PTAB

IPR2023-00451

Pain TEQ LLC v. Orthocision Inc

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1. Case Identification

2. Patent Overview

  • Title: Method and Implant System for Sacroiliac Joint Fixation and Fusion
  • Brief Description: The ’511 patent discloses methods and systems for repairing a sacroiliac (SI) joint. The claimed method involves inserting a working channel with tangs on its distal end and an interior guidance slot, through which surgical tools and a fusion implant with bone-engaging protrusions are passed to fuse the joint.

3. Grounds for Unpatentability

Ground 1: Claims 1-5, 8, and 9 are obvious over Vestgaarden-981, Vestgaarden-818, and Lins

  • Prior Art Relied Upon: Vestgaarden-981 (Patent 8,162,981), Vestgaarden-818 (Patent 8,882,818), and Lins (Application # 2015/0088200).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that the combination of these references teaches every limitation of the challenged claims. Vestgaarden-818 taught the foundational method for SI joint fusion, including creating an incision, inserting a working channel, creating a void across the joint, and placing an implant. Vestgaarden-981 taught specific improvements, including a working channel with blunt tangs and fusion implants with various bone-engaging protrusions (barbs, spikes, screws) to prevent pullout. Lins taught an improved mechanism for controlling surgical tool advancement, disclosing an interior guidance slot within the working channel that engages with a guide protrusion on a surgical tool to control both the depth and orientation of insertion.
    • Motivation to Combine: Petitioner asserted a POSITA would combine Vestgaarden-818 and Vestgaarden-981 because Vestgaarden-818 explicitly incorporates Vestgaarden-981 by reference for its implant technology, and Vestgaarden-981’s implants and tools offered clear advantages (e.g., better implant security, blunt tangs to reduce tissue injury). A POSITA would have been further motivated to substitute the guidance mechanism of Vestgaarden-981 (complementary flat portions) with the superior guide slot/protrusion system from Lins. Lins’s system offered improved user experience (enabling visual alignment and eliminating blind rotation) and simpler, more efficient manufacturing compared to creating non-uniform channels with flat portions.
    • Expectation of Success: Petitioner contended that success was predictable because the combination involved applying known surgical instruments and implants for their intended purposes. The express cross-reference between Vestgaarden-818 and Vestgaarden-981, and Lins’s own reference to Vestgaarden-981, confirmed the compatibility and predictability of the combination.

Ground 2: Claims 6, 7, and 10-23 are obvious over Vestgaarden-981, Vestgaarden-818, and Lins in view of Paltzer

  • Prior Art Relied Upon: Vestgaarden-981 (Patent 8,162,981), Vestgaarden-818 (Patent 8,882,818), Lins (Application # 2015/0088200), and Paltzer (Patent 8,029,512).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground builds on the combination above, adding Paltzer to teach two additional features recited in the remaining claims. First, for claims requiring slots on the proximal end of the implant to engage with an inserter tool (claims 6, 10, 18), Paltzer disclosed an implant with "elongate recesses or receiver channels" for this exact purpose. Second, for claims requiring a rasp to prepare the bone void (claims 7, 16), Paltzer disclosed a "rasp scraping member" with rasping surfaces designed to wound bone and promote ingrowth.
    • Motivation to Combine: A POSITA would be motivated to add Paltzer’s implant slots to the Vestgaarden-981 implant to improve the interface with Vestgaarden-981’s implant holder. Paltzer’s slots provided several advantages: maximizing surface area contact for better force distribution, sheathing the inserter arms to prevent damage to surrounding tissue, and enabling a single, universal inserter to be used with implants of various sizes. A POSITA would also be motivated to incorporate Paltzer’s rasping feature, either as a standalone tool or on Vestgaarden-981’s cavity cutter, to scrape and wound the bone surfaces prior to implant insertion, which complements the goal of rapid fusion by promoting blood flow and bone ingrowth.
    • Expectation of Success: Petitioner argued the combination would yield predictable results, as it involved modifying a known implant system with known features (slots and rasping surfaces) to gain their well-understood benefits without changing their fundamental functions.

4. Arguments Regarding Discretionary Denial

  • Petitioner argued that discretionary denial under §314(a) based on Fintiv factors would be inappropriate. The petition asserted that the challenge was compelling and meritorious. Furthermore, the parallel district court litigation was in its infancy, with no trial date set, claim construction pending, and minimal discovery completed. Petitioner stated there was a high likelihood the FWD in the IPR would issue before a district court trial. Crucially, Petitioner argued that there was no overlap between the invalidity contentions in the litigation and the IPR petition, as none of the prior art references relied upon in the IPR had been presented in the district court.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-23 of the ’511 patent as unpatentable under 35 U.S.C. §103.