June 14, 2018 – Smith & Nephew PLC and Smith & Nephew, Inc. had filed a petition for inter partes review against ConforMIS, Inc.’s arthroplasty device patent.
On June 11, 2018, The Board issued a final written decision, finding the claims unpatentable under 35 U.S.C. § 103. Petitioner Smith & Nephew argued that the combined teachings of a 1995 journal paper, U.S. patent ’975, and an international patent application publication would have rendered claim 66 obvious to a person of ordinary skill in the art. The Board found that Petitioner’s rationale and evidence established that the proposed modification to the paper’s surgical technique would have been obvious to a person of ordinary skill in the art, because the proposed modification would have been expected to provide a more successful surgery, as taught by patent ’975.” Further, the Board was persuaded that the proposed modification is a simple substitution of one known imaging technique for another to obtain the predictable result of obtaining an image of the joint.”
The patent at issue was U.S. Patent No. 7,981,158, entitled “Patient Selectable Joint Arthroplasty Devices and Surgical Tools.” The case is captioned Smith & Nephew, Inc. et al v. ConforMIS, Inc., Case No. IPR2017-00511.
By: Julian G. Pymento