Petitions for Inter Partes Review by MedShape, Inc.

On September 14, 2015, the USPTO’s Patent Trial and Appeal Board (“Board”) issued two decisions in two different inter partes reviews regarding petitions filed by MedShape, Inc. (“Petitioner”).  In the first inter partes review, the Petitioner contested the patentability of claims 12-18 recited in U.S. Patent No. 7,651,528 (“the ‘528 Patent”).  The ‘528 Patent, which issued on January 26, 2010, is owned by Cayenne Medical, Inc. and is drawn to devices, systems, and methods for material fixation.  In the decision, the Board granted the institution of the inter partes review of the ‘528 Patent with respect to the Petitioner’s challenges that EP 1 066 805 and US 6,887,271 anticipate claims 12-18, but denied the institution of the inter partes review with respect to the other grounds asserted by the Petitioner.  In the second inter partes review, the Petitioner contested the patentability of claims 6-11, 13, and 16-18 recited in U.S. Patent No. 8,435,294 (“the ‘294 Patent”).  The ‘294 Patent, which issued on May 7, 2013, is owned by Cayenne Medical, Inc. and is also drawn to devices, systems, and methods for material fixation.  In the decision, the Board granted the institution of the inter partes review of the ‘294 Patent with respect to the Petitioner’s challenges that EP 1 066 805 and/or US 6,887,271 anticipate claims 16-18, but denied the institution of the inter partes review with respect to the other grounds asserted by the Petitioner.  The inter partes reviews remain pending at the Board and is captioned IPR2015-00847 and IPR2015-00848, respectively.

By:  Jacqueline A. DiRamio

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