• Aug 21 2019
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  • Category: CAFC Updates

In an inter partes review, the Patent Trial and Appeal Board ruled claims 10 and 11 of Arthrex’s U.S. Patent No. 8,821,541 (relating to a surgical suture anchor used to reattach soft tissue to bone) invalid. In doing so, the Board employed different language than Smith & Nephew’s petition to explain why a person of ordinary skill in the art would have been motivated to combine the teachings of the prior art. Arthrex asserts that the Board’s impermissible reliance on a new theory of motivation to combine in its final written decision warrants reversal. However, the CAFC finds that while the Board used different language than the petition in its discussion of motivation to combine, it did not introduce new issues or theories into the proceeding. The CAFC further finds that substantial evidence supports the Board’s motivation determination, and that the Board’s construction of “helical thread,” requiring that the helical thread “facilitates rotary insertion of the anchor into bone” is correct. Arthrex also notes that the Supreme Court has not addressed the constitutionality of IPR as applied to patents issued prior to the America Invents Act (AIA), which created IPRs, but the CAFC finds that it is beyond dispute that patent owners expected that the Patent Office could reconsider the validity of issued patents on particular grounds, applying a preponderance of the evidence standard, and thus even if Arthrex’s patent pre-dated the AIA, application of IPR to the ’541 patent would not create a constitutional challenge. Accordingly, the CAFC affirms.

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