Biomet Orthopedics, LLC v. Puget Bioventures, LLC ( 2016 )

NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
BIOMET ORTHOPEDICS, LLC,
BIOMET MANUFACTURING, LLC,
Appellants
v.
PUGET BIOVENTURES, LLC, FORMERLY
HUDSON SURGICAL DESIGN, INC.,
Appellee
______________________
2015-1468
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. 95/001,469.
______________________
Decided: January 14, 2016
______________________
DOUGLAS SALYERS, Troutman Sanders LLP, Atlanta,
GA, argued for appellants. Also represented by PAUL E.
MCGOWAN, DUSTIN B. WEEKS.
BRAD PEDERSEN, Patterson Thuente Pedersen, P.A.,
Minneapolis, MN, argued for appellee. Also represented
by CHAD J. WICKMAN.
______________________
2 BIOMET ORTHOPEDICS, LLC v. PUGET BIOVENTURES, LLC
Before MOORE, O’MALLEY, and TARANTO, Circuit Judges.
MOORE, Circuit Judge.
Biomet Orthopedics, LLC (“Biomet”) appeals the deci-
sion of the Patent Trial and Appeal Board (“Board”) that
reversed the examiner’s rejection of two sets of claims of
U.S. Patent No. 7,344,541 in an inter partes reexamina-
tion. As explained below, we vacate the Board’s decision
with respect to claims 31, 33, 39, 40, 45, 47, 53, and 54
(“Amended Claims”) and affirm as to claims 35–38 and
49–52 (“Unamended Claims”).
BACKGROUND
Puget Bioventures, LLC, formerly known as Hudson
Surgical Design, Inc. (“Hudson”), brought suit against
Biomet in 2010 alleging infringement of the ’541 patent,
which is directed to methods and apparatus used in total
knee replacement surgery. ’541 patent at Abstract, col. 2
ll. 57–62. After Hudson filed suit, Biomet requested, and
the Patent and Trademark Office (“PTO”) initiated, the
inter partes reexamination that is the subject of this
appeal. 1 The examiner rejected all of the claims in the
first Office Action of the reexamination. Of relevance to
this appeal, Hudson responded to the examiner’s rejection
by amending the independent claims from which the
Amended Claims depend and rewriting the Unamended
Claims from dependent into independent form.
J.A. 2810–51; see J.A. 60; Appellee’s Br. 45–46. The
examiner again rejected all of the claims, closed prosecu-
tion, and issued a Right of Appeal Notice. Hudson ap-
pealed the examiner’s rejections to the Board, which
reversed the rejections of the Unamended Claims but
1 The district court action remains stayed pending
the resolution of the reexamination. See Order at 1,
Hudson Surgical Design, Inc. v. Biomet Orthopedics, LLC,
No. 3:10-cv-465 (N.D. Ind. Dec. 8, 2010), ECF No. 47.
BIOMET ORTHOPEDICS, LLC v. PUGET BIOVENTURES, LLC 3
upheld the rejections of the Amended Claims. Both
Hudson and Biomet requested rehearing. The Board
denied Biomet’s request and granted Hudson’s request.
The Board amended its original decision to also reverse
the examiner’s rejections of the Amended Claims. Biomet
appeals. We have jurisdiction under 28 U.S.C.
§ 1295(a)(4)(A).
DISCUSSION
This case presents an unusual procedural issue. As
both parties agree, the ’541 patent expired on December
24, 2015—after the Board’s decision but before our own.
This event presents a problem for the Amended Claims
because the PTO does not enter amendments made in
inter partes reexamination after the expiration of the
patent. 37 C.F.R. § 1.530(j) (“no amendment, other than
the cancellation of claims, will be incorporated into the
patent by a certificate issued after the expiration of the
patent”). Amendments are not effective until the certifi-
cate issues, even though reexamination Office Actions
treat the proposed amendments as though they have been
entered. Id. § 1.530(k). Thus, the Amended Claims
cannot issue. We therefore vacate the Board’s decision
with respect to the Amended Claims and remand for the
PTO to take whatever action it deems appropriate.
Hudson suggested that this court could review the exam-
iner’s rejection of the original form of the Amended
Claims and order their allowance. We cannot, and would
not, usurp the power of the Agency to review these claims
in the first instance. As for the original form of the
Amended Claims, we note that the last action on those
claims was a rejection by the examiner. Rather than
appeal that rejection to the Board, Hudson amended the
claims and appealed the examiner’s subsequent rejection
of the Amended Claims. Thus, the Board has not even
considered the original form of the Amended Claims. We
remand to the Board to determine the appropriate action
in this unusual set of circumstances.
4 BIOMET ORTHOPEDICS, LLC v. PUGET BIOVENTURES, LLC
We next turn to the Unamended Claims. As counsel
for Hudson acknowledged during oral argument, the
Board construed the Unamended Claims to require using
a single cutting guide placed on one side of a bone to cut
all the way across the bone without requiring a second cut
from the other side (although some free-hand grinding or
polishing to smooth any rough spots may be permissible).
Oral Argument at 37:43–39:34, available at
http://oralarguments.cafc.uscourts.gov/default.aspx?fl=20
15-1468.mp3; J.A. 26. Both parties agree that because we
are dealing with an expired patent, the Phillips standard
rather than broadest reasonable construction applies. We
see no reversible error in the Board’s construction. We
have considered Biomet’s remaining arguments as to
these claims and find them to be without merit. We thus
affirm the Board’s decision with respect to these claims.
CONCLUSION
For the foregoing reasons, the judgment of the Board
with respect to the Amended Claims is vacated and re-
manded. The judgment of the Board with respect to the
Unamended Claims is affirmed.
AFFIRMED-IN-PART, VACATED-IN-PART, AND
REMANDED
COSTS
No Costs.