`Trials@uspto.gov
`Tel: 571-272-7822
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` Paper 33
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` Entered: February 3, 2014
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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.
`
`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.
`
`
`
`Case IPR2013-00206 (Patent 8,251,997 B2)
`Case IPR2013-00208 (Patent 8,251,997 B2)
`
`
`On January 31, 2014, a conference call was held between counsel for the
`respective parties and Judges Medley, Green, and Siu. The purpose of the call was
`to discuss certain exhibits filed by the Patent Owner in support of its Patent Owner
`Response and in response to objections served by the Petitioner. Another purpose
`of the conference call was for Petitioner to seek authorization to file a motion for
`additional discovery.
`
`
`Exhibits marked private by the Patent Owner
`On December 20, 2013, Patent Owner filed a Patent Owner Response.
`Paper 32.2 On the same day, Patent Owner filed several exhibits. Some of these
`were uploaded into the Patent Review Processing System (PRPS) as private
`documents, e.g.., sealed documents, unable to be viewed by the public. No
`accompanying motion to seal was filed as required per 37 C.F.R. § 42.14.
`The record files for an inter partes review shall be made available to the
`public, except that a document filed with a motion to seal shall be treated as sealed
`until the motion is decided. 35 U.S.C. § 316(a)(1); 37 C.F.R. § 42.14. A party
`may file a motion to seal where the motion contains a proposed protective order,
`such as the default protective order set forth in the Office Patent Trail Practice
`Guide. The standard for granting a motion to seal is good cause. 37 C.F.R.
`§ 42.54(a).
`A protective order governs the treatment of confidential portions of
`documents, testimony and other information designated as confidential, as well as
`
`2 References are to IPR2013-00206.
`
`2
`
`
`
`
`
`Case IPR2013-00206 (Patent 8,251,997 B2)
`Case IPR2013-00208 (Patent 8,251,997 B2)
`
`the filing of confidential documents or discussion of such information in papers
`filed with the Board. The Board has the authority to enforce the terms of a
`protective order entered in a proceeding. Office Patent Trial Practice Guide, 77
`Fed. Reg. 48756, 48770 (Aug. 14, 2012). Because of the above, it is important that
`the Board understands and agrees to the terms of any proposed protective order
`filed with the Board. As such, the Board has a default protective order that the
`parties may follow. When a party deviates from the default protective order, the
`party should explain the differences. A protective order that deviates from the
`Board’s default protective order must nonetheless include certain terms as outlined
`in the Office Practice Guide. Id. (“The Protective Order shall include the
`following terms:”).
`As explained during the call, Patent Owner has until February 7, 2014 to file
`a motion to seal along with a protective order. If no motion to seal is filed, the
`sealed exhibits will be expunged from the record. 37 C.F.R. § 42.7.
`
`
`Certain Exhibits to be expunged
`Petitioner objected to several of Patent Owner’s exhibits. In response,
`
`Patent Owner served and filed supplemental evidence. Based on the facts of this
`case, the supplemental evidence should not have been filed, but only served. See
`37 C.F.R. § 42.64(b)(2). The Board proposed to expunge exhibits 2057-2062 and
`neither party objected.
`
`
`
`
`3
`
`
`
`Case IPR2013-00206 (Patent 8,251,997 B2)
`Case IPR2013-00208 (Patent 8,251,997 B2)
`
`
`Exhibits 2046 and 2047
`Patent Owner relied on Exhibits 2046 and 2047 in support of its Patent
`
`Owner Response. Patent Owner requests to substitute those exhibits with two
`other exhibits. Petitioner does not object. Based on the facts presented, good
`cause was shown to authorize Patent Owner to substitute “corrected Exhibit 2046”
`and “corrected Exhibit 2047” for original Exhibits 2046 and 2047. Accordingly,
`original Exhibits 2046 and 2047 will be expunged from the record. Patent Owner
`is authorized to submit corrected Exhibit 2046 and corrected Exhibit 2047 no later
`than February 7, 2014.
`
`
`Motion for Additional Discovery
`Petitioner requested authorization to file a motion for additional discovery.
`
`In preparation for that discussion, Petitioner filed a list of the discovery it seeks
`from Patent Owner. Based on the discussion had, the parties indicated that they
`would work together to possibly agree to, at least some of, the discovery Petitioner
`seeks from the Patent Owner. As the Board explained, the parties may agree to
`additional discovery between themselves. 37 C.F.R. § 42.51(b)(2). The Board
`appreciates the parties willingness to work together to reach an agreement, thereby
`facilitating the Board’s goal of resolving these inter partes reviews in a just,
`speedy and inexpensive manner. 37 C.F.R. § 42.1(b).
`
`
`
`
`
`4
`
`
`
`
`
`Case IPR2013-00206 (Patent 8,251,997 B2)
`Case IPR2013-00208 (Patent 8,251,997 B2)
`
`
`Order
`
`It is
`ORDERED that Patent Owner shall file a motion to seal and protective order
`by February 7, 2014;
`FURTHER ORDERED that Patent Owner shall file “corrected Exhibit
`2046” and “corrected Exhibit 2047” by February 7, 2014;
`FURTHER ORDERED that Exhibits 2046, 2047, 2057-2062 shall be
`expunged from the record; and
`FURTHER ORDERED that Petitioner is not authorized to file a motion for
`additional discovery at this time.
`
`
`
`PETITIONER:
`
`Stephen Schaefer
`schaefer@fr.com
`
`Michael Hawkins
`hawkins@fr.com
`
`Todd Miller
`miller@fr.com
`
`PATENT OWNER:
`Thomas Martin
`tmartin@martinferraro.com
`
`Wesley Meinerding
`wmeinerding@martinferraro.com
`
`
`
`5
`
`
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