Stryker Corp v. OsteoMed LLC

1. Case Identification

• Case #: IPR2022-00191
• Patent #: 9,763,716
• Filed: November 17, 2021
• Petitioner(s): Stryker Corporation and Wright Medical Technology, Inc.
• Patent Owner(s): OsteoMed LLC
• Challenged Claims: 15 and 21

2. Patent Overview

• Title: Bone Plate with a Transfixation Screw Hole
• Brief Description: The ’716 patent is directed to an orthopedic bone plate used with a transfixation screw for securing two discrete bones across a joint, such as in the foot. The claimed plate includes features like an elongate spine, a bridge portion, and flared hips adjacent to the transfixation screw hole to increase strength and aid surgical positioning.

3. Grounds for Unpatentability

Ground 1: Anticipation - Claims 15 and 21 are anticipated by Slater 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 the challenged claims. Independent claims 10 and 16, from which claims 15 and 21 depend, are met by Slater’s plate, which has an elongate spine with first and second ends for fixation, a bridge portion spanning the joint, a transfixation screw hole, and a varied thickness where the bridge portion is thicker than the ends. Petitioner contended that Slater’s Figure 2 also discloses the additional limitations of dependent claims 15 and 21: a first and second "flared hip" on opposite sides of the plate, which are shown as two generally parabolic, symmetrical wings extending laterally from the spine about the transfixation screw hole.

Ground 2: Obviousness - Claims 15 and 21 are obvious over Falkner in view of Duncan under 35 U.S.C. §103.

• Prior Art Relied Upon: Falkner (Application # 2005/00171544) and Duncan (Application # 2009/0228048).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Falkner teaches all elements of base independent claims 10 and 16. Falkner discloses 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 can be contoured to the bone, a bridge portion, a transfixation screw hole, and a design where the plate is thicker and stronger in regions away from the ends. Petitioner argued that Duncan, which discloses a joint fixation plate for use in the hand, supplies the teachings for the "flared hips" recited in dependent claims 15 and 21. Duncan’s plate is explicitly "widened laterally" at an intermediate section, creating symmetrical wings that Petitioner equated to the claimed flared hips.
  • Motivation to Combine: A POSITA would combine the teachings of Falkner and Duncan to improve the strength of Falkner’s plate. The petitioner argued that a POSITA would understand that an angled screw hole, like Falkner’s, creates a point of high stress requiring reinforcement. Duncan teaches widening a plate in an intermediate section to strengthen it and prevent screw interference. A POSITA would therefore have been motivated to apply Duncan’s known technique of widening the plate to Falkner’s design to predictably increase its strength around the screw hole and provide a visual cue for positioning, which is a simple design choice.
  • Expectation of Success: A POSITA would have had a reasonable expectation of success in combining the references. Widening a plate to increase its strength is a basic and predictable mechanical principle. Applying Duncan’s symmetrical, widened section to Falkner’s plate would predictably strengthen the plate and distribute stress evenly, achieving the desired result without undue experimentation.

4. Key Claim Construction Positions

• "flared hips": Petitioner argued this term, central to the challenged claims, should be construed to mean "a widened section of the bone plate." This construction is allegedly supported by the ’716 patent’s specification, which states that "[f]lared hips may generally be defined by a widened section of bone plate 100."

5. Arguments Regarding Discretionary Denial

• §325(d) Arguments: Petitioner argued against discretionary denial under 35 U.S.C. §325(d), asserting that the primary prior art references, Falkner and Duncan, were never before the Examiner during prosecution of the ’716 patent. While Slater was cited, it was among nearly 200 references and never substantively addressed. Furthermore, the petition challenges claims 15 and 21, which were newly asserted in litigation and contain unique "flared hips" limitations not addressed in a previous IPR filed by Petitioner on other claims of the ’716 patent.
• §314(a) (Fintiv) Arguments: Petitioner argued that discretionary denial under Fintiv is unwarranted. The co-pending district court litigations in Illinois and Delaware are in their infancy, with minimal discovery completed and no trial date set. Therefore, a Final Written Decision from the Board would issue long before any potential trial. Petitioner also stated that upon institution, it would not pursue in litigation the specific invalidity grounds included in the petition, mitigating concerns of inefficiency and conflicting decisions.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 15 and 21 of Patent 9,763,716 as unpatentable.