March 5, 2015
Another IPR Petition Comes Up Short for Failing to Adequately Show Rationale to Combine
Many Patent Owners are finding success in undermining the challenge grounds of a Petition by arguing that the Petition fails to make an adequate showing that a person of ordinary skill in the art would have combined the relied-on references. That was the case in Zimmer Holdings, Inc. and Zimmer, Inc. v. Bonutti Skeletal Innovations LLC, involved US Pat. No. 7,837,736, where the Board rejected a Petition due to an inadequate combination argument.
Relying on expert testimony, the Petitioner argued that it would have been obvious to the ordinary artisan to substitute a âdovetail jointâ described in one reference (Beuchel) for the âabutment and recessâ structure described in a second reference (Walker) to arrive at the â736 invention. Specifically, the expert testified that the âdovetailâ joints of Beuchel perform the same function as the âabutment and recessâ of Walkerâi.e., âconstrained movement of meniscal components relative to the tray in mobile bearing knee implants.â With that predicate, the expert posited that substituting the âdovetailâ joints in place of the âabutment and recessâ joints was simply a matter of design choice.
The Board disagreed, because Beuchelâs âdovetailâ joints had substantially different structure and function than Walkerâs âabutement and recess.â  Decision at 20â21.  Specifically, Beuchelâs âdovetailâ joint functioned to limit or prevent rotation, while Walkerâs âabutment and recessâ functioned to facilitate rotation. Decision at 21. Accordingly, the Board found that Petitioner failed to support its substitution argument with âadequate articulated reasoning with rational underpinnings.â  Decision at 21 (citing In re Gal, 980 F.2d 717, 719 (Fed. Cir. 1992) (design choice is not a sufficient rationale for obviousness where the structure recited in claim and the function it performs are different from the prior art). Accordingly, the Board declined to institute review. Id.