The parties and the patent

The proceeding is Treace Medical Concepts, Inc. v. Paragon 28, Inc., IPR2027-00013. Treace is the petitioner and names itself as the only real party in interest; the petition names Paragon 28, Inc. as the patent owner. U.S. Patent 10,123,831, titled Bone Compression Device and Method, issued November 13, 2018 from Application 15/058,695, filed March 2, 2016, and claims priority to a provisional application filed March 3, 2015. It names Matthew P. Gephart as the inventor. Google Patents lists Paragon 28 Inc and RTI Surgical Inc as current assignees. The petition quotes the specification as relating to devices for compressing bones together to encourage bone growth, using a bone plate that is flexed by a pair of manipulators for implantation.

What the claims cover

The patent has 29 claims. Independent claims 1, 7, and 9 recite a surgical kit; independent claims 11 and 20 recite methods of stabilizing a plurality of bones. Claim 1 recites a plurality of bone anchors; a bone plate with bone anchor receiving portions that have through openings sized for the anchors, the plate having a flexed and an unflexed configuration; a plurality of elongated manipulators whose distal end portions connect to the bone anchor receiving portions; and cannulas through the manipulators that align with the plate's through bores and are sized to let the anchors pass through them into the bores, wherein the bone anchor receiving portions include lips and the manipulators' distal end portions have side walls with openings sized to receive the lips. Claim 20 recites positioning a deformed bone plate next to bones using manipulators connected to it, advancing bone anchors through cannulas of the manipulators into the plate's through bores, and driving the anchors into the bones. Dependent claim 29 adds that providing the deformed bone plate includes chilling it.

The grounds and the prior art

The petition presents four grounds: (1) claims 9, 11 to 14, 17 to 21, and 23 to 28 are anticipated under 35 U.S.C. 102 by U.S. Publication 2017/0196604 (Hartdegen); (2) claims 1 to 8 are obvious under 35 U.S.C. 103 over U.S. Publication 2009/0281543 (Orbay) and Hartdegen; (3) claims 1 to 10, 13, 15, 16, and 22 are obvious over Hartdegen and Orbay; and (4) claim 29 is obvious over Hartdegen and U.S. Patent 5,246,443 (Mai). It relies on a declaration from Daniel C. Farber, M.D.

The petition describes Hartdegen as an osteosynthesis system with a bone plate, bone screws, and an inserter of two tube members that hold the plate in a deformed configuration while screws are advanced through the tubes, with a clip that fixes the tubes relative to each other. Hartdegen published July 13, 2017, after the '831 patent's March 3, 2015 priority date; the petition asserts prior art status under 35 U.S.C. 102(a)(2) and 102(d) based on Hartdegen's July 10, 2014 provisional application and argues that the provisional supports at least one published Hartdegen claim and the disclosures the petition relies on. It describes Orbay as a formable bone plate system with screw-receiving nodes and clamps that engage the nodes to bend the plate, and Mai as a shape-memory alloy clip or plate that is chilled into a straight shape for implantation and takes its compressing shape at body temperature.

The petition says this art and these arguments were not previously considered by the Office, and that the prosecution history contains no examiner's reasons for allowance. It says Treace is not aware of any evidence of secondary considerations. Treace stipulates that, if the petition is instituted, it will not pursue in district court the grounds raised or that reasonably could have been raised in the IPR, citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020).

Related matters and counsel

Under related matters, the petition lists Paragon 28, Inc. and Disior Oy v. Treace Medical Concepts, Inc. and MIOS Marketing, LLC d/b/a RedPoint Medical 3D, No. 1:25-cv-01092-GBW (D. Del.), filed August 29, 2025 according to the court's docket; IPR2027-00007; IPR2027-00008; and an IPR petition filed the same day against U.S. Patent 10,932,833, which Google Patents lists with the same title and assignees as the '831 patent. The petition does not say which patents are asserted in the Delaware case.

Lead counsel is Richard McCaulley of McCaulley Law Group. Back-up counsel are Jeremy M. Plenzler and Joshua Van Hoven of Van Hoven PC, Paul LaVanway of Fredrikson & Byron P.A., and Andres F. Arrubla and Robert R. Fredeking of Treace. The certificate of service says the petition was served on Fitch Even Tabin & Flannery LLP for the patent owner, with a courtesy copy by email to Ali S. Razai, identified as Paragon 28's litigation counsel.

What to watch next

Watch for a notice according the petition a filing date, Paragon 28's preliminary response, due three months after that notice under 37 CFR 42.107(b), and whether the Board handles this petition together with the concurrent petition against the '833 patent.