PTAB Holds Orthophoenix Patent Claims Invalid

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The Patent Trial and Appeal Board (the “Board”) recently issued Final Written Decisions in two inter partes reviews filed by Stryker Corporation regarding two related Orthophoenix, LLC patents – U.S. Patent Nos. 7,153,307 (the ’307 patent) and 6,241,734 (the ’734 patent).  The ’307 and ’734 patents are both entitled “Systems and Methods for Placing Materials Into Bone.”  The Abstracts, which are also identical, state:  “Systems and methods for delivering material into bone deploy a cannula through soft tissue to establish a subcutaneous path into bone.  A material is introduced into bone through the cannula.  The systems and methods advance a tamping instrument through the cannula to urge material residing in the cannula into bone.”  Figures 31 and 32 from the patents are reproduced below.

In the Final Written Decision of IPR2014-01434 regarding the ’307 patent, the Board determined that Stryker had shown by a preponderance of the evidence that Claims 1-3, 7, and 10-17 are unpatentable as anticipated by U.S. 3,893,445 to Hofsess and that Claims 1-18 are unpatentable as obvious over U.S. Pat. No. 5,108,404 to Reiley et al. and U.S.  Pat. No. 4,576,152 to Muller et al. In the Final Written Decision of IPR2014-01433 regarding the ’734 patent, the Board determined that Stryker had shown by a preponderance of the evidence that Claims 15, 16, 19, and 20 are anticipated by an article in Seminars in Musculoskeletal Radiology and that Claims 1-21 are unpatentable as obvious over the same article.

Orthophoenix asserted the ’307 and ’734 patents, among others, against Stryker in its complaint for patent infringement that was filed October 1, 2013 in the District of Delaware. According to the USPTO Assignment Database, the ’734 patent, to which the ’307 patent claims priority, was assigned from the inventors to Kyphon Inc.  The complaint states that Medtronic, Inc. purchased Kyphon in 2007 for $4.2 billion.  The complaint further states that Orthophoenix acquired the Kyphon technology, including approximately 500 patents and applications, from Medtronic in 2013.  Stryker filed an amended answer and counterclaims against Orthophoenix, IP Navigation Group, LLC, and Medtronic, Inc. on July 30, 2014.  On April 28, 2015, the court granted Stryker’s motion to stay with respect to four patents, including the ’307 and ’734 patents, pending inter partes review.

Orthophoenix is a subsidiary of Marathon Patent Group, which, according to its website, “is a patent and patent rights acquisition and licensing company.”  According to its website, Stryker is a medical technology company that offers “products and services in Orthopaedics, Medical and Surgical, and Neurotechnology and Spine.”

Allyson Brown
Allyson Brown is an associate in our Orange County office. She specializes in intellectual property law, with an emphasis on patent prosecution and litigation related to medical devices and biotechnology. During law school, she served as an Articles Editor for the Vanderbilt Journal of Entertainment and Technology Law.
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