Wright Medical Technology Files for Inter Partes Review of Orthophoenix Patents

by Knobbe Martens
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On June 6, 2014, Wright Medical Technology, Inc. (“WMT”) filed first and second petitions with the Patent Trial and Appeal Board requesting inter partes review of both U.S. Patent No. 6,440,138 (“the ’138 Patent”) to Reiley et al., and U.S. Patent No. 6,863,672 (“the ’672 Patent”) to Reiley et al.  According to the ’672 Patent’s New Application Transmittal at page 9, the ’672 Patent is a divisional of  the ’138 Patent.

According to the U.S. Patent and Trademark Office assignment database,  the ’138 and ’672 Patents were previously assigned to Kyphon Inc., which was acquired by Medtronic in 2007 for $3.9 billion.  The database also includes a recorded assignment, executed on April 25, 2013, from Medtronic, Inc., Kyphon SARL, and Warsaw Orthopedic, Inc. to Orthophoenix, LLC.  Orthophoenix’s signatory was Erich Spangenberg (listed as the CEO). Spangenberg is also the owner and founder of IPNav, according to IPNav’s website. IPNav describes itself as a patent monetization firm.

The ’138 Patent is entitled “Structures and Methods for Creating Cavities in Interior Body Regions.”  According to the ’138 Patent, it relates to tools that carry structures that are deployed inside bone and, when manipulated, cut cancellous bone to form a cavity.  Figure 1 of the ’138 Patent, described as a side view of a rotatable tool having a loop structure capable of forming a cavity in tissue, with the loop structure deployed beyond the associated catheter tube, is shown below left:

The ’672 Patent is also entitled “Structures and Methods for Creating Cavities in Interior Body Regions.”  According to the ’672 Patent, it relates to tools that carry structures that are deployed inside bone and, when manipulated, cut cancellous bone to form a cavity.  Figure 27 of the ’672 Patent, described as a side view of a vertebra with the tool deployed to cut cancellous bone by moving the blade structure in a linear path to form a cavity, is shown below right:

The petition regarding the ’138 Patent relies on a single prior art reference: U.S. Patent No. 5,015,255 to Kuslich, which the petition alleges was not before the Examiner during prosecution of the ’138 patent.  The petition seeks review of Claims 1-26 (all claims) of the ’672 Patent and requests cancellation of each Claim.  By contrast, the petition regarding the ’672 Patent relies on two separate prior art references: U.S. Patent No. 5,439,464 to Shapiro and U.S. Patent No. 6,371,968 to Kogasaka et al.  The petition alleges that neither prior art reference was before the Examiner during prosecution of the ’672 Patent.  The petition seeks review of Claims 1-12 (all claims) of the ’138 Patent and requests cancellation of each Claim.

The petitions disclose that Orthophoenix has sued WMT in the U.S. District Court for the District of Delaware.  Orthophoenix, LLC v. Wright Medical Tech., Inc., Civil Action No. 13-10007-LPS (D. Del.).  Orthophoenix filed its complaint on June 5, 2013 alleging direct and indirect patent infringement of both the ’138 and ’672 Patents (the “Patents in Suit”) by WMT.  Pursuant to its complaint, Orthophoenix seeks at least: a judgment that WMT has infringed one or more claims of the Patents in Suit; a permanent injunction against future infringement of the Patents in Suit; and damages for any infringement by WMT.

According to court filings, Orthophoenix has also previously sued Ascendx Spine, DFine, Osseon Therapeutics, Sintea Plustek, Soteira, and Stryker for patent infringement.  All of the aforementioned suits allege infringement of at least the ’672 Patent.  Additionally, all of the aforementioned, except for the suit against Osseon Therapeutics, allege infringement of the ’138 patent.  The suits against Ascendx Spine, Osseon Therapeutics, Sintea Plustek, Soteira, and Stryker assert other patents as well.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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