In Re: Chudik
851 F.3d 1365
| Fed. Cir. | 2017Background
- The '631 patent application claims a glenoid implant for minimally invasive shoulder replacement that has a protruding surface for engaging a reamed glenoid cavity and an adjacent flat surface to engage peripheral glenoid surfaces; independent claims at issue include claims 1 and 40 and dependents.
- Rambert (1986) discloses a multi-part glenoid implant where a second portion (element 27b) contains a protruding surface but is shown separated from direct bone contact by a first portion (element 27a).
- Bouttens (2001) discloses an implant whose protruding surface faces the humerus in the published figure, with fixation screws on the opposite side.
- The USPTO Examiner rejected claims 1, 15, 18, and 33–40 as anticipated/obvious over Rambert and Bouttens (and Church for obviousness of claim 18); the Board affirmed anticipation rejections for Rambert (claims 1, 15, 33–39) and Bouttens (claim 40) and obviousness for claim 18.
- The Board treated “arranged to engage” broadly, concluding the prior-art surfaces could be "arranged" to engage even if not shown contacting bone; Chudik appealed arguing prior art must disclose capability without impermissible modification.
- The Federal Circuit reversed: it held substantial evidence did not support the Board’s finding of anticipation because (1) Rambert’s protruding surface (27b) cannot engage the glenoid cavity without removing element 27a (impermissible modification), and (2) Bouttens would need significant structural reconfiguration (rotating the implant and relocating screws) to function as claimed.
Issues
| Issue | Chudik's Argument | Government/Board's Argument | Held |
|---|---|---|---|
| Whether Rambert anticipates claims requiring a protruding surface "arranged to engage" a glenoid cavity | Element 27b cannot engage the glenoid cavity as shown; it is blocked by element 27a, so Rambert must be impermissibly modified | The claim is an apparatus claim; "arranged to engage" does not require actual contact and Rambert's surfaces can be arranged to engage | Reversed — Rambert does not anticipate; substantial evidence lacking because element 27b cannot engage without removing element 27a (impermissible modification) |
| Whether Bouttens anticipates claim 40 requiring a protruding surface arranged to engage the glenoid cavity | Rotating Bouttens to face the glenoid cavity would require relocating screws and structural changes; this is a material modification and not anticipation | Bouttens’s protruding surface is not structurally incapable of engaging a matching glenoid cavity and the specification permits any matching cavity shape | Reversed — Bouttens does not anticipate; rotating/altering Bouttens to engage would be a significant impermissible modification |
| Proper scope of "arranged to" / "arranged to engage" in apparatus claims | Must be at least capable of engaging as shown; cannot require tearing apart or reconfiguring prior-art device | "Arranged to" can be read broadly as not requiring actual engagement; surfaces that could be arranged to engage suffice | Court assumes "arranged to" akin to "adapted to"; still requires capability. Here capability lacking in prior art, so anticipation fails |
| Whether the Board’s factual findings were supported by substantial evidence | Board did not explain how prior art could engage without modification and failed to address structural obstacles | Board relied on broad constructions and lack of claim-shape limitations to infer capability | Court finds Board’s anticipation findings unsupported by substantial evidence and reverses |
Key Cases Cited
- Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331 (Fed. Cir.) (anticipation reviewed for substantial evidence)
- Universal Camera Corp. v. NLRB, 340 U.S. 474 (U.S.) (definition of substantial evidence)
- ClearValue, Inc. v. Pearl River Polymers, Inc., 668 F.3d 1340 (Fed. Cir.) (anticipation requires prior art disclose every claim limitation and enable practice)
- In re Wells, 53 F.2d 537 (C.C.P.A.) (prior art that must be distorted to anticipate does not anticipate)
- Topliff v. Topliff, 145 U.S. 156 (U.S.) (prior art requiring modification to perform claimed function is not anticipatory)
- Abbott Labs. v. Sandoz, Inc., 544 F.3d 1341 (Fed. Cir.) (anticipation requires disclosure of elements in same form and order)