Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`
`
`
`
`Paper 17
`Entered: October 30, 2014
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ZIMMER HOLDINGS, INC.
` and ZIMMER, INC.,
`Petitioner,
`
`v.
`
`BONUTTI SKELETAL INNOVATIONS LLC,
`Patent Owner.
`____________
`
`Case IPR2014-01078
`Patent 7,837,736 B2
`____________
`
`
`
`Before WILLIAM V. SAINDON, MICHAEL R. ZECHER, and
`RICHARD E. RICE, Administrative Patent Judges.
`
`RICE, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`Denial of Motion for Joinder
`37 C.F.R. § 42.122
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`
`
`
`
`
`
`Paper 17
`Entered: October 30, 2014
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ZIMMER HOLDINGS, INC.
` and ZIMMER, INC.,
`Petitioner,
`
`v.
`
`BONUTTI SKELETAL INNOVATIONS LLC,
`Patent Owner.
`____________
`
`Case IPR2014-01078
`Patent 7,837,736 B2
`____________
`
`
`
`Before WILLIAM V. SAINDON, MICHAEL R. ZECHER, and
`RICHARD E. RICE, Administrative Patent Judges.
`
`RICE, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`Denial of Motion for Joinder
`37 C.F.R. § 42.122
`
`
`
`
`
`
`
`IPR2014-01078
`Patent 7,837,736 B2
`
`
`I.
`INTRODUCTION
`Zimmer Holdings, Inc. and Zimmer, Inc. (collectively, “Petitioner”)
`filed a Petition (Paper 1, “Pet.”) requesting an inter partes review of claims
`23–25 of U.S. Patent No. 7,837,736 B2 (Ex. 1001, “the ’736 Patent”) and a
`Motion for Joinder (Paper 3) seeking to join this case with Case IPR2014-
`00191. Bonutti Skeletal Innovations LLC (“Patent Owner”) filed a
`Preliminary Response (Paper 16, “Prelim. Resp.”) and an Opposition to the
`Motion for Joinder (Paper 8). We have jurisdiction under 35 U.S.C. § 314,
`which provides that an inter partes review may not be instituted “unless . . .
`there is a reasonable likelihood that the petitioner would prevail with respect
`to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a).
`Taking into account the arguments presented in Patent Owner’s Preliminary
`Response, we determine that the information presented in the Petition does
`not establish that there is a reasonable likelihood that Petitioner would
`prevail with respect to at least one of challenged claims 23–25 of the
`’736 Patent. Accordingly, we do not authorize an inter partes review as to
`any of the claims of the ’736 Patent challenged in this case. As a result, we
`deny Petitioner’s Motion for Joinder as moot.
`
`
`A. Related Proceedings
`The ’736 Patent is the subject of a patent infringement lawsuit titled
`
`Bonutti Skeletal Innovations, LLC v. Zimmer Holdings, Inc., No. 1:12-cv-
`01107-GMS (D. Del.). Pet. 2–3; Patent Owner’s Mandatory Notices,
`Paper 7, 2. Petitioner also has filed four related Petitions in the following
`
` 2
`
`
`
`
`
`IPR2014-01078
`Patent 7,837,736 B2
`
`cases: IPR2014-00191 (the ’736 Patent), IPR2014-00311 (U.S. Patent No.
`7,959,635 B1), IPR2014-00321 (U.S. Patent No. 7,806,896 B1), and
`IPR2014-01080 (U.S. Patent No. 7,806,896 B1). Pet. 3.
`In Case IPR2014-00191, we authorized an inter partes review to be
`instituted as to claims 15–22, 26–28, and 31–36 of the ’736 Patent, but not
`claims 23–25. Zimmer Holdings, Inc. v. Bonutti Skeletal Innovations, LLC,
`Paper 12, 2, Case IPR2014-00191 (PTAB June 2, 2014). Petitioner again
`challenges claims 23–25 in the present case.
`
`
`B. The ’736 Patent (Ex. 1001)
`The ’736 Patent, titled “MINIMALLY INVASIVE SURGICAL
`
`SYSTEMS AND METHODS,” relates to, inter alia, knee implants and knee
`implant surgery, including implants that can be used in other joints of the
`human body. See. e.g., Ex. 1001, 9:51–53, 63–67; 97:33–98:5; 99:34–
`102:4; Figs. 80, 81, 88–90.
`Figure 90 of the ’736 Patent is reproduced below.
`
` 3
`
`
`
`
`
`
`
`IPR22014-010778
`
`
`Patennt 7,837,7336 B2
`
`
`
`
`al 1290, inclluding tibia
`
`90.
`
`Ex. 11001, Fig.
`
`
`
`
`Figure 990 depicts rrotating plaatform kneee implant
`
`
`
`
`
`
`
`
`
`compponent 12992 with plaate membeer 1300, traay 1294, taapered spikke 1298,
`
`
`and rrotatable bbearing inseert 1296. IId. at 101:
`
`
`
`
`14–16, 28––31. Plate
`superior
`
`
`
`memmber 1300 hhas a concave, spherically-shapped plateauu surface (
`
`
`
` Id. at 101
`
`
`
`
`:18–20. SSuperior suurface 13022 is provideed with
`
`surfaace 1302).
`
`
`
`
`
`
`post 1306, whiich cooperaates with recess 13088 located oon bearing
`
`. Id. at
`
`
`
`
`
`
`to peermit rotatiion of bearring insert 1296 with respect too tray 1294
`
`
`
`
`
`101:28–31. Poost 1306 is not locateed over the center of tthe tibia, bbut rather
`
`
`
`knee.” Id.d. at
`
`
`
`
`
`“offsset mediallly toward tthe medial compartmment of the
`
`
`
`
`
`
`
`
`101:55–57, Figg. 90. Acccording to tthe Specifiication of tthe ’736 Paatent, “[i]nn
`
`
`
`priorr art rotatinng platformm designs,
`
`
`the post iss substantiaally in line
`with the
`
`
`
`
`
`
`
`centrral keel.” IId. at 101:58–59. “OOffsetting ppost 1306 mmore towaard the
`
`
`
`
`
`
`
`medial comparrtment of thhe knee reccreates thee natural piivoting mootion o[f]
`
`insert 12966
`
` 4
`
`
`
`
`
`
`
`IPR22014-010778
`
`
`Patennt 7,837,7336 B2
`
`
`
`
`
`
`the kknee, with less translaation mediially, a morre stable jooint media
`
`lly, and
`
`
`
`moree rotationaal arc or moore movemment laterallly.” Id. att 101:63–667.
`
`
`
`
`
`
`
`
`
`
`Figures 88 and 89 of the ’7366 Patent arre reproducced below..
`
`
`
`illustrate mmobile beaaring implaant 1250 wwith femoraal
`
`. 88 & 89.
`
`Ex. 11001, Figs
`88 and 89
`Figures
`
`
`
`
`
`
`
`
`
`compponent 12552 and tibiial componnent 1254,
`
`
`the latter ccomprisingg bearing
`
`
`
`
`
`
`
`tray 1266, inseert 1268, taapered keell or spike 11270, and pplate membber 1272.
`
`
`
`
`
`
`
`Ex. 11001, 99:35–38, 49–51. Plate mmember 12272 includdes superiorr surface
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`55. As describbed in the SSpecificatioon, track 11276 in plaate memberr 1272
`
`12744, which haas a concavve, sphericcally shapeed plateau ssurface. Idd. at 99:54––
`
` 5
`
`
`
`
`
`IPR2014-01078
`Patent 7,837,736 B2
`
`cooperates with corresponding groove 1286 in bearing insert 1268 to enable
`sliding movement “substantially in the anterior-posterior direction.”
`Ex. 1001, 99:60–66. The Specification discloses that “the arrangement of
`the track and groove can be switched so that bearing insert 1268 is provided
`with the track and superior surface 1274 is provided with the groove.” Id.
`at 100:2–5.
`
`
`C. Illustrative Claims
`Claim 15 is independent and not challenged in the present case.
`Claims 23–25 depend directly or indirectly from claim 15. Claims 15 and
`25 are illustrative and are reproduced below:
`
`15. A device to replace an articulating
`surface of a first side of a joint in a body, the joint
`having first and second sides, comprising:
`
`a base component,
`including a bone
`contacting side connectable with bone on the first
`side of the joint, and a base sliding side on an
`opposite side of said base component relative to
`said bone contacting side;
`
`a movable component, including a movable
`sliding side, said movable sliding side being
`matably positionable in sliding engagement with
`said base sliding side, and an articulating side on
`an opposite side of said movable component
`relative to said movable sliding side, shaped to
`matingly engage an articulating surface of the
`second side of the joint;
`
`a protrusion extending from one of said base
`sliding side or movable sliding side, said
`protrusion substantially offset with respect to a
`midline of the first side of a joint;
`
` 6
`
`
`
`
`
`IPR2014-01078
`Patent 7,837,736 B2
`
`
`a recess sized to receive said protrusion,
`
`disposed in the other of said base sliding side or
`movable sliding side, said protrusion and recess
`matable to constrain movement of said first and
`second components relative to each other, thereby
`promoting movement of the joint within desired
`anatomical limits.
`
`25. The device of claim 15, further
`
`including means associated with said protrusion to
`prevent a separation of said base sliding side and
`said movable sliding side.
`
`Ex. 1001, 114:527, 61–63.
`
`
`D. The Asserted Prior Art References
`Petitioner relies upon the following references as prior art (see Pet. 5–
`
`6):
`
`
`
`Walker US 5,755,801
`Buechel US 4,340,978
`
`May 26, 1998 Ex. 1002
`July 27, 1982
`Ex. 1012
`
`E. The Asserted Grounds
`Petitioner challenges claims 23–25 of the ’736 Patent on the following
`grounds (Pet. 5–6, 26–34):
`
`
`
` 7
`
`
`
`
`
`IPR2014-01078
`Patent 7,837,736 B2
`
`
`
`
` Reference(s)
`
` Basis
`
`Walker
`Walker and Buechel
`
`§ 102(b)
`§ 103(a)
`
`Claims
`Challenged
`
`25
`23–25
`
`
`
`
`II. ANALYSIS
`A. Claim Construction
`We give claim terms in an unexpired patent their broadest reasonable
`interpretation in light of the specification of the patent in which they appear.
`37 C.F.R. § 42.100(b). The broadest reasonable interpretation consistent
`with the specification of a means-plus-function limitation “is that statutorily
`mandated in paragraph six [of 35 U.S.C. § 112].” In re Donaldson Co.,
`16 F.3d 1189, 1194–95 (Fed. Cir. 1994).
`Here, challenged claim 25 recites “means associated with said
`protrusion to prevent a separation of said base sliding side and said movable
`sliding side.” Ex. 1001, 114:61–63. In Case IPR2014-00191, we
`determined that claim 25 contains a means-plus-function limitation because
`it recites “means” and a function for performing the claimed “means,” i.e.,
`“to prevent a separation of said base sliding side and said movable sliding
`side,” and because it does not recite sufficient structure or material for
`performing the specified function. Zimmer Holdings, Inc. v. Bonutti Skeletal
`Innovations, LLC, Paper 12, 8, Case IPR2014-00191 (PTAB June 2, 2014)
`
` 8
`
`
`
`
`
`IPR2014-01078
`Patent 7,837,736 B2
`
`(citations omitted). We incorporate herein by reference our determination
`and the associated analysis from that related case.
`Because claim 25 contains a means-plus-function limitation, the
`Petition “must identify the specific portions of the specification that describe
`the structure, material, or acts corresponding to each claimed function.” See
`37 C.F.R. § 42.104(b)(3). Petitioner, however, asserts that the Specification
`“has no disclosure of . . . the means associated with the protrusion recited in
`claim 25.” Pet. 14 (citing Ex. 1013 (Declaration of Arthur G. Erdman,
`Ph.D.) ¶ 11), 24–25. Petitioner argues that “Fig. 90 and the associated
`description . . . fail to disclose structure associated with the claimed
`protrusion (e.g., post 1306) to prevent separation of the base sliding side and
`the movable sliding side (e.g., bearing insert 1296 and the tray 1294).” Id.
`at 14 (citing Ex. 1001, 101:6–102:28). Anticipating Patent Owner’s
`countervailing argument that the dovetail-like structure depicted in
`Figures 88 and 89 corresponds to the means-plus-function limitation,
`Petitioner additionally argues that Figures 88 and 89 “do not relate to the
`claimed invention as they do not include a protrusion substantially offset
`with respect to a midline of the first side of a joint, as required by the
`claims.” Id. at 16.
`As Petitioner anticipated, Patent Owner relies on Figures 88 and 89,
`and argues that bearing insert 1268 (depicted in those figures) includes a
`recess in the form of dovetail-shaped groove 1286, which mates with a
`protrusion in the form of dovetail-shaped track 1276. Prelim. Resp. 5.
`Patent Owner also refers to a passage in the Specification that states:
`
` 9
`
`
`
`
`
`IPR2014-01078
`Patent 7,837,736 B2
`
`“Although a single track 1276 is shown centrally located [in Figures 88
`and 89], track 1276 can be located elsewhere along superior surface 1274
`and/or more than one track can be used (e.g. two lateral symmetrically
`placed tracks).” Ex. 1001, 99:63–100:2 (emphasis added); see Prelim.
`Resp. 7 (citations omitted).
`On the basis of Figures 88 and 89 and the related description in the
`Specification, Patent Owner argues that “the means of claim 25 should be
`construed to mean a dovetail track, or equivalent thereof, which performs the
`function of preventing a separation of said base sliding side and said
`movable sliding side.” Prelim. Resp. 7. We are persuaded, at least in part,
`by Patent Owner’s argument. That is, we are persuaded that track 1276, as
`depicted in Figures 88 and 89, is a protrusion that extends from plate
`member 1272. We also are persuaded that, because protrusion 1276 is dove-
`tail shaped (i.e., wider toward its outward end than its base), it prevents
`separation of bearing insert 1268 and plate member 1272 when mated with
`corresponding dovetail-shaped-groove 1286. We are not persuaded,
`however, that the track, aside for its dovetail shape, corresponds to the
`specified function. We also are not persuaded by Petitioner’s argument that
`protrusion 1276 as depicted in Figures 88 and 89 is not “substantially offset
`relative to a midline of the first side of a joint” (as required by independent
`claim 15), because Petitioner’s argument does not address the disclosure in
`the Specification that: (1) “two lateral symmetrically placed tracks” can be
`used in place of the single, centrally-located track depicted in Figures 88 and
`89, or that, (2) if a single track is used, the track need not be located
`
`
`10
`
`
`
`IPR2014-01078
`Patent 7,837,736 B2
`
`centrally, but rather can be located elsewhere along superior surface 1274.
`Ex. 1001, 99:63–100:2.
`For purposes of this Decision, we determine that the broadest
`reasonable construction consistent with the Specification of “means
`associated with said protrusion to prevent a separation of said base sliding
`side and said movable sliding side” is a dovetail-shaped protrusion that is
`wider toward its outward end than its base and that prevents separation of
`the base sliding side and the movable sliding side when mated with a
`corresponding dovetail-shaped groove, and equivalents thereof.
`
`
`B. Asserted Grounds of Unpatentability
`We turn now to Petitioner’s asserted grounds of unpatentability to
`determine whether Petitioner has met the threshold standard of 35 U.S.C.
`§ 314(a).
`
`1. Claim 25 as Anticipated by Walker
`We determine that the information presented in the Petition does not
`
`establish that there is a reasonable likelihood that Petitioner would prevail in
`showing that Walker anticipates claim 25.
`a. Walker (Ex. 1002)
`Walker teaches that a prosthesis for knee replacement should facilitate
`“a limited degree of axial rotation . . . biased to the medial side of the knee.”
`Ex. 1002, 1:11–20. To achieve such rotation, Walker discloses that
`“[p]referably, . . . the axis about which the meniscal component rotates is
`centred at the edge of the tibial platform or beyond its physical extent.” Id.
`
`
`11
`
`
`
`
`
`IPR22014-010778
`
`
`Patennt 7,837,7336 B2
`
`at 2:
`
`
`
`
`
`
`29–32. Coonsistent wwith that teaching, thee axis of rootation of tthe
`men
`
`
`
`
`
`
`iscal compponent relaative to the tibial platfform in eaach of Walkker’s
`
`
`
`
`
`
`
`discllosed emboodiments, iincluding tthe emboddiment of FFigure 2 onn which
`
`
`Petittioner reliees, is offsett medially from the aanterior-po
`
`
`
`
`
`
`tibiaal platform..1
`
`
`
`
`
`
`is repproduced bbelow.
`
`
`
`
`
`
`sterior middline of thee
`
`
`
`Petitioneer refers too an annotaated versionn of Walkeer’s Figuree 2, which
`
`
`
`
`
`
`
`Pet 220.
`
`
`
`
`
`
`
`
`
`
`1 In tthe emboddiment of FFigure 1, “tthe centre oof rotation
`
`of the menniscal
`the extent
`
`
`
`
`compponent on the tibial pplatform liees outside
`
`of the plattform at a
`
`
`poinnt indicatedd at A in FIIG. 1c.” Idd. at 3:47–5
`
`–1e. In thhe
`50, Figs. 1
`
`
`
`
`
`embodiment off Figure 2, the axis o
`
`
`
`f rotation iis at the eddge of the ttibial
`
`
`
`platfform. Id. aat 4:22–25,, Figs. 2–2
`
`
`
`b. In the eembodimennt of Figurre 3, “the
`
`
`
`
`
`
`
`rotattion of the meniscal ccomponentt 102 on thhe tibial plaatform is c
`b.
`
`
`
`medially displaaced axis 1104.” Id. aat 4:45–47,, Figs. 3–3
`
`
`
`entred on aa
`
`
`12
`
`
`
`
`
`IPR22014-010778
`
`
`Patennt 7,837,7336 B2
`
`
`2C.
`Ex. 11002, Fig.
`
`
`
`
`13
`
`
`
`
`
`
`
`
`
`Petitioneer’s annotaated Figuree 2 of Walkker is a plaan view thaat depicts
`
`
`
`
`
`
`
`tibiaal platform 41 and meeniscal commponent 444. Ex. 10002, 2:50–522, 4:22–25
`.
`
`ward fromm
`
`
`
`
`
`
`Studd 42 in tibiaal platformm 41 has ann enlarged hhead and eextends up
`
`
`
`tibiaal platform 41. Id. at 4:10–13. Slot 43 in
`
`
`
`meniscal ccomponentt 44
`
`
`
`
`
`
`
`incluudes upperr groove 455, which “rreceiv[es] tthe head off stud 42 inn such a
`
`
`way as to prevent lift-offf of the menniscal commponent froom the plattform.” Idd.
`
`
`
`
`
`
`
`
`
`
`at 4:13–16. WWalker disclloses that ““[r]otation
`
`
`of the menniscal commponent 44
`
`
`
`
`
`
`
`abouut an axis XX at the edgge of the tiibial platfoorm is conttrolled by aa semi-
`
`
`
`
`
`
`circuular abutment 50 whiich is upstaanding at thhe medial
`
`side of thee platform.
`
`
`
`
`
`
`
`Id. aat 4:22–25, Figs. 2, 2aa, & 2b. WWalker furtther disclosses that “[aa] recess o
`r
`
`
`
`
`
`
`
`notchh 51 is formmed in thee corresponnding portiion of the mmeniscal coomponent
`
`
`
`
`and iis roundedd as shown [see annottated Figurre 2 above]] to allow
`
`
`
`apprroximately 2 mms moovement inn an anterioor and postterior direcction.” Id.
`
`
`
`
`
`
`
`
`
`at 4:25–28, Figgs. 2, 2a, && 2b.
`
`
`
`
`Figure 22c of Walkeer is reprodduced beloow.
`2
`
`
`
` 41 42
`
` ”
`
`
`
`
`
`IPR2014-01078
`Patent 7,837,736 B2
`
`Figure 2c depicts “the method of engaging the meniscal component on
`
`the tibial base plate.” Id. at 2:57–58. Walker discloses that “the meniscal
`component can be fitted to the tibial platform by engaging the abutment 50
`in the recess 51 and then the stud 42 in its corresponding slot 43.” Id. at
`4:30–33, Fig. 2c.
`
`b. Analysis
`With respect to the means-plus-function limitation of claim 25, i.e.,
`“means associated with said protrusion to prevent a separation of said base
`sliding side and said movable sliding side,” Petitioner argues that Walker’s
`“abutment 50 and its semicircular shape prevent separation of the base
`sliding side and the moveable sliding side.” Pet. 29 (citing Ex. 1001, 4:23–
`34, Figs. 2, 2a, & 2c; Ex. 1013 ¶¶ 16, 26). Petitioner asserts that “one of
`ordinary skill would have understood that the Walker patent’s abutment 50
`and its semicircular shape prevent separation, as required by claim 25” (id.
`(citing Ex. 1013 ¶¶ 16, 26)), because Walker discloses that “the meniscal
`component can be fitted to the tib[i]al platform by engaging the abutment 50
`in the recess 51 and then the stud 42 in its corresponding slot 43” (id.
`(quoting Ex. 1001, 4:30–34)).
`Petitioner has not persuaded us that abutment 50 and its semicircular
`shape are a structural equivalent to a dovetail-shaped protrusion that is wider
`toward its outward end than its base and that prevents separation of the base
`sliding side and the movable sliding side when mated with a corresponding
`dovetail-shaped groove, as required to satisfy the means-plus-function
`limitation of claim 25. See section II.A supra. Petitioner’s argument that
`
`
`14
`
`
`
`IPR2014-01078
`Patent 7,837,736 B2
`
`abutment 50 and its semicircular shape perform the recited prevention
`function (see Pet. 29) is insufficient. See Fresenius USA v. Baxter Intern.,
`Inc., 582 F.3d 1288, 1299 (Fed. Cir. 2009) (“Just as a patentee who seeks to
`prove infringement must provide a structural analysis by demonstrating that
`the accused device has the identified corresponding structure or an
`equivalent structure, a challenger who seeks to demonstrate that a means-
`plus-function limitation was present in the prior art must prove that the
`corresponding structure—or an equivalent—was present in the prior art.”)
`(citations omitted).
`Further, we are not persuaded that abutment 50 and its semicircular
`shape perform the recited prevention function. The disclosure in Walker
`that “the meniscal component can be fitted to the tibial platform by engaging
`the abutment 50 in the recess 51 and then the stud 42 in its corresponding
`slot 43” (Ex. 1001, 4:30–33)— on which Petitioner relies (see Pet. 29)—is in
`reference to Figure 2c (reproduced above), which shows that placing
`abutment 50 in recess 51 creates space to fit stud 42 in slot 43 (id., Fig. 2c).
`On the record before us, we agree with Patent Owner that stud 42 and slot
`43, rather than abutment 50 and recess 51, prevent separation of the base
`sliding side and the movable sliding side in the embodiment illustrated in
`Walker’s Figure 2. Prelim. Resp. 12 (citing Ex. 1003, 4:14–22).2
`
`
`2 Petitioner does not contend that stud 42 satisfies the prevention means
`limitation. In any event, as Patent Owner argues, “stud 42 cannot be the
`claimed protrusion because it is not ‘substantially offset with respect to a
`
`
`
`15
`
`
`
`IPR2014-01078
`Patent 7,837,736 B2
`
`
`Accordingly, we are not persuaded that Petitioner has demonstrated a
`reasonable likelihood of prevailing on its contention that claim 25 of the
`’736 Patent is anticipated by Walker as alleged.
`2. Claims 23–25 as Obvious over Walker and Buechel
`We determine that the information presented in the Petition does not
`
`establish that there is a reasonable likelihood that Petitioner would prevail in
`showing that the combination of Walker and Buechel renders obvious claims
`23–25.
`
`a. Buechel (Ex. 1012)
`Figures 16, 18, 19, 32A, and 32B of Buechel are reproduced below.
`
`
`midline of the first side of a joint.’” Prelim. Resp. 12.
`
`
`16
`
`
`
`
`
`IPR22014-010778
`
`
`Patennt 7,837,7336 B2
`
`
`
`
`16, 18, 19,, 32A, and 32B depicct a knee pprosthesis ccomprisingg
`
`bearing compoonents 117.. Id. at 15::14–32. AAs shown inn Figures 119 and 32BB,
`
`
`
`Ex. 11012, Figs. 16, 18, 199, 32A, & 32B; see PPet. 22.
`
`
`
`Figures
`
`
`
`
`
`
`
`
`
`
`
`femooral compoonent 111, tibial platfform 116, aand two inntermediatee tibial
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`eachh intermediiate tibial bbearing commponent 1
`17 compri
`
`ses a projeecting
`
`
`
`
`
`doveetail surfacce. Id. 6:17–18, 15:116–17, 30––32. Tibiall platform
`116
`
`
`
`
`
`
`
`
`
`
`16. Id. at 115:22–29,
`in Figure
`
`153, as shown
`
`
`Fig. 16. EEach of thee two
`
`conssists of thicck plate 147, in whichh are proviided two cuurved trackks 148 andd
`
`
`17
`
`
`
`
`
`IPR22014-010778
`
`
`Patennt 7,837,7336 B2
`
`
`
`
`
`
`
`
`curvved tracks rreceives, annd partiallyy constrainns, an identtical intermmediate
`
`tibiaal bearing ccomponentt. Id. at 15
`
`
`
`
`
`:26–32, Fiigs. 16, 32AA, 32B. BBuechel
`
`
`
`
`
`
`
`disclloses that tthe intermeediate tibiaal bearing ccomponentts move soomewhat
`
`
`
`
`
`closeer togetherr as they mmove forwaard or rearwward from
`
`the centrall position.
`
`
`Id. aat 15:47–500.
`“Oxford”
`
`
`
`
`
`Accordinng to Buecchel, a serious probleem with thee prior art
`
`inserts. Idd. at 3:63–
`
`
`
`
`
`prosthesis is thhe potentiall for disloccation of thhe bearing
`67.
`
`
`
`
`Figures
`
`
`
`
`3A and 3BB of Buechhel are reprroduced beelow.
`
`
`
`
`
`
`
`
`Ex. 11012, Figs. 3A & 3BB.
`
`
`
`Oxford proosthesis. IId. at 5:60––
`Figures
`
`
`3A and 3BB depict thee prior art
`Figure 3A
`61.
`
`
`
`
`
`is a plan vview showiing the possition of beearing inseerts 102 at
`
`
`
`
`
`90° fflexion witth no rotatiion of the kknee, and FFigure 3B
`
`is a plan vview
`
`
`
`
`
`
`
`
`showwing the poositions of the bearinng inserts atat 90° flexioon in the ppresence off
`
`
`axiall rotations of 15° andd 30°. Id. aat 5:61–65
`
`
`. Buechel
`discloses
`
`that, in thee
`
`
`18
`
`
`
`IPR2014-01078
`Patent 7,837,736 B2
`
`Oxford prosthesis, “[t]here is a pronounced overhang of bearing inserts 102,
`with resultant risk of dislocation, under the combination of 90° flexion and
`30° rotation of the knee.” Id. at 4:19–21, Figs. 3A & 3B.
`As shown in Figures 3A and 3B, the bearing inserts rotate freely on
`flat tibial plates (tibial onlays 103). See id. at 3:59–61, Figs. 1A, 1B, 3A &
`3B. Buechel discloses that, in contrast with the Oxford prosthesis, “[t]he
`method of track engagement utilized in the present invention . . . prevents
`rotation of the intermediate tibial bearing components 117.” Id. at 16:47–50
`(emphasis added).3
`
`b. Analysis
`Claim 23 recites “[t]he device of claim 15, wherein said protrusion is
`a dovetail pin and said recess is a dovetail tail, together forming a dovetail
`joint.” Ex. 1001, 114:54–56. Claim 24 recites “[t]he device of claim 23,
`wherein said dovetail joint is elongated, extends in a substantially anterior-
`posterior orientation, and enables anterior-posterior displacement of the base
`sliding side relative to the movable sliding side.” Id. at 114:57–60. Claim
`25 and its prevention means limitation are discussed above. See section II.A
`supra.
`
`
`3 Patent Owner asserts that “[t]he inward motion of the tibial bearing
`components 117 provides a rotational movement that is about an axis
`generally center to tibial bearing component 117. Prelim. Resp. 16. Even
`so, rotation of the tibial bearing components relative to the tibial plates in
`Buechel is limited, if not prevented entirely.
`
`
`19
`
`
`
`IPR2014-01078
`Patent 7,837,736 B2
`
`
`Relying on the testimony of its Declarant, Dr. Erdman, Petitioner
`argues with respect to each of claims 23–25 that it would have been obvious
`to a person of ordinary skill in the art to substitute the dovetail joint
`structures of the Buechel patent for the abutment and recess of the Walker
`patent. Pet. 31–34 (citing Ex. 1013 (Erdman Decl.) ¶¶ 17–19, 27–29).
`Petitioner reasons that Walker and Buechel relate to “the same field of
`endeavor” and teach “similar functionality.” Id. at 31 (citing Ex. 1013
`¶¶ 16, 27).
`Dr. Erdman testifies that the dovetail joint structures in Buechel
`perform the “same function” as the abutment 50 and recess 51 in Walker—
`“constrained movement of meniscal components relative to the tray in
`mobile bearing knee implants.” Ex. 1013 ¶ 27. With that predicate,
`Dr. Erdman concludes that “[i]t would have been obvious to a person of
`ordinary skill in the art (e.g., a matter of routine engineering and design
`choice) to substitute the dovetail joint structures of the Buechel patent for
`the abutment and recess of the Walker patent.” Id. “Such a substitution,”
`Dr. Erdman testifies, “would achieve the predictable result of providing
`constrained relative movement between the two components.” Id.
`On the record before us, however, we agree with Patent Owner that
`Petitioner has not shown adequately that it would have been obvious to
`substitute Buechel’s dovetail joint structures for the abutment and recess
`illustrated in the embodiment of Walker’s Figure 2. See Prelim. Resp. 13–
`18. We are persuaded that the structure and function of the dovetail joint
`structures in Buechel are substantially different from the structure and
`
`
`20
`
`
`
`IPR2014-01078
`Patent 7,837,736 B2
`
`function of the abutment and recess in Walker. Id. at 16–18. As discussed
`above, the function of the dovetail joint structures in Buechel is, inter alia,
`to limit or prevent rotation of the meniscal components relative to the tibial
`plates, while the function of abutment 50 and recess 51 in Walker is to
`facilitate rotation of the meniscal component about an axis at the edge of the
`tibial platform. See sections II.B.1.a and II.B.2.a supra. In view of those
`substantially-different structures and functions, we determine that
`Petitioner’s obviousness rationale is not supported by adequate articulated
`reasoning with rational underpinning. See KSR Int'l Co. v. Teleflex Inc., 550
`U.S. 398, 418 (2007) (“‘[R]ejections on obviousness grounds cannot be
`sustained by mere conclusory statements; instead, there must be some
`articulated reasoning with some rational underpinning to support the legal
`conclusion of obviousness.’”) (quoting In re Kahn, 441 F.3d 977, 988 (Fed.
`Cir. 2006)); cf. In re Gal, 980 F.2d 717, 719 (Fed. Cir. 1992) (design choice
`is not a sufficient rationale for obviousness where structure recited in claim
`and the function it performs are different from the prior art).
`Accordingly, we determine that Petitioner has not demonstrated a
`reasonable likelihood of prevailing on its contention that claims 23–25
`would have been obvious over the combination of Walker and Buechel.
`
`
`C. Motion for Joinder with Case IPR2014-00191
`In view of our determination not to authorize an inter partes review as
`to any of the claims of the ’736 Patent challenged in this case, Petitioner’s
`
`
`21
`
`
`
`IPR2014-01078
`Patent 7,837,736 B2
`
`Motion for Joinder seeking to join this case with Case IPR2014-00191, is
`denied as moot.
`
`
`III. CONCLUSION
`For the forgoing reasons, we determine that the information presented
`in the Petition does not establish a reasonable likelihood that Petitioner
`would prevail with respect to any of challenged claims 23–25 of the
`’736 Patent.
`
`
`IV. ORDER
`
`Accordingly, it is
`ORDERED that no inter partes review will be instituted pursuant to
`35 U.S.C. § 314 as to any claim of the ’736 Patent on any of the grounds of
`unpatentability asserted in the Petition; and
`FURTHER ORDERED that Petitioner’s Motion for Joinder is denied
`as moot.
`
`
`
`
`
`
`
`22
`
`
`
`IPR2014-01078
`Patent 7,837,736 B2
`
`For PETITIONER:
`
`Naveen Modi
`Joseph Palys
`PAUL HASTINGS LLP
`naveenmodi@paulhastings.com
`josephpalys@paulhastings.com
`
`
`For PATENT OWNER:
`
`Cary Kappel
`William Gehris
`DAVIDSON, DAVIDSON & KAPPEL, LLC
`ckappel@ddkpatent.com
`wgehris@ddkpatent.com
`
`
`
`
`
`
`23
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
