UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`MEDTRONIC, INC.
`Petitioner
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`v.
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`NUVASIVE, INC.
`Patent Owner
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`Case IPR2013-00506
`Patent 8,361,156
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`MOTION FOR OBSERVATION REGARDING CROSS-EXAMINATION
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`OF LOIC JOSSE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`MEDTRONIC, INC.
`Petitioner
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`v.
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`NUVASIVE, INC.
`Patent Owner
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`Case IPR2013-00506
`Patent 8,361,156
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`MOTION FOR OBSERVATION REGARDING CROSS-EXAMINATION
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`OF LOIC JOSSE
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`Case IPR2013-00506
`Attorney Docket No: 13958-0116IP2
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`EXHIBITS
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`Ex. #
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`Exhibit Description
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`NUVA 2101 U.S. Patent No. 7,905,840 to Pimenta et al.
`NUVA 2102 Declaration in Support of the Pro Hac Vice Admission of Michael
`A. Amon; Declaration of Charles Forthaus (Not Filed)
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`NUVA 2103 Vetebral Spacer-PR Brochure (Not Filed)
`NUVA 2104 Forthaus Memo regarding Vertebral Spacer-PR Brochure (Not
`Filed)
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`NUVA 2105 myspinetools.com front page (Not Filed)
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`NUVA 2106 myspinetools.com Terms of Use (Not Filed)
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`NUVA 2107 Launch Binder (Not Filed)
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`NUVA 2108 Webpage Toad MySQL (Not Filed)
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`NUVA 2109 Reserved
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`NUVA 2010 U.S. Patent 8,512,408 (Hynes) (Not Filed)
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`NUVA 2011 Synthes SVS-PR Guide
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`NUVA 2012 Medtronic Sofamor Danek Boomerang brochure
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`NUVA 2013 Hynes Deposition Transcript
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`NUVA 2014 510(k) Summary Medtronic Sofamor Danek K122037
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`NUVA 2015 510(k) Summary Telamon® PEEK Spinal System K110562
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`NUVA 2016 Synthes Vertebral Spacer – AR Brochure
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`NUVA 2017 DePuy Spine Saber Surgical Technique Brochure
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`NUVA 2018 Declaration of Barton L. Sachs, M.D. in IPR2013-00206
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`Attorney Docket No: 13958-0116IP2
`NUVA 2019 Moro, et al., “An Anatomic Study of the Lumbar Plexus with
`Respect to Retroperitoneal Endoscopic Surgery”
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`NUVA 2020 Declaration of Dr. Hansen A. Yuan, M.D.
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`NUVA 2021 Curriculum Vitae of Dr. Hansen A. Yuan, M.D.
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`NUVA 2022 NuVasive - CoRoent XL Brochure
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`NUVA 2023 Redacted Engineering Drawings
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`NUVA 2024 Redacted Deposition of Steven DeRidder
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`NUVA 2025 Clydesdale® Spinal System Brochure
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`NUVA 2026 Clydesdale® Spinal System Images
`NUVA 2027 Medtronic Direct Lateral Interbody Fusion DLIF Surgical
`Technique Brochure
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`NUVA 2028 Medtronic DILF-Direct Lateral Interbody Fusion Brochure
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`NUVA 2029 Clydesdale® Spinal System Image
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`NUVA 2030 Declaration of Patrick Miles
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`NUVA 2031 Declaration of Theodore G. Obenchain, M.D.
`NUVA 2032 The Relationship between Cross Sectional Area and Strength of
`Back Muscles in Patients with Chronic Low Back Pain
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`NUVA 2033 Printout, U.S. News & World Report
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`NUVA 2034 Lumbar Vertebral Body Replacement
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`NUVA 2035 Lumbar – Minimally Invasive Approach (PLIF)
`NUVA 2036 Excerpts from the Mathews Deposition Transcript (non-
`confidential portion)
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`NUVA 2037 Second Hynes Deposition Transcript
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`NUVA 2038 Josse Deposition Transcript
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`Attorney Docket No: 13958-0116IP2
`NUVA 2039 Patent Owner’s Objection to Evidence Under 37 CFR §
`42.64(b)(1), dated 9/12/2014
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`NUVA 2040 Email from Michael A. Amon to Jeff E. Schwartz, dated 9/9/2014
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`Case IPR2013-00506
`Attorney Docket No: 13958-0116IP2
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`NuVasive, Inc. (“Patent Owner”) submits this motion for observation regarding
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`cross-examination of Loic Josse, a reply declarant of Medtronic, Inc.
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`(“Petitioner”). Patent Owner submits the following observations based on Mr.
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`Josse’s testimony taken on September 23, 2014.
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`Observation #1
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`In Ex. 2038, on page 55 lines 13-25, Mr. Josse testified regarding the engineering
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`drawings that he created, and stated that he did not add black redaction boxes to
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`the engineering drawings and that the document existed without black boxes at
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`least in 2013. That testimony is relevant to ¶ 2 of the Josse Declaration (Ex. 1116)
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`where he references “engineering drawings that I created in January 2000.” The
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`testimony is relevant because the heavily redacted Appendix A is not a true and
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`correct copy of the engineering drawings that Mr. Josse actually created.
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`Observation #2
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`In Ex. 2038, on page 59, line 20 to page 60, line 11, Mr. Josse testified regarding
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`an email string that he was copied on, and stated that he did not add black
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`redaction boxes to the email string and that the document existed without black
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`boxes at least at least in 2012. That testimony is relevant to ¶ 2 of the Josse
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`Declaration where he references an “email string, on which I was copied.” The
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`Attorney Docket No: 13958-0116IP2
`testimony is relevant because the heavily redacted Appendix B is not a true and
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`correct copy of the email string on which Mr. Josse was actually copied.
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`Observation #3
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`In Ex. 2038, page 32, line 7 to page 33, line 18, Mr. Josse testified that his patent
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`in Appendix E to his Declaration does not state that the implant has a length
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`exceeding 40 mm. That testimony is relevant to ¶ 4 of the Josse Declaration where
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`he states that “Medtronic has commercialized interbody spinal fusion implants
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`having a length of at least 40 mm”. Ex. 1116 at ¶ 4. Nothing in Mr. Josse’s
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`testimony indicates that the reference teaches a length meeting the claim language
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`of “greater than 40 mm extending from a proximal end of said proximal wall to a
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`distal end of said distal wall.” Nothing in Mr. Josse’s testimony indicates that the
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`reference teaches a length meeting the claim language of “greater than 40 mm
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`extending from a proximal end of said proximal wall to a distal end of said distal
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`wall,” much less that any implant greater than 40mm was actually commercialized.
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`Observation #4
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`In Ex. 2038, on page 37, line 9 to page 38, line 11, Mr. Josse testified “I don’t have
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`an opinion. I don’t know.” on whether the brochure in Appendix D to his
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`declaration discloses an implant exceeding 40 mm. That testimony is relevant to ¶
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`4 of the Josse Declaration where he states that “Medtronic has commercialized
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`interbody spinal fusion implants having a length of at least 40 mm”. Ex. 1116 at ¶
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`Attorney Docket No: 13958-0116IP2
`4. Nothing in Mr. Josse’s testimony indicates that the reference teaches a length
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`meeting the claim language of “greater than 40 mm extending from a proximal end
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`of said proximal wall to a distal end of said distal wall,” much less that any implant
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`greater than 40mm was actually commercialized.
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`Observation #5
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`In Ex. 2038, on page 43, lines 6-22, Mr. Josse testified that the implant in the
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`brochure in Appendix D to his declaration is marked “Not for distribution in the
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`United States,” “Draft Copy,” and “for internal use only.” That testimony is
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`relevant to the ¶ 4 of the Josse Declaration where he suggests that the document
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`was publicly known. The testimony shows that Appendix D was an internal, draft
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`brochure that is not a public document and not printed prior art.
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`Observation #6
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`In Ex. 2038, on page 44, line 16 to page 45, line 17, Mr. Josse testified that he
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`included no bill of sale for a Butterfly implant, no surgical report for use of a
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`Butterfly implant in a live patient, and no testimony in his declaration that
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`indicates that a Butterfly implant was used in the United States. See also Ex. 2038,
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`Page 43, lines 6-10. That testimony is relevant to the ¶ 4 of the Josse Declaration
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`where he suggests that the Butterfly implant described in Appendix D was
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`commercialized. The testimony confirms that there is no evidence of if or when
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`the Butterfly implant was on sale or even used in the United States. See also 35
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`U.S.C. § 102(b) (Pre-AIA).
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`Observation #7
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`In Ex. 2038, on page 73, lines 2-17, Mr. Josse testified to the dimension “D” in
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`Appendix D as being the “width” of a boomerang implant. That testimony is
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`relevant because it contradicts Petitioner’s argument in the IPR2013-00507
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`Petition, p. 21-22 regarding the maximum lateral width of the boomerang implant
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`in Frey. Specifically, Mr. Josse’s testimony directly contradicts Petitioner’s
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`assertion that the implant disclosed in Frey meets the claim limitation of “said
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`longitudinal length [that] is at least two and half times greater than the maximum
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`lateral width” in claim 1 of the ‘334 patent.
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`Observation #8
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`In Ex. 2038, on page 74, line 4 to page 76, line 3, Mr. Josse testified that he has
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`“no opinion” on whether a boomerang implant with a length of 41 mm and a width
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`of 18 mm has a maximum length at least 2.5 times greater than the maximum
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`width. That testimony is relevant to argument in the IPR2013-00507 Petition, p.
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`21-22 and 52-55 that a boomerang implant should be sized to have a length that is
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`over 40 mm and that is at least two and half times the maximum lateral width. The
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`testimony shows that even the unpublished, unused boomerang implant identified
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`in Appendices A-C to the Josse Declaration does not meet the claim limitation of
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`Attorney Docket No: 13958-0116IP2
`“said longitudinal length [that] is at least two and half times greater than the
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`maximum lateral width” in claim 1 of the ‘334 patent. It also calls into question
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`the credibility of Mr. Josse – a trained engineer who has been designing implants
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`for the last 20 years – yet was unwilling to answer a simple math problem.
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`Observation #9
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`In Ex. 2038, on page 77, line 16 to page 78, line 8, Mr. Josse testified there that
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`there is no documentation or other evidence, including testimony, that a
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`confidential prototype boomerang implant of the identified dimensions was ever
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`actually used in any patient, much less that it was used safely in any patient. That
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`testimony is relevant to Petitioner’s argument in the IPR2013-00507 Reply, p. 11
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`that “implants having these expanded dimensions can, and have been made and
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`implanted using a postero-lateral technique.” The testimony undermines
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`Petitioner’s Reply argument by confirming the lack of evidence that a boomerang
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`implant of the identified confidential dimensions was implanted safely or at all, let
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`alone using a postero-lateral (TLIF) technique.
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`Observation #10
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`In Ex. 2038, on page 91, line 7 to page 93, line 8, Mr. Josse testified that his
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`principal function working for Petitioner Medtronic over the last 20 years has been
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`designing implants, that he has designed both interbody fusion spacers and
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`vertebral body replacement devices, but that he has “no opinion” on whether there
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`Attorney Docket No: 13958-0116IP2
`is a difference between an interbody fusion spacer and a vertebral body
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`replacement. That testimony again calls into question Mr. Josse’s credibility
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`because he was unwilling to answer questions regarding the differences between
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`vertebral body replacements and interbody fusion implants despite his twenty years
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`of experience designing both.
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`Date: 10/6/2014
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`Customer Number 26171
`Fish & Richardson P.C.
`Telephone: (612) 337-2508
`Facsimile: (612) 288-9696
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`Respectfully submitted,
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` /Stuart A. Nelson/
`Stuart A. Nelson
`Reg. No. 63,947
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`Case IPR2013-00506
`Attorney Docket No: 13958-0116IP2
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 CFR §§ 42.6(e)(4) and 42.6(e)(4)(iii), the undersigned
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`certifies that on October 6, 2014, a complete and entire copy of this Motion for
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`Observation Regarding Cross-Examination of Loic Josse was provided via email to
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`the Petitioner by serving the email correspondence address of record as follows:
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`Jeff E. Schwartz
`Seth A. Kramer
`Fox Rothschild LLP
`1030 15th Street, NW
`Washington, DC 20005
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`Email: jeschwartz@foxrothschild.com
`Email: skramer@foxrothschild.com
`Email: ipdocket@foxrothschild.com
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` /Diana Bradley/
`Diana Bradley
`Fish & Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
` (858) 678-5667
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`11
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