In the writ of certiorari, Arthrex said that the court’s decision to treat the “reason to combine” question in determining the obviousness of patent validity as a factual issue was “inexplicable,” according to court filings.
The “reason to combine” question is central to whether or not a patent would be obvious to highly trained developers in the field at the time of its conception, which in turn is essential to patent law, Arthrex claimed. The company claims the issue should be re-reviewed upon appeal, or de novo, not merely dismissed if found erroneous.
“The Federal Circuit’s approach, moreover, hobbles the judiciary in reviewing obviousness determinations,” Arthrex wrote. “The Federal Circuit purports to review the jury’s ultimate conclusion on obviousness de novo. But treating motivation to combine pre-existing art as a fact question effectively converts the ultimate question of obviousness into a fact question as well.”
In the petition, Arthrex also raised the issue of whether a jury should decide on cases of “obviousness,” and asserted that they should be treated like claim construction decisions and resolved by judges.
“The ‘unfortunate practice’ of having the jury decide issues related to obviousness does the opposite – the verdict is a black box that is ‘essentially immune to review by the trail court,'” Arthrex wrote.
The patent-spat involves KFx’s patent of a knotless bridged soft-tissue suture system that uses multiple bone anchors and sutures that can be tightened after being placed with no knots.
Arthrex produces PushLock and SwivelLock knotless anchors, which are used in its SutureBridge and SpeedBridge surgical procedures to attach soft tissue to bone.
KFx sued Arthrex in August 2011, alleging infringement of its patents by Arthrex’s SutureBridge and SpeedBridge devices for rotator cuff repair and Achilles tendon repair.
In October 2013 a jury found for KFx, awarding $29 million in damages. Judge Dana Sabraw of the U.S. District Court for Southern California later denied an Arthrex motion for a new trial and tacked on another $1.9 million in damages and prejudgment interest of 7%.
The U.S. Court of Appeals for the Federal Circuit in January denied Arthrex’s appeal, prompting the Naples, Fla.-based company to ask the appeals bench for a full, en banc review.
In April, the Federal Circuit denied that bid and issued an April 17 mandate enforcing the ruling.