Wright Medical Technology, Inc.

Patent Trials and Appeals Board

Sep 23, 2020

IPR2019-00894 (P.T.A.B. Sep. 23, 2020)

Trials@uspto.gov Paper 41
571-272-7822 Date: September 23, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

PARAGON 28, INC.,
Petitioner,

v.

WRIGHT MEDICAL TECHNOLOGY, INC.,
Patent Owner.
____________

IPR2019-00894
Patent 9,144,443 B2
____________

Before GEORGE R. HOSKINS, ROBERT A. POLLOCK, and
RICHARD H. MARSCHALL, Administrative Patent Judges.

HOSKINS, Administrative Patent Judge.

JUDGMENT
Final Written Decision
Determining All Challenged Claims Unpatentable
Denying / Dismissing Patent Owner’s Motion to Exclude
35 U.S.C. § 318(a); 37 C.F.R. § 42.64
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I. INTRODUCTION
Paragon 28, Inc. (“Petitioner”) filed a Petition (Paper 2, “Pet.”)
pursuant to 35 U.S.C. §§ 311–319 to institute an inter partes review of
claims 1, 3–11, 15, 19, and 22–26 of U.S. Patent No. 9,144,443 B2
(Ex. 1002, “the ’443 patent”).
Wright Medical Technology, Inc. (“Patent Owner”) filed a
Preliminary Response (Paper 8, “Prelim. Resp.”). Contemporaneously with
the Preliminary Response, Patent Owner disclaimed claims 9–11 and 22–25.
See Prelim. Resp. 1 n.1 (citing Ex. 2006); Paper 13 (Order authorizing
Patent Owner to file Supplemental Preliminary Response with further
evidence of disclaimer); Paper 15 (Supplemental Preliminary Response,
citing Exs. 2013–2016).
We instituted a trial to determine whether claims 1, 3–8, 15, 19,
and 26 are unpatentable, on the sole challenge to those claims presented in
the Petition. Paper 17 (“Institution Decision” or “Inst. Dec.”), 2, 6, 31. We
did not institute trial as to claims 9–11 and 22–25 due to Patent Owner’s
disclaimer of those claims. Id. at 2, 27–31; 37 C.F.R. § 42.107(e) (2018).
Patent Owner filed a Patent Owner Response (Paper 23, “PO Resp.”)
to the Petition. Petitioner filed a Reply (Paper 31, “Reply” or Pet. Reply”) to
the Patent Owner Response. Patent Owner filed a Sur-reply (Paper 33,
“Sur-reply”) to the Reply.
Patent Owner filed a Motion to Exclude Evidence (Paper 37).
Petitioner filed an Opposition (Paper 38) to the Motion. Patent Owner filed
a Reply (Paper 39). We dismiss the Motion as moot as to Exhibits 1057–
1060, 1073–1075, and 1081, and we deny the Motion as to Exhibit 1070.
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An oral hearing was held, for which the transcript was entered into the
record (Paper 40, “Tr.”).
We have jurisdiction under 35 U.S.C. § 6(b)(4) and § 318(a).
Petitioner bears the burden of proving unpatentability of the challenged
claims, and the burden of persuasion never shifts to Patent Owner. Dynamic
Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir.
2015). To prevail, Petitioner must prove unpatentability by a preponderance
of the evidence. See 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d). This Decision
is a final written decision under 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73 as
to the patentability of claims 1, 3–8, 15, 19, and 26 of the ’443 patent.
We determine Petitioner has shown by a preponderance of the
evidence that claims 1, 3–8, 15, 19, and 26 are unpatentable.
II. BACKGROUND
A. Real Parties-in-Interest and Related Proceedings
Petitioner identifies itself as the sole real party-in-interest. Pet. 67.
Patent Owner identifies itself as the sole real party-in-interest. Paper 7, 2.
The parties identify one U.S. District Court litigation as related to this
proceeding: Wright Medical Technology, Inc. v. Paragon 28, Inc., Case No.
18-cv-00691-PAB-STV (D. Colo.) (“the District Court Litigation”). Pet. 68;
Paper 7, 2.
There are three related IPR proceedings, each challenging different
continuations of the ’443 patent. Pet. 68; Paper 7, 2; Paper 26, 1; Ex. 1002,
code (21); Ex. 1003, code (60); Ex. 1004, code (60); Ex. 1005, code (60).
They are IPR2019-00895 challenging U.S. Patent No. 9,259,252 B2;
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IPR2019-00896 challenging U.S. Patent No. 9,545,278 B2; and
IPR2019-00898 challenging U.S. Patent No. 9,259,253 B2.
B. Patent Owner’s Pre-Institution Disclaimer of
Claims 9–11 and 22–25 of the ’443 Patent
The Petition asserts claims 9–11 and 22–25 of the ’443 patent are
unpatentable under 35 U.S.C. § 103. Pet. 22–23, 55–67. Patent Owner
disclaimed these claims prior to institution of trial. See Inst. Dec. 2, 27–30.
We did not institute trial as to these claims. Id. at 30–31. Therefore, we do
not address these claims any further in this Decision.
C. The ’443 Patent Disclosure
The ’443 patent discloses “a series of orthopedic plates for use in
repair of a clavicle.” Ex. 1002, Abstract, 1:20–22, 2:16–18. Figure 1 of the
’443 patent is reproduced here:

’443 Patent Figure 1 (Ex. 1002).
Figure 1 illustrates orthopedic plate 10 having an X-shaped profile, formed
by central trunk portion 12 and two pairs of arms 20 extending diagonally
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from opposed terminal ends of central trunk portion 12. Id. at Abstract,
6:35–38, 7:4–6. Central trunk portion 12 includes two screw holes 14 to
receive screws secured in bone underneath plate 10. Id. at 1:60–64,
6:38–40, 8:37–51. The area between screw holes 14 includes a decreased
width waist area “that will bend laterally (or ‘curve’) relative to the
longitudinal axis and which will bend longitudinally to form a curved area in
and out of the plane of” plate 10. Id. at 6:60–66.
The opposing pairs of arms 20 each include short arm 22 and long
arm 23. Id. at 7:4–13. The arms are configured so screws inserted into
respective screw holes 24 of the arms will not impinge on each other inside a
bone underneath plate 10. Id. at 1:53–56, 3:54–65, 7:62–8:2.
Plate 10 is “pre-contoured” into the shape shown in Figure 1. Id. at
3:21–24. The ’443 patent also discloses several other plates, having various
different pre-contoured shapes. Id. at Figs. 8–47, 5:38–6:31. The
’443 patent recognizes that the small bones in the human body have “a wide
variety in the[ir] exact shape and mass,” and indicates that the plates
disclosed in the ’443 patent are particularly useful for repair or
reconstruction of the clavicle. Id. at 1:20–22, 1:28–40, 2:4–7, 2:16–18.
“[W]hile the plates are pre-contoured, the plate[s] are designed to
facilitate three dimensional contouring . . . to accommodate individual
variation in bone shape” such as by “bend[ing] laterally, longitudinally, and
to wrap or spiral about the longitudinal axis or medial line.” Id. at 3:21–27;
see also id. at 1:40–42 (“[I]ndividual variations become more problematic
for orthopedic plates of stock design.”); id. at 6:62–7:3 & 8:3–8 (discussing
individual contouring of plate 10). Further, several differently pre-contoured
plates are “provided in a number of variations in a surgical tray,” which
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“allows the surgeon to select his plate during surgery after opening the
wound area and considering the plating needs.” Id. at 3:37–45. In this way,
the surgeon picks out a pre-contoured plate that most closely matches a need
for a particular patient, and the surgeon may then bend the chosen plate into
a different shape to provide an even more optimal match for the patient’s
need. This “reduc[es] the need for individualized contouring” by the
surgeon in the operating room. Id. at 5:9–10.
The principal disputes between the parties focus on claim limitations
requiring a pre-contoured plate to have a medial line describing an S-curve
in a lateral or longitudinal plane. The ’443 patent discloses that a “lateral
plate” for use on the clavicle may have “an S-curve of the medial line in the
direction of the width of the plate.” Id. at 5:5–16. Also according to the
’443 patent, Figures 42–47 illustrate plate 510 “for use on the lateral aspect
of the clavicle” and having “a shallow S shape along the medial line with the
more proximal of the two translation slots [516] marking the transition
between the lobes of the S.” Id. at 11:17–37, 6:23–31. Further, Figure 21 of
the ’443 patent depicts plate 310 exhibiting an S-curve medial line when
viewed from the side, although the ’443 patent does not use the terms
“S-curve” or “S-shape” in connection with plate 310. Id. at 10:18–20,
10:30–36; see also Pet. 15 (arguing Figures 21–23 “depict an orthopedic
plate with an S-curve”).
D. The ’443 Patent Claims at Issue During Trial
We instituted trial as to claims 1, 3–8, 15, 19, and 26 of the
’443 patent. Inst. Dec. 2, 31. Claim 1 illustratively recites:
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1. An orthopedic plate system comprising
at least one screw and
an orthopedic plate having an inferior side including an
inferior surface which is capable of facing a bone surface in
use,
the plate having a central trunk portion having at least a first
and a second screw hole and defining a longitudinal trunk
axis extending between a first end and a second end,
said plate including at the first end a pair of divergent arms
which extend so as to form a first arm and a second arm,
each arm including an arm screw hole which defines a
central screw hole axis and
wherein the plate has a medial line and is pre-contoured
such that the medial line describes an S-curve in a lateral
plane or in a longitudinal plane, and
the S-curve has an inflection point that is located between
the first and the second screw hole.
Ex. 1002, 11:43–56 (emphasis and line breaks added).
E. Tried Ground of Unpatentability
Petitioner challenges claims 1, 3–8, 15, 19, and 26 of the ’443 patent
solely under 35 U.S.C. § 103 as having been obvious over Kay1 and Heinl.2
See Pet. 22–23; Inst. Dec. 2, 6, 31.
F. Testimonial Evidence
The following table identifies the witnesses, their roles in this
proceeding, and the exhibits in which their testimony is presented:

1 Ex. 1006, U.S. Patent App. Pub. No. 2006/0173459 A1, pub. Aug. 3, 2006.
2 Ex. 1009, U.S. Patent No. 4,903,691, iss. Feb. 27, 1990.
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Witness Role Exhibits
Javier E.
Castañeda
Petitioner’s
engineering
expert3
Ex. 1001 (declaration of Mar. 28, 2019).
Ex. 2019 (transcript of deposition of
Dec. 5, 2019).
Steven K.
Neufeld,
M.D.
Patent Owner’s
medical expert4
Ex. 2017 (declaration of Dec. 21, 2019).
Ex. 1072 (transcript of deposition of
Mar. 10, 2020).
Timothy P.
Harrigan,
Sc.D.
Patent Owner’s
engineering
expert5
Ex. 2018 (declaration of Dec. 23, 2019).
Ex. 1066 (transcript of deposition of
Mar. 5, 2020).
III. PATENT OWNER’S MOTION TO EXCLUDE
Patent Owner has moved to exclude Petitioner’s Exhibits 1057–1060,
1070, 1073–1075, and 1081 from evidence, citing several reasons grounded
in the Federal Rules of Evidence. See Paper 37. We do not rely on any of
Exhibits 1057–1060, 1073–1075, and 1081 in this Decision, so we dismiss
the motion as moot in relation to those Exhibits.
We rely on Exhibit 1070 to support our determination of obviousness.
Patent Owner asserts Exhibit 1070 “purports to be an article on the Scapula
and Clavicle,” and “is irrelevant, unfairly prejudicial, misleading, . . . of no
probative value . . . , inadmissible because it contains hearsay,” and not
authenticated. Paper 37, 3 (citing Fed. R. Evid. 401, 402, 403, 801, 802,
and 901). The sole analysis offered in support of Patent Owner’s position is

3 See Ex. 1001 ¶¶ 1, 3, 8.
4 See Ex. 2017 ¶¶ 2, 6, 10, 12, 14, 16; Tr. 38:23–39:5.
5 See Ex. 2018 ¶¶ 2, 7, 11, 17; Tr. 38:23–39:5.
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that “Petitioner has failed to make any showing that [Ex. 1070 is] authentic,”
because “Petitioner offers no proof as to the authorship . . . or integrity of the
reproduction[].” Id. at 6.
Petitioner responds that Patent Owner has failed to meet its burden to
establish that Exhibit 1070 contains inadmissible hearsay, or is irrelevant.
Paper 38, 1–2, 3–4 (citing 37 C.F.R. §§ 42.20(c) & 42.64(c)). Petitioner also
asserts Exhibit 1070 is authentic. Id. at 4–6.
Patent Owner replies that Petitioner improperly “attempts to shift the
burden to Patent Owner to prove” Exhibit 1070 is “not authentic,” when the
Federal Rules of Evidence require “the proponent” of an item to “produce
evidence sufficient to support a finding that the item is what the proponent
claims it is.” Paper 39, 3 (quoting Fed. R. Evid. 901). Patent Owner
maintains Petitioner did not produce such evidence. Id. at 3–4.
Patent Owner’s relevancy, unfair prejudice, misleading, and hearsay
objections are unsupported by any analysis at all applying the law to the
substance of Exhibit 1070, so these objections are not persuasive.
We further conclude Exhibit 1070 is authentic under Rule 901 of the
Federal Rules of Evidence. The rule requires “evidence sufficient to support
a finding that [Exhibit 1070] is what [Petitioner] claims it is.” Fed. R.
Evid. 901(a). As Petitioner points out, this is a low bar, simply requiring a
rational basis for Petitioner’s claim. Paper 38, 4 (citing Caterpillar Inc. v.
Wirtgen Am., Inc., IPR2018-01091, Paper 49 at 72 (PTAB Nov. 27, 2019)
(further citations omitted)). An item may be authenticated by: “Distinctive
Characteristics and the Like. The appearance, contents, substance, internal
patterns, or other distinctive characteristics of the item, taken together with
all the circumstances.” Fed. R. Evid. 901(b)(4); see also id. Advisory
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Committee’s Notes (“Example (4). The characteristics of the offered item
itself, considered in the light of circumstances, afford authentication
techniques in great variety.”).
Here, Exhibits 1023 and 1070 combine to satisfy the authenticity
requirement as to Exhibit 1070. Exhibit 1023, which Petitioner submitted
with the Petition and to which Patent Owner has not objected, contains
excerpts from a textbook created to teach surgeons how to manage bone
fractures. See Ex. 1023, 1 (Cover Page and Title); id. at 2, 4–7 (identifying
various editors of and contributors to the textbook); id. at 8–10 (Foreword
and Introduction); id. at 11 (Acknowledgments); id. at 12–15 (Table of
Contents); id. at 16–42 (substantive excerpts). Exhibit 1023 further includes
a page containing standard types of information and disclaimers often seen
in published books. See id. at 3.
Petitioner submitted Exhibit 1070 with the Reply, claiming
Exhibit 1070 provides additional excerpts from the same textbook
previously excerpted in Exhibit 1023. See Pet. Reply 14–15, 17.
Petitioner’s claim is supported by the evidence. The Table of Contents in
Exhibit 1023 lists item “4.1” as an article entitled “Scapula and clavicle”
authored by “C.W. Geel” and beginning on page 255. Ex. 1023, 14. The
pages of Exhibit 1070 contain headings at the top of each page stating either
“4.1 Scapula and clavicle—C.W. Geel” and bearing page numbers closely
following page 255, or simply “4.1.” Ex. 1070. Further, the look and
overall presentation of content is the same in Exhibits 1023 and 1070. In
light of this combined evidence, and Patent Owner’s failure to identify any
evidence that might suggest Exhibit 1070 is anything other than the textbook
excerpt it appears to be, we conclude Exhibit 1070 is authentic.
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IV. ANALYSIS
A. Level of Ordinary Skill in the Art
Petitioner contends a person having ordinary skill in the art pertaining
to the ’443 patent “would have had 2–3 years of experience in the design of
orthopedic plates or 2–3 years of experience using orthopedic plates in
surgery.” Pet. 24; Ex. 1001 ¶¶ 28–29. Patent Owner “does not dispute
Petitioner’s definition of a person of ordinary skill in the art” in this
proceeding. PO Resp. 17. We determine the level of ordinary skill
proposed by Petitioner is consistent with the ’443 patent and the prior art of
record. We, therefore, adopt that level in this Decision. See Okajima v.
Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001); In re GPAC Inc.,
57 F.3d 1573, 1579–80 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91
(CCPA 1978).
B. Claim Construction
We interpret the claims of the ’443 patent “using the same claim
construction standard that would be used to construe the claim in a civil
action under 35 U.S.C. 282(b).” See Changes to the Claim Construction
Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial
and Appeal Board, 83 Fed. Reg. 51,340 (Oct. 11, 2018) (amending
37 C.F.R. § 42.100(b) effective November 13, 2018) (now codified at
37 C.F.R. § 42.100(b) (2019)). This “includ[es] construing the claim in
accordance with the ordinary and customary meaning of such claim as
understood by one of ordinary skill in the art and the prosecution history
pertaining to the patent.” Id.; see also Phillips v. AWH Corp., 415 F.3d 1303
(Fed. Cir. 2005) (en banc).
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In the District Court Litigation, the court held a Markman hearing on
April 26, 2019, and took the issues presented under advisement. See District
Court Litigation, Docket No. 149. The parties have not informed us of any
claim construction order in the District Court Litigation. See Tr. 4:22–6:2.
1. “the plate has a medial line and is pre-contoured such that the medial
line describes an S-curve in a lateral plane or in a longitudinal plane”
Independent claims 1 and 26 both recite “the plate has a medial line
and is pre-contoured such that the medial line describes an S-curve in a
lateral plane or in a longitudinal plane.” Ex. 1002, 11:52–54 (claim 1),
13:27–29 (claim 26). This proceeding implicates the meaning of several
aspects of this limitation; the parties agree as to some aspects, and disagree
as to other aspects.
First, the parties agree a “pre-contoured” plate refers to the plate as
made by a manufacturer and presented to a surgeon, prior to any
individualized contouring made by the surgeon bending or otherwise
modifying the plate for use within a particular patient. PO Resp. 11, 14–15,
25–30; Pet. Reply 13–15, 19–21; Tr. 35:3–17. We concur. See supra
Section II.C (discussing pertinent disclosures of ’443 patent).
Second, the parties agree the shape described by a plate’s medial line
in a lateral plane is determined from a top view of the plate, such as shown
in Figures 1, 8, 10, 13, 19, 25, 31, 35, 37, and 43 of the ’443 patent. See
Pet. 6 (citing Ex. 1001 ¶ 41); PO Resp. 1 n.1 (citing Ex. 2017 ¶ 32; Ex. 2018
¶ 31), 16. The parties also agree the shape described by a plate’s medial line
in a longitudinal plane is determined from a side view of the plate, such as
shown to varying extents in Figures 2, 9, 11, 15, 17, 21, 23, 27–29, 33, 39,
and 45 of the ’443 patent. See Pet. 6 (citing Ex. 1001 ¶ 41); PO Resp. 1 n.1
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(citing Ex. 2017 ¶ 32; Ex. 2018 ¶ 31), 16. We do not find any disclosure in
the ’443 patent that contradicts the parties’ mutual understanding, so we
apply this understanding here.
Third, Patent Owner emphasizes the claims require the medial line of
the plate, and not the plate itself, to be S-shaped. PO Resp. 18–20, 23–25.
According to Patent Owner, Petitioner and Mr. Castañeda both interpret the
claims incorrectly to require the plate itself to be S-shaped. Id. (citing
Ex. 2019, 25:2–25, 33:18–23; Ex. 1001 ¶¶ 41, 77, 114–116). Although the
Petition and Mr. Castañeda’s Declaration often refer loosely to “a plate with
an S-curve” or employ similar phrases, Petitioner does not dispute that the
claims require specifically that the plate’s medial line describes an S-curve.
See Pet. 2, 6–7, 13–15; Ex. 1001 ¶¶ 41, 77–79. Based on the plain claim
language, we agree.
Fourth, the parties disagree as to how the “medial line” of a plate is to
be determined. PO Resp. 20–25, 41–48; Pet. Reply 2, 5–10; Sur-reply
11–21. We do not resolve this dispute, because claim terms need to be
construed “only to the extent necessary to resolve the controversy.” Nidec
Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d 1013,
1017 (Fed. Cir. 2017) (per curiam) (quoting Vivid Techs., Inc. v. Am. Sci. &
Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). This dispute arises in
connection with whether the 2006 Application demonstrates possession of a
plate having a medial line describing an S-curve in the lateral plane. See PO
Resp. 20–25, 41–48; Pet. Reply 2, 5–10; Sur-reply 11–21. As discussed
below, we determine the 2006 Application does not demonstrate possession
of a plate having a medial line describing an S-curve in the longitudinal
plane, so we need not reach the lateral plane issue to resolve the parties’
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priority dispute. See infra Section IV.C. Also, as to obviousness, there is no
dispute that Heinl discloses a plate having a medial line describing an
S-curve in the lateral plane, regardless of which parties’ understanding of
how to determine the medial line is applied. See infra Section IV.D.4(c).
2. Other Claim Terms
No further explicit claim construction of any claim term is needed to
resolve the patentability issues presented in this proceeding. See Nidec,
868 F.3d at 1017.
C. Priority of Claims 1, 3–8, 15, 19, and 26 of the ’443 Patent
1. Legal Standards
Pursuant to 35 U.S.C. § 120, a patent application is entitled to assert
priority to the filing date of a prior application only for an invention
disclosed in the prior application in the manner provided by 35 U.S.C. § 112,
¶ 1.6 This requires that the prior application provides written description
support for the invention claimed by the later application. See Paice LLC v.
Ford Motor Co., 881 F.3d 894, 906 (Fed. Cir. 2018); PowerOasis, Inc. v.
T-Mobile USA, Inc., 522 F.3d 1299, 1306–11 (Fed. Cir. 2008); Augustine
Medical, Inc. v. Gaymar Indus., Inc., 181 F.3d 1291, 1302–03 (Fed. Cir.
1999). The test for sufficiency of a written description under 35 U.S.C.
§ 112, ¶ 1, is whether the prior application’s disclosure “reasonably conveys

6 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112–29,
amended 35 U.S.C. § 112 effective September 16, 2012. See AIA § 4,
125 Stat. 296–97. The application that issued as the ’443 patent was filed on
January 12, 2012, so we cite the pre-AIA version. See Ex. 1002, code (22).
However, we would reach the same conclusion as to written description
support in the 2006 Application regardless of which version applies.
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to those skilled in the art that the inventor had possession of the claimed
subject matter as of the filing date.” Ariad Pharms., Inc. v. Eli Lilly & Co.,
598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). The written description
“test requires an objective inquiry into the four corners of the specification
from the perspective of a person of ordinary skill in the art.” Id.
2. Parent Applications at Issue
The application that issued as the ’443 patent was filed as a division
of U.S. Patent Application No. 12/380,177 (filed February 24, 2009), which
was filed as a continuation-in-part of U.S. Patent Application
No. 11/340,028 (filed January 26, 2006). Ex. 1002, code (60), 1:5–12. The
parties refer to those two parent applications as the 2006 Application and the
2009 Application, reflecting their respective filing dates. See Pet. 2;
PO Resp. 30–31. For consistency in the record, we will do likewise.
We must decide whether the ’443 patent is entitled to priority to the
2006 Application, because this determines whether Kay is prior art to the
’443 patent. Kay (Ex. 1006) is the August 3, 2006, publication of the
2006 Application (Ex. 2001). Thus, the respective disclosures of Kay and
the 2006 Application “are substantively identical.” PO Resp. 35 n.6.
3. 2006 Application Disclosure
Petitioner contends the challenged ’443 patent claims lack written
description support in the 2006 Application, so the claims have a priority
date of no earlier than the filing date of the 2009 Application. Pet. 2–3,
11–17. According to Petitioner, the 2006 Application lacks written
description support for a plate having a medial line that “describes an
S-curve in a lateral plane or in a longitudinal plane,” as recited in
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independent claims 1 and 26. Id. at 13 (emphasis by Petitioner). Petitioner
challenges the priority of dependent claims 3–8, 15, and 19 on the same
basis. Id.
Petitioner asserts that, while the 2006 Application indicates a plate
may “bend laterally (or ‘curve’) relative to the longitudinal axis . . . to form
a curved area” and “bend longitudinally to form a curved area,” there is no
disclosure that such bending may result in an S-curve medial line. Id.
(quoting Ex. 2001 ¶ 46, also citing id. ¶ 6).7 Petitioner argues the Figures of
the 2006 Application do not illustrate a plate having an S-curve medial line,
in either the lateral plane or the longitudinal plane. Id. at 13, 15, 16;
Ex. 1001 ¶¶ 77–78. Petitioner contends the ’443 patent’s explicit disclosure
concerning S-curves (Ex. 1002, 5:5–16) and figures depicting a plate with an
S-curve medial line (id. at Figs. 21–23) are not in the 2006 Application.
Pet. 14–15; Ex. 1001 ¶¶ 77–78.
Patent Owner responds that the challenged ’443 patent claims have
written description support in the 2006 Application, so the claims have a
priority date of no later than the filing date of the 2006 Application.
PO Resp. 3, 30–51. Patent Owner states the 2006 Application provides
written description support for a plate having an S-curve medial line “in
either the lateral plane or the longitudinal plane.” Id. at 36. However, the
arguments presented in support of this contention in the Patent Owner
Response discuss only the lateral plane; they do not address the longitudinal

7 Petitioner cites to the disclosure of Kay (Ex. 1006) rather than the
2006 Application (Ex. 2001). We have re-cast Petitioner’s citations to refer
to corresponding disclosures in the 2006 Application, which “are
substantively identical” to Kay. PO Resp. 35 n.6.
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plane. Id. at 3 (stating Patent Owner “contends that the X-shaped plates
illustrated in [the 2006 Application] each possess a medial line describing an
S-curve in the lateral plane”), 35–51. In particular, Patent Owner cites
Figures 1, 9, 10, 12, 14, 16, 18, 20, 22, 24, and 26 of the 2006 Application,
which are all top views of various plates, as demonstrating possession of “an
X-shape in the lateral plane . . . such that each plate possesses a medial line
describing an S-curve in the lateral plane.” Id. at 36. Patent Owner’s
analysis then focuses on Figure 1 as representative of the contention that the
2006 Application discloses an S-curve medial line in the lateral plane. Id. at
36–48.
Petitioner’s Reply correctly points out that the Patent Owner
Response does not cite any evidence that might indicate the 2006
Application demonstrates possession of an S-curve medial line in the
longitudinal plane. Pet. Reply 1, 2, 3–5. Petitioner asserts that, for priority
to be found, the 2006 Application must demonstrate possession of both
alternatives recited in claims 1 and 26: an S-curve medial line in the lateral
plane, and an S-curve medial line in the longitudinal plane. Id. at 3–4 (citing
D Three Enterprises, LLC v. SunModo Corp., 890 F.3d 1042, 1051–52
(Fed. Cir. 2018); Tronzo v. Biomet, Inc., 156 F.3d 1154, 1158–60 (Fed. Cir.
1998)).
Patent Owner replies that its Response properly addresses only the
lateral plane because “Petitioner’s challenge to priority . . . focuse[s]
substantively on the alleged lack of support for the ‘S-curve’ limitation in
the lateral plane,” and Petitioner’s obviousness challenge similarly focuses
on the lateral plane. Sur-reply 3–4; id. at 1, 9–10. Patent Owner further
asserts the 2006 Application “provides sufficient support for the ‘S-curve’
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limitation in either the lateral plane or the longitudinal plane,” if we construe
the “pre-contoured” claim term broadly to allow for the S-curve medial line
to be formed by an individualized contouring achieved by a surgeon bending
the plate for use with a particular patient. Id. at 2–4, 5–9.
Upon review of the foregoing, we first note it is undisputed that the
2006 Application must demonstrate possession of both claimed S-curve
medial line alternatives (lateral and longitudinal planes) for priority to be
found. See Pet. Reply 1, 2, 3–5; Tr. 44:22–45:6 (Patent Owner’s counsel
agrees); see also D Three, 890 F.3d at 1051–52 (where earlier application
disclosed only a washer above the flashing, it did not provide written
description support for later-filed application claiming washers that could be
either above or below the flashing); Tronzo, 156 F.3d at 1158–60
(application disclosing only conical cup did not provide written description
support for later-filed claims, which were generic as to cup shape).
Next, we find the 2006 Application fails to demonstrate possession of
a plate having an S-curve medial line in a longitudinal plane—that is, in a
side view of the plate. Figures 2, 11, 17, 19, 21, 23, 25, 27, 29, and 31 of the
2006 Application show cross-sectional side views of various plates.
Ex. 2001 ¶¶ 14–15, 23–24, 29–44. Patent Owner does not cite any of those
Figures as demonstrating possession of the claimed invention (see Tr. 43:6–
16), and to our eye, none of them illustrates an S-curve medial line in the
longitudinal plane. The top views provided by Figures 1, 9, 10, 12, 14, 16,
18, 20, 22, 24, 26, 28, and 30, illustrating the plates in the lateral plane, do
not help elucidate the shape of the medial line curve in the longitudinal
plane. Further, Patent Owner does not cite, and we do not find, any
disclosure in the written description of the 2006 Application that would
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demonstrate possession of a plate having an S-curve medial line in a
longitudinal plane.
Patent Owner has misconstrued Petitioner’s claim construction
position to be that a “pre-contoured” plate broadly allows for the S-curve
medial line to be formed by individualized contouring of a plate by a
surgeon bending the plate for use with a particular patient. See supra
Section IV.B.1. As neither party advocates for such a claim construction,
we do not apply it here. See id. Therefore, we need not consider Patent
Owner’s argument that the 2006 Application demonstrates possession of an
S-curve medial line in the longitudinal plane applying that construction.
Patent Owner presents additional arguments in the Sur-reply. See
Sur-reply 2–4, 5–9. Here, Patent Owner asserts “Petitioner agrees that [the
2006 Application’s] pre-contoured plates would embody the S-curve.” Id. at
2 (emphasis added). This argument relies on statements in the Petition and
the Reply made in support of the asserted obviousness of modifying plate 10
in Figure 1 of Kay (which is the same as Figure 1 of the 2006 Application)
to have an S-curve medial line. Id. at 2–4, 5–9 (citing Pet. Reply 20;
Pet. 31–32; Ex. 1001 ¶¶ 41, 121–122; Ex. 2001 ¶ 6; Ex. 1086, Fig. 18);
Tr. 40:14–41:5, 43:18–44:21, 54:16–55:19. Specifically, in that context,
Petitioner states a person of ordinary skill in the art “would have known that
some small bones would require an S-shape plate in order for the plate to be
molded to the optimal shape for those bones,” and “for some bones, the

8 There is no Exhibit 1086 in this proceeding. We believe Patent Owner
meant to cite Exhibit 1086 from a related proceeding, IPR2019-00895,
challenging a continuation of the ’443 patent.
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pre-contoured plate would require an S-shape.” Pet. Reply 20 (emphases
modified in part) (citing Pet. 39–40).
Patent Owner’s Sur-reply is not persuasive. As Petitioner points out
(Pet. 15–16): “Entitlement to a filing date does not extend to subject matter
which is not disclosed, but would be obvious over what is expressly
disclosed,” such that “[i]t extends only to that which is disclosed.”
Lockwood v. American Airlines, Inc., 107 F.3d 1565, 1571–72 (Fed. Cir.
1997); see also PowerOasis, 522 F.3d at 1306–07 (same). “While the
meaning of terms, phrases, or diagrams in a disclosure is to be explained or
interpreted from the vantage point of one skilled in the art, all the limitations
must appear in the specification,” and “a prior application itself must
describe an invention, and do so in sufficient detail that one skilled in the art
can clearly conclude that the inventor invented the claimed invention as of
the filing date sought.” Lockwood, 107 F.3d at 1572 (citations omitted).
Here, the 2006 Application pertinently demonstrates possession of
designing plates “specifically for the small bone market, i.e. for use in bones
distil to the elbow and knee, including, for example, the ulna, radius, tibia,
fibula, as well as the metacarpals, carpals, metatarsals, tarsals, and
phalanges.” Ex. 2001 ¶ 6. This disclosure is much too general, and the list
of particular bones much too varied in structure, to demonstrate possession
of a plate having an S-curve medial line in the longitudinal plane. The
2006 Application does not, itself, suggest that either small bones in general,
or any of the specifically identified small bones, might beneficially be
repaired with a plate having an S-curve medial line. Id.
Patent Owner cites Exhibit 1086 from IPR2019-00895 as establishing
such bones might benefit from being repaired with a plate having an S-curve
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medial line. See Sur-reply 8 (citing Exhibit 1086, Fig. 1). Even overlooking
the fact that this Exhibit has not been introduced as evidence in this
proceeding, we conclude this Exhibit establishes, at best, the obviousness of
using a plate having an S-curve medial line in the longitudinal plane to heal
some fractures that might occur in the radius bone. See id. It does not
reflect that the inventors of the 2006 Application had possession of using
such a plate in such a manner. See id.
Patent Owner also cites the testimony of Dr. Neufeld and
Mr. Harrigan that “[a] POSA understood that a plate that was customized by
bending longitudinally to form a curved area in and out of the plane of the
plate,” as described in the ’443 patent, “would have a medial line that
described an S-curve in the longitudinal plane.” Id. at 8; Ex. 2017 ¶ 46
(emphasis added) (citing Ex. 1002, 4:40–41, 5:5–10, 6:63–66); Ex. 2018
¶ 45 (same). While this testimony relates to disclosures in the challenged
’443 patent, there are somewhat overlapping disclosures in the
2006 Application. See Ex. 2001 ¶¶ 10, 13, 46. Importantly, however, the
overlap does not include the ’443 patent’s disclosure at column 5,
lines 5–16, directed to how a clavicle might benefit from applying “a lateral
plate [having] an S-curve of the medial line . . . .” Compare Ex. 1002, 5:1–
16, with Ex. 2001 ¶¶ 12–13. As we concluded in the Institution Decision,
and which has not been materially disputed by Patent Owner during trial, the
2006 Application does not demonstrate possession of using its plates on the
clavicle. See Inst. Dec. 14–15 & n.8; Ex. 2001 ¶ 6.
Patent Owner made one more argument during the hearing. See
Tr. 37:18–40:13, 41:5–8. Patent Owner’s counsel provided the following
picture as a demonstrative exhibit:
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Patent Owner’s Demonstrative Exhibit (Slide 2).
According to counsel, the picture above shows the size of one plate
embodying the claimed invention in relation to a penny, to illustrate how
small the plates can be. Id. at 37:18–38:2. Counsel argued, “Petitioner fails
to appreciate the relative dimensions of the bone plate in the longitudinal
direction.” Id. at 39:13–17. In counsel’s view, “[b]ecause the plate is so
thin in relation to the lateral direction, the medial line takes the same shape
as the plate in the longitudinal direction,” so “[i]t’s clear that [the
2006 Application] discloses an S-shaped medial line in a longitudinal
direction.” Id. at 39:17–40:13 (citing PO Resp. 36–37; Ex. 2001 ¶¶ 1, 6);
Ex. 2017 ¶¶ 61–62; Ex. 2018 ¶¶ 60–61.
We reject this argument for two reasons. First, it was presented
untimely. The Petition satisfied Petitioner’s burden of production,
sufficiently raising the issue of whether the 2006 Application demonstrates
possession of an S-curve medial line in either the lateral plane or the
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longitudinal plane. See Pet. 13 (challenging whether the 2006 Application
discloses plates having a medial line that “describes an S-curve in a lateral
plane or in a longitudinal plane” (emphasis by Petitioner)); Dynamic
Drinkware, 800 F.3d at 1378–81 (discussing burdens of production and
persuasion in the context of determining the effective date of a prior art
patent that asserts priority to a provisional application).
We disagree with Patent Owner’s assertion that the Petition was
limited to challenging whether the 2006 Application demonstrates
possession of an S-curve medial line in the lateral plane. It is true that the
Petition’s obviousness challenge largely focuses on modifying Kay’s
plate 10 to have an S-curve medial line in the lateral plane, in light of Heinl.
See Sur-reply 10 (citing Ex. 2019, 30:18–32:6); Pet. 39 (relying on Heinl’s
Figure 3, which is a top view of a plate in the lateral plane, as disclosing the
S-curve medial line limitation). However, priority and obviousness are
different issues, and the Petition discusses both the lateral plane and the
longitudinal plane in connection with the priority issue. See Pet. 2–3, 12–17.
Thus, we conclude the Petition shifted the burden of production to
Patent Owner, to present argument and evidence that the 2006 Application
demonstrates possession of an S-curve medial line in both the lateral plane
and the longitudinal plane. See Dynamic Drinkware, 800 F.3d at 1379
(discussing shifting burdens of production). The Patent Owner Response
analyzes an S-curve medial line only in the lateral plane. See PO Resp. 3,
30–51. The argument presented for the first time at the hearing addressing
an S-curve medial line in the longitudinal plane was untimely presented,
thereby impairing Petitioner’s ability to respond given the expeditious nature
of IPR proceedings.
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Second, the argument presented for the first time at the hearing—that
the thinness of a plate in its lateral direction means the medial line will take
the same shape in the lateral and longitudinal planes—is not persuasive. The
’443 patent figures demonstrate that the shape of a plate’s medial line in the
lateral plane (shown in a top view) provides very little information as to the
shape of the medial line in the longitudinal plane (shown in a side view).
For example, the top view of Figure 1 does not convey the curvature of
plate 10 as seen in the lateral side view of Figure 2 and the end side views of
Figures 3–5. See Ex. 1002, 5:24–33, 7:47–55. Also, the top view of
Figure 13 does not convey “the slight longitudinal curve” of plate 210 seen
in the lateral side view of Figure 15, reflecting the medial line of plate 210 in
the longitudinal plane. See id. at 5:45–50, 8:60–9:4. And the top view of
Figure 19 does not convey the curvature of plate 310 seen in the lateral side
views of Figures 21 and 22, reflecting the medial line of plate 310 in the
longitudinal plane. See id. at 5:54–61, 9:62–65, 10:17–25. The same is true
in the other evidence of record. See, e.g., Ex. 1070, 4 (Figure 4.1-7(a),
illustrating a top view and a side view of a 9-hole reconstruction plate used
to fix a midshaft fracture of the clavicle).
In conclusion, we find the 2006 Application fails to demonstrate
possession of a plate having an S-curve medial line in a longitudinal plane.
4. Prosecution History of the ’443 Patent
Petitioner asserts the Examiner of the ’443 patent affirmatively
decided that the 2006 Application lacks written description support for a
plate’s medial line describing an S-curve in a lateral plane or in a
longitudinal plane, which was not contested by the applicant at the time.
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Pet. 16–17 (citing Ex. 1030, 4; Ex. 1031, 8–10; Ex. 1032, 3–4; Ex. 1033,
9–10; Ex. 1053, 2);9 Pet. Reply 10–12. Further according to Petitioner, the
applicant admitted during prosecution that Figure 1 of the 2006 Application
does not have the claimed S-curve medial line. Pet. Reply 11–12 (citing
Ex. 1031, 9; Ex. 1002, Figs. 30–47, 5:21–6:31, 11:17–37).
Patent Owner asserts in opposition that “the priority of the claims was
not an issue that required resolution in any rejection raised by the examiner,”
and “the examiner did not consider that plates having a modified X-shape
(for example the plate of Figure 1 [of the 2006 Application]) possessed a
medial line describing an S-curve.” PO Resp. 48–50. Patent Owner
acknowledges the Examiner’s statement that the 2006 Application “lacks
any reference to an S-curve” (Ex. 1030, 4 (emphasis added)), but contends it
is not determinative because written description does not require in haec
verba support. PO Resp. 49. Patent Owner argues the Examiner’s rejection
of two claims for double patenting over U.S. Patent No. 7,771,457 B2
(“the ’457 patent”), which is the patent that issued from the
2006 Application, “did not rely on Kay as prior art” and therefore “implicitly
accepted that Kay was not prior art.” Id.; see Ex. 1030, 8–9 (double
patenting rejections citing the ’457 patent). Patent Owner also accuses
Petitioner of mischaracterizing the prosecution history in relation to alleged
admissions by the applicant. Sur-reply 21.
We determine the prosecution history of the ’443 patent is consistent
with our finding that the 2006 Application fails to demonstrate possession of

9 Our page citations to prosecution history documents in the record refer to
the page numbering added to the bottom of each page by Petitioner when
preparing the Exhibit.
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a plate having an S-curve medial line in a longitudinal plane. The Examiner
expressly found the 2006 Application failed to demonstrate possession of a
claim limitation reciting “an S-curve in a lateral plane or in a longitudinal
plane.” Ex. 1030, 3–4. On that basis, the Examiner determined “the
effective filing date for the claimed subject matter” was the February 24,
2009, filing date of the 2009 Application. Id. (emphasis omitted). We
concluded in the Institution Decision that “[t]he Examiner’s priority
determination was necessary to the Examiner’s reliance on Austin (filed in
February 2008), Sixto (filed in October 2008), and Chreene (filed in
November 2007), as prima facie prior art references to support obviousness
rejections entered by the Examiner.” Inst. Dec. 16–17 (footnote omitted)
(citing Ex. 1030, 10, 13). Patent Owner’s conclusory statement that priority
was not an issue that required resolution in any rejection raised by the
Examiner does not address that conclusion (PO Resp. 49), and is not
persuasive. Further, there is no suggestion that the applicant contested the
Examiner’s priority determination. See Exs. 1031 & 1033.
The fact that the Examiner did not cite Kay as prior art does not mean,
as Patent Owner would have it, that the Examiner implicitly accepted Kay
was not prior art. The Examiner found Austin, Sixto, and Chreene all
qualified as prior art based on the determined February 24, 2009 priority
date, so the same is necessarily true for Kay, which was published on
August 3, 2006.
We do not agree with Petitioner’s argument that the applicant
admitted during prosecution that Figure 1 of the 2006 Application does not
have the claimed S-curve medial line. Petitioner here relies on the
applicant’s statement that: “The s-shaped plate of the present invention is
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meant for use on the superior aspect of a clavicle,” and “[t]he other plates in
the application are also meant for use on a clavicle, but do not include the
s-shaped medial line.” Ex. 1031, 9 (emphases added). However, Petitioner
does not cite, and we cannot find, any disclosure in the ’443 patent
indicating that plate 10 shown in Figure 1 is, or is not, meant for use on any
particular aspect of the clavicle, such as the superior aspect. See, e.g.,
Ex. 1002, 3:47–53, 5:5–16, 5:24–37. Therefore, it is not clear whether
plate 10 falls inside or outside the claimed invention, based on the
applicant’s statement during prosecution.
In summary, based on the Examiner’s explicit determination of the
proper priority afforded the ’443 patent claims, we conclude the prosecution
history of the ’443 patent is consistent with our finding that the
2006 Application fails to demonstrate possession of a plate having an
S-curve medial line in the longitudinal plane.
5. Conclusion Regarding Priority of Claims 1, 3–8, 15, 19, and 26
of the ’443 Patent
For the foregoing reasons, we find a preponderance of the evidence
establishes that the 2006 Application fails to demonstrate possession of a
plate having an S-curve medial line in the longitudinal plane. Thus, we
conclude claims 1, 3–8, 15, 19, and 26 of the ’443 patent do not have
priority to the filing date of the 2006 Application. Those claims instead
have a priority date of no earlier than the filing date of the 2009 Application,
which is February 24, 2009.
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D. Obviousness over Kay and Heinl
Petitioner asserts claims 1, 3–8, 15, 19, and 26 of the ’443 patent are
unpatentable under 35 U.S.C. § 103 as having been obvious over Kay and
Heinl. Pet. 22–23, 31–54. Patent Owner opposes. PO Resp. 51–65.
We determine Petitioner has demonstrated, by a preponderance of the
evidence, that each of these claims would have been obvious over Kay and
Heinl. We begin our analysis with a brief summary of the law of
obviousness, next we summarize pertinent disclosures of Kay and Heinl, and
then we address Petitioner’s and Patent Owner’s contentions as to
obviousness.
1. Law of Obviousness
A patent claim is unpatentable under 35 U.S.C. § 103 if the
differences between the claimed subject matter and the prior art are such that
the subject matter, as a whole, would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The question of obviousness is resolved on the basis of underlying
factual determinations including: (1) the scope and content of the prior art;
(2) any differences between the claimed subject matter and the prior art;
(3) the level of ordinary skill in the art; and (4) objective evidence of
nonobviousness, if made available in the record.10 See Graham v. John
Deere Co., 383 U.S. 1, 17–18 (1966).

10 The Patent Owner Response discusses the needs met by the ’443 patent,
and the “great commercial success” of products embodying the ’443 patent
claims. PO Resp. 4–7. However, during the hearing, Patent Owner’s
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2. Kay Disclosure
Kay is the USPTO publication of the 2006 Application. See Ex. 1006;
Ex. 2001. The summary of the ’443 patent provided above in Section II.C
applies equally as well to Kay, except that the ’443 patent’s disclosures of an
S-curve medial line in the lateral or longitudinal plane are not found in Kay.
3. Heinl Disclosure
Heinl discloses plates for joining bone fragments by screw fastening,
“especially in the case of cranial, facial, vertebral or hand fractures.”
Ex. 1009, Abstract, 1:5–9. Several plates are presented to the surgeon as “an
assortment of differently shaped and curved plates,” with each plate being
suitable for use in particular anatomical conditions, to permit a faster
surgical operation. Id. at 1:62–2:17. Figure 3 of Heinl is reproduced here:

Heinl Figure 3 (Ex. 1009).
Figure 3 illustrates bone plate 5 having an S-shape, with screw holes 2
within screw rings 3. Id. at 2:18–22, 8:41–58.

counsel confirmed Patent Owner is not relying on objective indicia of
nonobviousness. Tr. 56:12–20.
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4. Claim 1
Petitioner provides arguments and evidence, including testimony from
Mr. Castañeda, in support of contending claim 1 is unpatentable as having
been obvious over Kay and Heinl. Pet. 31–42; Pet. Reply 13–23; Ex. 1001
¶¶ 84–89, 95–97, 111–126. Patent Owner provides arguments and evidence
in opposition, including testimony from Dr. Neufeld and Mr. Harrigan. PO
Resp. 51–62; Sur-reply 1–5, 22–26; Ex. 2017 ¶¶ 80–97; Ex. 2018 ¶¶ 79–96.
a) Whether Kay is Prior Art to the ’443 Patent
Patent Owner argues Kay is not prior art, because the ’443 patent is
entitled to priority to the filing date of the 2006 Application, which
published as Kay. PO Resp. 51–52. For reasons provided above in
Section IV.C, we disagree. Kay was published on August 3, 2006, before
the ’443 patent’s priority filing date of February 24, 2009. Ex. 1006,
code (43); supra Section IV.C. Therefore, we determine Kay is prior art to
the ’443 patent.
b) Whether Kay Discloses Claimed Subject Matter
Petitioner contends Kay discloses an orthopedic plate system
embodying each and every limitation of claim 1, except Kay’s plate does not
have an S-curve medial line in a lateral plane or a longitudinal plane, with
the S-curve having an inflection point located between two screws holes of
the central trunk portion. Pet. 33–42; Ex. 1001 ¶¶ 111–126.
Patent Owner does not dispute Petitioner’s foregoing contentions. PO
Resp. 34–35 & n.6, 52–62. “The Board is ‘not required to address
undisputed matters’ or arguments about limitations with which it was never
presented.” LG Elecs., Inc. v. Conversant Wireless Licensing S.A.R.L.,
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759 F. App’x 917, 925 (Fed. Cir. 2019) (quoting In re NuVasive, Inc.,
841 F.3d 966, 974 (Fed. Cir. 2016)).11 Nonetheless, to provide a complete
record, we summarize our findings comparing Kay with the subject matter
of claim 1.
Figure 1 of Kay is reproduced here:

Kay Figure 1 (Ex. 1006).
Figure 1 of Kay is a top view of plate 10, “having a bilaterally asymmetric
shape which can be thought of as being similar to the Greek letter [χ],”
comprising central trunk portion 12 and four arms 20. Ex. 1006 ¶¶ 46, 48.
We find Kay discloses an orthopedic plate system including plate 10
and at least one screw. See id. at Abstract (“[t]he present invention relates to
an orthopedic plate and screw system”); id. ¶ 46 (“[t]he plate 10 of the
present invention”); Pet. 33; Ex. 1001 ¶¶ 111–112. In particular, plate 10

11 See also Papst Licensing GmbH & Co. v. Samsung Elecs. Am., 924 F.3d
1243, 1250 (Fed. Cir. 2019) (holding that patentee forfeited argument for
patentability because it did not present it to the Board); Bradium Techs. LLC
v. Iancu, 923 F.3d 1032, 1048 (Fed. Cir. 2019) (explaining that arguments
not presented to the Board are waived).
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includes six screw holes 14 or 24, each of which receives a screw secured in
bone underneath plate 10. See Ex. 1006, Abstract, ¶¶ 4, 9, 46, 48; Pet. 33;
Ex. 1001 ¶¶ 111–112.
We find Kay’s plate 10 has an inferior surface that faces a bone
surface in use. Kay’s Figures 3–5 illustrate the concave curvature of
plate 10 where it faces bone. See Ex. 1006 ¶¶ 9, 50; Pet. 34; Ex. 1001 ¶ 113.
We find Kay’s plate 10 includes central trunk portion 12 having two
screw holes 14 and defining a longitudinal trunk axis extending between a
first end (at the left in Figure 1) and a second end (at the right in Figure 1).
See Ex. 1006 ¶¶ 9, 46; Pet. 35–36; Ex. 1001 ¶¶ 114–115. We find Kay’s
plate 10 has, at both ends, a pair of divergent arms 20, each including a
screw hole 24 defining a central screw hole axis. See Ex. 1006 ¶ 48;
Pet. 36–38; Ex. 1001 ¶¶ 116–118.
We find Figure 1 of Kay illustrates plate 10 in a pre-contoured shape,
prior to any individualized contouring achieved by a surgeon bending
plate 10 for use with a particular patient. See Ex. 1006 ¶¶ 7, 51; Pet. 38;
Ex. 1001 ¶ 119.
c) Whether Heinl Discloses Claimed Subject Matter
In the Petition, Petitioner contends Heinl’s plate 5 is pre-contoured to
have an S-curve medial line in a lateral plane, with the S-curve having an
inflection point located between two screws holes of the central trunk
portion. Pet. 39–42; Ex. 1001 ¶¶ 119–120, 123–124. In opposition, Patent
Owner disputes only whether Heinl’s plate 5 has the recited inflection point.
See PO Resp. 61–62.
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We find Figure 3 of Heinl illustrates a pre-contoured, S-shaped bone
plate 5. Ex. 1009, 1:62–2:3, 2:18–22, 8:41–58. We also find Figure 3
demonstrates that the medial line of plate 5 describes an S-curve in the
lateral plane, regardless of whether the medial line is determined by
applying Patent Owner’s or Petitioner’s understanding. See, e.g.,
PO Resp. 41–48 (discussing Patent Owner’s view of how to determine a
plate’s medial line); Pet. 38–40 (discussing Heinl’s S-shaped plate); Pet.
Reply 13–14 (discussing how Heinl’s S-shaped plate has an S-curve in a
lateral plane). Figure 3 of Heinl is reproduced here, with our annotation to
identify the S-curve medial line in the lateral plane:

Heinl Figure 3 (Ex. 1009)
(Annotated to Identify Medial Line in Lateral Plane).
Figure 3 of Heinl above illustrates “a plate [5] of approximately S-form.”
Ex. 1009, 8:53. Indeed, Patent Owner does not dispute that plate 5 has an
S-curve medial line in the lateral plane.
Patent Owner argues Petitioner errs in relying on Heinl’s plate 5 as
having an S-curve medial line “inflection point that is located between” two
screw holes of a central trunk portion, as recited in claim 1. PO Resp. 61–62
(citing Pet. 40–41). Patent Owner contends Petitioner’s position is belied by
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Mr. Castañeda’s deposition testimony “that the medial line of Heinl would
be a straight line through the segment between the third and fourth holes.”
Id. (citing Ex. 2019, 38:23 & Ex. 212); Ex. 2019, 38:23 (“I intend to draw it
relatively straight.”). Patent Owner asserts “Petitioner provides no
explanation or basis for its contention that a straight line can have an
inflection point.” PO Resp. 62.
Petitioner replies: “In fashioning an argument based on where the
inflection point of the S-curve in Figure 3 of Heinl would be, [Patent
Owner] ignores Petitioner’s actual argument and evidence.” Pet. Reply 21
(emphasis by Petitioner). Petitioner asserts “Petitioner did not rely on the
inflection point of Heinl, but rather” relied on Kay’s disclosure to establish
the obviousness of locating an S-curve medial line inflection point in the
waist section of Kay’s central trunk 12 between screw holes 14. Id. (quoting
Pet. 41–42, and citing Ex. 1001 ¶¶ 123–126 and Ex. 1006 ¶ 47).
We determine Petitioner’s Reply overlooks the assertion in the
Petition that, in Heinl’s Figure 3, “the inflection point where the direction of
the curve changes is located at the mid-point of the orthopedic plate,
between the screw holes, at approximately the location to which the arrow
from element 5 is pointing.” Pet. 40–41; Ex. 1001 ¶ 124. Patent Owner
challenged this assertion in the Preliminary Response, but we determined the
assertion was sufficiently supported to justify institution of trial. Inst.
Dec. 24–25. Based on Petitioner’s Reply, we understand Petitioner now to
have withdrawn any reliance on Heinl as disclosing an S-curve medial line
having an inflection point located between two screws holes of a central

12 We have been unable to locate Exhibit 2 from Mr. Castañeda’s deposition
in the record of this proceeding.
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trunk portion. We consider Petitioner’s contentions as to obviousness in this
regard below in Section IV.D.4(e).
d) Whether It Would Have Been Obvious to Modify Kay’s Plate
to Have an S-Curve Medial Line, in light of Heinl
The Petition contends, as to the obviousness of modifying Kay in light
of Heinl, that Kay discloses several plates having various pre-contoured
shapes, each of which can be bent or molded into a more optimal shape for a
particular small bone procedure. Pet. 31, 38 (citing Ex. 1006, Abstract,
Figs. 1–5 & 9–31, ¶¶ 7, 47); Ex. 1001 ¶¶ 86, 119, 121. The Petition asserts
this disclosure would have motivated a person of ordinary skill in the art to
look for other examples of pre-contoured plate shapes that are appropriate
for use in small bone procedures. Pet. 31–32, 39; Ex. 1001 ¶¶ 121–122.
The Petition then points to Heinl’s Figure 3 as demonstrating an S-shape is
an appropriate pre-contoured plate shape for use with some small bones, so a
person of ordinary skill in the art “would have been motivated to apply the
S-shape of Heinl to the bone plate of Kay.” Pet. 32, 39–40 (citing Ex. 1009,
1:62–2:3); Ex. 1001 ¶¶ 120–122. The Petition concludes this could be
accomplished by bending plate 10 at its central waist area, either laterally, or
longitudinally in and out of the plane of the plane of plate 10. Pet. 32, 41–42
(citing Ex. 1006 ¶ 47); Ex. 1001 ¶¶ 122, 125–126.
Patent Owner responds, in part, that the foregoing contentions of
obviousness overlook that claim 1 specifies the plate must be
“pre-contoured” to have an S-curve medial line. PO Resp. 60–61;
Sur-reply 2–3, 5. According to Patent Owner, the Petition is limited to
asserting the obviousness of reaching the claimed invention by the
individualized contouring achieved by a surgeon bending a pre-contoured
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plate, in which case, the plate is not pre-contoured to have an S-curve medial
line. PO Resp. 60–61 (citing Pet. 38, 40); see also id. at 52–54 (same, citing
Pet. 31–32); Sur-reply 2–3, 5.
Petitioner replies that Patent Owner “ignores or selectively excerpts
the Petition,” thereby mischaracterizing the Petition’s contentions. Pet.
Reply 1, 13–15, 19–21. Petitioner cites the Petition’s contention that “it
would have been obvious to POSITAs to pre-contour Kay’s orthopedic
plate such that the medial line describes an S-curve in a lateral or
longitudinal plane.” Id. at 15, 19 (quoting Pet. 32) (emphasis added in
Reply). Petitioner acknowledges that the Petition cites disclosures of Kay
pertaining to a surgeon’s bending of a pre-contoured plate in relation to
obviousness, but asserts this merely establishes that Kay recognizes the need
to provide a plate having an optimal shape that matches the bone to be
repaired, regardless of whether the shape is provided in a pre-contoured
plate or the subsequent individualized contouring of a pre-contoured plate.
Id. at 19–21 (stating “the same features that would make a plate suitable for
individual contouring would be of assistance when pre-contouring the
plate”).
Upon review of the foregoing, we conclude that while the Petition
could have more clearly articulated Petitioner’s position on obviousness, the
clarifications provided in the Reply properly respond to objections raised in
the Patent Owner Response without improperly exceeding the scope of the
Petition. Reading the Petition and the Reply together, Petitioner’s position
is that it would have been obvious, in light of the combined disclosures of
Kay and Heinl, to provide a pre-contoured plate having the shape of plate 10
with the addition of an S-curve medial line in the lateral plane, prior to any
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individualized contouring achieved by a surgeon bending plate 10 for use
with a particular patient. See Pet. 31–32, 38–40; Pet. Reply 13–17, 19–21;
Tr. 35:17–36:12. For the following reasons, we determine this contention is
supported by a preponderance of the evidence.
We find Kay discloses plate 10 is pre-contoured into the shape shown
in Kay’s Figure 1. Ex. 1006 ¶¶ 7–8, 46, 51; see Pet. 31–32, 38; Pet.
Reply 14–15. Kay also discloses several other plates, having various
different pre-contoured shapes. Ex. 1006, Figs. 9–31, ¶¶ 23–45; see Pet. 38;
Ex. 1001 ¶ 119. These various shapes accommodate a wide variety in the
exact shape and mass of various small bones. Ex. 1006 ¶¶ 5, 7–8.
Thus, according to Kay, several differently pre-contoured plates are
“presented for example in a surgical tray as a system of plates,” which
“allows the surgeon to select his plate during surgery after opening the
wound area and considering the plating needs.” Id. ¶ 8. In this way, the
surgeon picks out a pre-contoured plate that most closely matches a need
within a particular patient, and the surgeon may bend the chosen plate into a
different shape to provide an even more optimal match for the patient’s
need. Id. at Abstract (“The plate facilitates three dimensional contouring to
provide for a variety of applications and to accommodate individual
variation in bone shape.”); id. ¶ 7 (“The plate is configured to bend laterally,
longitudinally, and to wrap or spiral about its longitudinal axis so that it can
be molded to an optimal shape for small bone procedures.”); id. ¶ 11 (“The
radiiused [sic., radiused] configuration of the plate is designed to increase
operating room efficiency by facilitating commonly desirable shapes while
maintaining the required strength and by permitting bending without
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deforming the screw holes,” which “results in making customization in
anticipation or during surgery easier.”); id. ¶¶ 14, 47, 51.
Heinl, meanwhile, discusses how pre-contoured plates that are flat
“must be adapted to specific requirements by, at least partially, bending
them, during the operation with a suitable set of instruments,” which can
disadvantageously add “a considerable extension to the operation time.”
Ex. 1009, 1:22–32; see Pet. 32, 39; Pet. Reply 15, 19–20. Heinl seeks to
reduce the time required to bend plates in the operating room by providing
“a set of surgical instruments for joining bone fragments . . . comprising
several plates of different shapes and curvatures.” Ex. 1009, Abstract,
1:42–50; see Pet. 32, 39; Pet. Reply 15, 17; Ex. 1001 ¶¶ 95–97, 120. “It is
thus possible for the surgeon, taking into account the particular anatomical
conditions and also the particular statical proportions, . . . to select the plate
best suited for its shape and form and use it immediately.” Ex. 1009,
1:66–2:6; see Pet. 32, 39; Pet. Reply 15, 17, 19–20.
Heinl also contemplates that, once the surgeon selects a pre-contoured
plate, the surgeon may modify the selected plate by bending it for use with a
particular patient. Ex. 1009, Abstract (disclosing that Heinl’s set of surgical
instruments may include “a bending instrument”), 1:47–51 & 8:8–29 (same).
According to Heinl, by allowing the surgeon to select an optimally
pre-contoured plate before performing any bending operations, “[t]he
adapting or bending operation, which was previously generally necessary, is
then largely made superfluous, so that much faster work is possible.” Id. at
1:62–2:6; id. at 2:11–17 (“[T]he curvature of the plates will be
approximately adapted to subsequent conditions” so that “[a]daptation of the
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plates with the aid of the bending instrument to the respective curvatures is
then largely eliminated.”); see Pet. 32, 39; Pet. Reply 15, 19–20.
In light of the foregoing, we agree with Mr. Castañeda’s testimony
that Kay’s stated goal, to provide a set of plates that are pre-contoured
differently to suit the different shapes of small bones, would have motivated
a person of ordinary skill in the art to seek out other pre-contoured plate
shapes to supplement Kay’s collection. Ex. 1001 ¶¶ 119, 221; Pet. 31–32,
38–40; Pet. Reply 14, 20–21. Heinl provides several such pre-contoured
plates, one of which is shown in Heinl’s Figure 3 to have a medial line that
describes an S-curve in the lateral plane, to match the individual contours of
particular bones. Ex. 1001 ¶¶ 95–97, 120; Pet. 32, 39–40. Based on the
overlapping disclosures of Kay and Heinl in this regard, Mr. Castañeda’s
testimony that “[i]t would have been obvious to a POSITA to pre-contour
Kay’s orthopedic plate such that the medial line describes an S-curve in a
lateral or longitudinal plane in view of the teachings of Heinl” is persuasive
and supported by the evidence. Ex. 1001 ¶ 121; Pet. 32, 39–40; Pet.
Reply 13–14, 16–17, 19–20.
Further, and in the alternative to the foregoing, we acknowledge
Patent Owner’s position that Kay’s plate 10 includes a medial line
describing an S-curve in the lateral plane. PO Resp. 36–48. Even if we
were to agree with this position over Petitioner’s opposition (see Pet.
Reply 5–12), the result would be that Kay is prior art because the
2006 Application does not disclose any plate having a medial line describing
an S-curve in a longitudinal plane. See supra Section IV.C. Further, there
would be no need to modify Kay’s plate 10 to have an S-curve in the lateral
or longitudinal plane, because the plate already exhibits an S-curve medial
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line in the lateral plane. Thus, even if we were to agree with Patent Owner’s
position that Kay’s plate 10 includes a medial line describing an S-curve in
the lateral plane, still claim 1 would be obvious over Kay and Heinl, even
though Heinl would not be needed to establish obviousness in this regard.
We have considered Patent Owner’s counter-arguments concerning
obviousness, but we do not find them persuasive. See PO Resp. 3–4, 52–60,
61–62; Sur-reply 1–5, 22–26. Patent Owner firstly argues Petitioner has not
established a motivation for combining Kay and Heinl to reach the invention
of claim 1. See PO Resp. 52–57; Sur-reply 22–23. Patent Owner asserts
Petitioner provides no reason why a person of ordinary skill in the art would
have modified “the trunk of Kay to include the shape of the entire plate
(trunk and arms) of Heinl.” PO Resp. 54. Patent Owner also asserts Heinl
teaches “away from individualized contouring of bone plates,” such as is
disclosed by Kay. Id. at 56–57 (citing Ex. 1009, 1:27–33, 1:38–41, 2:4–6,
2:15–17); Ex. 2017 ¶ 88; Ex. 2018 ¶ 87.
Petitioner replies that Patent Owner misinterprets Petitioner’s
arguments as relying on the bodily incorporation of Heinl’s plate 5 into
Kay’s plate 10, which is not required by the law. Pet. Reply 1–2, 13, 16
(citing In re Mouttet, 686 F.3d 1322, 1332–33 (Fed. Cir. 2012)). Petitioner
also argues Heinl’s disclosure supports, rather than teaches away from, the
proposed combination with Kay. Id. at 15.
We agree with Petitioner. As discussed in detail above, Kay and
Heinl disclose respective bone plate systems that both present several
pre-contoured plates to a surgeon in an operating room, with the plates
having different shapes, which may likely be useful in repairing small bone
fractures. This overlapping disclosure would have motivated a person of
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ordinary skill in the art to consider improving upon Kay’s system by
incorporating one or more pre-contoured plate shapes disclosed by Heinl,
thereby increasing the usefulness and efficiency of Kay’s system. This
includes incorporating Heinl’s S-shape into Kay’s plate 10, as Petitioner
proposes. Further, Kay and Heinl both indicate the surgeon may fine tune
the selected plate shape by bending it for use with a particular patient, with
the pre-contouring reducing the amount of time such individualized
contouring in the operating room will require. See Ex. 1006, Abstract,
¶¶ 7–8, 11, 14; Ex. 1009, Abstract, 1:62–2:17, 8:8–29. In short, Kay and
Heinl would lead a person of ordinary skill in the same direction, not
different directions.
Patent Owner secondly argues “Petitioner fails to provide any
explanation or supporting evidence as to how” Kay’s plate 10 could be
modified, to “transform the plate from having an X-shape in the lateral plane
to having an S-shape in the lateral plane as disclosed by Heinl.” PO
Resp. 57–58; Ex. 2017 ¶ 92; Ex. 2018 ¶ 91. According to Patent Owner,
“Petitioner has failed to carry its burden” to set forth an obviousness analysis
“in sufficient detail to demonstrate that the result of the proposed
combination meets the limitations recited in” claim 1. Sur-reply 4, 10,
22–23.
In reply, Petitioner cites Mr. Castañeda’s testimony that “it has long
been commonly known to use plates with an S-curve because the curve
better matches the shape or contour of certain bones, for example the
clavicle bone.” Ex. 1001 ¶¶ 41, 121 (citing Exs. 1009, 1020, & 1022); Pet.
Reply 14. As further support for this testimony, Petitioner cites the
following figure from Exhibit 1070. Pet. Reply 14–15, 17.
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Excerpt from Exhibit 1070 (page 4), Figure 4.1-7(a).
The above figure shows how a midshaft fracture of a clavicle may be fixed
with a 9-hole reconstruction plate, which according to Petitioner has an
S-curve medial line in the lateral plane (top view at top of figure) and in the
longitudinal plane (side view at bottom of figure). Ex. 1070, 4; Pet.
Reply 17. Petitioner also cites Mr. Harrigan’s deposition testimony that
persons of ordinary skill in the art in February 2009 “would have known
how to use plates in general and S-shaped plates when they’re appropriate,”
and “the clavicle generally has an S shape.” Ex. 1066, 110:18–111:13; Pet.
Reply 17. Petitioner concludes: “POSITAs starting with Kay’s plate (a
plate similar to the plate shown in [Exhibit 1070] above, but straight and
with two added asymmetrical ‘arms’ at each end of the plates) would have
known to pre-contour the Kay plate into the shape shown in [Exhibit 1070],
but with arms at the ends, based on the disclosure of Heinl . . . .” Pet.
Reply 17 (citing Pet. 6, 31–32, 38–42; Ex. 1001 ¶¶ 41, 119–122).
Upon review of the foregoing, we conclude Petitioner has met its
burden to explain, with particularity and with supporting evidence, how the
combination of Kay and Heinl would have led a person of ordinary skill in
the art to the invention recited in claim 1. 35 U.S.C. §§ 312 & 316(e);
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37 C.F.R. § 42.22(a)(2). Petitioner contends it would have been obvious to
modify the central trunk portion 12 of Kay’s plate 10 to exhibit an S-curve
medial line in the lateral plane, such as shown for example in the top view of
Exhibit 1070 reproduced above, while retaining Kay’s four diverging
arms 20 at the terminal ends of trunk portion 12. See Pet. Reply 17;
Tr. 36:13–37:4, 72:16–73:7. This exemplary modification of Kay’s plate 10,
in light of Heinl’s disclosure, would embody the invention of claim 1.
In contrast to the above-discussed position that Kay’s plate 10 has an
X-shape, Patent Owner thirdly argues Petitioner and Mr. Castañeda
“ignore[] the fact that the pre-contoured plate of Kay includes the same
S-shaped footprint of Heinl, including the location of the screw holes,
without the need for further” modification. PO Resp. 54–55 (citing Pet. 3–7,
31–32; Ex. 1001 ¶¶ 121–122; Ex. 1009, 4:8–16; Ex. 2019, 36:23–24);
Sur-reply 22–24; Ex. 2017 ¶¶ 85–86; Ex. 2018 ¶¶ 84–85. In support, Patent
Owner provides the following annotated comparison of Kay’s Figure 1 and
Heinl’s Figure 3 (PO Resp. 55):

Kay Figure 1 and Heinl Figure 3 (Annotated by Patent Owner).
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As illustrated above, Patent Owner has outlined in red the respective
portions of Kay’s plate 10 and Heinl’s plate 5 that Patent Owner contends
achieve the same result when attached to a bone, such that there is no need
to modify the former in light of the latter. PO Resp. 55–56; Sur-reply 22–
24; Ex. 2017 ¶¶ 85–87; Ex. 2018 ¶¶ 84–86. According to Patent Owner:
“the selection of plates is driven by concordance of the shape of the plate
and location of the screw holes with the particular bone to be repaired.” PO
Resp. 55 (citing Ex. 1009, 4:8–16; Ex. 1001 ¶¶ 121–122; Ex. 2017 ¶ 86;
Ex. 2018 ¶ 85).
Petitioner disputes Patent Owner’s contention that Kay’s plate 10 has
an S-curve that would accommodate the same anatomical conditions as
Heinl’s S-curve plate 5, referring back to Petitioner’s arguments relating to
priority, discussed above. Pet. Reply 15, 16; see supra Section IV.C.
On this point, we find Mr. Castañeda’s testimony to be more
persuasive than that of Dr. Neufeld and Mr. Harrigan. We, like
Mr. Castañeda, perceive a material difference in the curvature of the screw
hole configurations respectively provided by Kay’s plate 10 and Heinl’s
plate 5, such that modifying the former in light of the latter would have
achieved a material benefit. Ex. 1001 ¶¶ 119–121. In particular, we do not
agree with Dr. Neufeld’s and Mr. Harrigan’s testimony that the portions of
the two plates circled in red in Patent Owner’s annotations above are “the
same . . . without the need for further bending.” Ex. 2017 ¶¶ 85–87;
Ex. 2018 ¶¶ 84–86. Instead, we perceive that the shape defined by the screw
hole alignment in Heinl’s plate 5 has a much more pronounced curvature
than the shape defined by the screw hole alignment in Kay’s plate 10. That
is, even assuming Kay’s plate 10 incorporates an S-shaped screw hole
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pattern as is found by Dr. Neufeld and Mr. Harrigan, it is a much flatter S
than the S provided in Heinl’s plate 5.
Patent Owner fourthly argues Petitioner fails to establish that the
combination of Kay and Heinl would lead to a plate having “a central trunk
portion . . . defining a longitudinal trunk axis extending between a first end
and a second end,” as recited in claim 1. PO Resp. 58–60 (citing Pet. 35–36,
52; Ex. 1001 ¶ 115). Patent Owner points out Petitioner cites Kay’s plate 10
as having the claimed central trunk portion 12, but then Petitioner proposes
to modify plate 10 to have the claimed S-curve medial line, by adding a bend
in the plate in the waist area of trunk 12 between screw holes 14. Id.
at 58–59. According to Patent Owner, “Petitioner provides no explanation
or supporting evidence” that modifying Kay’s plate 10 in this manner would
maintain a central trunk portion defining a longitudinal trunk axis extending
between a first end and a second end in the pre-contoured plate. Id.
at 59–60; Ex. 2017 ¶ 94; Ex. 2018 ¶ 93.
Petitioner replies that, “regardless of whether the trunk of Kay’s plate
is straight or includes an S-curve along the medial line in the lateral or
longitudinal plane, it includes a longitudinal trunk axis.” Pet. Reply 18–19
(citing Ex. 1002, 3:24–27, 6:62–66; Ex. 1006 ¶ 7). In support,
Mr. Castañeda testifies that “a POSITA would have understood that the
‘longitudinal trunk axis’ of an orthopedic plate is the axis that runs the
length of the plate from one end to the other.” Ex. 1001 ¶ 115.
We agree with Petitioner. As discussed in detail above, Petitioner
proposes modifying Kay’s plate 10 to have a medial line describing an
S-curve in the lateral plane. Even if this modification results in central trunk
portion 12 having one or more curves or bends in the lateral plane, similar to
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the top view illustration of the clavicle plate shown in Exhibit 1070
(reproduced above), the modified trunk would still have a longitudinal axis.
Patent Owner does not cite, and we cannot find, any disclosure in the
’443 patent that requires the longitudinal axis of the trunk to be straight,
without any curves. Indeed, the ’443 patent disclosure is to the contrary.
See, e.g., Ex. 1002, 3:7–11, 3:24–27, 6:62–7:1, 8:67–9:30 (describing central
trunk 212 of plate 210 shown in Figures 12–17 as having “a longitudinal
axis” despite the “slight longitudinal curve” seen in Figure 15), 10:40–11:16
(describing central trunk 412ʹ of plate 410ʹ shown in Figures 36–41 as
having “a longitudinal axis” despite “curv[ing] gently in the direction of the
shorter arms” 413ʹ as seen in Figure 37).
Patent Owner fifthly argues that modifying Heinl’s plate 5 or the plate
of Exhibit 1070 by adding an arm at each end of the respective plate would
lead to “an X-shaped plate—not an S-shaped plate.” Sur-reply 24–26
(annotating the figures for illustration). This argument is not persuasive
because it misconstrues Petitioner’s case, which posits that it would have
been obvious to modify Kay’s plate 10 in the fashion claimed, not Heinl’s
plate 5 or the plate of Exhibit 1070. Also, as Patent Owner points out in
connection with the priority dispute, claim 1 requires the medial line of the
plate, and not the plate itself, to be S-shaped. See PO Resp. 18–20, 23–25.
For the foregoing reasons, we determine a preponderance of the
evidence establishes that it would have been obvious to modify Kay’s
pre-contoured plate 10 to have an S-curve medial line, in light of Heinl.
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e) Whether It Would Have Been Obvious for an Inflection Point of the
S-Curve Medial Line to be Located Between Two Screw Holes
of the Central Trunk Portion
Petitioner argues that, when modifying Kay’s plate 10 to have an
S-curve medial line in the lateral plane in light of Heinl, it would have been
obvious to locate an inflection point of the S-curve between screw holes 14
of central trunk portion 12 of Kay’s plate 10. See Pet. 31–32, 40–42; Pet.
Reply 21. Specifically, Petitioner asserts it would have been obvious to
locate the inflection point at the “decreased width . . . waist area” between
screw holes 14, because Kay discloses this area is designed to bend laterally
or longitudinally to form a curved area in plate 10, and to facilitate twisting
of plate 10. Pet. 31–32, 35, 41–42 (citing Ex. 1006 ¶ 47); Pet. Reply 21;
Ex. 1001 ¶¶ 114, 122–123, 125–126.
Patent Owner’s opposition is limited to disputing whether Petitioner
errs in citing Heinl’s S-shaped plate 5 as having an inflection point located
between two screw holes of a central trunk portion. See PO Resp. 61–62.
Patent Owner does not address Petitioner’s additional obviousness analysis
relying on Kay in this regard. See id. As discussed above in
Section IV.D.4(c), in response to Patent Owner’s argument, Petitioner has
withdrawn any reliance on Heinl as disclosing the claimed location of an
S-curve inflection point, opting instead to rely on the combination of Kay
and Heinl leading to obviousness. See Pet. Reply 21.
We determine Petitioner’s case for obviousness is supported by a
preponderance of the evidence. Based on the overall shape of Kay’s
plate 10 as shown in Figure 1 of Kay, a person of ordinary skill in the art,
when modifying plate 10 to have an S-curve medial line in the lateral plane
as suggested by Heinl, would naturally provide an inflection point of the
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S-curve in the central region of plate 10 between screw holes 14. Kay itself
discloses that this region is an easy and beneficial location to implement
variations in the shape of plate 10 to conform to bone shapes found in the
human body. Ex. 1006 ¶ 46; Ex. 1001 ¶¶ 122–123, 125–126.
Thus, we determine a preponderance of the evidence establishes it
would have been obvious to locate an inflection point of the S-curve medial
line between screw holes 14 of central trunk portion 12 of Kay’s plate 10.
f) Conclusion as to Claim 1
We conclude a preponderance of the evidence establishes that it
would have been obvious to combine Kay and Heinl in the manner recited in
claim 1, so the claim is unpatentable under 35 U.S.C. § 103.
5. Claim 7
Claim 7 depends from claim 1 and recites: “each arm of the pair
having a longitudinal arm axis which extends between the central screw axis
and a point on the longitudinal trunk axis so as to define an angle with
respect to the longitudinal axis of the central trunk portion.” Ex. 1002,
12:9–14.
Petitioner relies on the arguments above in relation to the subject
matter recited in parent claim 1, and contends “Kay discloses the additional
limitation of claim 7.” Pet. 47; Ex. 1001 ¶¶ 136–138. In particular,
Petitioner asserts Kay’s plate 10 has four arms 20, each of which is joined to
trunk portion 12. Pet. 47–48 (citing Ex. 1006, Fig. 1, ¶ 51); Ex. 1001 ¶ 137.
Further according to Petitioner, each arm 20 has a longitudinal axis
extending from the trunk’s longitudinal axis to a screw hole 24 on arm 20,
such that the arm’s longitudinal axis defines an angle with respect to the
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trunk’s longitudinal axis. Pet. 48–49 (citing Ex. 1006, Fig. 1, ¶ 48); id. at 49
(annotating Kay’s Figure 1 to identify the two arms’ longitudinal axes in
blue, and the trunk’s longitudinal axis in green); Ex. 1001 ¶ 138.
Patent Owner argues: “Petitioner bases all of its arguments [for
claim 7] on the plate of Figure 1 of Kay without any consideration as to how
the plate of Kay, contorted in view of Heinl to meet the S-curve limitation
[recited in parent claim 1], also meets the additional limitation recited in”
claim 7. PO Resp. 62–65 (citing Pet. 48). According to Patent Owner, a
person of ordinary skill in the art “would have understood any compound
bending of Kay at the waist as relied upon by Petitioner in order to achieve
the S-shape of Heinl would result in a longitudinal trunk axis non-congruent
with the longitudinal trunk axis of Kay in Figure 1.” Id. at 64; Ex. 2017
¶ 97; Ex. 2018 ¶ 96.
Petitioner replies that it “does not matter” that central trunk 12 of
Kay’s plate 10 will have a different longitudinal axis than the one identified
by Petitioner in the (unmodified) plate 10 shown in Figure 1. Pet. Reply 22.
Petitioner asserts that, even if plate 10 is modified to include an S-curve
medial line, each arm 20 will still have its own longitudinal axis, and each
arm longitudinal axis will define an angle with the modified longitudinal
axis of the central trunk, “because the arms extend asymmetrically from the
trunk.” Id.
We agree with Petitioner. As discussed above in Section IV.D.4(d) in
connection with the central trunk longitudinal axis limitation of claim 1, the
modified trunk in Petitioner’s combination would still have a longitudinal
axis, and each arm 20 would still extend diagonally away from the central
trunk. Thus, the modified plate would satisfy the additional limitation in
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claim 7 for an angle to exist between each arm’s longitudinal axis and the
central trunk’s longitudinal axis. We conclude a preponderance of the
evidence establishes it would have been obvious to combine Kay and Heinl
in the manner recited in claim 7, so the claim is unpatentable under
35 U.S.C. § 103.
6. Claims 3–6, 8, 15, 19, and 26
Petitioner provides arguments and evidence, including testimony from
Mr. Castañeda, in support of contending claims 3–6, 8, 15, 19, and 26 are
unpatentable as having been obvious over Kay and Heinl. See Pet. 42–47,
49–54; Ex. 1001 ¶¶ 127–135, 139–141, 155–158, 176–186.
Patent Owner asserts, in a general fashion, that “Petitioner bases all of
its arguments on the plate of Figure 1 of Kay without any consideration as to
how the plate of Kay, contorted in view of Heinl to meet the S-curve
limitation [recited in parent claim 1], also meets the additional limitation
recited in” dependent claims 3–6, 8, 15, and 19. PO Resp. 62–65. Petitioner
replies, correctly, that Patent Owner’s analysis in support of this assertion
addresses only claim 7. Pet. Reply 22 n.2.
Patent Owner also does not address independent claim 26 separately
from the arguments discussed above in connection with similar subject
matter recited claim 1. See, e.g., PO Resp. 1, 15–16, 51, 58, 60 (treating
claims 1 and 26 together as a group).
Thus, Patent Owner does not present any argument for claims 3–6, 8,
15, 19, and 26 other than what we have already considered above with
respect to claim 1. See LG Elecs., 759 F. App’x at 925 (“The Board is ‘not
required to address undisputed matters’ or arguments about limitations with
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which it was never presented.”); Papst, 924 F.3d at 1250; Bradium, 923 F.3d
at 1048. After considering the evidence and arguments of record, we
determine Petitioner has demonstrated by a preponderance of the evidence
that these claims would have been obvious over Kay and Heinl.
V. SUMMARY OF CONCLUSIONS
In summary, we determine a preponderance of the evidence
establishes claims 1, 3–8, 15, 19, and 2613 of the ’443 patent are
unpatentable,14 as shown in the following table:
Claims 35 U.S.C. § References
Claims
Shown
Unpatentable
Claims
Not Shown
Unpatentable
1, 3–8, 15,
19, 26 103 Kay, Heinl
1, 3–8, 15,
19, 26

13 As explained above in Section II.B, we do not address Petitioner’s
challenges to claims 9–11 and 22–25 under 35 U.S.C. § 103, because Patent
Owner disclaimed those claims prior to institution of trial.
14 Should Patent Owner wish to pursue amendment of the challenged claims
in a reissue or reexamination proceeding subsequent to the issuance of this
decision, we draw Patent Owner’s attention to the April 2019 Notice
Regarding Options for Amendments by Patent Owner Through Reissue or
Reexamination During a Pending AIA Trial Proceeding. See 84 Fed. Reg.
16,654 (Apr. 22, 2019). If Patent Owner chooses to file a reissue application
or a request for reexamination of the challenged patent, we remind Patent
Owner of its continuing obligation to notify the Board of any such related
matters in updated mandatory notices. See 37 C.F.R. § 42.8(a)(3), (b)(2).
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VI. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that claims 1, 3–8, 15, 19, and 26 of the ’443 patent have
been proven by a preponderance of the evidence to be unpatentable;
FURTHER ORDERED that Patent Owner’s Motion to Exclude is
dismissed as moot as to Exhibits 1057–1060, 1073–1075, and 1081, and is
denied as to Exhibit 1070; and
FURTHER ORDERED that, because this is a final written decision,
parties to this proceeding seeking judicial review of our Decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

IPR2019-00894
Patent 9,144,443 B2

53
For PETITIONER:

George Foster
Gregory Polins
Joel Merkin
KIRKLAND & ELLIS LLP
billy.foster@kirkland.com
greg.polins@kirkland.com
jmerkin@kirkland.com

For PATENT OWNER:

D. Joseph English
Patrick Muldoon
Patrick McPherson
Samuel Apicelli
Pierre Hubert
Diana Sangalli
DUANE MORRIS LLP
DJEnglish@duanemorris.com
PCMuldoon@duanemorris.com
PDMcpherson@duanemorris.com
SWapicelli@duanemorris.com
PJHubert@duanemorris.com
DMSangalli@duanemorris.com