Smith & Nephew, Inc. v. Rea
721 F.3d 1371
Fed. Cir.2013Background
- Smith & Nephew appeals a Board of Patent Appeals and Interferences decision reversing examiner rejections of claims in Synthes’ ’744 patent.
- The ’744 patent, issued 2006 and priority-claimed to 1999, covers a bone plating system for long bones with a head portion having holes conically tapered from top to bottom to accommodate locking screws.
- Prior art includes Synthes’ condylar buttress plate, Haas’ conical threaded holes, Koval and K982222 (locking and non-locking screws), and LRP/DRP plates, all teaching various hole geometries and screw types.
- The Board held that all head holes need not be fully threaded and that a combination with Haas’ conical holes would not have been obvious, based on its reading of the prior art and the purported lack of a suitable countersinking/compression mechanism.
- The Federal Circuit held the Board erred and that it would have been obvious to modify prior art to use threaded head holes, including conical, fully threaded holes, to allow locking or non-locking screws across the head portion.
- The court reversed the Board’s decision, finding the claimed invention obvious under the KSR framework.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Was it obvious to design all head holes as conically tapered and at least partially threaded? | Smith & Nephew argues the head holes should be all threaded. | Synthes contends prior art suggested only partially threaded holes. | Yes; the claims would have been obvious. |
| Does Haas’ conical, threaded holes render all-conical, fully threaded head holes obvious despite chamfers? | Smith & Nephew argues Haas teaches conical, threaded holes suitable for locking/non-locking screws. | Synthes argues chamfering limitations and screw protrusion make it non-obvious. | Yes; Haas teaches countersinking and conical holes compatible with screws, supporting obviousness. |
| Do LRP/DRP and the ’686 patent disclosures support the obvious use of threaded holes in the head portion? | Smith & Nephew relies on prior art showing non-locking/locking in threaded holes. | Synthes emphasizes distinctions but the court finds them non-material. | Yes; these references render the claimed head-hole structure obvious. |
| Does the specification’s mention of possible locking in the head portion negate obviousness when the feature is not required by claim 1? | Smith & Nephew contends no compression requirement defeats obviousness. | Synthes argues the combination cannot be made obvious without special screws. | No; the combination is obvious under KSR, regardless of compression emphasis. |
Key Cases Cited
- KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (U.S. 2007) (obviousness is broader than a rigid result-based standard)
- DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314 (Fed. Cir. 2009) (obviousness as an improvement no more than predictable use of prior art elements)
- In re Gartside, 203 F.3d 1305 (Fed. Cir. 2000) (substantial evidence review standard for factual findings)
- Pharmastem Therapeutics, Inc. v. Viacell, Inc., 491 F.3d 1342 (Fed. Cir. 2007) (expert opinions cannot trump specification admissions)
- E.I. Du Pont de Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430 (Fed. Cir. 1988) (cannot read into a claim an unclaimed element to argue non-obviousness)