APA violation and unconstitutionality of IPR arguments rejected (as in Celgene); Board IPR claim construction and obviousness findings affirmed

Arthrex, Inc. v. Smith & Nephew, Inc., Arthrocare Corp. (USPTO as Intervenor)

Docket No. 2018-1854 (IPR2016-00918)
August 21, 2019

Brief Summary: Anthrex’s due process and constitutional challenges to IPR rejected; Board claim construction and obviousness findings affirmed.

Summary: Arthrex appealed Board IPR final written decision (FWD) finding that claims 10 and 11 of US 8,821,541 related to surgical suture anchors are invalid for anticipation and/or obviousness. Arthrex argued that the Board’s used of “different language than Smith & Nephew, Inc.’s petition” regarding the motivation to combine the prior art references “warrants reversal” as it violates its opportunity to be heard under the Administrative Procedure Act (APA). The FC panel reviewed the Board’s factual findings for support by substantial evidence and its legal determinations de novo (Belden, FC 2015; Wi-Fi, FC 2018). The FC panel explained that “an agency may not change theories in mid-stream with giving respondents reasonable notice” (Belden, FC 2015), “[n]or…craft new grounds of unpatentability not advanced by the petitioner” (In re NuVasive, FC 2016; In re Magnum, FC 2016). Anthrex argued that the Board described one of the options for preparing the anchor body and posts (West’s “casting option”) as “primary” and “preferred” (“choosing the ‘preferred option’ presented by West ‘would have been an obvious choice of the designer’”), while the petition described the casting process as “well-known”, “accepted”, and “simple”, and “the parties disputed how a person of ordinary skill in the art would have understood that specific portion of West’s disclosure and whether that disclosure would have motivated a person of ordinary skill to combine West and Gordon as Smith & Nephew proposed.” However, the FC panel found (regarding claim 11) that the Board “considered the same proposed combination” of prior art and “ruled on the same theory of obviousness presented in the petition” (e.g., “the mere fact that the Board did not use the exact language of the petition in the [FWD] does not mean it changed theories in a manner inconsistent with the APA and our case law” (Sirona Dental, FC 2018 (presented as “‘geometry data’ rather than as providing 3-D plaster model data’”); Genzyme, FC 2016; In re Magnum Oil, FC 2016 (APA violation where claim construction “varied significantly”); NuVasive, FC 2016 (APA violation where Board “relied on portions of prior art different than those presented”); Rovalma, FC 2017 (remanded since FWD did not allow ‘determin[ation of] how the Board reached the conclusion”)). Arthrex also argued that the Board erred in finding a motivation to combine the references in its obviousness determination for claim 11 but the FC panel disagreed, finding the decision to be based on substantial evidence (“[w]e may not reweigh…evidence” (In re Warsaw, FC 2016)). The FC panel also found that the Board correctly construed “helical” in claim 10 under the broadest reasonable construction (since the petition was filed before Nov. 13, 2018, see FN1) based on the plain claim language and the specification (“our case law counsels against incorporating a feature of a preferred embodiment into the claims, particularly where, as here, the feature is mentioned only tangentially” (In re Van Genus, FC 1993)), and prosecution history (Formation, FC 2005; Finisar, FC 2008). The FC panel rejected Arthrex’s arguments that the application of IPR to its patent is retroactive since it issued after passage of the AIA and as decided in Celgene (FC, 2019).

This entry was posted in Claim Construction, Inter Parties Review (IPR), IPR, Obviousness, Uncategorized. Bookmark the permalink.

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