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
`
`Case IPR2013-00208
`
`NOTICE OF SUPPLEMENTAL EVIDENCE
`
`UNDER 37 C.F.R. § 42.64(b)(2)
`
`Mail Stop "PATENT BOARD"
`Patent Trial and Appeal Board
`US Patent and Trademark Office
`PO Box 1450
`
`Alexandria. VA 223134450
`
`
`
`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
`
`Case IPR2013-00208
`
`NOTICE OF SUPPLEMENTAL EVIDENCE
`
`UNDER 37 C.F.R. § 42.64(b)(2)
`
`Mail Stop "PATENT BOARD"
`Patent Trial and Appeal Board
`US Patent and Trademark Office
`PO Box 1450
`
`Alexandria. VA 223134450
`
`
`
`IPR2013-00208
`
`US. Patent No. 8,251,997 BZ
`Our Ref. 102.0010-04IR2
`
`In response to Petitioner’s Objection to Evidence filed on October 7, 2013,
`
`Warsaw submits the following items of supplemental evidence pursuant to 37
`
`CPR. § 42.64(b)(2). Warsaw reserves the right to serve additional supplemental
`
`evidence pursuant to the Board’s October 15, 2013 order. See Paper 21.
`
`WARSAW2020
`
`Excerpts from Deposition of L. Boyd, dated February 18,
`1999 from Sofamor Danek Holdings, Inc. v. US. Surgical
`Corp, Case No. 98-2369 GA (J SG) (W.D. Tenn.)
`
`WARSAW2021
`
`Excerpts from Deposition of L. Boyd, dated December 3,
`2010 from Warsaw Orthopedic, Inc. v. Nu Vasive, Inc., Case
`No. 08-CV-1512 MMA (MDD) (S.D. Cal.)
`
`WARSAW2022
`
`Excerpts from Deposition of D. Imre, dated October 5, 2001
`from Medtronic Sofamor Dane/c, Inc. v. Osteotech, Inc,
`Case No. 99—2656—G/V (W.D. Tenn.)
`
`WARSAW2023
`
`Excerpts from Deposition of B. Estes, dated November 10,
`2003 from Medtronic Sofamor Danek, Inc. v. Karlin
`Technology, Inc, Case No. 01-2373-JPM (W.D. Tenn.)
`
`WARSAW2024
`
`Excerpts from Deposition of G. Michelson, dated November
`19, 2010 from Warsaw Orthopedic, Inc. v. Nu Vasive, Inc.,
`Case No. 08-CV-1512 MMA (MDD) (S.D. Cal.)
`
`WARSAW2025
`
`Excerpts from Deposition of J. Pafford, dated April 3, 2003
`from Medironic Sofamor Danek, Inc. v. Karlin Technology,
`Inc, Case No. 01—2373-JPM (W.D. Tenn.)
`
`WARSAW2026
`
`Excerpts from Trial Testimony - Warsaw Orthopedic, Inc.
`v. NuVasive, Inc, Case No. 08—CV—1512 MMA (MDD)
`
`(SD. Cal.)
`
`
`
`WARSAW2027
`
`Stipulation dated November 2, 2010 from Warsaw
`Orthopedic, Inc. v. Nu Vasive, Inc, Case No. 08-CV-1512
`MMA (MDD) (S.D. Cal.)
`
`WARSAW2028
`
`Excerpts from Deposition of L. Boyd, dated November 13,
`2003 from Medtronic Sofamor Danek, Inc. v. Karim
`Technology, Inc, Case No. 01-2373-JPM (W.D. Term.)
`
`The Patent Trial and Appeal Board is hereby authorized to charge any fees
`
`associated with this proceeding to Deposit Account No. 50-3726 (Customer ID
`
`22882)
`
`Dated: October 22, 2013
`
`Respectfully Submitted,
`
`(”1% %“é
`
`Thomas H. Martin
`
`Registration No. 34,383
`Attorney for Patent Owner
`MARTIN & FERRARO, LLP
`
`1557 Lake O’Pines Street, NE
`
`Hartville, Ohio 44632
`Telephone: (330) 877-0700
`Facsimile: (330) 877-2030
`
`
`
`EXHIBIT APPENDIX
`
`WARSAW2001
`
`Excerpts from Deposition of Dr. Michelson, dated
`November 19, 2010
`
`WARSAW2002
`
`Letter to Dr. Michelson from J. Pafford, dated March 28,
`
`1994.
`
`WARSAW2003
`
`Memorandum from Larry Boyd re: Michelson Devices -
`Interbody Fusion Devices, dated January 26, 1994
`
`WARSAW2004
`
`Dezider Imre Invoice, dated December 26, 1993
`
`WARSAW2005
`
`Memorandum from Larry Boyd re: Meeting with Dr. Gary
`Karlin Michelson, dated January 11, 1994
`
`WARSAW2006
`
`Memorandum from Larry Boyd re: Notes on Threaded
`Dowel Concepts of Dr. Michelson, dated January 1 1, 1994
`
`WARSAW2007
`
`Letter to Dr. Michelson from L. Boyd, dated January 13,
`1994
`
`WARSAW2008
`
`Excerpts from Trial Testimony - Warsaw Orthopedic, Inc.
`v. Nu Vasive, Inc., Case No. 08-CV-1512 MMA (MDD)
`
`WARSAW2009
`
`License Agreement between Sofamor Danek Group, Inc.
`and Karlin Technology, Inc., dated December 31, 1993
`
`WARSAW2010
`
`US. Patent No. 5,860,973
`
`WARSAW201 1
`
`Memorandum of Decision Following Bench Trial on
`Inequitable Conduct, Warsaw Orthopedic, Inc. v.
`Nu Vasive, Inc., Case No. 08-CV-1512 MMA (MDD), dated
`
`February 14, 2012
`
`
`
`WARSAW20 12
`
`WARSAW2013
`
`WARSAW2014
`
`WARSAW2015
`
`Excerpts from NuVasive’s Reply in Support of Its
`Renewed Motion for Judgment as a Matter of Law or A
`New Trial, Warsaw Orthopedic, Inc. v. Nu Vasive, Inc,
`Case No. 08-CV-1512 MMA (MDD), dated December 23,
`201 1
`
`Excerpts from NuVasive's Memorandum of Points and
`Authorities in Support of Its Renewed Motion for Judgment
`as a Matter of Law or a New Trial, Warsaw Orthopedic,
`Inc. v. Nu Vasive, Inc, Case No. 08-CV-1512 MMA
`
`(MDD), dated October 27, 2011
`
`Excerpts from NuVasive's Closing Argument Regarding
`Inequitable Conduct Committed During the Prosecution of
`the ”973 Patent, Warsaw Orthopedic, Inc. v. Nu Vasive, Inc.,
`Case No. 08-CV-1512 MMA (MDD), dated December 23,
`2011
`
`Excerpts from NuVasive's Proposed Findings of Fact and
`Conclusions of Law Regarding the Unenforceability of
`US. Patent No. 5,860,973 for Inequitable Conduct,
`Warsaw Orthopedic, Inc. v. Nu Vasive, Inc, Case No. 08-
`CV-1512 MMA (MDD), dated December 23, 2011
`
`WARSAW2016
`
`Letter to R. Jansen from P. McAfee, M.D., dated January
`16, 1995
`
`WARSAW20 1 7
`
`Excerpts from Deposition of Dr. Bruce E. Van Dam, dated
`January 27, 2011
`
`WARSAW201 8
`
`Baulot, et 211., "Complementary Anterior Spondylodesis by
`Thoracoscopy - Technical Note Regarding an
`Observation,” Lyon Surg. 90:347-51, November 28, 1994
`
`WARSAW2019
`
`Rosenthal, et a1., "Removal of a Protruded Thoracic Disc
`Using Microsurgical Endoscopy,” May 2004
`
`WARSAW2020
`
`Excerpts from Deposition of L. Boyd, dated February 18,
`1999 from Sofamor Danek Holdings, Inc. v. US. Surgical
`Corp, Case No. 98-2369 GA (JSG) (W.D. Tenn.)
`
`4
`
`
`
`WARSAW2021
`
`Excerpts from Deposition of L. Boyd, dated December 3,
`2010 from Warsaw Orthopedic, Inc. v. Nu Vasive, Inc,
`Case No. 08—CV-1512 MMA (MDD) (S.D. Cal.)
`
`WARSAW2022
`
`Excerpts from Deposition of D. Imre, dated October 5,
`2001 from Medtronic Sofamor Danek, Inc. v. Osteoiech,
`Inc, Case No. 99-2656-G/V (W.D. Tenn.)
`
`WARSAW2023
`
`WARSAW2024
`
`WARSAW2025
`
`WARSAW2026
`
`WARSAW2027
`
`WARSAW2028
`
`Excerpts from Deposition of B. Estes, dated November 10,
`2003 from Medironic Sofamor Danek, Inc. v. Karlin
`Technology, Inc, Case No. 01-2373-JPM (W.D. Tenn.)
`
`Excerpts from Deposition of G. Michelson, dated
`November 19, 2010 from Warsaw Orthopedic, Inc. v.
`Nu Vasive, Inc, Case No. 08-CV-1512 MMA (MDD) (SD.
`Cal.)
`
`Excerpts from Deposition of J. Pafford, dated April 3, 2003
`from Medtronic Sofamor Danek, Inc. v. Karlin Technology,
`Inc., Case No. 01-2373-JPM (W.D. Tenn.)
`
`Excerpts from Trial Testimony — Warsaw Orthopedic, Inc.
`v. Nu Vasive, Inc, Case No. 08-CV-1512 MMA (MDD)
`(SD. Cal.)
`
`Stipulation dated November 2, 2010 from Warsaw
`Orthopedic, Inc. v. NuVasive, Inc, Case No. 08-CV-1512
`MMA (MDD) (SD. Cal.)
`
`Excerpts from Deposition of L. Boyd, dated November 13,
`2003 from Medtronic Sofamor Danek, Inc. v. Karlin
`Technology, Inc, Case No. 01-2373-JPM (W.D. Tenn.)
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a copy of this NOTICE OF
`
`SUPPLEMENTAL EVIDENCE UNDER 37 C.F.R. § 42.64(b)(2) was served in its
`
`entirety via electronic mail to APSI@fr.com (referencing Attorney Docket No.
`
`l3958-01121P1):
`
`Stephen R. Schaefer
`
`Michael T. Hawkins
`
`3200 RBC Plaza
`
`3200 RBC Plaza
`
`60 South Sixth Street
`
`60 South Sixth Street
`
`Minneapolis, MN 55402
`
`Minneapolis, MN 55402
`
`Date of Service: Z2 K, 2’4 '3
`
`/5‘“’
`
`Signature: v _/ 11/.
`
`Thomas H. Martin, Reg.No. 34,383
`
`
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