`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`NUVASIVE, INC.
`Petitioner
`
`v.
`
`WARSAW ORTHOPEDICS, INC.
`Patent Owner
`
`
`
`
`
`
`
`
`
`
`
`
`Case IPR2013-00395
`Patent 8,444,696
`
`
`
`
`
`
`
`
`
`
`
`
`PETITIONER’S RESPONSE TO THE MOTION FOR OBSERVATION REGARDING
`CROSS-EXAMINATION OF DR. BRANTIGAN
`
`
`
`Case IPR2013-00395
`Attorney Docket No: 13958-113IP1
`
`Response to the Introduction
`
`This paper responds to Patent Owner’s motion for observation regarding cross-
`
`examination of Dr. Brantigan, filed June 26, 2014. Patent Owner states in an introductory
`
`paragraph that it filed its observations about “Dr. Brantigan’s prior sworn testimony” “[i]n lieu
`
`of taking additional depositions.” However, Petitioner made Dr. Brantigan available to
`
`Patent Owner for deposition. It was Patent Owner’s choice to comment on Dr. Brantigan’s
`
`prior testimony and to forgo a deposition in which Dr. Brantigan could explain that the
`
`supposed inconsistencies do not exist. Petitioner disagrees with Patent Owner’s
`
`characterization of Dr. Brantigan’s prior testimony as explained below.
`
`Response to Observation No. 1
`
`
`
`In Observation No. 1, Patent Owner discusses Dr. Brantigan’s prior testimony
`
`concerning the addition of ratchetings to the Senter implant. According to Patent Owner Dr.
`
`Brantigan, in paragraphs 8 and 9, “now ignores” the resistance to insertion of the modified
`
`implant. But Patent Owner does not take into account Dr. Brantigan’s testimony in
`
`paragraph 7 of the declaration which explains that during implantation the patients weight is
`
`not on the vertebra and the vertebra may be distracted lessening any resistance during
`
`insertion. Dr. Brantigan provided the same explanation at testimony in his deposition
`
`testimony. See Exhibit 2009 at page 85, line 22 to page 86, line 3. No inconsistency exists.
`
`
`
`
`
`2
`
`
`
`Case IPR2013-00395
`Attorney Docket No: 13958-113IP1
`
`Response to Observation Nos. 2-3
`
`In Observation Nos. 2-3, Patent Owner discusses Dr. Brantigan’s prior testimony
`
`concerning the placement and potential “scraping off” of fusion material in the modified
`
`Senter implant. No contradiction is apparent when reading the Patent Owner’s quotes from
`
`the declaration and the deposition testimony.
`
`Patent Owner selectively crops Dr. Brantigan’s deposition testimony to create the
`
`illusion of contradiction. Dr. Brantigan’s full answer at deposition is Exhibit 2009 at page 92,
`
`line 21 to page, lines 12-15:
`
`A. It’s hard for me to understand your distinctions, because
`you would put as much bone in there as you could. That
`bone would be tending to bulge out beyond the confines of
`the implant. During the placement, some of that bone will
`be scraped off, and then you can pack that beside the
`implant. But after the bone that’s still in there has some
`time for the sponginess to expand, it will expand to the limits
`of the implant and have good apposition against the
`vertebral endplates.
`Consistently, Dr. Brantigan testified at page 96, lines 6-12 of Exhibit 2009:
`
`A. I think we are saying the same thing over and over again. I believe that
`
`some of the bone will be scraped off. But enough of the bone would
`
`remain in there. Particularly, if you’ve compressed cancellous bone,
`
`3
`
`
`
`Case IPR2013-00395
`Attorney Docket No: 13958-113IP1
`you’ve scraped some of it off, and the rest of it tends to return to its
`
`uncompressed height once it’s in place.
`
`The complete deposition testimony is consistent with, and in no way contradicts, Dr.
`
`Brantigan’s testimony on this subject in paragraphs 10 to 14 of his second declaration.
`
`Response to Observation Nos. 4-6
`
`
`
`In Observations 4 and 5, Patent Owner discusses the capabilities of nubs to resist
`
`motion. Patent Owner asserts that Dr. Brantigan’s deposition testimony is “somewhat
`
`muted’ compared to his second declaration. By using this “somewhat muted” language,
`
`Patent Owner is admitting that no contradiction exists between the deposition testimony and
`
`declaration.
`
`In Observation 6, Patent Owner again takes snippets of testimony out of context and
`
`ignores the declaration testimony that shows Patent Owner’s mischaracterization of Dr.
`
`Brantigan’s testimony. In particular, Patent Owner ignores the citation in paragraph 18 of
`
`the declaration that references other paragraphs in the declaration and which fully explain
`
`how the ratchetings function differently during insertion and after implantation.
`
`In the case Observations 4-6, a simple review of Dr. Brantigan’s full testimony—
`
`rather than the cropped quotes provided by Patent Owner—confirms that no contradiction
`
`exists.
`
`
`
`
`
`4
`
`
`
`Case IPR2013-00395
`Attorney Docket No: 13958-113IP1
`
`Response to Observation No. 7
`
`
`
`In this Observation, Patent Owner discusses Dr. Brantigan’s testimony regarding
`
`whether it would be obvious to add ratchetings to an implant with convex upper and lower
`
`surfaces. Dr. Brantigan has always said that it would be obvious to make this combination
`
`[See, e.g., Ex. 1001 at ¶ 38; Ex. 1017. at ¶¶ 4-9] and Patent Owner does not cite any
`
`testimony to the contrary. Patent Owner’s argument that this testimony is contradicted by
`
`the absence of a disclosure of the claimed combination of features in Dr. Brantigan’s
`
`implant patents has no force. Moreover, the argument is belied by Dr. Brantigan’s
`
`observation that even the ‘696 patent does not disclose any embodiment with the claimed
`
`combination of features. Ex. 1017 at ¶ 29.
`
`Response to Observation Nos. 8 -12
`
`
`
`In these Observations, Patent Owner disagrees with Dr. Brantigan’s declaration
`
`testimony describing how Patent Owner mischaracterized Dr. Brantigan’s deposition
`
`testimony. A review of the relevant testimony fully supports Dr. Brantigan’s contention that
`
`Patent Owner mischaracterized his deposition testimony.
`
`
`
`5
`
`
`
`Case IPR2013-00395
`Attorney Docket No: 13958-113IP1
`Respectfully submitted,
`
`
` /Stephen R. Schaefer, Reg. No. 37,927/
`Stephen R. Schaefer
`Reg. No. 37,927
`
`
`
`
`
`
`
`
`
`
`
`
`
`Date: July 10, 2014
`
`
`Customer Number 26171
`Fish & Richardson P.C.
`Telephone: (612) 337-2508
`Facsimile: (612) 288-9696
`
`6
`
`
`
`Case IPR2013-00395
`Attorney Docket No: 13958-113IP1
`
`
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 CFR §§ 42.6(e)(4) and 42.205(b), the undersigned certifies that on
`
`July 10, 2014, a complete and entire copy of this PETITIONER’S RESPONSE TO THE
`MOTION FOR OBSERVATION REGARDING CROSS-EXAMINATION OF DR.
`BRANTIGAN was provided via email to the Patent Owner by serving the correspondence
`email addresses of record as follows:
`
`Thomas H. Martin
`Wesley C. Meinerding
`Martin & Ferraro, LLP
`1557 Lake O’Pines Street, NE
`Hartville, OH 44632
`
`Email: tmartin@martinferraro.com
`Email: docketing@martinferraro.com
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`/Edward G. Faeth/
`
`Edward G. Faeth
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`(858) 678-5667
`
`
`
`7
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
