Stryker Corp v. OsteoMed LLC

1. Case Identification

• Case #: IPR2022-00189
• Patent #: 8,529,608
• Filed: November 17, 2021
• Petitioner(s): Stryker Corporation and Wright Medical Technology, Inc.
• Patent Owner(s): OsteoMed LLC
• Challenged Claims: 16

2. Patent Overview

• Title: Bone Plate with a Transfixation Screw Hole
• Brief Description: The ’608 patent is directed to a bone plate used with a transfixation screw for securing two discrete bones across an intermediate joint. The plate is designed with specific features, including flared hips, to improve strength and aid in surgical positioning.

3. Grounds for Unpatentability

Ground 1: Anticipation of Claim 16 under 35 U.S.C. §102

• 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 element of challenged claim 16. For the underlying independent claim 11, Petitioner asserted Slater discloses a plate with an elongate spine, first and second ends with fixation points that conform to bone geometry, a bridge portion configured to span a joint, a transfixation screw hole, and a thickened bridge portion relative to the ends of the plate. For the limitations of dependent claim 16, Petitioner contended that Slater’s Figure 2 explicitly shows widened sections on opposite sides of the plate that constitute a "first flared hip" and a "second flared hip." These hips were argued to be generally parabolic wings extending laterally from the spine and being symmetrically opposed about the transfixation screw hole, thus meeting all limitations of claim 16.

Ground 2: Obviousness of Claim 16 under 35 U.S.C. §103

• Prior Art Relied Upon: Falkner (Application # 2005/00171544) in view of Duncan (Application # 2009/0228048).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Falkner discloses every element of the base independent claim 11. Falkner teaches a bone plate for fusing bones across a joint that includes an elongate spine, first and second ends with fixation points, an inner surface that conforms to bone geometry, a bridge portion, and an oblique opening (44) that functions as a transfixation screw hole. Falkner also expressly teaches that the plate’s thickness can be varied, with thicker regions for increased structural stability. Petitioner asserted that Duncan supplies the missing limitations of claim 16 by disclosing a joint fixation plate for use in the hand that is "widened laterally" at its intermediate section. This widened section in Duncan forms two symmetric, parabolic "flared hips" around the screw holes.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Duncan’s teaching of flared hips with Falkner’s bone plate to solve a known problem. Falkner’s use of an angled screw hole inherently weakens the plate more than a perpendicular hole would. A POSITA would look to known strengthening techniques, such as widening the plate in the area of high stress, as taught by Duncan. Petitioner argued this modification would strengthen Falkner's plate and provide a valuable visual cue for surgeons to position the strongest part of the plate over the joint, a common design goal.
  • Expectation of Success: A POSITA would have a reasonable expectation of success in this combination. Adding flared hips, a known method for strengthening bone plates, to the Falkner plate would predictably result in a stronger plate without requiring undue experimentation. The result is merely the combination of known elements to achieve a predictable outcome.

4. Key Claim Construction Positions

• "flared hips": Petitioner proposed that this term, as used in claim 16, means "a widened section of the bone plate." This construction is allegedly supported by the ’608 patent's specification, which states that "[f]lared hips may generally be defined by a widened section of bone plate 100." This construction allows Petitioner to map the widened sections of both the Slater and Duncan references directly onto this claim limitation.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under either 35 U.S.C. §325(d) or §314(a) would be inappropriate.
• §325(d) Arguments: The petition asserted that the primary prior art references, Falkner and Duncan, were never before the examiner during prosecution of the ’608 patent. While Slater was cited in a search report, it was not substantively addressed by the examiner or patent owner. Therefore, the petition raised new, non-cumulative art and arguments.
• §314(a) (General Plastics/Fintiv) Arguments: Petitioner contended that the General Plastics factors weigh against denial because this petition was filed in response to the Patent Owner's new assertion of claim 16 in co-pending litigation, a claim not challenged in Petitioner's earlier IPR. Regarding the Fintiv factors, Petitioner argued the parallel district court cases are in their infancy, with no trial dates set, minimal discovery completed, and no claim construction hearings scheduled. Thus, a Final Written Decision (FWD) from the Board would issue long before any potential trial.

6. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claim 16 of Patent 8,529,608 as unpatentable.