Patent Owner added to the claims to secure allowance of the parent patent.

Ground 2: Anticipation by Falkner - Claims 1-3, 6, and 8-12 are anticipated by Falkner

  • Prior Art Relied Upon: Falkner (Application # 2005/00171544).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner contended that Falkner, which teaches a bone plate for fusing bones across a joint, also anticipates numerous claims. Falkner was shown to disclose a plate with first and second ends, fixation openings, and an inner surface that can be contoured to fit the bone. Petitioner mapped the junction of Falkner's external and internal plate portions to the claimed "bridge portion." It was argued that Falkner teaches varying plate thickness for structural stability, resulting in thinner ends and a thicker bridge, which meets the depth limitation. An oblique opening for a threaded fastener was identified as the transfixation screw hole. Petitioner also asserted that Falkner’s disclosure of threaded openings for lockably engaging screw heads anticipates dependent claims 6 and 8.
    • Key Aspects: Falkner was not before the USPTO during prosecution of the ’776 patent.

Ground 3: Obviousness over Arnauld and Slater - Claims 1-5 and 9-13 are obvious over Arnauld in view of Slater

  • Prior Art Relied Upon: Arnauld (EP 1897509) and Slater (WO 2007/131287).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner argued that Arnauld, an arthrodesis plate for a metatarsophalangeal joint, discloses every element of the independent claims except for the thickened bridge portion. Arnauld was shown to teach an elongated plate with conforming ends, fixation points, a bridge portion spanning a joint, and a transfixation screw. Slater was argued to supply the missing element: a bridge portion having a depth greater than the plate’s ends.
    • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Slater’s thickened bridge with Arnauld’s plate to increase its strength. Arnauld’s stated purpose was to provide durable fixation for a joint subject to high bending stress during walking. A POSITA would recognize this high-stress region and be motivated to incorporate Slater's known technique of thickening the plate at the joint to improve strength and durability.
    • Expectation of Success: The combination involved the simple application of a known strengthening technique to a known type of implant, which would predictably result in a stronger and more durable plate without requiring undue experimentation.

  • Additional Grounds: Petitioner asserted additional obviousness challenges, including that claims 6 and 8 are obvious over Slater in view of Weaver (Patent 6,623,486) for adding known locking screw technology to prevent screw back-out. Further grounds argued that claims 4, 5, and 13, which recite specific transfixation screw angles, are obvious over Falkner in view of Arnauld, as a POSITA would look to Arnauld for guidance on appropriate angles for a metatarsophalangeal joint fusion.

4. Arguments Regarding Discretionary Denial

  • Petitioner argued against discretionary denial under 35 U.S.C. §325(d), asserting that the primary prior art references were either not before the Examiner (Falkner) or were cited but not substantively addressed during prosecution (Slater, Arnauld). Petitioner characterized the Examiner's failure to consider this art as a material error, particularly after Patent Owner amended the claims to include features clearly disclosed in these references.
  • Petitioner also argued against discretionary denial under 35 U.S.C. §314(a) based on the Fintiv factors. It was contended that the parallel district court litigations were in their infancy, with no trial dates set, minimal discovery completed, and no claim construction hearings scheduled. These factors were argued to weigh strongly in favor of institution, as a Final Written Decision would issue long before any potential district court trial.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-6 and 8-13 of the ’776 patent as unpatentable.