`Trials@uspto.gov
`Tel: 571-272-7822
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` Paper 31
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` Entered: September 23, 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________
`
`MEDTRONIC, INC.,
`Petitioner,
`
`v.
`
`NUVASIVE, INC.,
`Patent Owner.
`____________
`
`Cases IPR2013-00506 (Patent 8,361,156)
`IPR2013-00507 (Patent 8,187,334)
`IPR2013-00508 (Patent 8,187,334)
`____________
`
`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
`
`
`
`On September 22, 2014, a conference call was held between counsel
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`for the respective parties and Judges Medley, Green, and Siu. The purpose
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`of the conference call was for Patent Owner to seek authorization to file a
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`
`
`IPR2013-00506 (Patent 8,361,156)
`IPR2013-00507 (Patent 8,187,334)
`IPR2013-00508 (Patent 8,187,334)
`
`ten page surreply in each proceeding. Another purpose of the call was for
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`the parties to seek a Board order authorizing a deposition to occur outside of
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`the United States.
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`Motion to file Surreply or alternatively to Strike
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`Patent Owner requested authorization to file a ten page surreply to
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`Petitioner’s reply in each proceeding. Patent Owner alternatively requested
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`authorization to file a motion to strike the Petitioner’s replies and certain
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`evidence filed in the three proceedings. Petitioner opposed the requests.
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`Patent Owner’s requests to file a surreply, or to file a motion to strike
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`the replies and certain exhibits in connection with the replies is denied. As
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`explained during the call, whether a reply contains arguments or evidence
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`that is outside the scope of a proper reply under 37 C.F.R. § 42.23(b) is left
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`to the determination of the Board. The Board will determine whether the
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`Petitioner’s reply and evidence are outside the scope of a proper reply and
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`evidence when the Board reviews all of the parties’ briefs and prepares the
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`final written decision. If there are improper arguments and evidence
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`presented with a reply, the Board may exclude the reply and related
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`evidence, for example. For all of these reasons, the Board will take under
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`consideration any alleged violations in due course with respect to
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`Petitioner’s replies and evidence submitted in support of the replies, upon
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`considering the record at the end of the trial.
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`Motion for observation
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`As discussed, Patent Owner is permitted to cross-examine reply
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`declarants, and if necessary, Patent Owner may file a motion for observation
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`regarding cross-examination of a reply witness during DUE DATE 4. As
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`2
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`
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`IPR2013-00506 (Patent 8,361,156)
`IPR2013-00507 (Patent 8,187,334)
`IPR2013-00508 (Patent 8,187,334)
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`noted, in the Scheduling Order (see, e.g., IPR2013-00506, Paper 10), a
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`motion for observation on cross-examination is a mechanism to draw the
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`Board’s attention to relevant cross-examination testimony of a reply witness.
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`The observation must be a concise statement of the relevance of precisely
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`identified testimony to a precisely identified argument or portion of an
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`exhibit (including another part of the same testimony). An observation is
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`not an opportunity to raise new issues, to re-argue issues, or to pursue
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`objections. Each observation should be in the following form:
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`In exhibit ___, on page ___, lines ___, the witness testified ___.
`That testimony is relevant to the ____ [stated or argued] on
`page ___, lines ___ of ___. The testimony is relevant because
`___.
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`Each observation should not exceed one short paragraph. The Board
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`may decline consideration or entry of argumentative observations. In
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`accordance with the Scheduling Order, Petitioner may file a response to any
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`motion for observation by DUE DATE 5.
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`Deposition testimony of Mr. Loic Josse
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`The parties have agreed to take the deposition testimony
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`telephonically of Mr. Loic Josse who will be in London, England at the time
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`of the deposition. See, e.g., IPR2013-00506, Paper 30. The parties are
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`permitted to do so. See 37 C.F.R. § 42.53(b)(3).
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`Miscellaneous
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`
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`Petitioner relied on certain excerpts from the deposition testimony of
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`Patent Owner’s witness in support of its replies. In doing so, Petitioner
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`made the certain excerpts an exhibit, as opposed to the entire deposition
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`transcript. Patent Owner inquired whether the entire transcript should be
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`3
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`
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`IPR2013-00506 (Patent 8,361,156)
`IPR2013-00507 (Patent 8,187,334)
`IPR2013-00508 (Patent 8,187,334)
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`made of record. We indicated that it should. The parties agreed to work
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`together to file a copy of the entire transcript in each proceeding.
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`It is
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`ORDERED that Patent Owner’s request to file a surreply, or
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`alternatively, a motion to strike is denied; and
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`FURTHER ORDERED that Patent Owner is authorized to file, in
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`each proceeding, a motion for observation on cross-examination by DUE
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`DATE 4 consistent with this order;
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`FURTHER ORDERED that Petitioner is authorized to file, in each
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`proceeding, a response to any motion for observation by DUE DATE 5
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`consistent with this order.
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`4
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`
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`IPR2013-00506 (Patent 8,361,156)
`IPR2013-00507 (Patent 8,187,334)
`IPR2013-00508 (Patent 8,187,334)
`
`
`For PETITIONER:
`
`Jeff Schwartz
`jeschwartz@foxrothschild.com
`
`Seth Kramer
`skramer@foxrothschild.com
`
`
`For PATENT OWNER:
`
`Stephen Schaefer
`schaefer@fr.com
`
`Michael Hawkins
`hawkins@fr.com
`
`Stuart Nelson
`IPR13958-0116IP2@fr.com
`
`
`
`5
`
`
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