LimaCorporate SpA

Patent Trials and Appeals Board

Jun 23, 2020

IPR2020-00258 (P.T.A.B. Jun. 23, 2020)

Trials@uspto.gov Paper 7
571-272-7822 Date: June 23, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

WALDEMARK LINK GMBH & CO KG,
Petitioner,

v.

LIMA CORPORATE SpA,
Patent Owner.
____________

IPR2020-00258
Patent 8,454,705 B2
____________

Before PATRICK R. SCANLON, BARRY L. GROSSMAN and
JAMES J. MAYBERRY, Administrative Patent Judges.

SCANLON, Administrative Patent Judge.

DECISION
Denying Institution of Inter Partes Review
35 U.S.C. § 314
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I. INTRODUCTION
Waldemark Link GmbH & Co KG (“Petitioner”) filed a Petition
(Paper 1, “Pet.”) requesting an inter partes review of claims 1‒24 of U.S.
Patent No. 8,454,705 B2 (Ex. 1001, “the ’705 patent”). LimaCorporate1
SpA (“Patent Owner”) filed a Preliminary Response (Paper 6, “Prelim.
Resp.”).
We have authority to determine whether to institute an inter partes
review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2019). To
institute an inter partes review, we must determine that the information
presented in the Petition shows “a reasonable likelihood that the petitioner
would prevail with respect to at least 1 of the claims challenged in the
petition.” 35 U.S.C. § 314(a). For the reasons set forth below, we determine
that the information presented in the Petition does not establish a reasonable
likelihood that Petitioner will prevail with respect to at least one challenged
claim. Accordingly, we do not institute an inter partes review of the
’705 patent.
II. BACKGROUND
A. Related Matters
The parties indicate that there are no related matters that would affect,
or be affected by, a decision in this proceeding. Pet. 54; Paper 4, 1.

1 We note that although both parties use “Lima Corporate” (with a space) in
the captions of the papers submitted in this proceeding, Patent Owner uses
“LimaCorporate” (without a space) elsewhere in its papers. See, e.g., Paper
4, 1. To the extent deemed necessary, we leave it to Patent Owner to correct
the record.
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B. Real Parties-in-Interest
Petitioner identifies itself, Waldemark Link GmbH & Co KG, as the
real party-in-interest. Pet. 54. Patent Owner identifies itself, LimaCorporate
SpA, as the real party-in-interest. Paper 4, 1.
C. The ’705 patent
The ’705 patent, titled “Prosthetic Element and Relative Method to
Make It,” issued June 4, 2013, with claims 1–24. Ex. 1001, code (54), code
(45), 8:53–11:24. The ’705 patent “concerns a prosthetic element with a
cellular structure, and the relative method to make it, usable preferably but
not only in prostheses intended to restore femoral articulation.” Id. at 1:6–9.
According to the ’705 patent, acetabular cups are used to replace or reinforce
the natural acetabular cavity and accommodate the head of a femoral
prosthesis. Id. at 1:15–18. Known acetabular cups have a solid, compact
body covered with an external lattice having porosity that improves osteo-
integration of the device with bone tissue. Id. at 1:18–21, 28–32. A purpose
of the’705 patent is “to achieve . . . a prosthetic element with a cellular
structure made in a single piece such as to promote bone re-growth and good
anchorage of the prosthesis” so as “to overcome the shortcomings of the
state of the art.” Id. at 1:48–55.
Figures 1 and 2 are reproduced below.

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Figure 1 is a front view of a prosthetic device, and Figure 2 is a three-
dimensional view of the prosthetic device. Id. at 4:20–21, 26–27. More
specifically, Figures 1 and 2 depict prosthetic element 10 comprising
spheroidal cap 11 that has internal wall 16 to define the shape of a semi-
spherical cap or truncated cone (shown best in Figures 1a and 1b). Id. at
4:60–5:6. The external surface of cap 11 is formed by a three-dimensional
lattice 12. Id. at 5:12–13. Internal wall 16 and lattice 12 are solid so as to
form a single, continuous body. Id. at 5:19–20. “[L]attice 12 has a pre-
defined and desired thickness and has a cellular structure with open holes.”2
Id. at 5:29–30.
Lattice 12 is characterized by the spatial repetition of a plurality of
geometrical meshes 13 having a polygonal shape and vertexes that are not
co-planar. Id. at 5:60–62. Figure 4 is reproduced below.

2 Throughout this Decision, we omit any bolding of reference numerals in
quotations from the ’705 patent and from prior art references.
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Figure 4 shows two meshes 13 “as an example [of] an advantageous
model for osteo-integration.” Id. at 5:65–67. Each mesh 13 is formed by
three parts: (1) first part 113, which is generally quadrangular in shape with
vertexes 13a, 13c, 13f, and 13i; (2) second part 213, which is an “angled
segment”3 with vertexes 13b, 13g, and 13h and disposed transversely to first
part 113; and (3) third part 313, which is an angled segment with vertexes
13d, 13e, and 13m and disposed transversely to first part 113, in a cross with
respect to second part 213. Id. at 6:7–15. In addition, each side of first part
113 is an angled segment, with first side 113a having a central vertex that
coincides with vertex 13b of second part 213, second side 113b having a
central vertex that coincides with vertex 13d of third part 313, third side
113c having a central vertex that coincides with vertex 13h of second part
213, and fourth side 113d having a central vertex that coincides with vertex
13m of third part 313. Id. at 6:20–28.
With this arrangement, spatial repetition of mesh 13 defines a
hexagonal geometry, wherein each “hexagon will have a three-dimensional
conformation disposed on various planes, with at least one of its vertexes not
co-planar with the others.” Id. at 6:29–30, 49–51. For example, hexagon
413 having vertexes 13a, 13m, 13i, 13h, 13g, and 13b is shown in Figures 5
and 6, reproduced below. Id. at 6:30–32.

3 In the ’705 patent, an “angled segment” is “a segment consisting of several
consecutive rectilinear segments with a different inclination, for example
segments inclined alternatively upward and downward.” Ex. 1001, 6:16–19.
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Figure 5 is a schematic, three-dimensional view of a portion of the
lattice of Figure 4, and Figure 6 is a plane view of Figure 5. Id. at 4:32–34.
Hexagon 413 defines three planes: first and second “end planes” defined by
vertexes 13a, 13b, and 13m and vertexes 13g, 13h, and 13i, respectively, and
a “central plane” defined by vertexes 13m, 13i, 13g, and 13b and situated
transverse to the end planes. Id. at 6:52–60. In hexagon 413, vertexes 13a
and 13h are not co-planar. Id. at 6:52–53. The repeating meshes define
three other hexagons: one having vertexes 13c, 13b, 13a, 13m, 13e, and
13d; another having vertexes 13f, 13d, 13c, 13b, 13g, and 13h; and yet
another having vertexes 13i, 13h, 13f, 13d, 13e, and 13m. Id. at 6:33–49.
D. Challenged Claims
Petitioner challenges claims 1–24, of which claims 1 and 12 are
independent. Claims 2–11, 23, and 24 depend from claim 1; claims 13–22
depend from claim 12. Claim 1 is reproduced below, with bracketed labels
and formatting as added by Petitioner (see Pet. 19–20) for ease of reference:
1. A prosthetic device comprising:
[1a] a body;
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[1b] a cap made of metal material, having inside an
acetabular seating,
[1c] said cap having an internal wall that lines the seating
and an external part consisting of a lattice with cells making a
plurality of cavities disposed three-dimensionally, open and
intercommunicating, connected with each other,
[1d] said lattice being solid with the external part facing
toward the outside of the internal wall,
[1e] at least part of the lattice is formed, without a break
in continuity, by a plurality of geometric meshes of polygonal
shape repeated in space over all or part of the body, having a
cellular geometry with elementary cells open and contiguous, to
define a plurality of polygons with a spatial development
delimiting the cavities, so the lattice is able to promote osteo-
integration,
[1f] wherein each geometric mesh is formed by a first
polygonal part with four sides, each of said four sides formed as
an angled segment, and a second part formed as an angled
segment and a third part formed as an angled segment, wherein
each angled segment has first and second consecutive rectilinear
segments, wherein an angle is formed in the angled segment at
an intersection of each pair of its first and the second consecutive
segments; wherein the first polygonal part has vertexes that are
not co-planar;
[1g] the second and the third part with angled segments are
disposed transversely to the first part substantially across a
respective median line of the first part, crossed with respect to
each other, superimposed on the first polygonal part, one on one
side and one on the other side to define in the space a plurality of
hexagons having vertexes that are not co-planar, the first part and
the second part forming a first hexagon and a second hexagon of
said plurality of hexagons having vertexes that are not co-planar;
the first part and the third part forming a third hexagon and a
fourth hexagon of said plurality of hexagons having vertexes that
are not co-planar;
[1h] wherein a first end of a first angled segment of the
second part coincides with a first vertex of the first part and a
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second end of a second angled segment of the second part
coincides with a second vertex of the first part; and wherein a
first end of a first angled segment of the third part coincides with
a third vertex of the first part and a second end of a second angled
segment of the third part coincides with a fourth vertex of the
first part.
Ex. 1001, 8:53‒9:32. Independent claim 12 recites a method to make a
prosthetic element and includes the structural limitations of claim 1. Id. at
9:58–10:51.
E. Asserted Grounds of Unpatentability
Petitioner contends that the challenged claims are unpatentable based
on the following grounds:
Claims Challenged 35 U.S.C. § Reference(s)/Basis
1–24 103(a)4 Jones5
1–24 103(a) Wang6
Pet. 13. Petitioner supports its challenge with a declaration from Dr. David
W. Rosen (Ex. 1004, “the Rosen Declaration”).
III. ANALYSIS
A. Discretion Under 35 U.S.C. § 325(d)
Patent Owner argues that we should deny institution under § 325(d)
because Petitioner advances grounds of unpatentability “that are based on:

4 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29,
which was enacted on September 16, 2011, made amendments to 35 U.S.C.
§ 103. AIA § 3(c). Those amendments became effective on March 16,
2013. Id. at § 3(n). Because the challenged claims of the ’705 patent have
an effective filing date before March 16, 2013, any citations herein to
35 U.S.C. § 103 are to the pre-AIA version.
5 US 2006/0147332 A1, published July 6, 2006 (Ex. 1002).
6 Hongqing Vincent Wang, A Unit Cell Approach for Lightweight Structure
and Complaint Mechanism, Georgia Institute of Technology, (2005) Chapter
8, 210–33 (Ex. 1003).
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(i) the same reference extensively addressed during original examination
(Jones); and (ii) a substantially similar reference that fails to disclose
anything beyond the reference considered extensively during prosecution
(Wang).” Prelim. Resp. 59–60. Patent Owner provides an analysis of the
Becton, Dickinson7 factors in support of its argument. Id. at 60–66. Because
we are not persuaded Petitioner has demonstrated sufficiently that the
challenged claims are obvious over either Jones or Wang for the reasons
discussed below (see infra §§ III.D., III.E.), we need not reach Patent
Owner’s argument regarding discretionary denial under § 325(d).
B. Level of Ordinary Skill in the Art
In determining whether an invention would have been obvious at the
time it was made, 35 U.S.C. § 103 requires us to resolve the level of
ordinary skill in the pertinent art at the time of the invention. Graham v.
John Deere Co., 383 U.S. 1, 17 (1966). The person of ordinary skill in the
art is a hypothetical person who is presumed to have known the relevant art
at the time of the invention. In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir.
1995). Factors that may be considered in determining the level of ordinary
skill in the art include, but are not limited to, the types of problems
encountered in the art, the sophistication of the technology, and educational
level of active workers in the field. Id. In a given case, one or more factors
may predominate. Id.
Petitioner submits that a person of ordinary skill in the relevant art
“would be someone with a bachelors, masters, or Ph.D. degree in
engineering or science with several years of research experience, as well as

7 See Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586,
Paper 8 (PTAB Dec. 15, 2017) (precedential as to § III.C.5, first paragraph).
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several years of software development experience,” and “would have some
knowledge of manufacturing processes and specific knowledge of at least
one process capable of fabricating lattice structures, including 3-D printing,
investment casting, cutting and crimping of metal sheets, or others.” Pet. 25
(citing Ex. 1004 ¶¶ 91–92).
Patent Owner proposes that a person of ordinary skill in the relevant
art “would have had at least a bachelor’s degree in biomedical engineering,
materials science/engineering, or a related field, along with two to three
years of experience with medical devices, as well as with manufacturing
processes for making such devices.” Prelim. Resp. 17.
Based on our review of the record before us, we find that Petitioner’s
stated level of ordinary skill in the art is reasonable because it is consistent
with the evidence of record, including the asserted prior art. Thus, for the
purposes of this Decision, we adopt Petitioner’s definition. We note,
however, that the outcome of this Decision would not differ under Patent
Owner’s proposed definition.
C. Claim Construction
In inter partes reviews, the Board interprets claim language using the
district-court-type standard, as described in Phillips v. AWH Corp., 415 F.3d
1303 (Fed. Cir. 2005) (en banc). See 37 C.F.R. § 42.100(b). Under that
standard, we generally give claim terms their ordinary and customary
meaning, as would be understood by a person of ordinary skill in the art at
the time of the invention, in light of the language of the claims, the
specification, and the prosecution history. See Phillips, 415 F.3d at 1313–
14. Although extrinsic evidence, when available, may also be useful when
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construing claim terms under this standard, extrinsic evidence should be
considered in the context of the intrinsic evidence. See id. at 1317–19.
Petitioner does not propose any specific claim constructions, arguing
that “[t]he claim terms of the ’705 patent should be construed consistent
with their plain and ordinary meaning.” Pet. 25 (citing Ex. 1004 ¶¶ 93–94).
Patent Owner argues that the term “solid” of claims 1 and 12 should be
construed to mean “that the lattice and internal wall are formed
simultaneously as a single body.” Prelim. Resp. 18–20.
In view of our analysis below, we do not discern a need to expressly
construe any claim term for purposes of this Decision. See, e.g., Nidec
Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017
(Fed. Cir. 2017) (holding claim terms need only be construed “to the extent
necessary to resolve the controversy” (quoting Vivid Techs., Inc. v. Am. Sci.
& Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).
D. Asserted Obviousness Based on Jones
Petitioner contends claims 1–24 are obvious over Jones. Pet. 26–41.
Patent Owner provides arguments addressing this asserted ground of
unpatentability. Prelim. Resp. 31–51.
1. Principles of Law
A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
differences between the claimed subject matter and the prior art are such that
the subject matter, as a whole, would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The question of obviousness is resolved on the basis of underlying
factual determinations including: (1) the scope and content of the prior art;
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(2) any differences between the claimed subject matter and the prior art;
(3) the level of ordinary skill in the art; and (4) when in evidence, objective
indicia (also called secondary considerations) of non-obviousness, such as
commercial success, long-felt but unsolved needs, and failure of others.
Graham, 383 U.S. at 17–18. We analyze this ground based on obviousness
in accordance with the above-stated principles.8
2. Overview of Jones
Jones “relates to a porous surface or structure and a method for
forming the same.” Ex. 1002 ¶ 1. The porous structure can be a medical
implant such as an acetabular cup, an acetabular shell, a knee implant, or a
femoral or hip implant. Id. ¶ 23. Such a medical implant has a porosity that
“promotes bone in-growth and/or provides the medical implant with soft
tissue characteristics.” Id. For example, Figures 18A–18C depict an
acetabular cup. Id. ¶ 101. Figures 31A–31D show another embodiment of
an acetabular component in which a porous shell is permanently fixed over a
substrate. Id. ¶¶ 70, 104–105.
The porous structures are built from a plurality of unit cells, where
many designs of unit cells, such as dodecahedral, octahedral, and diamond,
are possible. Id. ¶ 84. Figure 1A is reproduced below.

8 We address the level of ordinary skill in the art in § III.B. above. The
record does not include any evidence of objective indicia of non-
obviousness at this point in the proceeding.
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Figure 1A illustrates one embodiment of a unit cell. Id. ¶ 30. Specifically,
Figure 1A shows “tetrahedron” 8 in which “each point 10, 12, 14, and 16 is
the same distance from the neighboring point.”9 Id. ¶ 88. According to
Jones, “[t]his structure is analogous to the arrangements of the carbon atoms
in diamond.” Id. Thus, Jones refers to the lattice produced when the unit
cells are “instanced across the 3-D space” as a “diamond lattice structure.”
Id. ¶ 91.
3. Independent Claim 1
Petitioner argues that Jones discloses limitations 1a–1e of claim 1.
Pet. 26–27 (citing Ex. 1002 ¶¶ 8, 17, 23, 47, 74, 83, 84, 86–97, 101, 102.
104, Figs. 1C–10, 18A–18C, 28A, 28B, 29A, 29B, 30A–31D; Ex. 1004
¶¶ 97–110; Ex. 1013, 106–107, 119–121). Regarding limitations 1f–1h,
Petitioner concedes that Jones does not disclose “the specific unit
cell/geometric mesh” of claim 1, but this “difference is trivial and obvious
because the claimed meshes when repeated result in the same diamond
lattice disclosed by Jones and known by a [person having ordinary skill in

9 Reference numeral 16 is not shown in Figure 1A.
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the art].” Id. at 26; see also id. at 30 (asserting Jones stops short of teaching
the claimed geometric mesh). More specifically, Petitioner argues that
limitations 1f–1h are obvious for two reasons:
First, they are obvious because the claimed geometric mesh when
printed forms the known diamond lattice, a lattice structure
explicitly disclosed in Jones. Second, these elements are obvious
because the applicant merely chose one geometry, of various
known geometries, that they knew would work for osteo-
integration based on prior art teachings regarding porosity and
pore size.10
Id. at 28–29. We analyze each argument in turn.
a) Petitioner’s First Obviousness Argument
Petitioner relies on Dr. Rosen’s testimony and, more particularly, Dr.
Rosen’s reconstruction of the ’705 patent’s alleged diamond lattice to
support its first obviousness argument. Id. at 29 (citing Ex. 1004 ¶¶ 115,
130, 144). Dr. Rosen testifies that “[w]hen repeated, the geometric mesh
claimed by the ’705 patent creates a diamond lattice structure, which mimics
the specific arrangement of carbon atoms in a diamond.” Ex. 1004 ¶ 114.
Dr. Rosen also provides, in paragraph 115, an illustration comprising two
figures that is reproduced below.

10 Petitioner also asserts that, during prosecution of the application that
issued as the ’705 patent, the examiner found that Figures 5A–5B of Jones
taught limitations 1f and 1g. Pet. 28 (citing Ex. 1013, 121). This assertion
is inaccurate because the limitations that the examiner determined were
taught by Figures 5A–5B differ from limitations 1f and 1g. See Ex. 1013,
121, 133–34. In any event, this assertion is not persuasive because
Petitioner does not rely on Figures 5A–5B or the associated disclosure in
arguing that claim 1 is obvious over Jones. Indeed, Petitioner notes that
Figures 5A–5B are directed to non-diamond lattice structures. Pet. 30.
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Dr. Rosen testifies that the figure on the left is Figure 7 from the ’705
patent and the figure on the right is his “reconstruction of the diamond
lattice” of the ’705 patent. Ex. 1004 ¶ 115. In the reconstruction, Dr. Rosen
indicates “loop 113 (from the ’705 patent) in red, the ‘angled segment’
‘second part 213’ in yellow, and the ‘angled segment’ ‘third part 313’ in
green,” and “[t]he rest of the diamond lattice is shown in blue.” Id. Dr.
Rosen testifies further that “[u]pon comparing the figures, it is my opinion
that the lattice structures are identical and that the ’705 patent teaches a
diamond lattice structure.” Id.
Patent Owner argues that, contrary to Petitioner’s assertion, Jones
does not clearly disclose a diamond lattice. Prelim. Resp. 38–40. Patent
Owner also argues that
[r]ather than relying on a figure or description from Jones (or any
other prior art) to show the purportedly known diamond lattice
made from the claimed “geometric mesh,” the Petition relies on
a figure from the ’705 patent itself compared with an image
created by Petitioner’s expert for this proceeding.
Id. at 40 (citing Pet. 29). According to Patent Owner, this position amounts
to improper hindsight because “Petitioner uses the ’705 patent as a blueprint
to arrive at the claimed meshes, rather than on anything actually from the
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prior art.” Id. at 40–41. In addition, Patent Owner argues that neither
Petitioner nor Dr. Rosen provides any explanation as to why one of ordinary
skill in the art would have chosen the claimed geometric meshes from the
various possible unit cells, or why one of ordinary skill in the art would have
even known of the claimed geometric mesh as a possible mesh that could be
used to form a diamond lattice. Id. at 41.
As an initial point, we are not persuaded that the lattice formed from a
plurality of the claimed meshes would be the same diamond lattice disclosed
by Jones for the following reasons. First, we agree with Patent Owner that
Petitioner wrongly compares Dr. Rosen’s reconstruction of the ’705 patent’s
alleged diamond lattice to a figure from the ’705 patent rather than a figure
or description from Jones. See Prelim. Resp. 40 (citing Pet. 29).
Specifically, referring to the illustration (reproduced above) from paragraph
115 of the Rosen Declaration, Petitioner argues “[b]y comparing Fig. 7 of
the ’705 patent on the left, which shows a repeating unit cell, with a
diamond lattice structure on the right, it can be seen that the geometric mesh
of the ’705 patent, when repeated, results in the diamond cubic lattice
structure.” Pet. 29. Dr. Rosen also compares his reconstruction to Figure 7
of the ’705 patent as the basis for his “opinion that the lattice structures are
identical and that the ’705 patent teaches a diamond lattice structure.”
Ex. 1004 ¶ 115.
We are not persuaded, however, that comparing the reconstruction to
Figure 7 of the ’705 patent can establish that the reconstructed lattice is the
same diamond lattice structure disclosed by Jones. Comparing the
reconstruction to a figure depicting the diamond lattice structure of Jones
seems necessary to conclude that the reconstructed lattice is the same as
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Jones’s diamond lattice, but neither the Petition nor Dr. Rosen purports to
compare the reconstruction lattice to Jones’s diamond lattice.
Second, and more to the point, we are not persuaded that Dr. Rosen’s
reconstruction accurately depicts the ’705 patent’s lattice. Dr. Rosen does
not adequately explain how he arrived at his reconstruction of the diamond
lattice, stating only that “[w]hen repeated, the geometric mesh claimed by
the ’705 patent creates a diamond lattice structure,” and the figure on the
right in paragraph 115 “is my reconstruction of the diamond lattice.”
Ex. 1004 ¶¶ 114–115. But Dr. Rosen does not explain specifically how the
meshes are “repeated” to create the reconstruction.
Given the complex geometry of the geometric meshes, it is difficult to
assess the accuracy of Dr. Rosen’s reconstruction properly without such
explanation. Nevertheless, we note some apparent inconsistencies between
Dr. Rosen’s reconstruction and the ’705 patent’s disclosure. For example,
Figure 4 of the ’705 patent, reproduced above (see supra § II.C.), shows
adjacent geometric meshes 13 connected at vertex 13a of one mesh and
vertex 13f of the adjacent mesh, and Figure 7 of the ’705 patent, shown
above, shows adjacent geometric meshes connected at vertex 13c of one
mesh and vertex 13i of the adjacent mesh. The illustration of Dr. Rosen’s
reconstruction does not appear to include these same connections. To
illustrate the apparent differences, we provide an annotated version of Dr.
Rosen’s reconstruction, reproduced below.
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This annotated version of Dr. Rosen’s reconstruction highlights a
portion of the lattice in purple. More specifically, as noted above, Dr. Rosen
highlights the first part (or “loop”) of one geometric mesh in red, the second
part of that mesh in yellow, and the third part of that mesh in green.11
Ex. 1004 ¶ 115. The portion of the lattice highlighted in purple appears to
correspond to first part 113 of a geometric mesh adjacent to the geometric
mesh in which the first part is highlighted in red. Thus, the adjacent meshes
appear to share entire sides of the corresponding first parts, rather than being
connected at specific vertexes as disclosed by the ’705 patent. The other
three sides of the first part highlighted in red also appear to be connected
along the entire side to a corresponding side of another adjacent mesh.

11 To reiterate, each geometric mesh 13 is formed by three parts: (1) first part
113, which is generally quadrangular in shape with vertexes 13a, 13c, 13f,
and 13i; (2) second part 213, which is an “angled segment” with vertexes
13b, 13g, and 13h and disposed transversely to first part 113; and (3) third
part 313, which is an angled segment with vertexes 13d, 13e, and 13m and
disposed transversely to first part 113, in a cross with respect to second part
213. Ex. 1001, 6:7–15, Figs. 4, 7.
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In addition, the reconstruction appears to inaccurately depict the
second and third parts of the meshes. That is, the two ends of both second
part 213 and third part 313 are shown as extending beyond first part 113 in
Figures 4 and 7 of the ’705 patent. This configuration is depicted in Dr.
Rosen’s reconstruction with respect to the yellow second part and the green
third part overlapping the red first part, but the configuration is not repeated
for the other meshes in the reconstruction. For instance, referring to the
above annotated version of Dr. Rosen’s reconstruction, the upper left end of
the yellow second part appears to extend into the purple first part of the
adjacent mesh. In this case, the mesh comprised of the purple first part lacks
a second part having two ends that extend beyond the first part. In other
words, Dr. Rosen appears to have eliminated portions of the second and
third parts from some of meshes in creating his reconstruction.
Accordingly, we are not persuaded by Petitioner’s arguments and
evidence that the lattice formed from a plurality of the claimed meshes is the
same as the diamond lattice disclosed by Jones.
Furthermore, even if the lattice formed from a plurality of the claimed
meshes would be the same as the diamond lattice disclosed by Jones, this
fact alone is insufficient to establish that the geometric mesh recited in
limitations 1f–1h would have been obvious. Petitioner does not explain
adequately why the claimed geometric meshes would have been obvious in
view of Jones simply because of the alleged identicalness of the lattices.
Instead, Petitioner’s assertion of obviousness in view of Jones is a mere
conclusory statement—not articulated reasoning with a rational
underpinning based on evidence of record—that fails to support the legal
conclusion of obviousness. See In re Magnum Oil Tools Int’l, Ltd., 829 F.3d
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1364, 1380 (Fed. Cir. 2016). In addition, to the extent that Jones’s diamond
lattice would implicitly or inherently include the claimed meshes by virtue
of being the same as the lattice formed from a plurality of the claimed
meshes, Petitioner does not makes such a contention; in fact, as noted above,
Petitioner specifically indicates that Jones does not disclose the claimed
geometric mesh. Pet. 26, 30.
Dr. Rosen testifies that “[i]n my opinion,” the claimed geometric
meshes would have been obvious “because the claimed geometry of the
geometric mesh forms the known diamond lattice when repeated, a lattice
structure explicitly disclosed in Jones.” Ex. 1004 ¶¶ 113, 128, 142. This
testimony, however, merely repeats the Petition’s assertion and does not
offer objective evidence or analysis to support the assertion. Dr. Rosen does
testify that one of ordinary skill in the art “would have known how to make
[a diamond mesh] out of repeating geometric meshes” and “would have
known to select a geometric mesh with a specific geometry that, when
repeated during the 3-D printing process, would create the diamond lattice.”
Id. ¶¶ 117, 132, 146. But this testimony does not establish that one of
ordinary skill in the art would have selected, or even known to use, the
specific geometric mesh recited in claim 1. Accordingly, we do not credit
the testimony of Dr. Rosen on this point. See 37 C.F.R. § 42.65(a) (“Expert
testimony that does not disclose the underlying facts or data on which the
opinion is based is entitled to little or no weight.”); see also Nobel Biocare
Services AG v. Instradent USA, Inc., 903 F.3d 1365, 1382 (Fed. Cir. 2018)
(explaining that the Board can reject arguments based on expert testimony
that lacks specificity or detail).
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In addition, we are not persuaded by Petitioner’s argument that, rather
than claiming the lattice structure, “the ’705 patent drafters avoided
anticipation by deftly claim[ing] a specific mesh geometry rather than
claiming the diamond cubic it produces. But differences in drafting do not
overcome a strong case of prima facie obviousness.” See Pet. 30 (citing Ex.
1004 ¶¶ 116–118, 120, 131–133, 135, 145–147, 149). Petitioner provides no
legal authority for its assertion that “differences in drafting do not overcome
a strong case of prima facie obviousness,” an assertion that ignores the
importance of the claims in an obviousness analysis. Under the statute, we
look to what the inventors actually claimed, rather than what they could have
claimed. See 35 U.S.C. § 103(a) (“A patent may not be obtained . . . if the
differences between the subject matter sought to be patented and the prior
art are such that the subject matter as a whole would have been obvious at
the time the invention was made to a person having ordinary skill in the art.”
(emphasis added)); see also Graham, 383 U.S. at 17 (holding the
“differences between the prior art and the claims at issue are to be
ascertained” under § 103 (emphasis added)).
Petitioner’s argument (as well as Dr. Rosen’s testimony) also relies on
the flawed assumption that the inventors of the ’705 patent were trying to
patent a diamond lattice and “merely picked” the claimed geometric mesh
because it would allegedly result in the diamond lattice taught by Jones. See
Pet. 30; Ex. 1004 ¶¶ 120, 135, 149. Neither the Petition nor Dr. Rosen,
however, provides a sufficient basis to support this assumption. The ’705
patent does not expressly claim a diamond lattice, and we are not directed to
any portion of the ’705 patent that even describes a diamond lattice. And,
for the reasons discussed above, we determine that Petitioner does not
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demonstrate sufficiently that the claimed geometric mesh was simply one of
several geometries that would result in a diamond lattice.
In view of the above, we do not find Petitioner’s first obviousness
argument persuasive.
b) Petitioner’s Second Obviousness Argument
According to Petitioner, “Jones clearly discloses that various unit
cells or mesh geometries can be used in its invention, and its teaching is not
limited to any one geometry,” and “Jones teaches that the unit cells, or
geometric meshes, may be constructed in various shapes, including the
shape taught by the ’705 patent, so long as the porosity and pore size
requirements are met (which they are in the ’705 patent).”12 Pet. 30–31
(citing Ex. 1002 ¶¶ 84, 95, Figs. 5A–5B; Ex. 1004 ¶¶ 121, 136, 150)
(emphasis added). Based on this assertion, Petitioner argues that one of
ordinary skill in the art “considering Jones would have chosen a particular
geometry from a finite number of known geometries to create a geometric
mesh with optimum pore size to promote bone ingrowth.” Id. at 31 (citing
Ex. 1004 ¶¶ 122, 137, 151).
In response, Patent Owner contends that this argument “fails because
Jones’ disclosure that ‘various’ unit cell shapes can be used does not
demonstrate a [person having ordinary skill in the art] would have arrived at
the specific claimed ‘geometric mesh.’” Prelim. Resp. 42. We agree with

12 To the extent the emphasized language is meant to convey that the
claimed geometric mesh is one of the various unit cells disclosed by Jones,
we find such an assertion to be inaccurate. As noted above, Petitioner
specifically indicates elsewhere in the Petition that Jones does not disclose
the claimed geometric mesh. Pet. 26, 30.
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Patent Owner. Jones discloses that its porous structures can be built from
many designs of unit cells, such as dodecahedral, octahedral, and diamond
(Ex. 1001 ¶ 84), but Petitioner does not demonstrate sufficiently why one of
ordinary skill in the art would select the claimed geometric mesh when
choosing “from a finite number of known geometries.” More to the point,
neither the Petition nor Dr. Rosen establishes sufficiently that the claimed
geometric mesh is one of a finite number of known geometries. We also
agree with Patent Owner that Petitioner’s argument is not persuasive
because “[u]nder Petitioner’s logic, Jones’ disclosure of ‘various’ unit cells
would render obvious every possible unit cell geometry, whether actually
disclosed in Jones or not.” See Prelim. Resp. 42.
Petitioner also asserts that:
An invention is obvious when, as here, the only difference
between the prior art and the claimed invention are changes in
size or shape, when such change fails to result in “patentable
significance” or a different product. Gardner v. TEC Syst., Inc.,
725 F.2d 1338 (Fed. Cir. 1984); Ex parte Hilton, 148 U.S.P.Q.
(BNA) 356, 357, 1966 Pat. App. LEXIS 48, at *2 (Pat. &
Trademark Office Bd. App. Jan. 1, 1965). Indeed, the art taught
that different geometries, or meshes, will produce the same
properties, and that different geometries do not result in
differences in bone grow. The mere selection of a one of many
geometries is obvious. [In re Dillon, 919 F.2d 688, 697–98 (Fed.
Cir. 2990)]; In re Susi, 440 F.2d 442, 445 (C.C.P.A. 1971); In re
Petering, 301 F.2d 676, 681 (C.C.P.A. 1962).
Pet. 31. The Gardner case cited by Petitioner involved a device used for
drying ink on a continuous sheet or web of paper in a printing press.
Gardner, 725 F.2d at 1340. The device included structure, referred to as an
“air bar,” that positions a moving web. Id. The independent claim at issue
included dimensional limitations for the air bar. Id. at 1340–41. The trial
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court viewed these dimensional limitations as “artificial dimensional
limitations that add nothing to the claims, that are of no constructive
significance, and are essentially meaningless.” Id. at 1344.
The U.S. Court of Appeals for the Federal Circuit indicated that, in
order to prevail, the party challenging the patent in Gardner had the burden
of proving that the claimed dimensional limitations had no effect on the
performance of the air bar. Id. at 1345. The evidence introduced at trial in
Gardner included tests of an air bar embodying the claimed dimensional
limitations and a known air bar that did not embody the claimed dimensional
limitations, and this evidence convinced the trial court that the bars
performed essentially the same. Id. at 1349. The Federal Circuit determined
that, based on this and other evidence, the trial court’s findings were not
clearly erroneous. Id.
Here, we agree with Patent Owner that Petitioner has not produced
sufficient evidence to establish that a lattice formed from the claimed
geometric meshes would perform the same as Jones’s diamond lattice. See
Prelim. Resp. 44. Jones discloses different unit cell geometries, but does not
state expressly that there are no differences in performance. See Ex. 1002
¶ 84. Petitioner’s assertion that “the art taught that different geometries, or
meshes, will produce the same properties, and that different geometries do
not result in differences in bone grow[th]” (Pet. 31) is unsupported attorney
argument, as we are not directed to any prior art of record providing such a
teaching. Nor are we directed to any testimony in the Rosen Declaration
that supports this argument. Thus, we are not persuaded that the claimed
geometric meshes represent a trivial change that fails to result in “patentable
significance,” as asserted by Petitioner.
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The Dillon case cited by Petitioner involved the “discovery that the
inclusion of certain tetra-orthoester compounds in hydrocarbon fuel
compositions will reduce the emission of solid particulates (i.e., soot) during
combustion of the fuel.” Dillon, 919 F.2d at 690. In discussing case law
cited in the dissenting opinion, the Federal Circuit indicated “[t]he
compounds were conceded to be sufficiently close to the prior art that,
without a showing of a significant difference in properties, they would have
been obvious.” Id. at 697–98 (citing In re Lunsford, 357 F.2d 380, 381
(CCPA 1966). As such, Dillon does not support Petitioner’s broad assertion
that the mere selection of one of many structural geometries is obvious.
Similarly, the Susi and Petering cases cited by Petitioner do not support the
assertion.
In view of the above, we do not find Petitioner’s second obviousness
argument persuasive.
c) Conclusion
For the reasons above, we determine, based on the current record, that
the Petition does not establish a reasonable likelihood that Petitioner would
prevail with respect to the contention that claim 1 would have been
unpatentable over Jones.
4. Independent Claim 12
Petitioner contends that limitations 12f–12h of independent claim 12
are identical to limitations 1f–1h, respectively, and are “taught by Jones” for
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the same reasons set forth in connection with limitations 1f–1h.13 Pet. 36–37
(citing Ex. 1004 ¶¶ 190–192). Thus, Petitioner’s challenge to claim 12 is
based on the same deficient assertions as to obviousness in view of Jones as
discussed above in the analysis of the challenge to independent claim 1. For
these same reasons, we find that Petitioner has not met its burden to show a
reasonable likelihood that claim 12 would have been unpatentable over
Jones.
5. Dependent Claims 2–11 and 13–24
Claims 2–11, 23, and 24 depend from claim 1 and, thus, contain all
the limitations of claim 1. Claims 13–22 depend from claim 12 and, thus,
contain all the limitations of claim 12. Petitioner’s challenges to dependent
claims 2–11 and 13–24 do not overcome the deficient assertions regarding
Jones as discussed above in the analysis of the challenge to independent
claims 1 and 12. Pet. 32‒36, 38–41. Accordingly, for the same reasons
discussed above in connection with claims 1 and 12, we find that Petitioner
has not met its burden to show a reasonable likelihood that claims 2–11 and
13–24 would have been unpatentable over Jones.
E. Asserted Obviousness Based on Wang
Petitioner contends claims 1–24 are obvious over Wang. Pet. 41–54.
Patent Owner provides arguments addressing this asserted ground of
unpatentability. Prelim. Resp. 51–59.

13 We note that the cited section of the Petition does not assert that
limitations 1f–1h are “taught by Jones”; instead, this section asserts that
limitations 1f–1h would have been obvious in view of Jones. Pet. 28–31.
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1. Overview of Wang
Wang is a dissertation titled “A Unit Cell Approach for Lightweight
Structure and Compliant Mechanism.” Ex. 1003, i.14 Chapter 8 describes an
acetabular implant and a graded cellular structure to enhance stability on the
implant-bone interface. Id. at 210. Wang discloses that the mechanical
properties of the implant should closely match that of the host tissue. Id. at
221. These properties include elasticity, which depends on the “unit truss,”
i.e., “the microstructure of the prosthesis.” Id. Wang discloses various unit
truss configurations, including a dodecahedron and an octet truss. Id. at 223,
226, Figs. 8.8, 8.11.
2. Independent Claim 1
Petitioner argues that Wang discloses limitations 1a–1e of claim 1.
Pet. 42–43 (citing Ex. 1003 ¶¶ 210, 219, 223, 226, 228, Figs. 8.11, 8.14,
8.15; Ex. 1004 ¶¶ 229–236). Regarding limitations 1f–1h, Petitioner
concedes that Wang does not disclose “the specific geometry of the
repeating unit cells/geometric mesh” of claim 1. Id. at 41. Petitioner,
however, argues that limitations 1f–1h would have been obvious for two
reasons: “First, the claimed geometric mesh, when printed, forms a diamond
lattice structure well-known to a [person having ordinary skill in the art].
Second, the patentee merely chose one geometry, of various known
geometries, which the patentee knew would facilitate osteo-integration based
on porosity and pore size.” Id. at 44 (citing Ex. 1004 ¶ 237).

14 For consistency, we follow Petitioner’s convention of citing to the original
pagination located at the bottom of the pages in Wang rather than the page
numbers added by Petitioner.
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The first obviousness argument relies on the same reconstruction of
the ’705 patent’s alleged diamond lattice by Dr. Rosen relied on in the
asserted ground of unpatentability based on Jones. Id. at 44–45 (citing Ex.
1004 ¶¶ 238, 239, 251, 252, 264, 265). For the reasons discussed above,
however, we are not persuaded by Petitioner’s arguments and evidence that
(1) the lattice formed from a plurality of the claimed meshes is the same as a
diamond lattice structure well known to one of ordinary skill in the art or
(2) even if the lattice formed from a plurality of the claimed meshes would
be the same as a well-known diamond lattice, this fact would be sufficient to
establish that the geometric mesh recited in limitations 1f–1h would have
been obvious. See supra § III.D.3.a. In addition, this argument is not
persuasive because, in contrast with its assertions with respect to Jones,
Petitioner does not assert that Wang even discloses a diamond lattice. See
Pet. 44–45.
Regarding its second obviousness argument, Petitioner asserts that
“Wang’s teachings are not limited to any single, particular geometry, but
[are] focused on optimizing porosity, pore size, and elasticity of the mesh—
all factors previously established as enhancing bone growth.” Id. at 45. In
particular, Petitioner argues that Wang discloses different types of unit cells,
including a ‘dodecahedron with 12 faces’ . . . and an ‘octet truss, whose
primitive is a tetrahedron.’” Id. (quoting Ex. 1003, 223, 226; citing
Ex. 1003, Fig. 8.11). Thus, according to Petitioner, “[s]imple and
insignificant changes among known variations, like the mere selection of a
specific geometry over related geometries, especially when both share the
same useful properties, is obvious.” Id. (citing Dillon, 919 F.2d at 697–98;
Susi, 440 F.2d at 445).
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Petitioner does not establish sufficiently, however, that using the
claimed geometric mesh is a “known variation” or “the mere selection of a
specific geometry over related geometries.” As such, we determine that
Petitioner has not demonstrated sufficiently that the claimed geometric mesh
is a simple or insignificant change over Wang’s disclosed geometries.
In addition, Petitioner again argues that an invention is obvious when
the only difference between the prior art and the claimed invention are
changes in size or shape that lack “patentable significance.” Id. at 45–46
(citing Gardner, 725 F.2d 1338; Hilton, 148 USPQ at 357). For the reasons
discussed above, however, we are not persuaded that the claimed geometric
mesh represents a trivial change that fails to result in “patentable
significance.” See supra § III.D.3.b.
For the above reasons, we determine, based on the current record, that
the Petition does not establish a reasonable likelihood that Petitioner would
prevail with respect to the contention that claim 1 would have been
unpatentable over Wang.
3. Independent Claim 12
Petitioner contends that limitations 12f–12h of independent claim 12
are identical to limitations 1f–1h, respectively, and are “taught by Wang” for
the same reasons set forth in connection with limitations 1f–1h.15 Pet. 49–50
(citing Ex. 1004 ¶¶ 299–301). Thus, Petitioner’s challenge to claim 12 is
based on the same deficient assertions as to obviousness in view of Wang as
discussed above in the analysis of the challenge to independent claim 1. For

15 We note that the cited section of the Petition does not assert that
limitations 1f–1h are “taught by Wang”; instead, this section asserts that
limitations 1f–1h would have been obvious in view of Wang. Pet. 44–46.
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these same reasons, we find that Petitioner has not met its burden to show a
reasonable likelihood that claim 12 would have been unpatentable over
Wang.
4. Dependent Claims 2–11 and 13–24
Claims 2–11, 23, and 24 depend from claim 1 and, thus, contain all
the limitations of claim 1. Claims 13–22 depend from claim 12 and, thus,
contain all the limitations of claim 12. Petitioner’s challenges to dependent
claims 2–11 and 13–24 do not overcome the deficient assertions regarding
Wang as discussed above in the analysis of the challenge to independent
claims 1 and 12. Pet. 46‒49, 51–54. Accordingly, for the same reasons
discussed above in connection with claims 1 and 12, we find that Petitioner
has not met its burden to show a reasonable likelihood that claims 2–11 and
13–24 would have been unpatentable over Wang.
IV. CONCLUSION
After considering the evidence and arguments presented in the
Petition and Preliminary Response, we determine that Petitioner has not
demonstrated a reasonable likelihood of success with respect to at least one
of the challenged claims. Accordingly, we do not institute inter partes
review.
V. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that the Petition is denied as to all challenged claims of
the ’705 patent; and
FURTHER ORDERED that no inter partes review is instituted.
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FOR PETITIONER:
Joseph V. Saphia
Jessica H. Zafonte
HAUG PARTNERS LLP
JSaphia@haugpartners.com
JZafonte@haugpartners.com

FOR PATENT OWNER:
Todd R. Tucker
Kyle T. Deighan
Mark W. McDougall
Yizhou Liu
CALFEE, HALTER & GRISWOLD LLP
ttucker@calfee.com
kdeighan@calfee.com
mmcdougall@calfee.com
bliu@calfee.com