In Re: Chudik , 851 F.3d 1365 ( 2017 )

United States Court of Appeals
for the Federal Circuit
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IN RE: STEVEN C. CHUDIK,
Appellant
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2016-1817
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Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. 11/525,631.
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Decided: March 27, 2017
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GREGORY B. BEGGS, Law Offices of Gregory B. Beggs,
Downers Grove, IL, argued for appellant.
MARY L. KELLY, Office of the Solicitor, United States
Patent and Trademark Office, Alexandria, VA, argued for
appellee Michelle K. Lee. Also represented by NATHAN K.
KELLEY, MEREDITH HOPE SCHOENFELD, THOMAS W.
KRAUSE.
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Before DYK, REYNA, and STOLL, Circuit Judges.
REYNA, Circuit Judge.
Steven Chudik appeals from the Patent Trial and Ap-
peal Board’s (“Board”) determination that claims 1, 15,
18, and 33–40 of U.S. Patent Application 11/525,631 (“’631
application”) are anticipated by two prior art references.
2 IN RE: CHUDIK
Because substantial evidence does not support the
Board’s determination, we reverse.
BACKGROUND
1. The ’631 Application
The ’631 application, entitled “Glenoid Implant for
Minimally Invasive Shoulder Replacement Surgery,”
describes an invention related to “rotator cuff sparing
procedures and associated devices for shoulder replace-
ment surgery.” J.A. 24, ¶ 2. The ’631 application im-
proves on the prior art by offering “simple and less
invasive perpendicular access to the humeral and glenoid
joint surfaces,” which “spares the rotator cuff tendons and
allows for a quicker and more functional recovery.”
J.A. 29–30, ¶¶ 12–13. As relevant here, the surgery
described in the ’631 application involves two main steps.
First, the surgeon removes “a minimal amount of bone
from the peripheral surface of the glenoid”—a process
called reaming. See J.A. 51, ¶ 124. Second, the surgeon
places an implant in the reamed cavity. See J.A. 57,
¶ 142. The glenoid, reamer, and implant are pictured
below:
IN RE: CHUDIK 3
J.A. 79, 91, 94. The scapula is the shoulder bone connect-
ing the humerus (upper arm bone) to the clavicle (the
collar bone). Figure 7a shows that the glenoid cavity 22
faces outward on the scapula. Figure 21 depicts a side
view of the reamer, and Figure 22 shows how the reaming
surface 114 faces toward the glenoid cavity. J.A. 30, ¶ 17;
J.A. 37, ¶ 80.
Once the glenoid cavity has been reamed, the im-
plant’s protruding surface 119 “sits within the concavity
of the reamed glenoid surface.” J.A. 57, ¶ 142. Figures
23a and 27a show the protruding surface 119, which
“protrudes into the glenoid 22 to a specified depth.” Id.
The ’631 application describes the reaming surface 114 in
similar terms to the protruding surface 119. Compare
J.A. 51, ¶ 124, with J.A. 57, ¶ 142. Like the reaming
surface 114, the protruding surface 119 faces toward the
glenoid cavity. See Fig. 22.
Representative independent claims 1 and 40 are at is-
sue in this appeal. 1 They recite:
1. A glenoid implant comprising:
a shell having a protruding surface on a first
side arranged to engage the surface of a cavi-
ty formed in a glenoid extending between pe-
ripheral glenoid surfaces, and
a flat surface on the first side adjacent the pro-
truding surface arranged to engage the pe-
ripheral glenoid surfaces adjacent the cavity,
and
a wear-resistant articulating surface on a sec-
ond side opposite the flat surface and the
protruding surface.
1 Rejected claims 15, 18, and 33–39 depend from
claim 1. See J.A. 271–72.
4 IN RE: CHUDIK
40. A glenoid implant comprising:
a protruding surface on a first side arranged to
engage the surface of a cavity formed in a gle-
noid extending between peripheral glenoid
surfaces, and
a substantially planar wear-resistant articulat-
ing surface on a second side opposite the pro-
truding surface.
J.A. 3 (disputed term emphasized).
2. Prior Art
Rambert
FR 2 579 454 (Oct. 3, 1986) (“Rambert”) discloses a
glenoid implant with a shell element. J.A. 188.
IN RE: CHUDIK 5
Rambert Figure 2 shows element 27b in contact with
anchoring element 27a, which in turn contacts the glenoid
cavity. J.A. 198.
Bouttens
WO 01/47442 A1 (July 5, 2001) (“Bouttens”) discloses
a shoulder prosthesis assembly for implantation in the
glenoid. J.A. 199.
Bouttens Figure 1 shows the protruding surface 11 facing
away from the glenoid cavity and toward the humerus.
J.A. 210. It also shows screws on the opposite side of the
protruding surface attaching the implant to the glenoid
region. See id.
3. Examination Proceedings
Mr. Chudik filed the ’631 application on September
25, 2006. On June 5, 2012, the Examiner issued a Final
6 IN RE: CHUDIK
Action rejecting claims 1, 15, 18, and 33–40. The Exam-
iner made four rejections:
• Claim 40 rejected under 35 U.S.C. § 112, first
paragraph 2;
• Claims 1, 15, and 33–39 rejected under 35
U.S.C. § 102(b) as anticipated by Rambert;
• Claim 40 rejected under 35 U.S.C. § 102(b) as
anticipated by Bouttens;
• Claim 18 rejected under 35 U.S.C. § 103(a) as
obvious over Rambert and Church.
Mr. Chudik filed a Notice of Appeal of the Examiner’s
rejections on September 1, 2012.
4. Board Proceedings
The parties briefed Mr. Chudik’s appeal in 2012 and
2013. The Board issued its Decision on Appeal on Febru-
ary 10, 2016. It did not sustain the Examiner’s determi-
nation that claim 40 failed to comply with § 112, first
paragraph. But it did sustain the Examiner’s determina-
tions that:
• Claims 1, 15, and 33–39 were anticipated by
Rambert;
• Claim 40 was anticipated by Bouttens;
• Claim 18 would have been obvious over Ram-
bert and Church.
2 35 U.S.C. §§ 102, 103, and 112 were replaced with
new versions in the America Invents Act. See Leahy
Smith America Invents Act, Pub. L. No. 112-29, §§ 3(b),
3(c), and 4(c), 125 Stat. 284, 285–87, 296 (2011) (“AIA”).
The new versions of §§ 102, 103, and 112 do not apply in
this case, given that the ’631 patent application predates
those revisions. See AIA, §§ 3(n)(1), 4(e), 125 Stat. 293,
297. Thus, we refer to the pre-AIA version of Title 35.
IN RE: CHUDIK 7
In support of its findings, the Board stated that “inde-
pendent claim 1 is an apparatus claim and does not
require the recited surfaces to ‘engage’ the specified
glenoid regions; rather, independent claim 1 requires only
that the recited surfaces be ‘arranged’ for such engage-
ment.” J.A. 6. Therefore, according to the Board, “the
fact that Rambert’s protruding and flat surfaces are not
described or depicted as actually engaging the specified
glenoid regions is not dispositive, as they can still be
arranged to do so.” Id. The Board thus sustained the
Examiner’s rejection of claims 1, 15, and 33–39 based on
Rambert.
As for claim 40, another apparatus claim, the Board
stated that Mr. Chudik “does not adequately address why
Bouttens’s surface 11 is structurally incapable of engag-
ing a glenoid cavity that matches its protruding profile.”
J.A. 8. The Board noted that “the claim language does not
specify shape characteristics of the cavity, and the Speci-
fication conveys that the cavity can have ‘any’ shape that
matches that of the protruding surface.” Id. It also found
that the Examiner’s construction of the term “articulating
surface” to mean “where elements unite as a joint” was
“broad but reasonable” and “consistent with the Specifica-
tion.” J.A. 9. Therefore, the Board sustained the rejection
of claim 40 based on Bouttens.
Finally, the Board affirmed the rejection of claim 18
as obvious over Rambert and Church. J.A. 10. The
Board’s reasoning rested only on Rambert; it did not
discuss Church. See id. On appeal, Mr. Chudik states
that “the Church patent is of no consequence in this case.”
Opening Br. 16. Similarly, the Government makes no
separate argument regarding Church. We therefore do
not address whether claim 18 would have been obvious
over Rambert and Church.
Chudik timely appeals, arguing that neither Rambert
nor Bouttens anticipates the ’631 application without
8 IN RE: CHUDIK
improper modification and that the Examiner wrongly
construed “articulating surface.” We have jurisdiction
under 28 U.S.C. § 1295(a)(4)(A).
STANDARD OF REVIEW
Anticipation is a question of fact we review for sub-
stantial evidence. Blue Calypso, LLC v. Groupon, Inc.,
815 F.3d 1331, 1341 (Fed. Cir. 2016). Substantial evi-
dence is “such relevant evidence as a reasonable mind
might accept as adequate to support a conclusion.” Uni-
versal Camera Corp. v. NLRB, 340 U.S. 474, 477 (1951).
“Where two different conclusions may be warranted based
on the evidence of record, the Board’s decision to favor one
conclusion over the other is the type of decision that must
be sustained by this court as supported by substantial
evidence.” In re Bayer Aktiengesellschaft, 488 F.3d 960,
970 (Fed. Cir. 2007). Though our review of an anticipa-
tion finding is deferential, we have not hesitated to re-
verse the Board when substantial evidence does not
support its findings. See Nidec Motor Corp. v. Zhongshan
Broad Ocean Motor Co., __ F.3d __, 2017 WL 977034 (Fed
Cir. Mar. 14, 2017); In re Skvorecz, 580 F.3d 1262, 1267–
68 (Fed. Cir. 2009).
DISCUSSION
1. Legal Standard
A patent claim is invalid for anticipation under 35
U.S.C. § 102 when a prior art reference describes “each
and every claim limitation and enable[s] one of skill in the
art to practice an embodiment of the claimed invention
without undue experimentation.” ClearValue, Inc.
v. Pearl River Polymers, Inc., 668 F.3d 1340, 1344 (Fed.
Cir. 2012) (quotation marks and citation omitted). Simply
put, an anticipated invention “is not new.” Skvorecz, 580
F.3d at 1266. By contrast, a prior art reference that
“‘must be distorted from its obvious design’” does not
anticipate a patent claim. In re Wells, 53 F.2d 537, 539
IN RE: CHUDIK 9
(C.C.P.A. 1931) (quoting Block v. Nathan Anklet Support
Co., 9 F.2d 311, 312 (2d Cir. 1925)); accord Topliff
v. Topliff, 145 U.S. 156, 161 (1892) (“It is not sufficient to
constitute an anticipation that the device relied upon
might, by modification, be made to accomplish the func-
tion performed by the patent in question, if it were not
designed by its maker, nor adapted, nor actually used, for
the performance of such functions.”) (emphasis added). In
other words, a prior art reference anticipates a claim only
if it discloses all the elements “in the same form and order
as in the claim.” Abbott Labs. v. Sandoz, Inc., 544 F.3d
1341, 1345 (Fed. Cir. 2008); NetMoneyIN, Inc. v. VeriSign,
Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008) (same).
2. Rambert
Claim 1 of the ’631 application requires the “shell hav-
ing a protruding surface on a first side arranged to engage
the surface of a cavity formed in a glenoid extending
between peripheral glenoid surfaces.” J.A. 3. As an
initial matter, neither the parties nor the Board construed
the term “engage.” However, the Board seems to inter-
pret it to mean “contact,” which we find to be reasonable.
See J.A. 6 (admitting that because element 27b does not
“directly contact[] bone regions of the scapula 5,” it does
not actually engage). Indeed, Rambert Figure 2 shows
element 27b engaging element 27a, which in turn engages
the glenoid cavity.
10 IN RE: CHUDIK
J.A. 198. The Examiner recognized that element 27b—
not element 27a—contains the “protruding surface on a
first side” that claim 1 requires. See J.A. 6 (“The surfaces
identified by the Examiner as the ‘protruding surface’ and
the ‘flat surface’ reside on Rambert’s second portion
27b . . . , and thus are not described or depicted as directly
contacting bone regions of the scapula 5.”). The Board
found this fact not to be dispositive, however, because as
an apparatus claim, claim 1 “does not require the recited
surfaces to ‘engage’ the specified glenoid regions.” Id.
The Board found that because the surfaces of element 27b
“can still be arranged to” engage the glenoid regions,
Rambert anticipates claims 1 and its dependent claims 15
and 33–39. We disagree.
Claim 1 is indeed an apparatus claim, and the “ar-
ranged to engage” language could imply that the protrud-
ing surface on the flat side need not always actually
IN RE: CHUDIK 11
engage the glenoid cavity surface. However, it must be at
least capable of doing so. 3 Here, element 27b’s protruding
surface cannot be “arranged to engage” the glenoid cavity
surface without removing element 27a. Prior art that
“must be distorted from its obvious design” does not
anticipate a new invention. Wells, 53 F.2d at 539; see also
Topliff, 145 U.S. at 161 (prior art that must be modified
“to accomplish the function performed by the patent in
question” does not anticipate). 4 Neither the Examiner nor
the Board described how the protruding surface of Ram-
bert’s element 27b is capable of engaging the surface of
the glenoid cavity without removing element 27a, i.e.,
tearing the invention apart. Therefore, substantial evi-
dence does not support the Board’s anticipation finding
based on Rambert.
3. Bouttens
Claim 40 of the ’631 application requires “a protrud-
ing surface on a first side arranged to engage the surface
of a cavity formed in a glenoid extending between periph-
eral glenoid surfaces.” J.A. 3. The Board concluded that
3 Neither the parties nor the Board construed the
term “arranged to.” We assume for purposes of this
opinion that “arranged to” is analogous to “adapted to,”
which means “made to,” “designed to,” or “configured to.”
In re Man Mach. Interface Techs. LLC, 822 F.3d 1282,
1286 (Fed. Cir. 2016). “Adapted to” occasionally has a
broader meaning of “capable of” or “suitable for.” Id.
Even under this broader definition, element 27b is not
capable of engaging with the glenoid cavity surface.
4 The government relies heavily on In re Schreiber,
128 F.3d 1473 (Fed. Cir. 1997), which involved an old
structure from the prior art being put to a new use. But
that is not the situation here, because Rambert teaches a
different structure than the ’631 application with an
identical use.
12 IN RE: CHUDIK
Bouttens anticipates claim 40 because its surface 11 is not
“structurally incapable of engaging a glenoid cavity that
matches its protruding profile,” and because “the Specifi-
cation conveys that the cavity can have ‘any’ shape that
matches that of the protruding surface.” J.A. 8. We
disagree.
Mr. Chudik’s brief asks two relevant questions: “If
the Bouttens implant’s ‘protruding surface’ is faced about,
turned 180 degrees, where does the Examiner or the
Board propose to fasten it in a person’s shoulder? What is
going to happen to the humerus?” Appellant’s Op. Br. 15.
The Board does not address either question. The Board’s
reasoning only makes sense if the user rotates Bouttens
180 degrees, thereby rendering the protruding surface 11
capable of engaging the glenoid cavity instead of the
humerus.
Figure 1 demonstrates that rotating Bouttens so that
the protruding surface faces the glenoid cavity would
require relocating the screws for Bouttens to remain
operable. This endeavor would constitute a significant
IN RE: CHUDIK 13
and impermissible modification. Wells, 53 F.2d at 539;
Topliff, 145 U.S. at 161.
The Board’s determination of anticipation was erro-
neous because the Board failed to describe how a user
could rotate Bouttens without modification while continu-
ing “to accomplish the function performed by” the ’631
application. Topliff, 145 U.S. at 161. We therefore re-
verse the Board’s anticipation finding as not supported by
substantial evidence. We need not resolve Mr. Chudik’s
second argument about whether the Examiner correctly
construed “articulating surface.”
CONCLUSION
Substantial evidence does not support the Board’s de-
termination that Rambert or Bouttens anticipate claims
1, 15, 18, or 33–40 of the ’631 application. We reverse the
Board’s rejection of those claims.
REVERSED
COSTS
Costs to Mr. Chudik.