PTAB

IPR2022-01043

Arthrex Inc v. P Tech LLC

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Deformable Fastener Systems for Securing Tissue
  • Brief Description: The ’453 patent describes deformable fastener systems used to secure tissue, such as fractured bone. The claimed system generally comprises a flexible hollow fastener made of biocompatible fibers, a suture extending through the fastener, and an introducer with a pushrod to position the device.

3. Grounds for Unpatentability

Ground 1: Anticipation over Fumex - Claims 8, 9, 11, 13-16, and 18-20 are anticipated by Fumex

  • Prior Art Relied Upon: Fumex (Patent 6,511,498).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Fumex, which describes a surgical bone anchoring system, discloses every limitation of independent claim 8 and its dependents. Fumex’s "deformable tubular sleeve" was asserted to be the claimed "flexible hollow fastener," and its disclosure of a "non-absorbable polyester braid" for the sleeve met the limitation of a fastener fabricated from biocompatible polymeric fibers. Petitioner mapped Fumex's "suture thread" passing through the sleeve to the claimed suture, noting that tensioning the thread deforms the sleeve into a ball to anchor it in bone. Finally, Fumex's "ancillary instrument" with a "rod" was identified as the claimed "introducer with a pushrod" that positions the fastener at its distal end.

Ground 2: Obviousness over Fumex and Grafton - Claims 1-4, 6, 9, 10, and 15 are obvious over Fumex in view of Grafton

  • Prior Art Relied Upon: Fumex (Patent 6,511,498), Grafton (Application # 2003/0050666).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner contended that Fumex taught all elements of independent claim 1 except for the requirement that the suture be fabricated with polyethylene. Grafton was introduced to supply this missing element, as it explicitly described a high-strength surgical suture including braided strands of ultra-high molecular weight polyethylene and polyester.
    • Motivation to Combine: Petitioner argued a person of ordinary skill in the art (POSITA) would combine Fumex with Grafton to create a stronger, more reliable bone anchoring system. Fumex disclosed its device was suitable for orthopedic applications like ligament and tendon repair, and Grafton taught that its high-strength polyethylene suture was "ideally suited" for these same procedures. A POSITA would thus have been motivated to use Grafton’s stronger suture material in Fumex’s anchoring device for applications requiring high tensile strength.
    • Expectation of Success: Grafton expressly stated its suture could be attached to a suture anchor, and its flexible, braided nature would have given a POSITA a reasonable expectation of success in threading it through Fumex’s flexible sleeve just as any other suture could be.

Ground 3: Obviousness over Fumex and Bonutti ’395 - Claims 5, 12, and 17 are obvious over Fumex in view of Bonutti ’395

  • Prior Art Relied Upon: Fumex (Patent 6,511,498), Bonutti ’395 (Patent 6,238,395).

  • Core Argument for this Ground:

    • Prior Art Mapping: This ground addressed dependent claims requiring a "flexible" pushrod. Petitioner asserted that while Fumex disclosed an introducer with a pushrod, it did not expressly state the rod was flexible. Bonutti ’395 was cited for its disclosure of a flexible pusher member designed specifically for inserting a suture anchor into a nonlinear (e.g., curved) hole drilled in bone.
    • Motivation to Combine: The motivation to combine stemmed from Fumex’s own disclosure that its device could be used in a hole bored with "any wall shape," which implies nonlinear passages. However, Fumex’s illustrated linear rod would be ill-suited for such passages. A POSITA seeking to use the Fumex device in a curved passage would have naturally looked to known solutions like the flexible pusher taught by Bonutti ’395 to achieve the predictable result of navigating a nonlinear hole.
    • Expectation of Success: A POSITA would have reasonably expected that substituting Fumex’s rod with a flexible one as taught by Bonutti ’395 would successfully allow the placement of the fastener in curved bone tunnels without altering the fundamental anchoring function of the device.

  • Additional Grounds: Petitioner asserted additional obviousness challenges based on combinations including Bonutti ’875 (to teach a fully knotless system), Bonutti ’717 (to teach a self-penetrating introducer), and three-way combinations of the primary references.

4. Key Claim Construction Positions

  • "Passage": For the purposes of the inter partes review (IPR), Petitioner adopted the Patent Owner's apparent construction from a related litigation, construing "passage" broadly as "an opening into which something can be placed." This construction encompasses bone holes that do not traverse the entire bone, which Petitioner argued was still taught by the prior art.
  • "Knotless" Fastener: Petitioner proposed that "knotless," as used in claims 3, 19, and 20, referred to a suture-restraining structure that is secured in place without tying a knot at the actual fastening site. Petitioner argued Fumex's fastener met this definition because it secures the suture by deforming into a ball, not by tying a knot.

5. Arguments Regarding Discretionary Denial

  • Petitioner argued that discretionary denial under Fintiv would be inappropriate. It was asserted that the parallel district court litigation was in its early stages, with no discovery having occurred and no trial date set. Petitioner contended that a trial was unlikely to occur before a Final Written Decision (FWD) from the Board and that the strong merits of the petition weighed heavily in favor of institution.

6. Relief Requested

  • Petitioner requested institution of an IPR and cancellation of claims 1-20 of the ’453 patent as unpatentable.