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`Trials@uspto.gov
`Tel: 571-272-7822
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` Paper 22
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` Entered: October 15, 2013
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`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.
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`MEDLEY, Administrative Patent Judge.
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`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
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`
`
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`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 IPR2013-00208
`Patent 8,251,997 B2
`
`
`On October 10, 2013, the initial conference call2 was held between counsel for
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`the respective parties and Judges Medley, Green, and Siu.
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`
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`Motions
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`Neither party seeks authorization to file a motion at this time. A general
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`discussion was had regarding motions to amend. As explained, if Patent Owner
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`determines that it will file a motion to amend, Patent Owner must arrange a
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`conference call soon thereafter with the Board and opposing counsel to discuss the
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`proposed motion to amend. See 37 C.F.R. § 42.121(a). For guidance on motions to
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`amend, Patent Owner is directed to the Office Patent Trial Practice Guide motion to
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`amend guidelines, along with the guidelines provided in Idle Free Systems, Inc. v.
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`Bergstrom, Inc., IPR2012-00027, Paper 26 (June 11, 2013).
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`The parties were reminded that if they seek authorization to file a motion not
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`contemplated per the Scheduling Order, the party requesting such authorization must
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`arrange a conference call with opposing counsel and the Board.
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`Schedule
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`Counsel for the respective parties indicated that they have no issues with the
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`Scheduling Orders entered September 23, 2013.
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`2 The initial conference call is held to discuss the Scheduling Order and any motions
`that the parties anticipate filing during the trial. Office Patent Trial Practice Guide,
`2
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`
`
`

`

`IPR2013-00206 and IPR2013-00208
`Patent 8,251,997 B2
`
`
`Objections to evidence
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`Both parties served objections to evidence. See, e.g., IPR2013-00206, Papers
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`19 and 20. Per conference call discussion, Patent Owner intends to rely on evidence
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`it could not have relied on during the preliminary proceeding (e.g., “new testimonial
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`evidence”) in support of its Patent Owner Response. Patent Owner believes that the
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`new testimonial evidence will cure the original objection(s). A “party relying on
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`evidence to which an objection is timely served may respond to the objection by
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`serving supplemental evidence within ten business days of service of the objection.”
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` 37 C.F.R. § 42.64 (b)(2). Thus, a party need not serve supplemental evidence, but
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`if it will rely on such supplemental evidence, it need serve the evidence within the
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`required deadline. Patent Owner sought guidance as to whether it must serve the
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`new testimonial evidence within ten days of service of the objection under 37 C.F.R.
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`§ 42.64 (b)(2). Patent Owner does not believe it needs to, but Petitioner does.
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`Unlike a petitioner, who must set forth its case in its entirety when it files a
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`petition (35 U.S.C. § 312), the patent owner has an opportunity to file a preliminary
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`response (35 U.S.C. § 313), and if a trial is instituted, the patent owner may then file
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`a patent owner response (35 U.S.C. § 316(a)(8)). A patent owner may rely on new
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`testimonial evidence in support of its patent owner response; evidence that it could
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`not have submitted in support of its preliminary response. 37 C.F.R. § 42.107(c).
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`Accordingly, objections made to patent owner evidence in connection with the patent
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`owner preliminary response may become moot, because the patent owner may file a
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`full response with additional evidence once a trial is instituted. The arguments and
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`77 Fed. Reg. 48756, 48765 (Aug. 14, 2012).
`3
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`
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`

`

`IPR2013-00206 and IPR2013-00208
`Patent 8,251,997 B2
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`evidence that a patent owner makes and relies on for its full response may be quite
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`different from the arguments and evidence it relied on during the preliminary
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`proceeding. This is in contrast to petitioner’s petition and evidence. Once a trial is
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`instituted, a petitioner is not automatically afforded another opportunity to brief its
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`case or to submit evidence that it should have submitted in support of its petition. 3
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`Thus, a petitioner that seeks to cure an objection would need to do so within ten
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`business days, because the patent owner would need to know what substitute
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`evidence it needs to respond to in its patent owner response. In contrast, a patent
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`owner may not necessarily need to cure an objection that was made to evidence
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`submitted during the preliminary proceeding, because the objection may become
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`moot in light of the patent owner’s full response.
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`Based on the facts of this case, Patent Owner need not serve the new
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`testimonial evidence in response to the service of the objection. 37 C.F.R. § 42.5 (a)
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`and (b). Here, the potential prejudice to Patent Owner (e.g., submitting its new
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`testimonial evidence several weeks prior to the due date for patent owner response)
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`outweighs any potential prejudice to Petitioner. If Petitioner is of the impression
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`that the original objection is not cured upon receiving the Patent Owner Response,
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`Petitioner may file a motion to exclude at the appropriate time.
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`3 While a petitioner may seek to file supplemental evidence, it must do so by way of
`a motion and it must seek authorization to file such a motion. 37 C.F.R. § 42.123.
`4
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`
`
`

`

`IPR2013-00206 and IPR2013-00208
`Patent 8,251,997 B2
`
`
`
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`Order
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`It is
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`ORDERED that no motions are authorized at this time.
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`PETITIONER:
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`Stephen Schaefer
`schaefer@fr.com
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`Michael Hawkins
`hawkins@fr.com
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`
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`PATENT OWNER:
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`Thomas Martin
`tmartin@martinferraro.com
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`Wesley Meinerding
`wmeinerding@martinferraro.com
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`5
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`