Stryker Corp v. OsteoMed LLC

1. Case Identification

• Case #: IPR2022-00190
• Patent #: 9,351,776
• Filed: November 17, 2021
• Petitioner(s): Stryker Corporation and Wright Medical Technology, Inc.
• Patent Owner(s): OsteoMed LLC
• Challenged Claims: 15

2. Patent Overview

• Title: Bone Plate with a Transfixation Screw Hole
• Brief Description: The ’776 patent relates to a bone plate used with a transfixation screw for securing two discrete bones across a joint, particularly for procedures like repairing a metatarsophalangeal joint in the foot. The plate features a thickened bridge portion and flared hips to aid in surgical positioning and increase structural strength.

3. Grounds for Unpatentability

Ground 1: Anticipation of Claim 15 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," anticipates every element of claim 15. Petitioner contended that Slater teaches the limitations of the underlying independent claim 10, including an elongate plate with ends for fixation to discrete bones, inner surfaces that conform to bone geometry, a bridge portion spanning the joint, a transfixation screw hole, and a thickened bridge portion. For dependent claim 15 specifically, Petitioner asserted that Slater's Figure 2 discloses a plate with a first flared hip on one side and a second on the other. These hips were described as comprising two "generally parabolic wings" extending laterally from the plate's spine and being "symmetrically opposed to one another about the transfixation screw hole," directly mapping to the claim language.
  • Key Aspects: Petitioner argued that a person of ordinary skill in the art (POSITA) would understand the claim term "depth" to be interchangeable with "thickness," a term used throughout the ’776 patent’s specification. Slater explicitly discloses varying plate thickness and teaches that the plate should be at its "maximum thickness" over the joint region where the highest loading occurs, satisfying the depth limitation.

Ground 2: Obviousness of Claim 15 over Falkner in view of Duncan

• Prior Art Relied Upon: Falkner (Application # 2005/00171544) and Duncan (Application # 2009/0228048).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Falkner, which discloses a bone plate for fusing bones across a joint, teaches all elements of independent claim 10. Falkner’s plate includes first and second ends, a bridge portion, an oblique transfixation screw hole, and variable thickness for structural stability. Petitioner contended that Duncan supplies the limitations of dependent claim 15. Duncan, which describes a joint fixation system for the hand, discloses a bone plate that is "widened laterally at an intermediate section." Petitioner mapped this feature to the claimed "flared hips," noting that Duncan’s widened sections are symmetrical, parabolic, and positioned around angled screw holes.
  • Motivation to Combine: A POSITA would combine Falkner's bone plate with Duncan's flared hip design to strengthen the plate in the high-stress area surrounding the angled transfixation screw hole. Falkner acknowledges that plates may be made wider or thicker for strength, and Duncan teaches using widened, flared hips for precisely this purpose. Therefore, applying Duncan's known strengthening feature to the analogous Falkner plate would have been a predictable and common-sense design modification.
  • Expectation of Success: A POSITA would have had a high expectation of success in the combination. The modification involved applying a known strengthening feature (Duncan's flared hips) to a known type of bone plate (Falkner) to achieve the predictable result of increased strength and stability around the screw hole, without changing the fundamental principles of operation of either device.

4. Key Claim Construction Positions

• Petitioner proposed that the claim term "flared hips" should be construed to mean "a widened section of the bone plate." This construction was based on explicit support from the ’776 patent specification, which states, "[f]lared hips may generally be defined by a widened section of bone plate 100." This construction is central to Petitioner's obviousness argument, as it allows the "widened laterally" section of Duncan to be mapped directly onto the "flared hips" limitation of claim 15.

5. Arguments Regarding Discretionary Denial

• Petitioner argued extensively that discretionary denial under either 35 U.S.C. § 325(d) or § 314(a) would be inappropriate.
• § 325(d) Arguments: Petitioner asserted denial was improper because the primary references in the obviousness ground, Falkner and Duncan, were never before the examiner during prosecution. While Slater was cited, it was one of nearly 200 references and was not substantively addressed by the examiner.
• § 314(a) (General Plastics and Fintiv) Arguments: Petitioner argued that the relevant factors weigh against denial. The petition targets claim 15, which was newly asserted in co-pending litigation and not challenged in a prior IPR filed by Petitioner. This petition was filed promptly after Petitioner was served with infringement contentions for claim 15. Furthermore, the co-pending district court cases are in their infancy, with no trial date set, minimal discovery completed, and no claim construction hearings scheduled. Consequently, a Final Written Decision in the IPR would issue long before any district court trial.

6. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claim 15 of Patent 9,351,776 as unpatentable.