Smith & Nephew, Inc.v.Bonutti Skeletal innovations LLC

Patent Trial and Appeal Board

Feb 18, 2015

10722102 (P.T.A.B. Feb. 18, 2015)

Trials@uspto.gov Paper 31
Tel: 571–272–7822 Entered: February 18, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________
SMITH & NEPHEW, INC.,
WRIGHT MEDICIAL GROUP, INC., and
WRIGHT MEDICAL TECHNOLOGY, INC.,
Petitioners,

v.

BONUTTI SKELETAL INNOVATIONS LLC,
Patent Owner.
____________

Case IPR2013-00629
Patent 7,806,896 B1
____________

Before WILLIAM V. SAINDON, MICHAEL R. ZECHER, and
RICHARD E. RICE, Administrative Patent Judges.

SAINDON, Administrative Patent Judge.

FINAL WRITTEN DECISION
35 U.S.C. § 318(a) and 37 C.F.R. § 42.73

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I. INTRODUCTION
We have jurisdiction under 35 U.S.C. § 6(c). This Final Written
Decision is entered pursuant to 35 U.S.C. § 318(a).
With respect to the asserted grounds in this trial, we have considered
the positions set forth by Petitioners and Patent Owner in the Petition, Patent
Owner’s Response, Petitioners’ Reply, and the evidence cited therein. For
the reasons discussed below, we determine that Petitioners have shown, by a
preponderance of the evidence, that claim 1 of the ’896 patent is
unpatentable.
A. Procedural History
Smith & Nephew, Inc., filed a Petition requesting an inter partes
review (Paper 3, “Pet.”) of claims 1 and 13 of U.S. Patent No. 7,806,896 B1
(Ex. 1001, “the ’896 patent”). Pet. 2. Smith & Nephew included a
Declaration of Dr. Jay Mabrey, M.D. (Ex. 1002). In our Decision to
Institute Inter Partes Review (Paper 10, “Inst. Dec.”), we instituted a trial
only as to claim 1 of the ’896 patent on four grounds. Inst. Dec. 27.
In another proceeding, Wright Medical Group, Inc. and Wright
Medical Technology, Inc., filed a Petition requesting an inter partes review
of claims 1 and 40 of the ’896 patent, which we granted. IPR2014-00354,
Paper 10. Subsequently, Bonutti Skeletal Innovations LLC (“Patent
Owner”) filed a notice disclaiming claim 40 of the ’896 patent. IPR2014-
00354, Paper 12.
On June 30, 2014, we issued a decision granting the parties’ joint
motion for joinder of Case IPR2013-00629 with Case IPR2014-00354.
IPR2013-00629, Paper 18; IPR2014-00354, Paper 14.
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Patent Owner filed a Response addressing the asserted grounds (Paper
17, “PO Resp.”) with a Declaration of Dr. Scott D. Schoifet, M.D.
(Ex. 2004). Smith & Nephew, Wright Medical Group, and Wright Medical
Technology (collectively, “Petitioners”) then filed a Reply to Patent
Owner’s Response (Paper 22, “Pet. Reply”) with a Reply Declaration of Dr.
Mabrey (Ex. 1023).
An oral hearing was held on October 27, 2014, with all parties
present. Paper 30 (“Tr.”).
No motions are outstanding.
B. Related Proceedings
Patent Owner identifies that an inter partes review has been instituted
against the ’896 patent in Zimmer Holdings, Inc. v. Bonutti Skeletal
Innovations LLC, IPR2014-00321 (PTAB June 2, 2014) (Paper 13) (trial
instituted on claims 40–42 and 44–47 of the ’896 patent). Paper 9.
The ’896 patent is involved in several district court actions: Bonutti
Skeletal Innovations LLC v. Smith & Nephew, Inc., Civil Action No. 12-
1111-GMS (D. Del.); Bonutti Skeletal Innovations LLC v. Zimmer Holdings
Inc., Civil Action No. 1:2012-cv-01107 (D. Del.); Bonutti Skeletal
Innovations LLC v. Wright Medical Group Inc., Civil Action No. 1:2012-cv-
01110 (D. Del. 2012); Bonutti Skeletal Innovations LLC v. ConforMIS Inc.,
Civil Action No. 1:2012-cv-01109 (D. Del.); Biomet Inc v. Bonutti Skeletal
Innovations LLC, Civil Action No. 3:2013-cv-00176 (N.D. Ind.); and
Bonutti Skeletal Innovations v. DePuy Mitek, Inc., Civil Action No. 1:2012-
cv-11667 (D. Mass). Pet. 1; Paper 8, 2.
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C. Technical Background
The human knee joint is formed by the lower (distal) end of the femur
(thighbone) and the upper (proximal) end of the tibia (shinbone), with the
patella (kneecap) covering the joint. Ex. 1002 ¶ 25. The distal end of the
femur includes two rounded protrusions called condyles; the groove between
them is known as the femoral groove, patellar groove, or trochlear groove.
Id. The condyles glide on a piece of cartilage on top of the tibia to form the
main load-bearing interface of the knee joint. Id. ¶¶ 23, 25.
In general, knee replacement surgery involves removal of one or more
portions of the knee’s bones and replacing them with artificial analogues.
The process typically follows this procedure: exposing the knee by making
an incision through the skin (id. ¶ 29), inserting one or more cutting guides
(id. ¶¶ 32–35), resurfacing one or more bones (id.), and attaching the
replacement portions (id. ¶ 36, noting the replacement also is called an
implant). See also Pet. 9–13 (discussing knee replacement surgery).
“Accurate alignment of knee implants is essential for the success of
total knee replacement.” Ex. 1003, 49 (emphasis removed). Mechanical
alignment guides typically are used “to assure that cutting guides were
properly aligned with the leg when placed on the bone.” Ex. 1002 ¶ 34; see
also Ex. 1001, 17:16–18 (disclosing that intramedullary instrumentation is
used to cut a femur). These mechanical device guides often come in the
form of a rod that is secured to the patient. Installation of the rod can be
either intramedullary, wherein the rod is inserted into the medullary canal
(bone marrow cavity) of the tibia, or extramedullary, wherein the rod is
attached to the patient’s leg. Ex. 1002 ¶ 34; Ex. 1001, 17:16–18 (“either . . .
can be utilized”). Figures 10 and 11 of Stulberg (Ex. 1005) depict
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intramedullary and extramedullary rods, respectively, and are reproduced
below:

Figure 10 depicts a cutting guide secured to a patient using an
intramedullary rod inserted into the medullary canal of the tibia. Ex. 1002
¶ 34. Figure 11 depicts a cutting guide secured to a patient using an
extramedullary rod strapped to the patient’s ankle. Id.
D. The ’896 Patent
The ’896 patent, titled “KNEE ARTHROPLASTY METHOD,”
issued October 5, 2010 from U.S. Patent Application No. 10/722,102, filed
November 25, 2003. Ex. 1001 at [54], [45], [21], and [22]. The ’896 patent
is a continuation of U.S. Patent Application No. 10/191,751, filed July 8,
2002, now U.S. Patent No. 7,104,996, and is a continuation-in-part of a
number of earlier-filed applications. Id. at [63].
The ’896 patent discusses methods for performing knee replacement
surgery. Particularly, the ’896 patent discusses alignment systems that do
not use intramedullary and/or extramedullary rods. Such alternative
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alignment systems are described as including percutaneous mounting
(exterior mounting, through the skin), and the use of computer imaging
devices. Ex. 1001, 38:9–12 (percutaneous mount), 36:55–62, 72:7 et seq.
(computer imaging). Claim 1 specifies that the position of the cutting guide
is determined “using references derived independently from an
intramedullary device,” and that the cutting guide is secured to the bone
“free of an extramedullary or intramedullary alignment rod.” Id. at 112:63–
64, 113:1–2.
The ’896 patent also highlights the importance of smaller incisions,
“[t]he benefits of [which] include improved cosmetic results, improved
rehab, less dissection of muscle and soft tissue, and preservation of the
quadriceps mechanism.” Id. at 15:15–18. In order to have smaller incisions,
smaller instruments must be used. Id. at 17:48–59. Claim 1 specifies that
the “replacement portion [of the knee] ha[s] a transverse dimension that is
larger than a transverse dimension of the [cutting] guide surface.” Id. at
113:8–10.
E. The Challenged Claim
Claim 1 is the only remaining claim challenged.
1. A method of replacing at least a portion of a
patient’s knee, the method comprising the steps
of:
making an incision in a knee portion of a leg of the
patient;
determining a position of a cutting guide using
references derived independently from an
intramedullary device;
positioning a cutting guide using the determined
position, passing the cutting guide through the
incision and on a surface of a distal end portion
of an unresected femur, the cutting guide
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secured to the bone free of an extramedullary or
intramedullary alignment rod;
moving a cutting tool through the incision into
engagement with a guide surface on the cutting
guide; and
forming at least an initial cut on the femur by
moving the cutting tool along the guide surface;
attaching a replacement portion of the knee to the
cut surface, the replacement portion having a
transverse dimension that is larger than a
transverse dimension of the guide surface.

Ex. 1001, 112:60–113:10.
F. The Instituted Grounds
The following grounds asserted by Petitioners were instituted in this
proceeding (Inst. Dec. 27):
References Basis Claim
Challenged
Delp
1
and either Turner
2
or Scorpio
3
§ 103 1
Stulberg
4
and either Turner or Scorpio § 103 1

1
Scott L. Delp, et al., Computer Assisted Knee Replacement, 354 CLINICAL
ORTHOPAEDICS AND RELATED RESEARCH 49–56 (1998) (“Delp Article”)
(Ex. 1003).
2
Roderick H. Turner, et al., Geometric and Anametric Total Knee
Replacement, in TOTAL KNEE REPLACEMENT 171–93 (A.A. Savastano, M.D.
ed. 1980) (“Turner”) (Ex. 1008).
3
Stryker Howmedica Osteonics, Scorpio Single Axis Total Knee System –
Passport Total A.R. Total Knee Instruments – Passport A.R. Surgical
Technique (May 2000) (“Scorpio”) (Ex. 1009).
4
S. David Stulberg, et al., Computer-Assisted Total Knee Replacement
Arthroplasty,” 10(1) OPERATIVE TECHNIQUES IN ORTHOPAEDICS 25–39 (Jan.
2000) (“Stulberg”) (Ex. 1005).
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II. ANALYSIS
A. Claim Construction
We interpret the claims of an unexpired patent using the broadest
reasonable interpretation in light of the specification of the patent. 37 C.F.R.
§ 42.100(b). Under the broadest reasonable interpretation standard, claim
terms are given their ordinary and customary meaning, as would be
understood by one of ordinary skill in the art in the context of the entire
disclosure. In re Translogic Tech. Inc., 504 F.3d 1249, 1257 (Fed. Cir.
2007). Further, “the specification and prosecution history only compel
departure from the plain meaning in two instances: lexicography and
disavowal.” GE Lighting Solutions, LLC v. Agilight, Inc., 750 F.3d 1304,
1309 (Fed. Cir. 2014) (citing Thorner v. Sony Computer Entm’t Am. LLC,
669 F.3d 1362, 1365 (Fed. Cir. 2012)). The standards for lexicography and
disavowal are exacting, and require clear intent to define or narrow a term.
Thorner, 669 F.3d at 1365–66. Any special definition for a claim term must
be set forth with reasonable clarity, deliberateness, and precision. In re
Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
In our Decision to Institute, we adopted Petitioners’ proposed
constructions. Inst. Dec. 9.
5
Neither party argues that these terms, or any
other terms, require further construction. Accordingly, we maintain the
following constructions:

5
We refer only to the Decision to Institute and Petition filed in IPR2013-
00629 in this Decision. The Decision to Institute and Petition filed in
IPR2014-00354 are similar to those in IPR2013-00629, such that we need
not refer to those.
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Term Adopted Construction
“cutting guide” “guide that has a guide surface”
“guide surface” “a surface that guides a cutting instrument”

The term “a transverse dimension of the guide surface” appears in
claim 1. Ex. 1001, 113:8–9. This term was not construed in our Decision to
Institute, and neither party offers a construction of the term. We construe
the term for this Decision, however, because an issue now requires us to
consider what is “a transverse dimension of the guide surface.”
The ’896 patent does not define the term “transverse dimension” as it
relates to the guide surface. The ’896 patent discusses the term “transverse
dimension” as it relates to a cutting guide making an anterior resection, but it
does not speak to the guide surface. Ex. 1001, 17:48–59. The guide surface
of the cutting guide discussed in this passage is shown in Figure 13 to have a
roughly trapezoidal planar shape. Figures 11 and 13 of the ’896 patent are
reproduced below:

Figure 11 of the ’896 patent depicts a view of cutting guide 138 along the
femoral axis. Guide surface 178 is described as a slot on cutting guide 138.
Id. at 21:44–45 (“anterior resection guide 138 has a slot which forms the
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guide surface 178”).
6
Figure 13 depicts a top-down cross section of cutting
guide 138 along a plane of guide surface 178. As can be seen in Figure 13,
guide surface 178 is a roughly trapezoidal planar shape, and the width of
guide surface 178 where saw blade 170 enters cutting guide 138 (“physician
side”) is narrower than the portion of guide surface 178 where saw blade 170
leaves cutting guide 138 (“bone side”).
7
Likewise, Figure 13 shows the
coaxial dimension of guide surface 178 (i.e., the dimension in a direction
coaxial to the femoral axis) is smaller on the side closer to the midline of the
femur than on the medial side due to a triangular portion of the cutting
guide.
Patent Owner recognizes that Figure 13 of the ’896 patent depicts the
width of guide surface 178 on the physician side to be smaller than the width
of guide surface 178 on the bone side. See PO Resp. 39–40. Patent Owner
argues, however, that the ’896 patent equates the width of guide surface 178
(and thus, presumably, “a transverse dimension of the guide surface”) to be
the width of cutting guide 138. Specifically, Patent Owner argues, “the
specification describes the cutting guide of Figures 11 and 13 as having a
single guide surface 178 extending across the entire cutting guide 138
notwithstanding the fact that the slot extends across only a part of the handle
side of the cutting guide 138 ('896 patent, Col. 20, ll. 15-46).” PO Resp. 39.
Patent Owner does not explain, however, how the cited passage supports its

6
The terms “guide surface” and “cutting guide” are not used in the
specification of the ’896 patent at these passages to describe items 138 and
178, but we identify the structures in the same manner as Patent Owner.
PO Resp. 39.
7
The width of the cutting guide corresponds to a “transverse dimension”
because it is “in a direction perpendicular to the longitudinal central axis of
the femur.” Ex. 1001, 17:58–59; Tr. 13:5–8, 25:114.
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position. Upon reviewing this passage, we find it discusses guide surface
178 and cutting guide 134 in relation to the bone, but never to each other.
Accordingly, we discern no portion of this passage that is a clear intent to
limit “a transverse dimension of the guide surface” to mean the transverse
dimension of the cutting guide. See Thorner, 669 F.3d at 1365–66.
Likewise, we discern no portion of this passage that is a clear intent to limit
“a transverse dimension of the guide surface” to be any particular transverse
dimension of the guide surface. See id.
Because the ’896 patent does not limit which particular transverse
dimension of the guide surface one must measure to determine “a transverse
dimension of the guide surface,” and the guide surface has at least two
apparent transverse dimensions to measure (physician- and bone-side edges),
we determine that the broadest reasonable interpretation of “a transverse
dimension of the guide surface” is any measure of a transverse dimension of
the guide surface. See Ex. 1002 ¶ 70 (Dr. Mabrey demarcates the extent of
the transverse dimension of the guide surface as measured at the physician-
side edge of the guide surface)
Having construed the claim terms or phrases that are necessary to
resolve the issues raised by the parties, we now turn to the asserted grounds.
B. The Stulberg-Scorpio Ground
We first discuss the prior art used in Petitioners’ ground. Then we
discuss the ground itself, the issues raised in Patent Owner’s arguments, and,
finally, we present our analysis.
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1. Stulberg
Stulberg describes a method of replacing at least a portion of a
patient’s knee, including the steps of making an incision, positioning a
cutting guide, and using the cutting guide to guide a cutting tool to form a
cut. See Ex. 1005, Fig. 2 (depicting the incision), Fig. 16B (depicting a
cutting guide on a femur), Fig. 19B (depicting cuts), Fig. 20A (depicting a
trial implant); see also Ex. 1002 ¶¶ 29–41 (describing a typical knee
replacement surgery); Pet. 43–47.
Stulberg teaches that successful knee replacement surgery is driven by
proper alignment of the replacements. Ex. 1005, 25. To that end, Stulberg
discusses and contrasts computer-assisted total knee replacement
arthroplasty with conventional, mechanically-assisted arthroplasty. Id.
Stulberg states that the computer-assisted method “improve[s] the accuracy
of the surgical technique.” Id. In the computer-assisted method, the surgeon
uses the computer to align a cutting block over the bone, and then secures
the cutting block using a wire. Id. at 30, Fig. 16. A cutting guide is
attached, then the cuts are made and the replacement is fitted and tested. Id.
at 32, Fig. 17.
Stulberg contrasts the mechanical and computer-assisted techniques
with respect to femoral cuts in further detail. Stulberg states that the
mechanical technique uses an intramedullary rod; the rod is depicted in
Figure 15, reproduced below:
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Figure 15 of Stulberg depicts an intramedullary rod (ghosted), introduced
into the femoral medullary canal to secure the distal femoral cutting block.
Id. at 35.
To contrast the mechanical technique, Stulberg presents Figure 16B,
showing the cutting block used in the computer-assisted technique,
reproduced below:
Figure 16B of Stulberg depicts the distal femoral cutting block placed in the
sagittal (front-rear) plane during the computer-assisted technique. Id. at 35.
Figure 16B does not depict, nor does the accompanying text describe, an
intramedullary or extramedullary rod; however, Figure 16B depicts the use
of rigid bodies attached to the femur and the cutting block, which are tracked
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by a computer. Id. at 30. The cutting block is secured by threaded wire to
the femur. Id.
2. Scorpio
The Scorpio reference provides instructions for surgeons installing the
“Scorpio
®
Total Knee” replacement (Ex. 1009, 2) using the “Passport A/R”
surgical technique and tools (id. at 1). See also id. at 48–49 (providing
various product limitations and warnings). Of importance to the discussion
in this Decision, Scorpio discloses an anterior (frontal) femoral resection
(cutting) guide. Id. at 9. After installing a femoral alignment guide onto the
distal end of the femur (see id. at 4–8), the anterior resection guide is
inserted on top of the femoral alignment guide (id. at 9–11). Figure 15 of
Scorpio, which is reproduced below with annotations added, depicts the
anterior resection guide placed on the femoral alignment guide.

Figure 15 of Scorpio depicts an anterior resection guide having two laterally
spaced cutting guide slots, the guide seated atop a femoral alignment guide
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attached to the distal end of the femur. See also id. at Fig. 17 (depicting a
saw inserted into one cutting guide slot).
3. Petitioners’ Proposed Combination
Petitioners assert that Stulberg teaches every limitation of claim 1
except for the limitation, “the replacement portion having a transverse
dimension that is larger than a transverse dimension of the guide surface.”
Pet. 43–47; see also Inst. Dec. 14–19 (determining Petitioner Smith &
Nephew had established a reasonable likelihood of showing the subject
matter of claim 1 obvious on this ground). Petitioners assert that each of the
two resection guide slots in Scorpio is a guide surface, and they are each
smaller than the replacement portion. Pet. 33–34, 45–46. Petitioners further
assert that a person of ordinary skill in the art would “follow the teachings of
Stulberg that computer-assisted surgery can overcome the deficiencies of
standard mechanical measuring techniques,” specifically the mechanical
instrument in Scorpio. Id. at 45–46; see also Pet. Reply 11 (“A person of
ordinary skill therefore would have been motivated to reduce trauma by
eliminating mechanical alignment, as taught in . . . Stulberg, combined with
smaller guide surfaces, as shown in . . . Scorpio.”); Ex. 1023 ¶ 43.
Petitioners reason this would improve the accuracy of Scorpio (Pet. Reply
8), and is “the predictable use of prior art technology according to its
established function to achieve a predictable result” (Pet. at 46 (citing
Ex. 1002 ¶ 92)).
4. Issues
Patent Owner makes two principal arguments. First, Patent Owner
argues that the two slots of Scorpio are actually part of the same guide
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surface, such that their combined width is greater than the replacement
portion. PO Resp. 20, 35–40. Second, Patent Owner argues that there is no
reason to combine the references. Id. at 32–35, 40–45. We address each
argument in turn.
5. Scorpio’s Guide Surface
Patent Owner does not dispute Petitioners’ assertion that Figure 15 of
Scorpio depicts two slots within which a cutting blade may enter. Patent
Owner disputes that those two slots should be considered two separate guide
surfaces, and argues that Scorpio only discloses one guide surface.
PO Resp. 20, 35–40. In support of this position, Patent Owner offers
evidence, outside of the Scorpio reference itself, that the cutting guide of the
product described in the Scorpio reference allegedly has a small passage that
connects the left and right slots, such that they are both part of the same
guide surface. Ex. 2004 ¶ 59. Patent Owner’s declarant, Dr. Schoifet,
testifies that he is in possession of such a Scorpio-branded resection guide.
Id.
Patent Owner offers the following schematics showing the small
passage of Dr. Schoifet’s Scorpio-branded guide:

PO Resp. 20. Reproduced above on the left is a perspective drawing of a
Scorpio-branded resection guide, allegedly depicting the slots of Scorpio
from the bone side of the guide. Reproduced above on the right is a top-
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down cross-section drawing of the Scorpio-branded anterior resection guide
as sectioned along line 2 (at the slots) of the drawing on the left. This
drawing reveals a triangular portion between the two slots of the guide.
Patent Owner’s position is that the apex of the triangle is truncated, such that
there is a small passage that joins the two slots, making them both part of the
same guide surface. PO Reply 20, 35–40.
8

Petitioners respond that the proper inquiry is what the Scorpio
reference discloses, not any given Scorpio-branded product. Pet. Reply 5.
We agree. See, e.g., In re Boe, 355 F.2d 961, 965 (CCPA 1966) (cited in In
re Inland Steel Co., 265 F.3d 1354 (Fed. Cir. 2001) (holding that a reference
must be evaluated for all that it teaches one of ordinary skill in the art)).
9

Notably, Petitioners do not rely on a theory of inherency in their Petition.
See Pet. 43–47; Tr. 11:7–12 (“we don’t rely on inherency at all for
Scorpio”). Further, we find that Patent Owner has not met a threshold
showing that the features of the Scorpio-branded product (see, e.g., Ex.
2007) are inherent to the Scorpio reference, or would have been understood
by one of ordinary skill in the art to be disclosed by the Scorpio reference.
Patent Owner merely offers the testimony of Dr. Schoifet that the particular
Scorpio-branded guide having the small passage is a “Scorpio Anterior
Resection Guide that [he] used in 2003.” Ex. 2004 ¶ 59. There is a three-
year timespan between the publishing date of Scorpio reference (2000) and

8
Although Patent Owner does not discuss how big this passage is,
Petitioners’ expert, Dr. Mabrey, measures it to be about 1 mm wide by 0.5
mm deep. Ex. 1023 ¶ 14.
9
In other words, if it can be shown that a reference would have led a person
of ordinary skill in the art to believe a product had feature X, then that
reference teaches feature X even if it can be shown, by other evidence in a
different reference, that the product in fact had feature X′.
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Dr. Schoifet’s use of a Scorpio-branded product (2003). Further, Patent
Owner does not offer when Dr. Schoifet obtained the Scorpio-branded
product, or when it was made. Lastly, a trademark identifies the source of
goods, rather than the good itself, such that the mere circumstance that the
prior art reference and the product share the “Scorpio” trade name is
insufficient to conclude they are the same. In view of these factors, Patent
Owner has not made a sufficient showing that the Scorpio-branded product
Dr. Schoifet discusses is the same thing as, or understood to be included in,
the Scorpio reference.
Accordingly, we look to determine what a person of ordinary skill in
the art, reviewing the Scorpio reference, would have understood regarding
the extent and quantity of guide surfaces. As we stated above, Petitioners
assert that Scorpio’s two slots are two small guide surfaces. Patent Owner
argues, essentially, that the two slots of Scorpio are part of the same
“continuous guide surface.” PO Resp. 19–21, 36–39. Patent Owner, relying
on the testimony of Dr. Schoifet, argues that, if the two slots of Scorpio were
not connected on the bone side of the guide, “the cutting guide could not
make the anterior skim cut” and that Scorpio guide would be “inoperable for
making the cut described.” Id. at 36–39 (citing Ex. 2004 ¶ 77). Patent
Owner’s argument here is misplaced. The issue is not whether the slots are
connected in some location, but rather whether a transverse dimension of a
guide surface is smaller than a replacement portion. Boe, 355 F.2d at 965.
As to this inquiry, the evidence before us supports Petitioners’ position.
Petitioners rely on the testimony of Dr. Mabrey, who testifies that one
of ordinary skill in the art, upon reviewing Figure 15 of Scorpio, would
consider it to show two slots, each offering a guide surface for a different
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cut, i.e., the surgeon would have to remove the cutting blade from a first slot
on the device before cutting using the other slot. Ex. 1023 ¶¶ 10–13, 20; see
also id. ¶¶ 12–13, 20 (offering expert opinion and evidence that one slot is
intended to be used for the left knee, one for the right). Thus, the slots are
two different guide surfaces for two different cutting motions. Whether
these guide surfaces are connected at some unseen portion (as Patent Owner
alleges) is not relevant for purposes of claim 1 of the ’896 patent because,
looking at Figure 15 of Scorpio, we can ascertain the transverse dimension
of the physician-side opening of that slot, which is a transverse dimension of
that guide surface. According to Dr. Mabrey, this transverse dimension is
less than a transverse dimension of a replacement portion. Ex. 1002 ¶ 70;
Ex. 1023 ¶¶ 10–11. Patent Owner does not convince us otherwise. We,
therefore, credit the testimony of Dr. Mabrey that this transverse dimension
of the right guide surface of Scorpio in Figure 15 is less than a transverse
dimension of a replacement portion.
Further, even if we were to consider the Scorpio-branded guide as
evidence of what a person of ordinary skill in the art would have understood
reading the Scorpio reference, and we were limited to considering “a
transverse dimension of the guide surface” to mean the longest transverse
dimension of the guide surface, arguendo, we would still be persuaded that
Scorpio disclose the claimed features. First, Dr. Mabrey’s testimony that the
two slots define two different guide surfaces because they are used in two
different cutting motions is persuasive, even if the slots in Scorpio’s Figure
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15 were to overlap.
10
In other words, a person of ordinary skill in the art
would consider them different guide surfaces because of the way they are
used, and a small overlap would not change that use. Second, we are not
persuaded that this incredibly tiny passage even is used as a cutting guide.
Dr. Schoifet testifies that the small passage is necessary to sufficiently angle
a cutting blade (Ex. 2004 ¶ 78), but Dr. Mabrey’s performance of a complete
resection using only one slot and not using the small passage refutes Dr.
Schoifet’s testimony on this matter (Ex. 1023 ¶¶ 15–16, 19–21). Dr.
Schoifet offers no other explanation as to why the small passage is necessary
for resection. See also Ex. 1031, 127:7–148:9 (during over 30 minutes of
questioning on this topic, Dr. Schoifet did not answer why he believed the
Scorpio device would be inoperable without the small passage). Thus, even
if we were to consider the Scorpio-branded guide in the manner Patent
Owner proposes, Petitioners have established persuasively that the bone
sides of both slots define two separate guide surfaces, either of which would
be smaller than a transverse dimension of a replacement portion. See
Ex. 2007 (noting the physician-side and bone-side transverse dimensions of
the guide surfaces are essentially the same)
In view of the above, we determine that Petitioners have shown, by a
preponderance of the evidence, that Scorpio describes a guide surface having

10
The overlap would be extremely small. Dr. Mabrey testifies that the small
passage in the Scorpio-branded product is about 1 mm wide by 0.5 mm
deep. Ex. 1023 ¶ 14. This would make the passage the size of about half a
pinhead on an object a little larger than a person’s knee. See Ex. 1005, Fig.
15 (depicting the cutting guide extending past both sides of a femur);
Scorpio Demonstration Photos, Ex. 1030, 40 (depicting the cutting guide
installed on a cadaver, extending past both sides of the knee).
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a transverse dimension less than a transverse dimension of a replacement
portion.
6. Reason to Combine Stulberg and Scorpio
Petitioners assert that a person of ordinary skill in the art would
“follow the teachings of Stulberg that computer-assisted surgery can
overcome the deficiencies of standard mechanical measuring techniques,”
such as the mechanical instrument in Scorpio. Pet. at 45–46. Patent Owner
makes several arguments: there is “no apparent reason [to] abandon the
cutting guide of Stulberg” (PO Resp. 32); “if . . . Scorpio is to be used, it
would need to be mounted with an intramedullary alignment rod” (id. at 33,
35); “Stulberg provides a distal femoral cutting guide [but] Scorpio . . . is an
anterior resection guide” (id. at 34). Each of these arguments is
unpersuasive because they presume bodily incorporation and do not speak to
the combination proposed by Petitioners in the Petition.
First, Petitioners show that the prior art establishes that one of
ordinary skill in the art reviewing Stulberg had a reason to look to the use of
computer assistance with respect to other cutting guides. Pet. 34–35 (citing
Ex. 1002 ¶¶ 70–71 (citing Ex. 1003, 49–50, 52–53)); id. at 45–46 (citing Ex.
1005, 25). For example, Stulberg “describe[s] in detail a technique that
[i]ncorporates the use of a currently available and clinically validated state-
of-the-art mechanical instrumentation system.” Ex. 1005, 25. Stulberg also
suggests the superiority of computer-aided alignment versus mechanical
alignment. Id.; see also Ex. 1023 ¶ 40 (“Stulberg provides a computer-
assisted technique that could be adapted to any cutting guide to eliminate
any mechanical alignment.”) (emphasis added). Delp suggests that “[t]he
capabilities of mechanical instruments can be enhanced by integrating them
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with highly accurate [computer-assisted] measurement equipment.”
Ex. 1003, 50 (emphasis added). Thus, contrary to Patent Owner’s assertion,
we are persuaded that there is a sufficient reason for one of ordinary skill in
the art to look to the use of computer assistance with respect to existing
cutting guides.
11

Further, Patent Owner’s argument that Scorpio’s cutting guide
requires an intramedullary rod presumes bodily incorporation. A
combination is not a physical grafting of one structure onto another. Lear
Siegler, Inc. v. Aeroquip Corp., 733 F.2d 881, 889 (Fed. Cir. 1984) (one of
ordinary skill is not compelled to blindly follow the teaching of one prior art
reference over the other without the exercise of independent judgment); In re
Keller, 642 F.2d 413, 425 (CCPA 1981) (“The test for obviousness is not
whether the features of a secondary reference may be bodily incorporated
into the structure of the primary reference”). In addition, one of ordinary
skill can use his or her ordinary skill, creativity, and common sense to make
the necessary adjustments and further modifications to result in a properly
functioning device. See KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 418

11
We also note that the computerization of manual processes is a common
theme in stories of obviousness. See, e.g., Western Union Co. v.
MoneyGram Payment Systems Inc., 626 F.3d 1361, 1370 (Fed. Cir. 2010)
(reviewing precedent and concluding that “applying computer and internet
technology to replace older electronics has been commonplace in recent
years”); Leapfrog Enterprises, Inc. v. Fisher Price, Inc., 485 F.3d 1157,
1161 (Fed. Cir. 2007) (“[a]ccommodating a prior art mechanical device . . .
to modern electronics would have been reasonably obvious to one of
ordinary skill . . .”); see also In re Venner, 262 F.2d 91 (CCPA 1958) (“it is
well settled that it is not ‘invention’ to broadly provide a mechanical or
automatic means to replace manual activity which has accomplished the
same result”).
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(2007) (“the [obviousness] analysis need not seek out precise teachings
directed to the specific subject matter of the challenged claim, for a court
can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ”).
Here, Patent Owner’s declarant, Dr. Schoifet, testifies, “[a] person of
ordinary skill in the art would have had difficulties performing computer-
assisted navigation resection with the Scorpio guide because the guide is so
large and would be unstable without the positioning and mounting assistance
of the intramedullary rod of Scorpio.” Ex. 2004 ¶ 81. We do not credit Dr.
Schoifet’s testimony in this regard because it narrowly focuses on the
attachment of Scorpio’s alignment guide to the bone, whereas Petitioners’
proposed combination relies on Scorpio’s cutting guide, not the alignment
guide. We credit Dr. Mabrey’s testimony that the cutting guide of Scorpio
could be used with the alignment guide and computer-assistance positioning
technique disclosed in Stulberg. Ex. 1023 ¶ 44; see also id. (Dr. Mabrey
testifying that Scorpio’s design is “modular” and has separate alignment and
cutting guides, and that “[t]he size and shape of Scorpio have no effect on
the ability to apply computer-assisted techniques.”).
Dr. Schoifet further testifies that Petitioners’ proposed combination is
improper because Scorpio’s guide is an anterior cutting guide, whereas
Stulberg’s guide is a “4 in 1 cutting block.” Ex. 2004 ¶ 81. Again, this
argument does not address the proposed combination. Stulberg describes an
alignment guide secured to a bone; the proposed combination is to use
Scorpio’s anterior cutting guide. Pet. 44–46 (“obvious . . . to utilize the
computer-assisted system disclosed in Stulberg in combination with the
cutting guides . . . [of] Scorpio.”); Ex. 1005, 32 (discussing in Stulberg that
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“[t]he cutting block . . . is attached [to the alignment guide] . . . . The
anterior, posterior, and chamfer cuts are then made”); Ex. 1023 ¶ 45 (Dr.
Mabrey testifies: “The fact that different cuts are being made is irrelevant to
the fact that computer-assisted techniques could be applied to the Scorpio
technique.”). In addition, the proposed combination is not to physically
attach the Scorpio resection guide onto the alignment block of Stulberg, but
rather to take the teachings of such a guide and use them with the alignment
block of Stulberg. Lear Siegler, 733 F.2d at 889; see also In re Nievelt, 482
F.2d 965, 968 (CCPA 1973) (“Combining the teachings of references does
not involve an ability to combine their specific structures.”). If some
adjustments or modifications are necessary, they would be merely in the
manner by which the Scorpio-style cutting guide is attached to the Stulberg-
style alignment guide. Reviewing the manner in which these objects are
connected in the references before us (e.g., Stulberg and Scorpio), this
appears to be nothing more than a straightforward, predictable exercise in
placing posts and holes in the correct positions.
Given that the prior art suggests updating mechanically-aligned
cutting guides using computer-assisted alignment techniques, we are
persuaded that Petitioners’ reason for combining the teachings of Stulberg
and Scorpio is a sufficiently articulated reason with rational underpinnings
to justify the legal conclusion of obviousness. Accordingly, Petitioners have
provided a sufficient reason to combine the teachings of Stulberg and
Scorpio in the Petition, and Patent Owner’s arguments against are
unpersuasive.
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7. Conclusion Regarding the Stulberg-Scorpio Ground
Having reviewed Petitioners’ Petition and Reply, Patent Owner’s
Response, and the evidence cited therein, we determine that Petitioners have
established, by a preponderance of the evidence, that the subject matter of
claim 1 of the ’896 patent would have been obvious in view of the teachings
of Stulberg and Scorpio.
C. The Stulberg-Turner Ground
We first discuss the prior art used in Petitioners’ ground. Then we
discuss the ground itself, before turning to the issues raised in Patent
Owner’s arguments and our analysis.
1. Turner
The Turner reference describes the state of the knee replacement art as
of 1980. Ex. 1008, inside cover.
12
Of importance to the discussion in this
Decision, Turner discloses a femoral cutting guide. Id. at Fig. 8. “The
femoral cutting guide is inserted in the midline, deep to the suprapatellar
pouch.” Id. at 181.
13
Figures 8 and 9 of Turner are reproduced below.

12
This Exhibit begins with two unnumbered pages, which we refer to as the
cover and inside cover.
13
The suprapatellar pouch extends between the quadriceps tendon and the
front of the femur, and is an extension of the synovial sac that encloses and
lubricates the knee joint.
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Figure 8 of Turner depicts a femoral cutting guide that fits along the midline
of the femur, and its width is much smaller than the width of the resected
bone. Figure 9 depicts the resulting appearance of the femur after the cut.
The portions of the femur that are cut are later covered by the prosthesis.
See, e.g., id. at Fig. 20. Accordingly, the transverse dimension of the
prosthesis will be larger than the transverse dimension of the cutting guide
shown in Figure 8. See Pet. 33 (arguing that Turners’ guide surface length
D1 is substantially less than transverse (across the knee) length D2 of the
implant).
2. Petitioners’ Proposed Combination
Petitioners assert that Stulberg teaches every limitation of claim 1
except for the limitation, “the replacement portion having a transverse
dimension that is larger than a transverse dimension of the guide surface.”
Pet. 43–47. Petitioners assert that Turner discloses this feature. Id.
Specifically, Petitioners assert that the width of the cutting guide shown in
Turner’s Figure 8 is substantially smaller than the implant. Pet. 33 (citing
Ex. 1008, 177, 181, Figs. 3, 8; Ex. 1002 ¶ 69).
Petitioners assert that a person of ordinary skill in the art would
“follow the teachings of Stulberg that computer-assisted surgery can
overcome the deficiencies of standard mechanical measuring techniques,”
such as the mechanical instrument in Turner. Id. at 45–46; see also Pet.
Reply 11 (“A person of ordinary skill therefore would have been motivated
to reduce trauma by eliminating mechanical alignment, as taught in . . .
Stulberg, combined with smaller guide surfaces, as shown in Turner.”).
Petitioners reason this would improve the accuracy of Turner (Pet. Reply 8),
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and is “the predictable use of prior art technology according to its
established function to achieve a predictable result” (Pet. 46 (citing Ex. 1002
¶ 92)).
3. Issue
Patent Owner argues that the device in Turner is nothing more than a
“rough reference” to make an “eyeball” or “free-hand” cut. PO Resp. 26–27
(citing Ex. 2004 ¶ 70). Patent Owner’s expert testifies that “[u]sing
computer-assisted navigation to make an eyeball cut is not going to make the
procedure [of Turner] any better.” Ex. 2004 ¶ 73. Patent Owner also argues
that the device in Turner is an extramedullary-mounted cutting guide that
aligns with the anatomical axis of the femur. PO Resp. 26, 28; see also Ex.
2004 ¶ 66 (further noting that Turner is “handheld”).
Accordingly, the issue here is whether the teachings of Stulberg may
be combined with Turner in the manner proposed by Petitioners to arrive at
the claimed invention, given the significant differences in approaches
between the cutting guides of both references.
4. Analysis
Petitioners have not set forth clearly in their Petition how they
propose to combine the teachings of Stulberg and Turner to arrive at the
claimed invention. Petitioners address where each limitation of the claim is
found in Stulberg or Turner, but a proper obviousness analysis requires more
than an identification of each claim element in the prior art. KSR, 550 U.S.
at 418 (“a patent composed of several elements is not proved obvious merely
by demonstrating that each of its elements was, independently, known in the
prior art”). As the Supreme Court stated in KSR, the obviousness analysis
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requires a showing of “whether there was an apparent reason to combine the
known elements in the fashion claimed by the patent at issue.” Id. (citing In
re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (emphasis added)). Although
we are cognizant that “[t]he test for obviousness is not whether the features
of a secondary reference may be bodily incorporated into the structure of the
primary reference,” Keller, 642 F.2d at 425, we must still be apprised, with
sufficient exposition given the context, of what teachings are to be taken
from what reference and how those teachings are going to be applied, in
order to make a proper determination of whether that particular application
of the teachings is within the level of ordinary skill in the art.
Upon reviewing the Petition and the Reply, we glean three possible
combinations from Petitioner’s arguments. We address each in turn.
a. No Modification of Turner
Claim 1 requires a cutting guide to be “secured to the bone.” Ex.
1001, 113:1. If Petitioners are proposing to take the Turner structure as-is
and utilize Stulberg’s teaching to use computer-assisted alignment, then
Petitioners would not address this limitation. This is because the cutting
guide in Turner is, essentially, a hand-held rod that is held, unsecured, up
against the bone. The Turner guide is inserted along the midline of the
femur, in the suprapatellar pouch. Ex. 1008, 181. Patent Owner’s declarant,
Dr. Schoifet, testifies that the Turner device is a “handheld cutting guide”
that “simply sits in between the condyles.” Ex. 2004 ¶ 66. When
Petitioners’ declarant, Dr. Mabrey, was deposed, he testified that “[Turner]
doesn’t describe any technique for attaching it to the femur,” and that “[he
doesn’t] see any design attributes in [Figure 8 of Turner] that would indicate
any attachment points.” Ex. 2003, 71:9–72:5. In addition, in his Reply
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Declaration, Dr. Mabrey testifies that Turner’s device “rests on the anterior
[surface of the] femur” (emphasis added). Ex. 1023 ¶ 35. Accordingly,
Petitioners have not established that Turner’s handheld guide is “secured to
the bone” in the manner required by claim 1.
b. Modification of Stulberg and Turner
In its Petition, Petitioners assert that Stulberg teaches the “secured to
the bone” limitation when it discloses that a cutting guide is secured to the
femur using “5-mm threaded wire.” Pet. 44 (citing Ex. 1005, 30). For the
cutting guide, Petitioners cite to Turner. Id. at 45 (citing Ex. 1004, Figs. 8,
14). Thus, Petitioners appear to be suggesting to use Stulberg’s alignment
guide with Turner’s cutting guide.
The Stulberg cutting guide (see, e.g., Fig. 16A, supra), however, is
quite different from the cutting guide of Turner (see Fig. 8, supra), and
Petitioners have not explained sufficiently how one of ordinary skill would
have combined the small cutting guide of Turner with the securement
structure of Stulberg, let alone established sufficient facts to support a
conclusion of obviousness of such a combination. Although Petitioners
correctly point out that “[t]he obviousness inquiry does not ask ‘whether the
references could be physically combined,’” that does not mean that
Petitioners do not need to address what combination is offered to satisfy the
requirements of the claim. Pet. Reply 15–16 (quoting In re Chevalier, 500
F. App’x 932, 934 (Fed. Cir. 2013)); KSR, 550 U.S. at 418 (“a patent
composed of several elements is not proved obvious merely by
demonstrating that each of its elements was, independently, known in the
prior art”).
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Here, the nature of the proposed combination is not apparent to us.
The alignment guide of Stulberg is attached on the distal end of the femur
and is aligned by adjusting its orientation relative to the bone. The
alignment guide of Turner (which is also the cutting guide) is set on top of
the femur and is aligned by simply pushing it in place until it rests between
the condyles. Due to its elongated, rod-like nature, it is not clear how one
could adjust the alignment guide’s orientation relative to the bone (using,
e.g., a computer-assisted method) without the end of the alignment portion
of the guide furthest from the cutting surface swinging or tilting away from
the femur on which it rests, which would then make securing it at such an
angle precarious (or perhaps place undue strain on the suprapetallar pouch in
which the guide resides). To put it another way, it is not a simple matter to
see how one of ordinary skill in the art would have combined the teachings
of Turner to those of Stulberg to arrive at the claimed invention.
14
See
Perfect Web Technologies, Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1330 (Fed.
Cir. 2009) (determining that no expert opinion was necessary to evaluate a
proposed modification to simple technology but cautioning that, “[i]f the
relevant technology were complex, the court might require expert
opinions.”) (citation omitted).
It is Petitioners’ burden to set forth sufficient facts to establish that it
would have been obvious to a person of ordinary skill in the art to modify
Turner’s cutting guide to include a structure that allows it to be secured to

14
We need not discredit Dr. Mabrey’s testimony that Stulberg teaches that
computer-assisted use of any guide is beneficial to reach our conclusion.
See Ex. 1023 ¶ 37. The claim requires more than mere computer assistance
of any existing mechanical guide; it requires a guide to be a certain size and
to be “secured to the bone.”
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the bone using threaded wire, such as taught in Stulberg. Given the
unanswered questions about how these teachings would be combined, we
determine that Petitioners have not met their burden.
c. Modification of Stulberg Only
Petitioners’ third theory is that Turner teaches to make cutting guides
smaller, in general, and one would apply that alleged teaching of Turner to
make the cutting guides of Stulberg smaller. Pet. Reply 16 (citing Ex. 1023
¶¶ 39, 45, 48–50); Tr. 8:2–7. This reasoning was not presented in the
Petition and, thus, constitutes a newly asserted ground because it takes a
different thrust and would rely on a different factual basis. See, e.g., In re
Gartside, 203 F.3d 1305, 1316 (Fed. Cir. 2000) (citation omitted) (the
presence or absence of a reason “to combine references in an obviousness
determination is a pure question of fact.”).
Addressing Petitioners’ new theory, arguendo, we are not persuaded
by Petitioners’ assertion that Turner’s disclosure of a relatively small cutting
guide teaches a general principle that all cutting guides may be made
smaller. A disclosure of a small item is different from a disclosure of
making items smaller. Petitioners do not show where Turner discusses the
size of its cutting guide, much less cutting guides in general. Petitioners’
declarant, Dr. Mabrey, merely states that “Turner teaches . . . that guide
surfaces smaller than the implant can be used,” but does not cite to any place
where Turner teaches to make guide surfaces smaller than the implants.
Ex. 1023 ¶ 39. On the other hand, Patent Owner’s declarant, Dr. Schoifet,
testifies: “[t]here is . . . no indication that the relative size of the cutting
surface of the cutting guide and the replacement component is of any interest
[in Turner].” Ex. 2004 ¶ 51. Dr. Schoifet’s testimony most closely
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comports with the Turner disclosure (or lack thereof, rather). Accordingly,
we credit Dr. Schoifet’s observation that Turner does not discuss the size of
guide surfaces, and we are not persuaded by Petitioners’ position that Turner
teaches making the cutting guide of Stulberg smaller than the replacement
component.
5. Conclusion Regarding the Stulberg-Turner Ground
Having reviewed Petitioners’ Petition and Reply, Patent Owner’s
Response, and the evidence cited therein, we determine that Petitioners have
not established, by a preponderance of the evidence, that the subject matter
of claim 1 of the ’896 patent would have been obvious in view of the
teachings of Stulberg and Turner.
D. The Delp-Scorpio Ground
The Delp-Scorpio ground largely mirrors the Stulberg-Scorpio
ground, with Delp taking the place of Stulberg’s teachings of a computer-
assisted resection, and Scorpio again being relied upon for the teaching of a
guide surface having a transverse dimension smaller than a replacement
portion. Pet. 27–37. We first discuss the prior art used in Petitioners’
ground. Then we discuss the ground itself, before turning to the issues
raised in Patent Owner’s arguments and our analysis.
1. Delp
Delp discusses the limitations of mechanical alignment guides used in
knee surgery, such as intramedullary and extramedullary devices, and
proposes three computer-based systems to improve the success of knee
replacement surgeries. Ex. 1003, 49. The first system utilizes computer-
integrated instruments to “augment[] mechanical instruments through the
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addition of measurement probes that can be used to locate joint centers, track
surgical tools, and align prosthetic components.” Id. at 50–51. In this
system, a computer “displays the position of the cutting block relative to the
desired position.” Id. at 51. The cutting block (jig) is secured and the cuts
are made. Id. According to Delp, this method “eliminates the need for
intramedullary and extramedullary alignment guides.” Id. at 55. The second
system in Delp includes the use of computer imaging to determine a
preoperative plan that guides the placement of the components. Id. at 50.
The third system uses a robotic device to perform the cutting operations. Id.
2. Petitioners’ Proposed Combination
Petitioners assert that Delp teaches every limitation of claim 1, except
for the limitation, “the replacement portion having a transverse dimension
that is larger than a transverse dimension of the guide surface.” Pet. 27–37.
Petitioners assert that Scorpio discloses this feature. Pet. 32–33. Petitioners
also assert that the width of the cutting guide shown in Scorpio at Figure 15
(i.e., one of the slots) is smaller than the implant. Pet. 33 (citing Ex. 1009, 2,
9, Fig. 15; Ex. 1002 ¶ 70). Petitioners assert that it would have been obvious
to one of ordinary skill in the art to use “the cutting guides and implants
disclosed in . . . Scorpio” along with the “systems described in the Delp
Article.” Pet. 34. One reason for doing this, according to Petitioners, is
because “[u]sing ‘measurement probes’ . . . disclosed in the Delp Article to
improve the accuracy of mechanical instruments from . . . Scorpio would
have been no more than the predictable use of prior art elements according
to their established functions.” Pet. 35; see also Ex. 1002 ¶ 72; Ex. 1003, 50
(the purpose of the computer-integrated instruments are to “augment[]
mechanical instruments”). Petitioners also rely on the opinion of Dr.
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Mabrey that the proposed combination is “no more than the predictable use
of prior art elements according to their established functions” requiring no
more than “routine skill.” Pet. 35 (citing Ex. 1002 ¶ 72).
Petitioners also assert an alternative rationale, that “it would have
been obvious to reduce the length of the guide surface . . . so that the guide
could fit through a smaller incision.” Pet. 34. Petitioners reason that this
“was a known solution for reducing trauma,” relying on the testimony of Dr.
Mabrey (Ex. 1002 ¶ 70), as well as a teaching in U.S. Patent No. 5,871,018
(issued Feb. 16, 1999) (Ex. 1004, 22:45–50, “smaller jigs [allow] a smaller
incision to be made. A smaller incision will result in a less invasive
procedure, and will lead to [certain benefits].”). Id.
3. Patent Owner’s Arguments
Patent Owner first argues that a person of ordinary skill in the art
“would have no apparent reason to employ the intramedullary mounted
cutting guide of Scorpio in [the computer-assisted techniques of Delp].”
PO Resp. 53, 56–58. As we explained above in Section II.B.6, Petitioners
have established that a person of ordinary skill in the art would have a
reason to use computer-assisted alignment of existing mechanical guides.
As we also explained, Patent Owner’s arguments presume bodily
incorporation and are not commensurate with the ground proposed by
Petitioners.
Patent Owner next argues that Scorpio does not meet the “transverse
dimension of a guide surface” limitation and relies on its arguments
addressed above in Section II.B.5. PO Resp. 54. Patent Owner’s arguments
are unpersuasive for the reasons we set forth in Section II.B.5.
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Patent Owner lastly disputes Petitioners’ alternative rationale, that it
would have been obvious to reduce the length of a guide surface as a known
solution for reducing trauma. PO Resp. 54–56. Petitioners have already
demonstrated sufficiently a rationale to combine the teachings of Delp and
Scorpio to arrive at the claimed invention. Thus, we need not address this
alternative rationale.
4. Conclusion Regarding the Delp-Scorpio Ground
Having reviewed Petitioners’ Petition and Reply, Patent Owner’s
Response, and the evidence cited therein, we determine that Petitioners have
established, by a preponderance of the evidence, that the subject matter of
claim 1 of the ’896 patent would have been obvious in view of the teachings
of Delp and Scorpio.
E. The Delp-Turner Ground
This ground largely tracks the Stulberg-Turner ground in which we
determined Petitioners failed to show by a preponderance of the evidence
that the subject matter of claim 1 of the ’896 patent was unpatentable over
the teachings of Stulberg and Turner. For reasons similar to those set forth
above in Section II.C, we reach the same conclusion here.
III. ORDER
In view of the foregoing, it is:
ORDERED that Petitioners have shown, by a preponderance of the
evidence, that the subject matter of claim 1 of the ’896 patent is unpatentable
in view of Stulberg and Scorpio and unpatentable in view of Delp and
Scorpio;
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FURTHER ORDERED that Petitioners have not shown, by a
preponderance of the evidence, that the subject matter of claim 1 of the ’896
patent is unpatentable in view of Stulberg and Turner or unpatentable in
view of Delp and Turner; and
FURTHER ORDERED that this is a final written decision and that
parties to the proceeding seeking judicial review of the decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

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PETITIONER:

David Cavanaugh
Michael Smith
WILMER CUTLER PICKERING AND DORR LLP
David.Cavanaugh@wilmerhale.com
Michaelh.Smith@wilmerhale.com

PATENT OWNER:

Cary Kappel
William Gehris
David Petroff
DAVIDSON, DAVIDSON & KAPPEL, LLC
ckappel@ddkpatent.com
wgehris@ddkpatent.com
dpetroff@ddkpatent.com