Ongoing Patent Battle: Extremity Medical vs Fusion Orthopedics

Extremity Medical LLC is claiming victory in the latest decision in its ongoing patent battle with Fusion Orthopedics, LLC.

In a recent press release, Extremity Medical claims that its alleged victory over Fusion Orthopedics comes from the United States Patent and Trademark Office’s (USPTO) Patent Trial and Appeal Board’s (PTAB) most recent ruling in the patent dispute.

The patent at issue is U.S. Patent No. 11,298,166 (‘166 patent) for intraosseous intramedullary fixation assembly and method of use. There is parallel litigation involving the patent and the two parties in United States District Court for the District of Arizona. For OTW’s original coverage of the litigation, see “Patent Fight: Extremity Medical vs Fusion Orthopedics.”

Earlier this year, OTW reported that the PTAB had ruled against Extremity Medical and had instituted an inter partes review of the patent at issue. This latest decision is the result of that review. For OTW’s initial coverage, see “Patent Fight Continues: Extremity Medical vs Fusion Orthopedics.”

Earlier this month, the PTAB issued its Final Written Decision. The PTAB ordered that Fusion Orthopedics “has not shown by a preponderance of the evidence that claim 11 of the ’166 patent is unpatentable.” This failure means that Claim 11 of the ‘166 Patent is patentable over all of the prior art Fusion Orthopedics cited in its petition and therefore is not invalid.

The PTAB did determine that some challenged claims were unpatentable. Notably, the PTAB ordered that Fusion Orthopedics “has shown by a preponderance of the evidence that claims 1–10 and 12–15 of the ’166 patent are unpatentable.”

According to the USPTO website, inter partes review is a “new trial proceeding conducted at the Board to review the patentability of one or more claims in a patent only on a ground that could be raised under §§ 102 or 103, and only on the basis of prior art consisting of patents or printed publications.” Here, the inter partes review was regarding the patentability of claims 1–15 of the ’166 patent.

According to the Extremity Medical press release, “Now that the patent has survived the IPR, the next step in the case is likely to be that the matter will be referred back to the District Court of Arizona for a determination of infringement by Fusion.”

Extremity Medical Chairman and CEO Matthew Lyons commented, “Extremity Medical invests significantly in intellectual property and intends to vigorously enforce its rights as needed.”