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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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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’S RESPONSE TO THE MOTION FOR OBSERVATION REGARDING
`CROSS-EXAMINATION OF DR. McAFEE
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`Case IPR2013-00206
`Attorney Docket No: 13958-112IP2
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`Response to the Introduction
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`This paper responds to Patent Owner’s motion for observation regarding cross-
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`examination of Dr. McAfee, filed Apr. 22, 2014. Patent Owner states in its introductory
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`paragraph that it filed its observations based on “Dr. McAfee’s prior sworn testimony” “[i]n
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`lieu of taking additional depositions.” However, Petitioner made Dr. McAfee and declarants
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`Mr. Miles, Dr. Brantigan, and Dr. Jacobson available to Patent Owner for depositions. It
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`was Patent Owners choice to comment on Dr. McAfeee’s prior testimony and to forgo a
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`deposition in which Dr. McAfee could explain that the supposed inconsistencies do not
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`exist. Petitioner disagrees with Patent Owner’s characterization of Dr. McAfee’s prior
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`testimony as explained below.
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`Response to Observation No. 1
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`In Observation No. 1, Patent Owner identifies previous testimony by Dr. McAfee
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`discussing the meaning of the term “lateral.” The line of questioning in Exhibit 1040 on
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`page 38 line 11 to page 39 line 1 is directed to the meaning of “the term ‘lateral’ generally,
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`depending on the particular circumstances and context.” Dr. McAfee, however, was not
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`asked about of the meaning of the term “lateral” as that term is used in the Jacobson patent.
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`Dr. McAfee’s declaration testimony that “the term ‘lateral’ can have different meanings in
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`other contexts” but that “a person of skill in the art during the early 1990s would clearly
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`recognize that that the use of the word ‘lateral’ as used in the context of Jacobson refers to
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`2
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`Case IPR2013-00206
`Attorney Docket No: 13958-112IP2
`a direct lateral approach” is entirely consistent with his deposition testimony and with the
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`teachings of the Jacobson patent. See Ex. 1029, ¶ 36 (emphasis in original); see also ¶ 39.
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`Response to Observation No. 2
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`In Observation No. 2, Patent Owner identifies previous testimony by Dr. McAfee
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`regarding spinal nerves. There is nothing inconsistent between the identified testimony and
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`Dr. McAfee’s declaration testimony. See Ex. 1029, ¶ 42.
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`Response to Observation No. 3
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`In Observation No. 3, Patent Owner identifies the same testimony by Dr. McAfee as
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`identified in Observation No. 1. The line of questioning in Exhibit 1040 on page 38 line 11 to
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`page 39 line 1 is directed to the meaning of “the term ‘lateral’ generally, depending on the
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`particular circumstances and context.” There were no questions regarding the meaning of
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`the term “lateral” in the context of the Brantigan ‘327 patent. This general testimony is
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`consistent with Dr. McAfee’s declaration testimony regarding the meaning of the term
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`“lateral” in the specific context of the Brantigan ‘327 patent. See Ex. 1029, ¶¶ 59-64.
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`Response to Observation No. 4
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`In Observation No. 4, Patent Owner identifies testimony by Dr. McAfee regarding
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`what the Michelson ‘247 patent states. In Exhibit 1040 on page 45, lines 6-16, counsel
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`asked and the witness testified about what the ‘247 patent “actually states.” All parties
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`agree that the Michelson ‘247 patent does not state the words identified in counsel’s
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`Case IPR2013-00206
`Attorney Docket No: 13958-112IP2
`deposition question. Dr. McAfee’s deposition testimony, however, is not inconsistent with
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`his declaration testimony, which is directed to what the Michelson ‘247 patent’s text and
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`figures (specifically excluded from the question posed to Dr. McAfee in deposition) do state,
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`show, and suggest to a person of ordinary skill in the art. See Ex. 1029, ¶¶ 83-84.
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`Date: May 9, 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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`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 that on
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`May 9, 2014, a complete and entire copy of this PETITIONER’S RESPONSE TO THE
`MOTION FOR OBSERVATION REGARDING CROSS-EXAMINATION OF DR. McAFEE
`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
`Martin & Ferraro, LLP
`1557 Lake O’Pines Street, NE
`Hartville, OH 44632
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`Email: tmartin@martinferraro.com
`Email: docketing@martinferraro.com
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`/Diana Bradley/
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`Diana Bradley
`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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