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Shoulder Replacement Apparatus Not Anticipated by Prior Art Requiring Modification to Satisfy Claim Language

IN RE: CHUDIK: March 27, 2017. Before Dyk, Reyna, and Stoll.

Takeaway

  • A prior art reference that must be distorted from its obvious design does not anticipate claims.

Procedural Posture

In an appeal from the USPTO where the PTAB affirmed the examiner’s rejection of Chudik’s claims as anticipated by two separate prior art references, the CAFC reversed because substantial evidence did not support the PTAB’s decision.

Synopsis

  • Anticipation: The claims on appeal were directed to a device used in shoulder replacement surgery requiring “a protruding surface on a first side arranged to engage the surface of a cavity formed in a glenoid extending between peripheral glenoid surfaces.” The PTAB sustained the examiner’s anticipation rejection under two separate prior art references because in each, surfaces could be “arranged” to engage with the specified regions even if they were not described or depicted as actually engaging.  The CAFC agreed that the claims only required surfaces to be “arranged” to engage, but disagreed that the surfaces in each of the prior art references were capable of being “arranged.”  The Board and Examiner’s modifications to the first reference would only be proper if an element was removed from its design without “tearing the invention apart.”  Similarly, the modifications to the second reference would only be proper if the apparatus was rotated in a manner which would require relocating the screws for the reference to remain operable.  The CAFC found these modifications to be impermissible because prior art that “must be distorted from its obvious design” does not anticipate a new invention.

Copyright © 2021, Hunton Andrews Kurth LLP. All Rights Reserved.National Law Review, Volume VII, Number 96
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About this Author

Rose Cordeyo Prey, Andrews Kurth Law Firm, Patent Litigation Attorney
Partner

Rose’s practice focuses on patent litigation and licensing in the mechanical, electrical and computer science arts. With over 10 years of experience in IP litigation, she has represented both plaintiffs and defendants in patent infringement cases involving a wide range of technologies, including consumer electronics, smartphone software, semiconductor fabrication and circuitry, laser diodes, wireless communication, automotive systems, ceiling grid systems, computer and television display technology, security systems, online banking and memory card readers. Rose has...

212-908-6405
Katrin Feldhaus, Andrews Kurth, Foreign intellectual property disputes lawyer
Associate

Katrin is a German as well as U.S. educated lawyer whose practice focuses on representing international companies in intellectual property disputes. Katrin is fluent in German, her native language.

Prior to becoming an associate, Katrin was a legal intern at an entertainment boutique firm where she assisted with counseling in all areas of intellectual property, new media and technology law. Katrin also clerked for the Civil Court and the district attorney’s office in Germany.

212-558-8305
Michael J. Block, Andrews Kurth, patent litigation lawyer, dispute resolution attorney
Associate

Michael is an Associate in the Intellectual Property section of the firm’s New York – Battery Park office. He focuses his practice on patent litigation and dispute resolution, especially in the field of electrical engineering.

Michael previously worked in-house at a company where he was engaged in the innovation, development, and monetization of intellectual property and mobile technologies. Michael also has experience in prosecuting patent applications and has written claims, responded to office actions, and participated in interviews with...

212-908-6407
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