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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 IPR2013-00208
`Patent 8,251,997
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`PETITIONER’S RESPONSE TO THE MOTION FOR OBSERVATION REGARDING
`CROSS-EXAMINATION OF MR. MILES
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`Case IPR2013-00208
`Attorney Docket No: 13958-112IP1
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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 Mr. Miles, filed Apr. 22, 2014. Patent Owner states in its introductory
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`paragraph that it filed its “observations based on Mr. Miles’ prior sworn testimony” “[i]n lieu
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`of taking additional depositions.” However, Petitioner made Mr. Miles and Dr. Brantigan, Dr.
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`McAfee, and Dr. Jacobson available to Patent Owner for depositions. It was Patent
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`Owner’s choice to comment on Mr. Miles’ prior testimony and to forego a deposition in
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`which Mr. Miles could explain that the supposed inconsistencies do not exist. Petitioner
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`disagrees with Patent Owner’s characterization of Mr. Miles’ prior testimony as explained
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`below.
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`Response to Observation No. 1
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`In Observation No. 1, Patent Owner identifies prior testimony by Mr. Miles discussing
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`NuVasive’s CoRoent XL implant. In Exhibit 2064 at page 420, line 17 to page 421, line 9,
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`Mr. Miles testified to the importance of the group of technologies that comprise the XLIF
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`procedure to the safety and reproducibility of the procedure. In Exhibit 2064 at page 421,
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`lines 8-9, Mr. Miles testified that “It is an assembled group of things that makes the thing
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`successful.” In Exhibit 2064 at page 422:21-423:2, Mr. Miles agreed with the testimony of
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`Dr. Smith that the CoRoent implant was innovative. In Exhibit 2064 at page 423, lines 3-7,
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`Mr. Miles explained that “there’s many elements that make it [the CoRoent implant]
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`innovative.” In fact, Mr. Miles never testified that the length of the CoRoent XL implant “is
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`Case IPR2013-00208
`Attorney Docket No: 13958-112IP1
`innovative because it spans the entire width of the vertebral body” as Patent Owner
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`contends. Rather, Mr. Miles’ previous testimony is entirely consistent with his declaration
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`testimony that there are many elements that make the CoRoent implant innovative,
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`including “a patented fusion implant design that, unlike the implants disclosed in the '997
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`patent, does not require the removal of portions of the adjacent vertebrae (see, e.g., U.S.
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`Patent Nos. 8,187,334 and 8,361,156, Exhibits 1065 and 1066).” Ex. 1032, ¶ 9.
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`Response to Observation No. 2
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`In Observation No. 2, Patent Owner identifies previous testimony by Mr. Miles
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`discussing two different procedures at Medtronic referred to by the acronym “ELIF.” In
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`Exhibit 2064 at page 447, lines 7-10, Mr. Miles testified that in the ELIF procedure he
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`worked on, ELIF stood for “endoscopic lumbar interbody fusion.” (Emphasis added). Mr.
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`Miles testified at page 474, lines 20-23 that ELIF “looked nothing like a lateral approach.” In
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`Exhibit 2064 at page 433, line 5 to page 434, line 6, Mr. Miles testified that a document he
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`was shown referencing a procedure where the E in ELIF stood for “extreme” was dated after
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`Mr. Miles left Medtronic. In Exhibit 2064 on page 450, lines 8-10, Mr. Miles testified that he
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`did not copy anything from Medtronic Sofamor Danek in his work at NuVasive. This is all
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`consistent with Mr. Miles’ declaration testimony that he did not copy the ELIF name or
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`technology. See Ex. 1032, ¶¶ 14-16.
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`Case IPR2013-00208
`Attorney Docket No: 13958-112IP1
`Respectfully submitted,
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` /Stephen R. Schaefer, Reg. No. 37,927/
`Stephen R. Schaefer
`Reg. No. 37,927
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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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`Case IPR2013-00208
`Attorney Docket No: 13958-112IP1
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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 MR. MILES 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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`/Jessica K. Detko/
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`Jessica K. Detko
`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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