Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 7
`Entered: June 28, 2016
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`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`ARTHREX, INC. and SMITH & NEPHEW, INC.,
`Petitioner,
`
`v.
`
`VITE TECHNOLOGIES, INC.,
`Patent Owner.
`_______________
`
`Case IPR2016-00382
`Patent 6,168,598 B1
`_______________
`
`
`
`Before WILLIAM V. SAINDON, BARRY L. GROSSMAN, and
`TIMOTHY J. GOODSON, Administrative Patent Judges.
`
`
`
`
`
`GROSSMAN, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.104
`
`
`
`
`Tel: 571-272-7822
`
`Paper 7
`Entered: June 28, 2016
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`ARTHREX, INC. and SMITH & NEPHEW, INC.,
`Petitioner,
`
`v.
`
`VITE TECHNOLOGIES, INC.,
`Patent Owner.
`_______________
`
`Case IPR2016-00382
`Patent 6,168,598 B1
`_______________
`
`
`
`Before WILLIAM V. SAINDON, BARRY L. GROSSMAN, and
`TIMOTHY J. GOODSON, Administrative Patent Judges.
`
`
`
`
`
`GROSSMAN, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.104
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`I. INTRODUCTION
`Petitioner filed a Petition (Paper 2, “Pet.”) requesting an inter partes
`review of claims 21, 25–27, 29, 30, 38 and 39 of U.S. Patent No. 6,168,598
`B1 (Ex. 1001, “the ’598 patent”). Patent Owner filed a Preliminary
`Response. Paper 6 (“Prelim. Resp.”). 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). Petitioner has shown a reasonable likelihood that it would prevail
`with respect to at least one of the claims, and, accordingly, we institute an
`inter partes review as set forth in the Order included with this Decision.
`This is a decision to institute an inter partes review under 35 U.S.C.
`§ 314. The Board has not made a final determination on the patentability of
`the challenged claims. Any finding or construction herein is preliminary
`and based on the record before us at this institution stage.
`
`A. Related Proceedings
`The parties identify two district court lawsuits involving the ’598
`patent, or a continuation thereof: (i) Vite Techs., LLC v. Arthrex, Inc., No.
`1:14-cv-01506 (D. Del.); and (ii) Vite Techs., LLC v. Smith & Nephew, Inc.,
`No. 1:14-cv-01507 (D. Del.). Pet. 3; Paper 5, 1. Petitioner also identifies as
`related proceedings Vite Techs., LLC v. DePuy Mitek, LLC, No. 1:14-cv-
`14697 (D. Mass.); and Vite Techs., LLC v. DePuy Synthes Sales, Inc., No.
`1:14-cv-14699 (D. Mass.). Pet. 3; Paper 5, 1.
`The parties identify ex parte reexamination 90/013,580 as involving
`the ’598 patent. Pet. 4; Paper 5, 1.
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`The parties also identify IPR2016-00381, challenging related U.S.
`Patent No. 6,648,598. Pet. 4; Paper 5, 1.
`
`B. The ’598 Patent
`The ’598 patent is directed to a surgical anchor “provided with one or
`more anchor holes distributed around the head of the anchor.” Ex. 1001,
`Abstract. The anchor holes are “inclined to allow attachment of one or more
`sutures to the anchor either before, during or after the anchor is seated in a
`bone.” Id. The holes are “chamfered,” and smoothed, which reduces
`“friction and abrasion to soft tissue or suture material.” Id. Figures 1 and 2
`of the ’598 patent is reproduced below:
`
`
`Figure 1 of the ’598 patent depicts surgical anchor 10 having head 11
`and securing end 18. Securing end 18 secures anchor 10 into bone.
`Ex. 1001, 3:64–67. As shown in Figure 1, anchor 10 is a threaded, self-
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`tapping screw with shoulder 50, which delineates head 11 from shank 17.
`Id. at 4:4–5. Head 11 may include a means for accommodating a drive tool,
`such as drive socket 12 for securing anchor 10. Lower surface 20 of head 11
`may describe an angle A1 between 90° and 150° from axis 22. Id. at 4:22–
`23.
`
`Anchor 10 includes anchor points 24, 26, 28 and 30 (see Figure 3).
`Each anchor point has an upper aperture and a lower aperture. For example,
`anchor hole 36 includes upper aperture 34 and lower aperture 32. Anchor
`holes 25, 29, 36 and 46 may be inclined at an angle A2 between 0° and 75°
`from axis 22. Id. at 4:34–36. The angle of inclination, the diameter of the
`anchor holes, and the shape of head 11 are selected to accommodate the
`surgical task and a surgeon’s choice of needle. The object is to secure the
`anchor, leaving sufficient space between lower aperture 32 and bone 14 for
`the surgeon to easily secure a suture through the anchor holes. Id. at 4:36–
`41. Each aperture of each anchor hole is chamfered to accommodate
`surgical needles and to reduce abrasion of the suture or soft tissue.
`Id. at 2:56–67. As shown in Figure 2, with respect to anchor hole 36, for
`example, chamfer 38 widens lower aperture 32, and chamfer 40 widens
`upper aperture 34. Id. at 4:47–51.
`
`C. The Challenged Claims
`Among the challenged claims, claim 21 is the sole independent claim.
`It is reproduced below as a representative claim:
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`An anchor body having a long axis;
`21.
`a head at a first end of the long axis to accommodate a
`
`tool for securing or driving the anchor body to bone; and
`
`an anchor hole through the head, the anchor hole
`having an upper aperture and a lower aperture, one of said upper
`and lower apertures including a chamfer, the anchor hole having
`a longitudinal axis that is oriented at an angle with respect to a
`long axis of the body.
`D. Asserted Grounds and Prior Art
`Petitioner asserts the following grounds:
`
` Reference(s)
`Zang1
`Huebner2
`Paulos3 and Zang
`Reed4 and Zang
`
` Basis
`§§ 102(b), § 103
`§ 102(e)
`§ 103
`§ 103
`
`Petitioner also relies on the declaration testimony of F. Alan Barber,
`M.D. Ex. 1003.
`
`II. ANALYSIS
`A. Patent Owner’s Preliminary Response
`Patent Owner does not offer substantive arguments in its Preliminary
`Response regarding claim construction or the asserted grounds. Instead,
`Patent Owner alleges that “the issues raised [in the Petition] have been
`rendered moot” by pending ex parte reexamination No. 90/013,580 (“the
`
`1 WO 95/22930, published Aug. 31, 1995 (Ex. 1004).
`2 U.S. Pat. No. 5,868,789, issued Feb. 9, 1999 (Ex. 1005).
`3 U.S. Pat. No. 4,988,351, issued Jan. 29, 1991 (Ex. 1021).
`4 U.S. Pat. No. 5,868,749, issued Feb. 9, 1999 (Ex. 1022).
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`’580 Reexamination”). Prelim. Resp. 1. Patent Owner asserts “[t]he ex
`parte reexamination addresses all of the references relied upon in the
`present petition.” Id. (citing Ex. 1024 (which is Patent Owner’s 330 page ex
`parte request for reexamination)) (emphasis added). The
`’580 Reexamination request includes 48 references, including the 4
`references Petitioner asserts in its Petition. Ex. 1024, 4–6.5 Patent Owner
`has not directed us to anything in the reexamination request or in the
`reexamination proceedings where the specific grounds of unpatentability
`asserted in the Petition also are asserted in the ’580 Reexamination.6 We
`note, however, that in the non-final Office Action mailed February 25, 2016
`in the ’580 Reexamination, claim 21 was rejected as anticipated by Zang,
`one of the grounds asserted by Petitioner. The other four grounds asserted
`by Petitioner were not raised or discussed in the February 25 Office Action.
`Patent Owner also asserts that claim 21 was amended in the ’580
`Reexamination, and all the other challenged claims have been cancelled,
`except for claim 39, which is not involved in the reexamination and remains
`as issued. Prelim. Resp. 1. Patent Owner concludes that:
`In light of the progress in the pending ex parte
`reexamination, including a cancellation of the majority of the
`claims, the requested inter partes review would result in
`duplicated effort and inefficiency at the USPTO and raise the
`possibility of inconsistent analyses between the Board and
`Central Reexamination Unit.
`
`
`5 We cite to the exhibit page number, not the document page number.
`6 “A brief must make all arguments accessible to the judges, rather than ask
`them to play archaeologist with the record.” DeSilva v. DiLeonardi, 181
`F.3d 865, 867 (7th Cir. 1999).
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`Prelim. Resp. 1.
`We disagree. First, we note that there are substantial differences
`between the grounds asserted in the Petition and the rejections currently
`outstanding in the ’580 Reexamination. Also, while the original patent
`claims have been cancelled in the reexamination, Patent Owner has qualified
`the cancellation. 7 Patent Owner has not offered to accept an adverse
`judgment in this proceeding on the cancelled claims.
`Second, we find no indication that Patent Owner took the appropriate
`steps to mitigate the possibility of inconsistent analyses between the Board
`and the Central Reexamination Unit (“CRU”). As the examiner in the co-
`pending ex parte reexamination explained when ordering reexamination:
`Notification of Concurrent Proceedings
`The patent owner
`is reminded of
`the continuing
`responsibility under 37 C.F.R. § 1.565(a), to apprise the Office
`of any litigation activity, or other prior or concurrent proceeding,
`involving Patent No. 6,168,598 throughout the course of this
`reexamination proceeding. See MPEP §§ 2207, 2282 and 2286.
`Ex parte reexamination 90/013,580, Decision Ordering Reexamination, 4
`(Nov. 16, 2015).
`Despite the Rule and the examiner’s reminder to comply with the
`Rule, we see no evidence of compliance in any paper submitted by Patent
`Owner in the ’580 Reexamination. The Petition was filed and served on
`Patent Owner on December 22, 2015. Since that date, Patent Owner filed in
`the ’580 Reexamination substantive amendments with arguments and
`
`
`7 We note that Patent Owner stated that the claims were “cancelled without
`prejudice or disclaimer.” See Applicant’s remarks in the Response filed on
`January 19, 2016 in the ’598 Reexamination.
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`remarks on January 19, April 4, and May 31, 2016. None those
`communications, nor any other communication of which we are aware,
`disclosed Petitioner’s December 22, 2015 Petition, and the grounds
`identified therein, in compliance with Rule 1.565(a). Whether the
`reexamination would have included all of the grounds asserted in the
`Petition is speculation, but whether Patent Owner had a duty to disclose the
`existence of the Petition is not. It would be unjust not to consider the
`asserted grounds now. See 37 C.F.R. § 42.1(b) (“This part shall be
`construed to secure the just, speedy, and inexpensive resolution of every
`proceeding.”).
`In view of the above, Patent Owner’s arguments that we should not
`institute a trial based on the ex parte reexamination are unpersuasive.
`
`B. Claim Construction
`In an inter partes review, the Board gives 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). Under that
`standard, a claim term generally is given its ordinary and customary
`meaning, as would be understood by one of ordinary skill in the art in the
`context of the entire disclosure. See In re Translogic Tech., Inc., 504 F.3d
`1249, 1257 (Fed. Cir. 2007). While our claim interpretation cannot be
`divorced from the specification and the record evidence (see Microsoft Corp.
`v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015) (quoting In re
`NTP, Inc., 654 F.3d 1279, 1288 (Fed. Cir. 2011)), we must be careful not to
`import limitations from the specification that are not part of the claim
`language. See SuperGuide Corp. v. DirecTV Enterprises, Inc., 358 F.3d
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`870, 875 (Fed. Cir. 2004). Any special definition for a claim term must be
`set forth in the specification with reasonable clarity, deliberateness, and
`precision. See In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
`The claim constructions in this Decision are preliminary
`determinations. They do not preclude the parties from arguing for different
`constructions of the claims during trial. Indeed, the claim construction
`issues raised in the Petition put the parties on notice that claim construction,
`in general, is an issue to be addressed at trial.
`
`1. “chamfer” and “chamfered”
`Claim 21 recites an upper aperture and a lower aperture “including a
`chamfer.” Claim 38, dependent on claim 21, recites that the upper and lower
`aperture “are chamfered.” The parties have not directed us to any
`substantive difference between these terms in claim 21 and claim 38.
`Petitioner proposes that “chamfer” means “a feature that widens an
`aperture to reduce acute edges; synonymous with bevel.” Pet. 20. Petitioner
`proposes that “chamfered” means “widened to reduce acute edges;
`synonymous with beveled.” Id. at n.7. The ’598 patent discusses what the
`chamfer does; it does not, however, disclose any special definition for this
`term. As disclosed in the Specification:
`In a further aspect of the present invention, each aperture of each
`anchor hole is chamfered to accommodate surgical needles. The
`chamfered aperture simplifies the surgeon’s task of introducing
`the surgical needle into the anchor hole by widening the entry
`and exit apertures, and thus funneling the surgical needle point
`to the center of the anchor hole. The chamfer also lessens the
`angle of approximation the surgeon must achieve with a surgical
`needle to successfully pass the surgical needle and suture through
`the anchor hole. . . . The chamfered aperture also minimizes
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`acute edges in contact with the suture to minimize abrading of
`the suture thus allowing the liberal use of sliding knots on sutures
`passing through the present invention.
`Ex. 1001, 2:51–67.
`Petitioner also points out that “chamfered” is synonymous with
`“beveled,” as shown in a prior art reference and a dictionary. Pet. 20–21
`(citing Ex. 1006, 6:29–30 (describing a suture anchor hole that is
`“chamfered or grounded to provide a bevel portion”); Ex. 1014 (defining
`“chamfer” as “a bevel or slope”)). Petitioner’s declarant, Dr. Barber,
`discusses chamfered suture holes (Ex. 1003 ¶¶ 48–53) and opines that
`“chamfering suture hole openings to ease threading and minimize abrasion
`of suture was a common practice in the early to mid-1990s.” Id. ¶ 53. Dr.
`Barber also opines that, based on the ’598 patent Specification and the
`dictionary definition proffered by Petitioner, a person of ordinary skill in the
`art would agree with Petitioner’s proposed construction. Ex. 1003 ¶ 67.
`Patent Owner does not address claim construction in its Preliminary
`Response.
`Reviewing the arguments and evidence before us, we agree with
`Petitioner’s proposed construction and adopt it for purposes of this Decision.
`
`2. “upper aperture” and “lower aperture”
`Claim 21 recites an anchor hole “having an upper aperture and a lower
`aperture.” Claim 21 also recites that the anchor hole has a longitudinal axis
`that is oriented at an angle with respect to a long axis of the body.
`Petitioner asserts that the broadest reasonable interpretation of the
`claim terms “upper aperture” and “lower aperture” is:
`“upper aperture” should be construed to mean “a first aperture
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`that is above a second aperture when the anchor body is held in
`at least one orientation” and “lower aperture should be construed
`to mean ‘a second aperture that is below a first aperture when the
`anchor body is held in at least one orientation.”
`Pet. 24. Petitioner asserts that this proposed construction is the broadest
`reasonable interpretation in view of the Specification (id. at 22–23), Patent
`Owner’s infringement contentions against non-Petitioner DePuy Mitek LLC
`(id. at 23–24) (citing Ex. 1025), and the doctrine of “claim differentiation”
`based on the recitation in claim 26, which depends from claim 21, that the
`anchor holes “are in a plane perpendicular to the long axis” (id. at 24).
`In determining the broadest reasonable interpretation of the claims for
`purposes of this Decision, we do not rely on Patent Owner’s infringement
`contentions in a different forum. They may be relevant in the future in
`weighing the credibility or weight of evidence Patent Owner may submit.
`Reviewing the arguments and evidence before us, we agree with
`Petitioner’s proposed construction and adopt it for purposes of this Decision.
`
`3. “head”
`Claim 21 recites an anchor body having a long axis with a head at a
`first end of the long axis. A stated function in claim 21 of the head is “to
`accommodate a tool for securing or driving the anchor body to bone.”
`Claim 21 also recites that the head contains “an anchor hole through the
`head.”
`Petitioner asserts the “head” should be construed to mean “a portion
`for receiving a driving force.” Pet. 26–27.
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`The ’598 patent Specification describes a preferred embodiment
`having two distinct attributes of the head. One attribute is to contain the
`anchor hole. A second attribute structure to accommodate a drive tool.
`Regarding the anchor holes, in a preferred embodiment, a shoulder
`delineates the head from the shank. Ex. 1001, 4:3–5. The Specification
`states the size of the shoulder and the shape of the head are selected to
`permit access by a surgical needle to both the upper and lower apertures of
`the anchor hole. Id. at 4:8–10.
`Regarding the drive tool, the Specification states the head “may
`include a means for accommodating a drive tool.” Id. at 4:13–14. The
`Specification also describes that the “means” may include a shaped head,
`tabs, flanges, channels, or one or more drive sockets for securing the anchor.
`Id. at 4:14–16. A shaped head or drive socket may be any conventional
`configuration compatible with surgical drive tools such as slotted, star,
`square, hex or alien shaped. Id. at 4:16–18. A function of the shoulder is to
`provide a visual and physical indication to the surgeon to stop inserting the
`anchor when the shoulder contacts bone. Id. at 4:6–8.
`Petitioner’s proposed construction addresses only the disclosed drive
`tool attribute of the head; it does not include the disclosed anchor hole
`attribute. Moreover, Petitioner states the head “receives” a drive tool
`(Pet. 26–27), whereas the Specification more broadly states the head may
`include a “means for accommodating a drive tool” (Ex. 101, 4:13–14). We
`also note that the anchor hole and drive tool attributes are recited separately
`as specific limitations in claim 21 and thus are not included within the broad
`definition of “head.”
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`Reviewing the arguments and evidence before us, we determine for
`purposes of this Decision that the broadest reasonable interpretation of the
`term “head” simply is one end of the anchor body. As recited in claim 21,
`the head accommodates a drive tool and has at least one anchor hole through
`it.
`
`4. “oriented at an angle”
`Claim 21 states the anchor hole has a longitudinal axis that is
`“oriented at an angle” with respect to a long axis of the body.
`Petitioner asserts that the broadest reasonable interpretation of the
`phrase “oriented at an angle” is “oriented at any angle from 0° to 90°, i.e.,
`from parallel to perpendicular.” Pet. 27.
`The Specification discloses relevant angles between 0º and 90º (see,
`e.g., Ex. 1001, 4:35; 5:39; claim 26; claim 33).
`Reviewing the arguments and evidence before us, we agree with
`Petitioner’s proposed construction and adopt it for purposes of this Decision.
`
`C. Petitioner’s Asserted Grounds
`1. Anticipation by Zang
`Petitioner asserts that Zang anticipates claims 21, 26, 27, 29, 30, 38,
`and 39. Pet. 28–35 (citing generally Ex. 1003 ¶¶ 101–110 for support).
`Figure 7 of Zang is reproduced below:
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`As shown in Figure 7, Zang discloses anchor 78 for attaching soft
`tissue to a bone. Ex. 1004, Abstract. Anchor 78 has head 80 with suture
`bore 86 and lands (not labeled) for engagement by a driving tool. Id.
`Anchor 78 also has shaft 90 with threads 94. Id. Zang explains that
`junctions 106 and 106a of suture bore 86 “may be radiused, bevelled [sic], or
`otherwise configured to avoid sharp corners.” Id. at 21:6–12. Zang also
`discloses that the anchor may be made from “any suitable biocompatible
`material, for example titanium alloy, stainless steel, [or] class six implant
`grade plastic.” Id. at 15:6–8.
`Based on Petitioner’s analysis and claim charts, supported by the
`declaration testimony of Dr. Barber, we determine Petitioner has shown
`sufficiently where Zang describes each element of claims 21, 26, 27, 29, 30,
`38, and 39, and has shown a reasonable likelihood of demonstrating that
`these claims are anticipated by Zang.
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`2. Obvious in View of Zang
`Petitioner asserts claims 29, 30, and 39 would have been obvious
`based on Zang. Pet. 36–37. We determined above that it is reasonably
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`likely that Zang anticipates claims 29, 30, and 39. Reviewing Petitioner’s
`analysis and claim charts, supported by the declaration testimony of Dr.
`Barber, we determine Petitioner has shown a reasonable likelihood of
`demonstrating that claims 29, 30, and 39 would have been obvious based on
`Zang.
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`3. Obvious in View of Paulos and Zang
`Petitioner asserts claims 21, 25–27, 29, 30, 38, and 39 would have
`been obvious based on Paulos and Zang.
`Paulos discloses a surgical anchor for attaching soft tissue to bone.
`Ex. 1021, 1:6–10. Figures 1 and 2 of Paulos are reproduced below.
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`As shown in Figures 1 and 2, the anchor includes washer 10 and
`screw 12. Screw 12 includes head 14 and a threaded shank 18. Id. at 3:1–6.
`Head 14 includes a socket 16 for receiving a driving tool for driving the
`anchor into bone. Id. at 3:1–4. A plurality of suture retention holes 58 are
`spaced around the soft tissue washer and extend angularly through the
`washer body. Id. at 4:33–35. In use, the soft tissue washer can be secured to
`soft tissue, such as a ligament, via sutures passing through suture retention
`holes 58 without interfering with seating of the distal face against the tissue.
`Id. at 4:44–47. As shown in Figure 7, head 14 of the screw is received in
`dished recess 34 in the soft tissue washer such that the head does not
`protrude above the washer and does not obstruct the openings in the wall of
`the recess allowing access to the suture retention holes 58. Id. at 4:48–53.
`Because the head is above the bone surface, as shown in Figure 2, the suture
`retention holes provide convenient anchoring locations to tie off sutures
`once the washer is seated. Id. at 5:38–40.
`Paulos was applied by the Examiner to reject as anticipated a
`substantial number of claims as filed in the application that matured into the
`’598 patent. Ex. 1002, 53–56. The Examiner found the claimed “head” was
`anticipated by the combination of head 14 and rim 32 of washer 10 in
`Paulos. Id. at 80. Claims reciting chamfered suture holes (see, e.g., original
`claims 3, 23; see Ex. 1002, 33, 35–36), however, were indicated as
`allowable. Id. at 53–56.
`Petitioner asserts the chamfering limitations of claims 21, 38, and 39
`are disclosed in Zang. Pet. 38. According to the Petitioner, it would have
`been obvious to a person of ordinary skill to use chamfers in the suture holes
`of Paulos. The rationale for the proposed combination is suggested in the
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`prior art, specifically in Zang, as discussed above, for avoiding suture
`abrasion, and for patient comfort. Id. at 38–39. Petitioner relies on the
`testimony of Dr. Barber for support. See, e.g., Ex. 1003, ¶¶ 137–139.
`Based on Petitioner’s analysis and claim charts, supported by the
`declaration testimony of Dr. Barber, we determine Petitioner has shown a
`reasonable likelihood of demonstrating that claims 21, 25–27, 29, 30, 38,
`and 39 would have been obvious based on Paulos and Zang.
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`4. Obvious in View of Reed and Zang
`Petitioner asserts claims 21, 25, 27, 30, 38, and 39 would have been
`obvious based on Reed and Zang.
`Petitioner relies on the embodiment shown in Figure 23 of Reed.
`Figure 23 is shown below.
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`Reed discloses a threaded bone screw for anchoring a suture in bone.
`Ex. 1022, 9:43–52. The bone screw includes head 44 (see also Fig. 14) and
`a threaded shaft. Head 44 is adapted to accommodate a driver for applying
`torque and thereby driving the screw into bone. Id. at 7:36–39. Head 44
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`includes a plurality of cylindrical apertures or anchor holes 112 parallel to
`the longitudinal axis of the screw. Id. at Fig. 23, 9:46–52. Sutures may be
`threaded through each anchor hole for securing tissue to bone. Because the
`head is above the bone surface, as shown in Figure 23, sutures may be
`threaded through the anchor holes even after the anchor is seated in the
`bone. Id. at 9:47–48.
`Petitioner asserts it would have been obvious to a person of ordinary
`skill to use the chamfered openings described in Zang in suture apertures
`112 of Reed “for the same reasons previously described in the context of
`Paulos.” Pet. 47.
`Based on Petitioner’s analysis and claim charts, supported by the
`declaration testimony of Dr. Barber, we determine Petitioner has shown a
`reasonable likelihood of demonstrating that claims 21, 25, 27, 30, 38, and 39
`would have been obvious based on Reed and Zang.
`
`5. Anticipation by Huebner
`Petitioner asserts that claims 21, 26, 27, 29, 30, and 38 are anticipated
`by Huebner. Pet. 53–60. Petitioner generally relies on Figure 1 of Huebner,
`which is reproduced below:
`
`
`
`
`18
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`
`
`Case IPR2016-00382
`Patent 6,168,598 B1
`
`
`Figure 1 of Huebner depicts a suture anchor having a threaded portion
`that terminates in anchor driving portion 44, which includes square post 46
`for transmitting rotational motion from driver 10 and includes eyelet 50 with
`beveled edge 52 “to reduce wear on the suture.” Ex. 1005, Abstract, 5:9–21.
`Based on Petitioner’s analysis and claim charts, supported by the
`declaration testimony of Dr. Barber, we determine Petitioner has shown
`sufficiently where Huebner describes each element of claims 21, 26, 27, 29,
`30, and 38, and has shown a reasonable likelihood of demonstrating that
`these claims are anticipated by Huebner.
`
`III. ORDER
`
`In view of the foregoing, it is hereby:
`
`ORDERED that inter partes review of the ’598 patent is instituted on
`
`the following grounds:
`whether claims 21, 26, 27, 29, 30, 38, and 39 are anticipated by
`Zang;
`whether claims 29, 30, and 39 would have been obvious based
`on Zang;
`whether claims 21, 25–27, 29, 30, 38, and 39 would have been
`obvious based on Paulos and Zang;
`whether claims 21, 25, 27, 30, 38, and 39 would have been
`obvious based on Reed and Zang; and
`whether claims 21, 26, 27, 29, 30, and 38 are anticipated by
`Huebner;
`FURTHER ORDERED that, pursuant to 35 U.S.C. § 314(c) and 37
`C.F.R. § 42.4, inter partes review of the ʼ598 patent shall commence on the
`
`
`19
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`
`
`Case IPR2016-00382
`Patent 6,168,598 B1
`
`
`entry date of this Order, and notice is hereby given of the institution of a
`trial; and
`
`FURTHER ORDERED that no ground other than those specifically
`provided above is authorized.
`
`
`
`PETITIONER:
`Michael N. Rader
`Randy J. Pritzker
`WOLF, GREENFIELD & SACKS, P.C.
`MRader-PTAB@wolfgreenfield.com
`RPritzker-PTAB@wolfgreenfield.com
`
`Anthony Cho
`CARLSON, GASKEY & OLDS, P.C.
`ACho@cgolaw.com
`
`PATENT OWNER:
`Steven R. Daniels
`Vanessah Pace
`Gurtej Singh
`FARNEY DANIELS PC
`sdaniels@farneydaniels.com
`vpace@farneydaniels.com
`tsingh@farneydaniels.com
`
`
`
`20
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