UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`NUVASIVE, INC.
`Petitioner
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`v.
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`WARSAW ORTHOPEDICS, INC.
`Patent Owner
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`Case IPR2013-00206
`Patent 8,251,997
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`PETITIONER OBJECTIONS TO UNAUTHORIZED SUBMISSION
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`AND EVIDENCE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`NUVASIVE, INC.
`Petitioner
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`v.
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`WARSAW ORTHOPEDICS, INC.
`Patent Owner
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`Case IPR2013-00206
`Patent 8,251,997
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`PETITIONER OBJECTIONS TO UNAUTHORIZED SUBMISSION
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`AND EVIDENCE
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`Case IPR2013-00206
`Attorney Docket No: 13958-112IP2
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`Introduction
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`On January 14, 2014, Patent Owner submitted new exhibits WARSAW2057
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`though WARSAW2062 in the present inter partes review proceeding, and stated in
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`a “Notice of Supplemental Evidence” paper (submitted also on January 14, 2014)
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`that the exhibits were being submitted in response to Petitioner’s December 30,
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`2013 objections—purportedly as “supplemental evidence pursuant to 37 C.F.R. §
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`42.64(b)(2).” Contrary to 37 C.F.R. § 42.6(c), no authorized paper was submitted
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`with the new exhibits that “cited” to them. In addition, no explanation
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`accompanying the exhibit submission provided what, if any, portions of the
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`exhibits are relevant, and to what issues in the proceedings the exhibits are
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`relevant.
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`Furthermore, at least new WARSAW2060 is not a single document but
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`rather a compilation of two different documents including prior witness testimony
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`taken during different days of a trial. None of WARSAW2057-2062 was
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`previously made of record in this proceeding (for example, not referenced in the
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`Patent Owner’s Preliminary Response or the Patent Owner’s Response).
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`To the extent any of WARSAW2057-2060 is somehow a different version of
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`documents previously made of record in this proceeding, there is no explanation as
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`to whether prior exhibits were being withdrawn and no explanation addressing this
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`Board’s rule that exhibits are not to be resubmitted (see 37 C.F.R. § 42.6(d)).
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`2
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`Case IPR2013-00206
`Attorney Docket No: 13958-112IP2
`Regarding WARSAW2061-2062 in particular, Warsaw has represented that these
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`two documents are intended to replace withdrawn Exhibits WARSAW2046-2047,
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`which were improperly submitted in violation of a protective order from the
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`District Court of the Southern District of California. These newly submitted
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`Exhibits WARSAW2061-2062, however, are different from the withdrawn
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`Exhibits WARSAW2046-2047 and thus reflect an attempt to add evidence in
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`violation of 37 C.F.R. § 42.6(c).
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`Objection to Unauthorized Submission of Exhibits
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`Accordingly, Petitioner objects to the improper submission of all of the
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`newly submitted exhibits—namely, WARSAW2057 through WARSAW2062—
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`into the record of the present proceeding without authorization by the Board and
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`without citation in a document explaining the relevance of the exhibits (as required
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`under 37 C.F.R. § 42.6(c). These new exhibits were not referenced in the Patent
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`Owner’s Response previously submitted in December 2013 or the earlier
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`Preliminary Response. In addition, no authorization was sought or obtained to
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`make this submission under 37 C.F.R. § 42.120.
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`Also, Petitioner submits that while 37 C.F.R. § 42.64(b)(2) provides for the
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`“service” of supplemental evidence in response to a timely made objection under
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`37 C.F.R. § 42.64(b)(1), the rules of the Board, including 37 C.F.R. § 42.64(b)(2),
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`do not authorize the submission of the supplemental exhibits into the evidence of
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`3
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`Case IPR2013-00206
`Attorney Docket No: 13958-112IP2
`record in the proceeding separate and independent from any proper submission in
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`the proceeding. The unauthorized submission of exhibits is further improper here
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`given that Warsaw has not referenced these exhibits in any properly submitted
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`paper or explained the relevance of the submitted exhibits. See 37 C.F.R. §
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`42.6(c).
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`Objections to Evidence under 37 C.F.R. 42.64(b)(1)
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`In addition, Petitioner further objects, under 37 C.F.R. 42.64(b)(1), to
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`exhibits WARSAW2061-2062 under Fed. R. Evid. 401 and 402 (relevance), 403
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`(Prejudice, Confusion, Waste of Time, or Other Reasons), 802 (hearsay) and 901
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`(authentication). In addition, Petitioner notes that WARSAW2059 is insufficient
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`to overcome the previous evidentiary objections for WARSAW2050-2052 (as
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`provided in Petitioner’s December 30, 2013 objections).
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`These objections are being timely served within five business days of Patent
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`Owner’s service of the exhibits, in accordance with Bd. R. 42.64(b)(1).
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`Date: Jan. 22, 2014
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`Customer Number 26171
`Fish & Richardson P.C.
`Telephone: (612) 337-2508
`Facsimile: (612) 288-9696
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`Respectfully submitted,
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` /Stephen R. Schaefer, Reg. No. 37,927/
`Stephen R. Schaefer
`Reg. No. 37,927
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`4
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`Case IPR2013-00206
`Attorney Docket No: 13958-112IP2
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 CFR §§ 42.6(e)(4) and 42.205(b), the undersigned certifies
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`that on January 22, 2014, a complete and entire copy of this Petitioner Objections
`to Unauthorized Submission and Evidence was provided via email to the Patent
`Owner by serving the correspondence email addresses of record as follows:
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`Thomas H. Martin
`Wesley C. Meinerding
`Email: tmartin@martinferraro.com
`Email: docketing@martinferraro.com
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`/Edward G. Faeth/
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`Edward G. Faeth
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`(858) 678-5667
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`5
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