PTAB Declines to Institute IPR of Bone Implant Claims

June 8, 2016 – In a decision dated June 6, 2016, the PTAB declined to institute inter partes review of Acantha LLC’s re-examined patent for a bone implant assembly containing a stopping member for abutting a fixing screw to prevent detachment of the assembly after implantation.  According to the PTAB, Depuy Synthes’ IPR petition acknowledged the difference between the patented assembly and the prior art, but provided only conclusory expert testimony and insufficient motivation to modify the prior art to account for the difference. The PTAB therefore concluded that there was not a reasonable likelihood that the Petitioner would prevail on its asserted grounds of obviousness with respect to any challenged claim.

The challenged patent is RE43,008, entitled “Orthopedic Implant Assembly.”  The Petitioner has filed two separate IPR petitions challenging other claims of the patent.  The patent owner has asserted the challenged patent against the petitioner in a case captioned Acantha LLC v. DePuy Orthopaedics, Inc. et al, Docket No. 1-15-cv-01257, in the Eastern District of Wisconsin.

By: Sean C. McDonagh