Board Decisions In Cases Where The Facts Are Largely Undisputed May Not Be Subject To A Substantial Evidence Standard Of Review

In Smith & Nephew, Inc. v. Rea, No. 12-1343 (Fed. Cir. July 9, 2013), the Federal Circuit reversed the Board's obviousness decision holding that certain claims of U.S. Patent No. 7,128,744 ("the '744 patent") would not have been obvious.

The '744 patent claims priority to a provisional application filed on September 13, 1999, and is owned by Synthes (U.S.A.) ("Synthes"), a medical device company. The '744 patent is directed to a plate system for repairing bone fractures. The system is attached to fractured bones by bone anchors or screws inserted through holes in a plate and then into the bone. The system includes a shaft portion with anchor holes and a head portion with anchor holes that are conically tapered from the top surface to the bottom surface. The '744 patent also describes two types of prior art screws. The first type is compression or nonlocking screws with threaded shafts but unthreaded heads that typically pass through unthreaded holes. Compression or nonlocking screws draw the bone and plate together for quicker healing. The second type is locking screws with threaded shafts and threaded heads that screw into both the plate and the bone to stabilize their relative positions. All of the holes in the claims-at-issue are at least partially threaded so that physicians can optionally use locking screws or nonlocking bone screws.

In 2009, Smith & Nephew, Inc. ("Smith & Nephew") requested reexamination of the '744 patent. On reexamination, the PTO rejected all fifty-five claims as obvious based on numerous prior art references, including a 1997 article by N.P. Haas ("the Haas article") and Synthes devices from the 1990s ("the Synthes devices").

The Haas article disclosed a plate with only conically tapered, threaded holes in the shaft and head portions of the plate. The Synthes devices included (1) a plate with unthreaded holes for fractures in the femur; (2) a Distal Radius Plate ("DRP") for wrist fractures with all anchor holes partially threaded and designed for use with either locking or nonlocking screws; and (3) a Locking Reconstruction Plate ("LRP") for jaw fractures with anchor holes having threaded lower portions and unthreaded, conically flared upper portions that allowed for countersunk screws.

According to the examiner, combining the Haas article with any of the references cited taught the claimed invention. The examiner also adopted Smith & Nephew's argument that there was a motivation to combine the references because...