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 October 22, 2013, Patent Owner submitted new exhibits WARSAW
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`2019 though WARSAW 2027 in the present inter partes review proceeding, and
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`stated in an “Objection to Evidence” paper (submitted also on October 22, 2013)
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`that the exhibits were being submitted in response to Petitioner’s October 7, 2013
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`objections and constituted “supplemental evidence being submitted pursuant to 37
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`C.F.R. § 42.64(b)(2).” Although the new exhibits were submitted with an
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`accompanying “Objection to Evidence” paper, no authorized paper was submitted
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`with the new exhibits that “cited” to them, as is required under 37 C.F.R. §
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`42.6(c). In addition, no explanation accompanying the exhibit submission
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`provided what, if any, portions of the exhibits are relevant, and to what issues in
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`the proceedings the exhibits are relevant.
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`Furthermore, nearly all the exhibits are not single documents, but rather are
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`compilations of multiple different documents including prior witness testimony,
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`along with new documents, many of which were never previously made of record
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`in this proceeding (for example, many of the documents in the new exhibits are not
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`referenced in the Patent Owner’s Preliminary Response), or are different versions
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`of documents previously made of record in this proceeding. Further yet, many of
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`the exhibits include new or different versions of exhibits that were previously
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`2
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`Case IPR2013-00206
`Attorney Docket No: 13958-112IP2
`submitted, with no explanation as to whether prior exhibits were being withdrawn
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`and no explanation addressing this Board’s rule that exhibits are not to be
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`resubmitted (see 37 C.F.R. § 42.6(d)).
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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, WARSAW 2019 through WARSAW 2027—
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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. § 42.69(c). These new exhibits were not referenced in the
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`Preliminary Response previously submitted, and a Patent Owners Response under
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`37 C.F.R. § 42.120 has yet to be submitted in this proceeding. In addition, no
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`authorization was sought or obtained to make this submission under 37 C.F.R. §
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`42.120.
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`In addition, Petitioner submits that while 37 C.F.R. § 42.64(b)(2) provides
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`for the “service” of supplemental evidence in response to a timely made objection
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`under 37 C.F.R. § 42.64(b)(1), the rules of the Board, including 37 C.F.R. §
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`42.64(b)(2), do not authorize the submission of the supplemental exhibits into the
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`evidence of record in the proceeding separate and independent from any proper
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`submission in the proceeding. The unauthorized submission of exhibits is further
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`improper here given that Warsaw has not referenced these exhibits in any properly
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`3
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`Case IPR2013-00206
`Attorney Docket No: 13958-112IP2
`submitted paper or explained the relevance of the submitted exhibits. See 37
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`C.F.R. § 42.69(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 WARSAW2019 through WARSAW2027, as well as all of the documents
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`compiled in these exhibits, 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). Furthermore, several of the exhibits involve prior testimony from
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`proceedings in which Petitioner was not a party (namely, WARSAW 2019,
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`WARSAW 2021, WARSAW 2022, WARSAW 2024 and WARSAW 2027), and
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`thus do not fall within an exception to the hearsay rule for unavailable witnesses
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`under Fed. R. Evid. 804(b)(1).
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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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`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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`Date: October 29, 2013
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`Customer Number 26171
`Fish & Richardson P.C.
`Telephone: (612) 337-2508
`Facsimile: (612) 288-9696
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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 October 29, 2013, a complete and entire copy of this Petitioner Objections
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`to Unauthorized Submission and Evidence was provided via email to the Patent
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`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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`/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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