UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
`
`NUVASIVE, INC.
`Petitioner
`
`v.
`
`WARSAW ORTHOPEDIC, INC.
`Patent Owner
`
`
`
`Patent Number: 8,251,997 B2
`Issue Date: August 28, 2012
`
`METHOD FOR INSERTING AN ARTIFICIAL IMPLANT BETWEEN TWO
`ADJACENT VERTEBRAE ALONG A CORONAL PLANE
`
`
`
`__________________
`
`
`Case IPR2013-00206
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`
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`______________________________________________________
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`
`
`PETITIONER’S REQUEST FOR REHEARING
`UNDER 37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
`
`NUVASIVE, INC.
`Petitioner
`
`v.
`
`WARSAW ORTHOPEDIC, INC.
`Patent Owner
`
`
`
`Patent Number: 8,251,997 B2
`Issue Date: August 28, 2012
`
`METHOD FOR INSERTING AN ARTIFICIAL IMPLANT BETWEEN TWO
`ADJACENT VERTEBRAE ALONG A CORONAL PLANE
`
`
`
`__________________
`
`
`Case IPR2013-00206
`
`
`
`______________________________________________________
`
`
`
`PETITIONER’S REQUEST FOR REHEARING
`UNDER 37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`
`Case IPR2013-00206
`U.S. Patent No. 8,251,997
`Our Ref. 13958-0112IP2
`
`
`TABLE OF CONTENTS
`
`
`I. Statement of the precise relief requested. .................................................................. 1
`II. After reconsidering the evidence, the Board should find that claims 9-16 and
`claims 24-30 have been shown to be unpatentable. ......................................................... 1
`a. Claims 9-16 (Grounds 1-2). ........................................................................................ 2
`i. Evidence that Michelson ‘247 discloses an implant length spanning
`substantially the full length of the adjacent vertebral bodies along the direction of
`insertion was misapprehended or overlooked. .......................................................... 2
`ii. The Final Written Decision misapprehended or overlooked the unrebutted
`evidence showing that Michelson ‘247, when considered in light of Jacobson’s
`teaching of performing a fusion procedure using a lateral approach, suggests an
`implant length spanning substantially the full transverse width of vertebral
`bodies. ............................................................................................................................ 6
`b. Claims 24-30 (Grounds 5-6). .................................................................................... 13
`i. Evidence that Jacobson in view of Michelson '247 discloses the “full
`transverse width” claim limitation was misapprehended or overlooked. .............. 13
`ii. The broadest reasonable construction of the phrase “full transverse width”
`of claim 24 applicable to these proceedings includes within its scope implant
`lengths that are less than the full transverse width. ................................................ 13
`III. Conclusion ................................................................................................................... 15
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`i
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`Case Law
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`TABLE OF AUTHORITIES
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`Keller, 642 F.2d 413, 426 (C.C.P.A. 1981) ............................................................................. 7
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`Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986) ....................................................... 7
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`ii
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`I.
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`Statement of the precise relief requested.
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`Petitioner respectfully seeks rehearing under 37 C.F.R. § 42.71(d) of the Final
`
`Written Decision of July 10, 2014 (Paper 65), requesting that the Board modify its decision
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`and find that claims 9-16 and 24-30 have been shown to be unpatentable.
`
`II.
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`After reconsidering the evidence, the Board should find that claims 9-16
`and claims 24-30 have been shown to be unpatentable.
`The only reason given in the Final Written Decision for the Board’s conclusion with
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`respect to claims 9-16 and 24-30 was that it had not been shown that “Michelson ‘247
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`discloses or suggests an ‘implant being sized to occupy the full’ (or ‘substantially full’)
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`dimension of the vertebral body, as recited in claim 9 or claim 24.” [Paper 65 at 33.]
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`Petitioner believes the Board misapprehended and overlooked evidence regarding the
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`disclosure and suggestion of Michelson ‘247 with respect to the size of the fusion implant
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`compared to the vertebral body in the analysis of Section II.B of the Final Written Decision
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`[Paper 65 at 31-33], specifically (a) evidence that Michelson ‘247 discloses an implant
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`length that spans substantially the full length of the adjacent vertebral bodies along the
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`direction of insertion, especially when the term “substantially” is properly construed in view
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`of the ‘997 specification; (b) evidence that it would have been obvious based upon
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`Jacobson and Leu in view of the implant sizing teachings of Michelson ‘247 to size a
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`laterally inserted implant so that it spans substantially the full transverse width of the
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`adjacent vertebral bodies, again especially when the term “substantially” is properly
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`construed in view of the ‘997 specification; and (c) evidence that the prior art also teaches
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`the “full transverse width” limitation of claim 24 when that claim limitation is properly
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`construed. Upon reconsideration of the evidence, the Board should find that claims 9-16
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`and 24-30 are unpatentable.
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`a. Claims 9-16 (Grounds 1-2).
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`Petitioner’s contentions under Grounds 1-2 are that Michelson ‘247 teaches an
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`implant that extends nearly the full length of the vertebrae along the direction of insertion,
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`and applying that implant length teaching of Michelson ‘247 to a laterally inserted implant as
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`taught by Jacobson and Leu, the resulting method and implant placement would meet the
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`“substantially the full transverse width of the vertebral bodies” claim limitation. [See Paper 5
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`(Petition) at 10 & 19-20; Ex. 1001 (First McAfee Declaration) at ¶¶ 28-29.] The Final Written
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`Decision, in rejecting this contention [Paper 65 at 31-33], appears to have overlooked or
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`misapprehended the full teachings of Michelson ‘247, the specifics of Petitioner’s
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`obviousness contention, and the proper interpretation of the “substantially full transverse
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`width” claim language when read in view of the ‘997 specification.
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`i. Evidence that Michelson ‘247 discloses an implant length
`spanning substantially the full length of the adjacent vertebral
`bodies along the direction of insertion was misapprehended or
`overlooked.
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`The Final Written Decision incorrectly states that Michelson ‘247 “merely discloses a
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`specific length of implant (26 millimeters) and a specific length of a drilled opening, but does
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`not disclose the length of the implant (or opening) in relation to the size of the vertebral
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`body,” and that Michelson ‘247 “fails to disclose or suggest sizing the implant to obtain the
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`maximum sized implant with respect to the vertebral body.” [Paper 65 at 32.] This
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`overlooks or misapprehends the clear teachings of Michelson ‘247 (particularly Figure 5 and
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`col. 5, lines 1-7), as well as the proper interpretation of “substantially full transverse width”
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`when that phrase is properly construed in a manner consistent with the ‘997 specification.
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`The Final Written Decision makes
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`no mention of Figure 5 of Michelson ‘247,
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`despite the reliance Petitioner placed on
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`that figure in its Petition. [See Paper 5 at
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`10 & 19-20; Ex. 1001 (First McAfee Decl.)
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`at ¶ 29; Paper 43 (Reply) at 10; Ex. 1029
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`(Second McAfee Decl.) at ¶¶ 82-83.]
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`Figure 5 clearly shows an implant spanning the full length of the adjacent vertebrae along
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`the direction of insertion, except for a small recess of only “at least 2 millimeters” at the
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`trailing end of the implant. That implant sizing and placement shown in Figure 5 is certainly
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`more than enough for the implant to be “substantially” the full length of the adjacent
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`vertebrae along the direction of insertion, especially when the relationship between the
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`implant length and size of adjacent vertebrae (“substantially full”) is properly interpreted in
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`view of the teachings of the ‘997 patent [see Paper 5 at 5-6; Ex. 1001 at ¶¶ 17-20; Paper 43
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`(Reply) at 2-5]. Importantly, Patent Owner does not contend Figure 5 of Michelson ‘247 is
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`inaccurate. [See Paper 32 at 40-42.]
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`Also, the Final Written Decision makes no mention of Michelson ‘247 specifically
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`suggesting that the implant be sized with a length sufficient to rest on the cortical bone
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`towards the outer rim of the vertebral body:
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`Again the present invention is superior to the BAGBY device in at least four
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`ways. First, the present invention offers considerably greater surface
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`area to distribute the load. Secondly, while the BAGBY device is placed
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`centrally, the present device is placed bilaterally where the bone tends to
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`be more cortical and much stronger out towards the rim.
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`[Ex. 1008 (Michelson ‘247) at 5:1-7 (emphasis added); quoted in Ex. 1029 (Second McAfee
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`Decl.) at ¶ 84, cited in Paper 43 (Reply) at 11.] Patent Owner did not address this teaching
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`at column 5, lines 1-7 of Michelson ‘247 in its Response, despite it being directly contrary to
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`the arguments it advances. [See generally Paper 32 at 40-46.] As such, the overlooked
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`teachings of Figure 5 and the discussion at column 5, lines 1-7 are clear, unrebutted, and
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`compel a conclusion that Michelson ‘247 teaches a spinal implant that extends substantially
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`the full length of the adjacent vertebrae along the direction of insertion.
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`Patent Owner’s argument that relies upon the Michelson ‘247 drill stop limit and
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`small trailing end recess (of “at least 2 millimeters”) [see Paper 32 at 42-46] is unavailing for
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`several reasons. First, that small trailing end recess (illustrated in Figure 5) cannot make
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`the disclosed example 26 millimeter length implant “insubstantial” when compared to the
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`length of the adjacent vertebrae as also illustrated in Figure 5 [see Ex. 1029 (2nd McAfee
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`Decl.) at ¶¶ 82-83; Paper 43 (Reply) at 10], especially when the claim language
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`“substantially” is properly interpreted in view of the ‘997 patent’s disclosure [see Paper 5
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`(Petition) at p. 5-6; Ex. 1001 (1st McAfee Decl.) at ¶¶ 17-20; Paper 43 (Reply) at 2-5; Ex.
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`1029 (Second McAfee Decl.) at ¶¶ 25-30]. Second, the anatomical safety reasons for the
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`trailing end recess (namely, avoiding spinal column structures at the posterior or back side
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`of the disc space) are specific to a posterior approach to the spine, and are not present
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`when an implant is inserted laterally. [See Ex. 1029 (Second McAfee Decl.) at ¶¶ 81, cited
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`in Paper 43 (Reply) at 11.] Finally, the same “drill stop” teaching in the Michelson ‘247
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`patent is employed with the surgical method disclosed in the ‘997 patent, and thus cannot
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`be the basis for distinguishing the “substantially full” claim language if that claim language is
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`properly interpreted in view of the ‘997 specification as it must. [See Paper 43 (Reply) at
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`11; Ex. 1029 (Second McAfee Decl.) at ¶¶ 82-83; Ex. 1001 (First McAfee Decl.) at ¶ 19,
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`cited at Paper 5 (Petition) at 6.]
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`Finally, the Final Written Decision at page 33 seems to have misapprehended the
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`significance of Patent Owner’s concession that Michelson ‘247 discloses an implant that is
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`long enough to rest upon the apophyseal ring peripheral portions of the adjacent vertebrae.
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`[See Paper 65 at 33; see also Paper 43 (Reply) at 10-11.] As mentioned, Patent Owner’s
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`Response applied a narrow claim interpretation of “substantially full transverse width” that
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`improperly required that the implant be long enough such that its leading and trailing ends
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`rest upon the apophyseal ring. [See Paper 43 (Reply) at 3.] While that narrow claim
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`interpretation is improper, even under that improperly narrow claim interpretation of
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`“substantially the full” Michelson ‘247 discloses an implant that extends across substantially
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`the full length of the vertebrae along the direction of insertion.
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`Therefore, the Final Written Decision’s analysis of the implant sizing teachings of
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`Michelson ‘247 overlooked and misapprehended important evidence. When properly
`
`analyzed, this evidence compels a conclusion that Michelson ‘247 discloses an implant
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`sizing that is substantially the full length of the adjacent vertebral bodies along the direction
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`of insertion.
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`
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`ii. The Final Written Decision misapprehended or overlooked the
`unrebutted evidence showing that Michelson ‘247, when
`considered in light of Jacobson’s teaching of performing a fusion
`procedure using a lateral approach, suggests an implant length
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`spanning substantially the full transverse width of vertebral
`bodies.
`The Final Written Decision focuses its analysis of Claim 9 on whether Michelson ‘247
`
`itself discloses the “substantially the full transverse width” claim limitation, as Patent Owner
`
`did in its Response, not whether that claim limitation would have been met if one were to
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`apply the implant sizing teachings of Michelson ‘247 to a laterally inserted implant as taught
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`by Jacobson and Leu as Petitioner contended. [See Paper 65 at 31-33; but see Paper 5 at
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`10 and 19-20; Ex. 1001 at ¶¶ 29; Ex. 1029 at ¶¶ 81-85 & 91-93; Paper 43 (Reply) at 10-11,
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`13.] “But one cannot show non-obviousness by attacking references individually where, as
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`here, the rejections are based on combinations of references.” In re Keller, 642 F.2d 413,
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`426 (C.C.P.A. 1981); see also In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986)
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`(“Non-obviousness cannot be established by attacking references individually where the
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`rejection is based upon the teachings of a combination of references”).
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`Again, Petitioner’s contention under Grounds 1-2 is that Jacobson supplies the
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`teaching of the lateral approach, and that it would have been obvious to use an implant
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`such as disclosed in Michelson ‘247 in a lateral method as explained by Dr. McAfee [Ex.
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`1001 (First McAfee Decl.) at ¶¶ 28-29; Ex. 1029 (Second McAfee Decl.) at ¶¶ 79-80; see
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`also Paper 5 (Petition) at 10, 12, 19-20; Paper 43 (Reply) at 10-11, 13]. Even Patent
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`Owner’s own Dr. Michelson agrees that the implant of Michelson ‘247 can be inserted
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`laterally. [Ex. 1043 (Dr. Michelson Trial Testimony) at 258:16-259:6; Paper 43 (Reply) at
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`13.] But while the Final Written Decision agreed that the method of Jacobson was direct
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`lateral [Paper 65 at 7-16], the Final Written Decision did not address what would have been
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`obvious to one of skill in the art when combining the teachings of Jacobson and Michelson
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`‘247 for sizing an implant inserted laterally across vertebrae.
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`Indeed, the Final Written Decision makes no mention of Dr. McAfee’s testimony
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`regarding what was known by those skilled in the art prior to the ‘997 patent and why it
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`would have been obvious to those skilled in the art to size the implant disclosed by
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`Michelson ‘247 to extend substantially the full transverse width of vertebrae. [See Ex. 1001
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`(First McAfee Decl.) at ¶ 29; Ex. 1029 (Second McAfee Decl.) at ¶¶ 81-85; see also Paper 5
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`(Petition) at 19-20; Paper 43 (Reply) at 10-11.] In particular, Dr. McAfee testified:
`
`Based on my knowledge and experience in this field and my review of
`Jacobson, Leu, McAfee, and Michelson '247, I believe that a person of
`ordinary skill in the art at the time (at least as early as 1992) would have
`been prompted to use a longer threaded fusion implant (as suggested
`by Michelson '247) for use in Jacobson's lateral insertion path so that
`the implant extends longitudinally across the full disc space in the
`lateral insertion direction and advantageously provides the improved
`mechanical support and reduces the likelihood of the implant collapsing into
`the soft cancellous bone in the central region of the vertebrae. In the
`resulting surgical method of Jacobson in view of Leu, McAfee, and Michelson
`'247 (described above), the fusion implant would be inserted into the disc
`space via a lateral approach, so the relative dimensions of Michelson
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`'247's implant 50 would have been predictably selected in accordance
`with the lateral insertion orientation to provide a length of the implant
`that is “sized to occupy substantially the full transverse width of the
`vertebral bodies" and that is "greater than the depth of the disc space."
`[Ex. 1001 (First McAfee Decl.) at ¶ 29 (emphasis added); see also Paper 5 (Petition) at 19-
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`20.] The Final Written Decision also makes no mention of Dr. McAfee’s Second Declaration
`
`addressing Dr. Sachs’ improper analysis of Michelson ‘247, which explains:
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`Given that the spinal surgeon of ordinary skill in the art during the early 1990s
`had access to both Jacobson’s express suggestion for a ‘fusion’ procedure
`through Jacobson’s direct lateral cannula 11 and Michelson ‘247’s teaching
`related to a cylindrical fusion implant, such a spinal surgeon would not
`have viewed the anatomical size limitations for a posteriorly inserted
`implant to be equally applicable to a laterally inserted implant.
`[Ex. 1029 (Second McAfee Decl.) at ¶ 81 (emphasis added), see also ¶¶ 79, 82-83; Paper
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`43 (Reply) at 10-11.] Notably, Patent Owner elected not to cross-examine Dr. McAfee after
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`his Second Declaration, and so this testimony stands unrebutted.
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`Furthermore, the Final Written Decision’s interpretation of claim 9 appears to
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`misapprehend or overlook the Final Written Decision’s interpretation of the same language
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`in claim 17. Here, Patent Owner never disputed Dr. McAfee’s specific testimony that it was
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`well known by 1995 that implants should be sized to sit on the hard cortical bone toward the
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`outer rim of the vertebrae and that such teaching is specifically disclosed in both Michelson
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`‘247 and Brantigan ‘327:
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`I also disagree with Dr. Sachs’ argument in ¶ 121 that Michelson ‘247 does
`not teach that it would be advantageous to size an implant to “reduce the
`likelihood of the implant collapsing into the vertebral body” or does not teach
`that a longer implant “provides improved mechanical support.” For example,
`Michelson ‘247 suggested to spinal surgeons of ordinary skill at the
`time that it is advantageous for an implant to be sized for “considerably
`greater surface area to distribute the load” along the vertebrae and to be
`placed along bone that is “more cortical and much stronger towards the
`outer rim.” See Michelson ‘247 (Ex. 1008) at 5:1-7. Given that spinal
`surgeons of ordinary skill in the art during the early 1990s had access to both
`Jacobson’s express suggestion for a “fusion” procedure through Jacobson’s
`direct lateral cannula 11 and Michelson ‘247’s teaching related to a fusion
`implant, it would have been predictable use of Jacobson’s direct lateral
`cannula 11 to deliver the implant in Michelson ‘247 having a size that also
`provides greater surface area to distribute the load and also reaches cortical
`bone that is much stronger towards the outer rim. Lastly, I disagree with Dr.
`Sachs’ contention in ¶ 121 that “neither Dr. McAfee nor NuVasive cites to any
`reference that teaches the mechanical advantages of a longer implant.” In
`one of many examples (in addition to the teachings in Michelson ‘247
`listed above), Brantigan ‘327 certainly teaches the benefits of an implant
`that is long enough be bottomed on the “hard bone faces” at the lateral
`regions of the vertebrae. Brantigan ‘327 (Ex. 1006) at 2:1-4; 4:5-8; see also,
`supra, ¶¶ 73-78.
`[Ex. 1029 (Second McAfee Decl.) at ¶ 84 (emphasis added); Paper 43 (Reply) at 11.] This
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`Brantigan ‘327 reference is the same Brantigan reference that the Board relied on in the
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`Final Written Decision to invalidate claim 17. [Paper 65 at 17-18, see also pp. 16-21.] In
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`other words, the uncontroverted evidence shows that Brantigan and Michelson ‘247 provide
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`the same suggestion that a fusion implant should be sized to sit on the hard cortical bone
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`toward the outer rim of the vertebrae [see Ex. 1029 (Second McAfee Decl.) at ¶ 84], and the
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`Board concluded that such a length provides the claimed “substantially the full transverse
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`width” [see Paper 65 at 16-21].
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`Here, the same evidence shows that the same result logically applies in the
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`proposed combination against claim 9—namely, given that spinal surgeons of ordinary skill
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`in the art during the early 1990s had access to both Jacobson’s express suggestion for a
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`fusion procedure through a lateral cannula and Michelson ‘247’s teaching related to a fusion
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`implant that should extend long enough to rest on the cortical bone towards the outer rim,
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`that it would have been obvious to size an implant such as disclosed in Michelson ‘247 to
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`extend substantially the full transverse width of the vertebrae when used in a lateral fusion
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`procedure such as that disclosed in Jacobson. [See Ex. 1001 (First McAfee Decl.) at ¶¶ 29,
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`33; Ex. 1029 (Second McAfee Decl.) at ¶¶ 71, 79, 84; Paper 5 (Petition) at 10-11, 19-20,
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`28-29; Paper 43 (Reply) at 9-11.] This is particularly true because the ordinary surgeons’
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`knowledge of implant sizing was not limited to Michelson ‘247 alone, but rather surgeons
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`were aware of “many examples” that teach the advantages of longer implants which include
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`Michelson ‘247 and Brantigan among others. [Ex. 1029 (Second McAfee Decl.) at ¶ 84.]
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`There is no dispute that the teachings of both Brantigan and Michelson ‘247 were in the
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`prior art and known to those skilled in the art. The relevant analysis is whether sizing an
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`implant with the claimed length would have been obvious to one skilled in the art and having
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`corresponding knowledge, not a person looking at Michelson ‘247 in isolation.
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`The Final Written Decision noted Petitioner’s argument that “Patent Owner does not
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`argue Michelson ’247 discloses an implant that would not rest on the apophyseal ring”
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`[Paper 65 at 33], but Patent Owner similarly never denies that Michelson ‘247 suggests the
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`implants should be placed on the strong cortical bone “out towards the rim” [See Ex. 1008
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`(Michelson ‘247) at 5:1-7 (emphasis added); quoted in Ex. 1029 (Second McAfee Decl.) at ¶
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`84, which was cited in Paper 43 (Reply) at 11)]. The only real dispute is what an ordinary
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`surgeon in 1995 would have considered to be the resulting obvious size of a threaded cage
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`implant for purposes of applying Jacobson’s express suggestion for a lateral fusion
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`procedure [Paper 43 (Reply) at 10-11, 13, citing to Ex. 1029 ¶¶ 81-85 and 91-93], but this
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`issue and the associated evidence was either misapprehended or overlooked.
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`The Final Written Decision focused its analysis of claim 9 on whether Michelson ‘247
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`alone disclosed the “substantially the full transverse width” limitation but did not analyze
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`whether sizing an implant sized for the “substantially the full transverse width” would have
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`been obvious to a person of ordinary skill in the art. Therefore, Petitioner respectfully
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`contends that the evidence of obviousness was misapprehended or overlooked. Petitioner
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`respectfully contends that if the Board considers what implant length would have been
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`obvious to a person skilled in the art, the Board will find that the resulting implant will meet
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`the broadest reasonable construction of “substantially the full transverse width.”
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`b. Claims 24-30 (Grounds 5-6).
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`i. Evidence that Jacobson in view of Michelson '247 discloses the
`“full transverse width” claim limitation was misapprehended or
`overlooked.
`Like claim 9, the Final Written Decision’s analysis of claim 24 misapprehends or
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`overlooks evidence disclosed in Michelson ‘247 and overlooks evidence of what would have
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`been obvious to a person knowledgeable and skilled in the art when sizing an implant such
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`as disclosed in Michelson ‘247 for use in the fusion procedure disclosed in Jacobson. If the
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`phrase “full transverse width” in claim 24 is construed under a broadest reasonable
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`construction standard to be the same as the phrase “substantially the full transverse width”
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`in claim 9, Petitioner respectfully seeks rehearing for the same reasons described above
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`with respect to claim 9. [See Supra Section II.a.i & ii.]
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`ii. The broadest reasonable construction of the phrase “full
`transverse width” of claim 24 applicable to these proceedings
`includes within its scope implant lengths that are less than the
`full transverse width.
`Grounds 5-6 for claims 24-30 apply a “broadest reasonable construction” of “full
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`transverse width” that is the same as “substantially the full transverse width” recited in
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`claims 9 and 17, given that the ‘997 specification only discloses implant lengths that are less
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`than the full transverse width. [See Paper 5 at 5-7 & 12-13; Ex. 1001 at ¶¶ 17-21.]
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`Petitioner advanced alternative Ground 8 for claims 24-30 applying a narrower interpretation
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`of “full transverse width” that is not supported by the ’997 specification, and thus that ground
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`applied a later priority date to the prior art analysis. See Paper 5 at 6-7 & 58-59. The Board
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`instituted review for claims 24-30 under Grounds 5-6 but not Ground 8 [see Inst. Dec.,
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`Paper 17, at 16-19], thus seemingly adopting Petitioner’s proposed broadest reasonable
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`construction of “full transverse width” as set forth in its Petition for Grounds 5-6. As such,
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`the arguments above with respect to Michelson ‘247 under claims 9-16 apply equally to
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`claims 24-30, as discussed above in Section II.b.i.
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`Despite that, the Final Written Decision seems to apply a narrower construction to
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`claim 24, in stating:
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`Regarding claim 24, Petitioner does not assert or demonstrate sufficiently that
`Michelson ’247 discloses or suggests an implant sized to occupy the full
`transverse width of the vertebral bodies. In any event, as Patent Owner
`points out, “there is nothing in the written disclosure of Michelson ’247 that
`teaches a surgeon to size an implant to span as much of the length as
`possible from an anterior to posterior direction.” PO Resp. 41 (citing Ex.
`2039, 44:16–19; 45:6–16). Petitioner does not point out where specifically
`Michelson ’247 discloses or suggests this feature.
`[Paper 65 at 32-33 (emphasis in original).] But Petitioner both asserts and demonstrates
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`that a person skilled in the art would have found it obvious over Jacobson in view of Leu
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`14
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`Case IPR2013-00206
`U.S. Patent No. 8,251,997
`Our Ref. 13958-0112IP2
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`and Michelson ‘247 to size an implant to “occupy the full transverse width of the vertebral
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`bodies” as claimed in claim 24 under a broadest reasonable claim construction that is
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`consistent with the ‘997 specification. [See e.g. Paper 5 (Petition) at 11-12, 38-40; Paper 43
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`(Reply) at 10-11; Ex. 1001 (First McAfee Decl.) at ¶ 36; Ex. 1029 (Second McAfee Decl.) at
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`¶¶ 79-85.] Alternatively, Petitioner respectfully requests that the Board expressly address
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`the claim construction of “full transverse width” and explain why it would be unreasonable
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`for a person of ordinary skill in the art to believe that the “full transverse width” claim
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`language of claim 24 does not allow for the implant to be slightly recessed as shown in Figs.
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`23 and 30 of Michelson ‘997 and Figs. 4a and 5 of Michelson ‘247. [See Ex. 1029 at ¶¶ 83
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`and 91 (cited at page 11 and 13 of the Reply).]
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`III.
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`Conclusion
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`Accordingly, Petitioner respectfully seeks rehearing, requesting that the Board
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`modify its decision to find that claims 9-16 and 24-30 are shown to be unpatentable.
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`Respectfully submitted,
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`Dated: August 11, 2014
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` /Stephen R. Schaefer, Reg. No. 37,927/
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`Stephen R. Schaefer, Reg. No. 37,927
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`15
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`(Trial No. IPR2013-00206)
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`Attorney for Petitioner
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`Case IPR2013-00206
`U.S. Patent No. 8,251,997
`Our Ref. 13958-0112IP2
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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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`August 11, 2014, a complete and entire copy of this Petitioner’s Request for Rehearing was
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`provided via email to the Patent Owner by serving the correspondence email addresses of
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`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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`
`
`/Jessica K. Detko/
`
`Jessica K. Detko
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`(612) 337-2516
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`16
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