Combination Of Prior Art Elements, Each Used According To Its Established Function, Without A Surprising Result, Invalidates Bone Plate Patent

Smith & Nephew, Inc. v. Rea

In a case arising from two inter partes reexaminations, the U.S. Court of Appeals for the Federal Circuit reversed a decision of the Patent Trial and Appeal Board (Board) and concluded that the claimed subject matter would have been obvious.  Smith & Nephew, Inc. v. Rea, Case No. 12-1343 (Fed. Cir., July 9, 2013) (Bryson, J.). 

Smith & Nephew requested reexamination of a patent assigned to Synthes.  On reexamination, the examiner rejected all of the patent's claims as obvious. The Board reversed the rejections of some claims.

The patent claimed a system for using plates to repair fractures in long bones. The dispute focused on the structure of holes in a head portion of the plate through which screws are inserted. The representative claim required at least three screw holes in the head portion that are conically tapered from the top surface of the plate to the bottom surface and that are at least partially threaded to engage the