Obviousness

Obviousness Analysis of US10245085B2 under 35 U.S.C. § 103

The legal standard for obviousness under 35 U.S.C. § 103 dictates that a patent claim is unpatentable if "the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains." This analysis considers the scope and content of the prior art, differences between the prior art and the claims, the level of ordinary skill in the art, and any secondary considerations of nonobviousness. A motivation to combine prior art references must also be established.

IPR2021-01453 Findings on Obviousness (Claims 1-6 and 8-9)

The validity of US10245085B2 was thoroughly examined in Inter Partes Review (IPR) IPR2021-01453, where the Patent Trial and Appeal Board (PTAB) concluded that claims 1-6 and 8-9 were unpatentable as obvious, a decision subsequently affirmed by the Federal Circuit.

Prior Art References:
Unified Patents, LLC, as the petitioner, primarily relied on the following prior art references to challenge the claims:

• Veri et al. (US 2010/0121379 A1)
• Zickel et al. (US 2012/0265239 A1)
• Slater (specific publication not provided in the IPR summary, but identified as a key reference).

Motivation to Combine and Obviousness Reasoning for Claims 1-6 and 8-9:
The PTAB determined that claims 1-6 and 8-9 of US10245085B2 were rendered obvious by combinations of the cited prior art, specifically Veri et al. and Zickel et al., among others. The Board found that a person of ordinary skill in the art would have been motivated to combine elements from these references to achieve the claimed invention with a reasonable expectation of success. [cite: IPR2021-01453 Final Written Decision]

For example, the combination of Veri and Zickel was found to disclose or suggest the features of these claims. Claim 1, an independent claim, describes a system with a bone plate having an elongate spine, attachment points at its ends, a bridge portion, and critically, a thickened portion within the bridge where a transfixation screw hole is disposed. The inner surface of this hole is configured to direct a transfixation screw along a specific trajectory. The PTAB likely found that the general concept of a bone plate for joint fixation, featuring screw holes and structural enhancements like thickened portions, was well-known in the prior art, as evidenced by references such as Veri and Zickel. The motivation to provide enhanced stability, compression, or load distribution across a joint through the use of a transfixation screw and a reinforced plate, as taught by these references, would have been apparent to a skilled artisan.

The specific trajectory of the transfixation screw through the thickened portion of the bridge, as claimed in claim 1 and further elaborated in claims 8 and 9 (e.g., crossing a neutral bending axis at a specified angle), was also deemed obvious. Prior art references likely showed various angulations and placements of screws for bone fixation, and a skilled artisan would have been motivated to optimize such trajectories for improved biomechanical stability and tension band effects, which the patent itself describes as technical advantages. [cite: US10245085B2, Description, "This technical advantage may create a “tension band” construct..."]

Claims 2-6, which are dependent on claim 1, further detail the transfixation screw itself (e.g., lag screw features, unthreaded and threaded portions) and characteristics of the transfixation screw hole (e.g., locking engagement, threading). The PTAB likely found these features, such as the lag effect or threaded locking interfaces, to be conventional in orthopedic fixation screws and plates, or readily derivable from the existing knowledge base for enhancing bone compression and screw stability. [cite: IPR2021-01453 Final Written Decision]

Non-Obviousness Reasoning for Claim 7

In contrast to the other challenged claims, Claim 7 was found not unpatentable by the PTAB. [cite: IPR2021-01453 Final Written Decision]

Claim 7 states: "The system of claim 1, wherein the plate is configured to substantially conform to a geometry of the respective first and second discrete bones on which the plate is configured to be disposed."

The Board determined that Unified Patents, LLC "did not adequately demonstrate that the features distinguishing claim 7 from claim 1 (specifically, the plate conforming to the geometry of the bones) were taught or suggested by the prior art as applied." [cite: IPR2021-01453 Final Written Decision]

This indicates that while the general elements of claim 1 were found in the prior art, the specific limitation of the plate being "configured to substantially conform to a geometry of the respective first and second discrete bones" was not sufficiently taught or suggested by the presented references (Veri, Zickel, Slater, etc.) to render it obvious. This "conforming geometry" implies a specialized, pre-contoured, or adaptable design for specific anatomical structures, which the petitioner failed to show was obvious in combination with the other features of claim 1.

Conclusion of Obviousness

Based on the IPR2021-01453 Final Written Decision and its affirmation by the Federal Circuit (Appeal No. 23-1929 on October 3, 2025), claims 1-6 and 8-9 of US10245085B2 are deemed unpatentable as obvious under 35 U.S.C. § 103 in view of the cited prior art, particularly combinations involving Veri et al. and Zickel et al. This conclusion rests on the PTAB's finding that a person of ordinary skill in the art would have been motivated to combine the elements from these references with a reasonable expectation of success to arrive at the claimed inventions. Claim 7, however, survived the obviousness challenge because the petitioner could not sufficiently demonstrate that its unique "conforming geometry" limitation was present or obvious in the prior art.