Patent Owner Antedates 102(e) Reference in Inter Partes Review

May 6, 2016 – On May 4, 2016, the Patent Trials and Appeals Board issued a Final Written Decision holding that U.S. Patent No. 8,584,853, directed to a sterile packaged orthopedic implant system, was not unpatentable on the grounds on which inter partes review was instituted.

The instituted validity challenges were based on U.S. Patent Publication No. 2013/0030438 to Fox (“Fox”), which qualified as prior art to the challenged claims under pre-AIA 35 U.S.C. § 102(e). The Patent Owner, Biomedical Enterprises, Inc., presented evidence of conception and reduction to practice of a “second generation kit” before the filing date of Fox.  The Petitioner, Wright Medical Technology, Inc., argued that the claimed kit required assembly by a different process than that used to assemble the “second generation kit.”  After determining that the claims “do[ ] not recite a particular process for assembly of the recited kit,” the PTAB concluded that the Petitioner did not satisfy its burden of persuasion that Fox was prior art, and thus, the claims were not unpatentable over Fox.

The inter partes review is captioned IPR2015-00786.  The patent is entitled “Method and Apparatus for an Orthopedic Fixation System.”  The patent owner has asserted the ‘853 patent in a pending case captioned Biomedical Enterprises, Inc. v. Solana Surgical, LLC, Case No. 1:14-cv-00095-LY (W.D. Tex.).

By: Sean C. McDonagh

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