`
`
`
`Paper 46
`Entered: March 28, 2014
`
`
`
`
`
`Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`NUVASIVE, INC.
`Petitioner
`
`v.
`
`WARSAW ORTHOPEDIC, INC.
`Patent Owner
`_______________
`
`Cases IPR2013-00206 (Patent 8,251,997 B2)
`IPR2013-00208 (Patent 8,251,997 B2)1
`_______________
`
`
`
`Before SALLY C. MEDLEY, LORA M. GREEN, and STEPHEN C. SIU,
`Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`1 This order addresses issues that are generally the same in both cases. Therefore,
`we exercise discretion to issue one order to be filed in each of case. The parties,
`however, are not authorized to use this style heading in subsequent papers since
`doing so may cause confusion.
`
`
`
`IPR2013-00206 and -00208
`Patent 8,251,997 B2
`
`
`
`On March 25, 2014, a conference call was held involving counsel for the
`
`respective parties and Judges Medley, Green, and Siu. The purpose of the
`
`conference call was for Patent Owner to request that the Board dismiss without
`
`prejudice Petitioner’s reply (IPR2013-00206, Paper 43 and IPR2013-00208, Paper
`
`40). Petitioner opposed the request.
`
`According to Patent Owner, Petitioner’s reply, in each case, fails to comply
`
`with several provisions, including (1) improper incorporation by reference under 37
`
`C.F.R. § 42.6(a)(3); (2) exceeding the scope of the reply under 37 C.F.R. §
`
`42.23(b); and (3) exceeding the scope of prior art available in an inter partes review
`
`under 35 U.S.C. § 311. Patent Owner requested that the Petitioner’s replies be
`
`dismissed and re-filed. Petitioner disagrees that the replies fail to comply with the
`
`provisions outlined by Patent Owner.
`
`The request to dismiss the replies is denied. As explained during the call,
`
`whether a reply contains arguments or evidence that is outside the scope of a proper
`
`reply under 37 C.F.R. § 42.23(b) is left to the determination of the Board.
`
`Specifically, the Board will determine whether a reply and evidence are outside the
`
`scope of a proper reply and evidence when the Board reviews all of the parties’
`
`briefs and prepares the final written decision. If there are improper arguments and
`
`evidence presented with a reply, the Board may exclude the reply and related
`
`evidence, for example. Moreover, if a party improperly incorporates by reference
`
`material into another paper, the party runs the risk that such incorporated material
`
`will not be considered. For all of these reasons, the Board will take under
`
`
`
`2
`
`
`
`IPR2013-00206 and -00208
`Patent 8,251,997 B2
`
`consideration any alleged violations in due course, upon considering the record at
`
`the end of the trial.
`
`As further discussed, Patent Owner is permitted to cross-examine reply
`
`declarants, and if necessary, Patent Owner may file a motion for observation
`
`regarding cross-examination of a reply witness during DUE DATE 4. As noted, in
`
`the Scheduling Order (IPR2013-00206, Paper 18; IPR2013-00208, Paper 17), a
`
`motion for observation on cross-examination is a mechanism to draw the Board’s
`
`attention to relevant cross-examination testimony of a reply witness. The
`
`observation must be a concise statement of the relevance of precisely identified
`
`testimony to a precisely identified argument or portion of an exhibit (including
`
`another part of the same testimony). An observation is not an opportunity to raise
`
`new issues, to re-argue issues, or to pursue objections. Each observation should be
`
`in the following form:
`
`In exhibit ___, on page ___, lines ___, the witness testified ___. That
`testimony is relevant to the ____ [stated or argued] on page ___, lines
`___ of ___. The testimony is relevant because ___.
`
`
`Each observation should not exceed one short paragraph, and the entirety of
`
`the observations is limited to five pages. The Board may decline consideration or
`
`entry of argumentative observations.
`
`It is
`
`ORDERED that Patent Owner’s request for the Board to dismiss without
`
`prejudice Petitioner’s reply in each case is denied; and
`
`
`
`
`
`3
`
`
`
`IPR2013-00206 and -00208
`Patent 8,251,997 B2
`
`
`FURTHER ORDERED that Patent Owner is authorized to file a motion for
`
`observation on cross-examination by DUE DATE 4.
`
`
`
`
`
`
`
`PETITIONER:
`
`Stephen Schaefer
`schaefer@fr.com
`
`Michael Hawkins
`hawkins@fr.com
`
`Todd Miller
`miller@fr.com
`
`
`
`4
`
`PATENT OWNER:
`
`Thomas Martin
`tmartin@martinferraro.com
`
`Wesley Meinerding
`wmeinerding@martinferraro.com
`
`Nimalka Wickramasekera
`nwickramasekera@kirkland.com
`
`
`
`
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
