Federal Circuit Reverses BPAI Reexamination Decision; Finds Synthes Patent Invalid

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On July 9, 2013, the Federal Circuit reversed the Board of Patent Appeals and Interferences’ decision that certain claims of U.S. Patent No. 7,128,744 were not invalid due to obviousness. The ‘744 Patent, owned by Synthes, Inc., is entitled “Bone Plating System” and issued on October 31, 2006. Figure 7 of the ‘744 Patent is shown below:

Figure 7 of the 744 Patent

Smith & Nephew PLC filed a request for inter partes reexamination of the ‘744 Patent in 2009. Smith & Nephew’s request for reexamination alleged that all 55 claims of the ‘744 Patent were obvious. The patent examiner agreed and rejected all 55 claims as obvious.

Synthes appealed the examiner’s decision to the BPAI. The BPAI upheld the rejection of claims 24-31 and 33-55, but reversed the rejections of claims 1-23 and 32. Smith & Nephew then appealed the BPAI’s decision that claims 1-23 and 32 were not invalid due to obviousness.

The Federal Circuit reversed, finding that claims 1-23 and 32 were obvious. The Federal Circuit explained:

While the ‘substantial evidence’ standard of review for the board’s factual findings makes Smith & Nephew’s burden on appeal a heavy one, we are satisfied, after careful review, that Smith & Nephew has met that burden and has shown that the claims at issue would have been obvious.

Knobbe Martens attorneys Joe ReChristy Lea, and Jared Gardner represented Smith & Nephew in the successful appeal.

Synthes and Smith & Nephew have been in litigation over Synthes’ bone plate technology since 2003, when Synthes filed a complaint against Smith & Nephew in the U.S. District Court for the Eastern District of Pennsylvania for infringement of U.S. Patent No. 5,053,036.

Smith & Nephew filed a request for reexamination of the ‘036 Patent in 2003, and that request was granted. During reexamination, Synthes amended four of the ‘036 Patent claims and added new claims. In 2007, the PTO issued a reexamination certificate, indicating that two of the original ‘036 Patent claims, the four amended claims, and the newly-added claims were patentable.

Synthes filed an amended complaint against Smith & Nephew in 2006, alleging infringement of the ‘744 Patent, the ‘036 Patent, and U.S. Patent No. 6,623,486.

In addition to Smith & Nephew’s request for reexamination of the ‘744 patent, Smith & Nephew also filed requests for inter partes and ex parte reexamination of the ‘486 Patent in 2009. Both of Smith & Nephew’s requests for reexamination of the ‘486 Patent were granted, and the two ‘486 Patent reexamination proceedings were consolidated on July 10,  2009.

The U.S. District Court for the Eastern District of Pennsylvania case was stayed on July 13, 2009, pending reexaminations of the ‘744 Patent and the ‘486 Patent. The ‘486 Patent reexamination is still pending.


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