`Trials@uspto.gov
`Tel: 571-272-7822
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`
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`
`
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` Paper 37
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` Entered: October 15, 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 October 14, 2014, a conference call was held between counsel for
`
`the respective parties and Judges Medley, Green, and Siu. The purpose of
`
`the conference call was for Petitioner to seek authorization to file a motion
`
`
`
`IPR2013-00506 (Patent 8,361,156)
`IPR2013-00507 (Patent 8,187,334)
`IPR2013-00508 (Patent 8,187,334)
`
`to expunge Patent Owner’s motions for observations filed in each case (see,
`
`e.g., IPR2014-00506, Papers 35 and 36) along with a motion to exclude
`
`evidence filed with Patent Owner’s motions for observations. Alternatively,
`
`Petitioner requests the Board dismiss the motions on observations. Patent
`
`Owner opposes the requests. The parties also sought guidance regarding the
`
`upcoming November 18, 2014 hearing.
`
`
`
`Motion for Observation on Cross-Examination
`
`Parties are permitted to cross-examine reply declarants. If necessary,
`
`a party may file a motion for observation regarding cross-examination of a
`
`reply witness during DUE DATE 4. As noted, in the Scheduling Order (see,
`
`e.g., IPR2013-00506, Paper 10), a motion for observation on cross-
`
`examination is a mechanism to draw the Board’s attention to relevant cross-
`
`examination testimony of a reply witness. The observation must be a
`
`concise statement of the relevance of precisely identified testimony to a
`
`precisely identified argument or portion of an exhibit (including another part
`
`of the same testimony). An observation is not an opportunity to raise new
`
`issues, to re-argue issues, or to pursue objections. Each observation should
`
`be in the following form:
`
`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
`___.
`
`
`Each observation should not exceed one short paragraph and should
`
`not contain arguments. The Board may decline consideration or entry of
`
`argumentative observations. In accordance with the Scheduling Order, an
`
`2
`
`
`
`IPR2013-00506 (Patent 8,361,156)
`IPR2013-00507 (Patent 8,187,334)
`IPR2013-00508 (Patent 8,187,334)
`
`opposing party may file a response to any motion for observation by DUE
`
`DATE 5. The response should not be argumentative. An excessively long
`
`or argumentative response may not be considered. In considering whether a
`
`motion for observation, or a response, is improper, the entire motion or
`
`response may be dismissed and not considered if there is even one
`
`excessively long or argumentative observation or response.
`
`During the conference call, counsel for Petitioner argued that Patent
`
`Owner’s motions for observations filed in the three proceedings violated the
`
`guidance set forth in the Scheduling Order and the Trial Practice Guide. In
`
`particular, Petitioner represented that the motions for observations contained
`
`new arguments and new evidence, essentially constituting a surreply to
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`Petitioner’s Replies filed in each proceeding. Counsel for Patent Owner
`
`responded that Patent Owner followed the guidance provided in the
`
`Scheduling Order and Trial Practice Guide and that the motions on
`
`observations did not violate the proper format for presenting observations.
`
`As explained during the call, the motions for observations contain
`
`arguments and are excessively long, and, thus, improper. As an example, we
`
`discussed Observation #4 in the Motion for Observation Regarding the
`
`Cross-Examination of Dr. Richard A. Hynes. See, e.g., IPR2013-00506,
`
`Paper 31, 6–7. In particular, Observation #4 cites several pages of Dr.
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`Hynes’ testimony, as opposed to one portion of his testimony, and proceeds
`
`to present an argument that the testimony is relevant “because the
`
`description of a Vertebral Body Replacement in Ex. 2034 shows that the size
`
`of fusion implants disclosed in Michelson, SVS-PR, and Telamon cannot
`
`possibly be used for a vertebral body replacement as falsely implied in
`
`3
`
`
`
`IPR2013-00506 (Patent 8,361,156)
`IPR2013-00507 (Patent 8,187,334)
`IPR2013-00508 (Patent 8,187,334)
`
`Petitioner’s Reply.” Id. The sentence that follows also contains argument
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`and is improper. Because we have found at least one such violation in each
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`motion for observation filed in each proceeding, we dismiss the motions
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`without prejudice.1 In addition to dismissing the motions for observations,
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`the evidence filed in support of the observations will be expunged. Patent
`
`Owner is authorized to file corrected motions for observations by October
`
`16, 2014, and only relevant evidence in support of the motion for
`
`observations.2
`
`The guidelines provided here equally apply to any response Petitioner
`
`files.
`
`Trial Hearing
`
`
`
`The parties agreed that the hearing for the three proceedings should be
`
`consolidated, whereby each party has a total of 90 minutes to present
`
`arguments. We indicated that the hearing will take place the afternoon of
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`November 18, 2014, and that an order setting forth the procedure for the
`
`hearing will be made in due course.
`
`It is
`
`ORDERED that Patent Owner’s Motions for Observation Regarding
`
`Cross-Examination of Dr. Hynes and Mr. Josse are dismissed without
`
`
`1For the Motion for Observation Regarding the Cross-Examination of Mr.
`Loic Josse, the parties are directed to Observation #3 lines 5-11 as an
`example of what is not permitted. See, e.g., IPR2013-00506, Paper 36.
`There, Patent Owner makes arguments regarding the propriety of the
`testimony in connection with claim language.
`2 We would expect only the testimony from the cross examination.
`Anything beyond that would be questionable. For example, it was not
`proper to submit Exhibit 2036 which is a transcript of a different declarant in
`connection with the motion for observation.
`
`4
`
`
`
`IPR2013-00506 (Patent 8,361,156)
`IPR2013-00507 (Patent 8,187,334)
`IPR2013-00508 (Patent 8,187,334)
`
`prejudice; and
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`FURTHER ORDERED that Exhibits 2031-2040 be expunged from
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`the record of each of the three proceedings;
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`FURTHER ORDERED that Patent Owner is authorized to file
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`corrected motions for observations, no later than October 16, 2014,
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`consistent with this order; and
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`FURTHER ORDERED that Petitioner is authorized to file responses
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`to the motions for observations, no later than October 21, 2014, consistent
`
`with this order.3
`
`
`
`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
`
`
`
`
`3 DUE DATE 5 is not otherwise altered.
`
`5
`
`
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