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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`Case IPR2013-00506
`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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`Case IPR2013-00506
`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
`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, page 32, line 7 to page 33, line 18, Mr. Josse testified “I haven’t seen
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`expressly stated 40 millimeters long” in reference to his patent attached as
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`Appendix E to his Declaration (Ex. 1116). That testimony is relevant to
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`Petitioner’s argument in the Reply at pages 3-5 regarding implant length. See
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`Reply at 3-5.
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`Observation #2
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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 “that there was a cage greater than 40 millimeters in length.”
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`That testimony is relevant to Mr. Josse’s testimony at ¶ 4 of the Josse Declaration
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`where he states that “Medtronic has commercialized interbody spinal fusion
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`implants having a length of at least 40 mm.” Ex. 1116 at ¶ 4.
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`Observation #3
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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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`Case IPR2013-00506
`Attorney Docket No: 13958-0116IP2
`United States,” “Draft Copy,” and “for internal use only.” That testimony is
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`relevant to Mr. Josse’s testimony at ¶ 4 of the Josse Declaration where he suggests
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`that the document attached as Appendix D to his declaration was public.
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`Observation #4
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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 “invoice or bill of sale showing that a Butterfly implant was ever
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`sold,” no “surgical report indicating that the Butterfly implant was ever used in a
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`live patient,” and no testimony “indicat[ing] that the Butterfly Fusion System was
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`ever used in the United States.” See also Ex. 2038, Page 43, lines 6-10. That
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`testimony is relevant to Mr. Josse’s testimony at ¶ 4 of the Josse Declaration where
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`he suggests that the Butterfly implant described in Appendix D was
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`commercialized.
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`Observation #5
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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 as follows:
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`Q. You say length. Why do you -- how do you know that that is the
`length?
`A. Because this is the longest dimension of the cage.
`Q. What does the D in the third column of that chart then refer to?
`A. The D means depth and means as well the width of the cages.
`Q. How do you know that the D refers to the width?
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`Case IPR2013-00506
`Attorney Docket No: 13958-0116IP2
`A. Because D is a perpendicular dimension of the longest dimension
`of the cage, so the length is perpendicular to the width, and this is how
`you can define the two dimensions of the cage.
`Q. I just want to make sure the court reporter understood. You are
`saying the width is the dimension that is perpendicular to the length,
`which is the longest dimension. Did I hear your testimony correctly?
`A. More or less, yes.
`That testimony is relevant to Petitioner’s argument in the IPR2013-00507 Petition,
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`pp. 21-22 that Frey teaches an implant of “said longitudinal length [that] is at least
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`two and half times greater than the maximum lateral width” in claim 1 of the ‘334
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`patent.
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`Observation #6
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`In Ex. 2038, on page 74, line 4 to page 76, line 3, Mr. Josse testified:
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`Q. So, Mr. Josse, if we look at the implants large 14, large 12 and
`large 10, each of those have a length of 41 millimeters and a width of
`18 millimeters according to this chart. Correct?
`A. Correct.
`* * *
`Q. If we assume 18 multiplied by 2.5 is 45, is it fair to say that the
`implants described in Appendix B to your declaration do not have a
`maximum length that is at least 2.5 times greater than the maximum
`width?
`MR. SCHWARTZ: Objection to form, foundation and scope.
`A. I have no opinion.
`Q. You have no opinion on that question?
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`Attorney Docket No: 13958-0116IP2
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`A. I have no opinion.
`That testimony is relevant to Petitioner’s argument in the IPR2013-00507 Petition,
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`pp. 21-22 and 52-55 that the boomerang implant meets the length to width ratio of
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`claim 1 of the ’334 patent.
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`Observation #7
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`In Ex. 2038, on page 77, line 16 to page 78, line 8, Mr. Josse testified regarding a
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`prototype boomerang implant as follows:
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`Q. Nothing in your declaration actually states that Dr. Frey received
`these implants. Correct?
`A. Correct.
`Q. In your declaration you don't reference any documents, whether
`they be medical records or bills of sale or any other type of document,
`that indicate that Dr. Frey actually used the implants that are
`referenced in this email. Correct?
`MR. SCHWARTZ: Objection to form.
`A. Correct.
`Q. In your declaration, nowhere do you state that a Boomerang
`implant of over 40 millimeters was used safely in a patient, do you?
`MR. SCHWARTZ: Objection to form.
`A. Correct.
`That testimony is relevant to Petitioner’s argument in the IPR2013-00507 Reply, p.
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`11 that “implants having these expanded dimensions can, and have been made and
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`implanted using a postero-lateral technique.”
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`Case IPR2013-00506
`Attorney Docket No: 13958-0116IP2
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`Observation #8
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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…at Medtronic over the last 20 years is to design implants,” that
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`he has “designed interbody fusion spacers,” and “designed vertebral body
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`replacement devices,” but that he has “no opinion” on whether there is “a
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`difference between an interbody spacer and a vertebral body replacement.” That
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`testimony is relevant to Mr. Josse’s credibility.
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`Respectfully submitted,
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` /Stuart A. Nelson/
`Stuart A. Nelson
`Reg. No. 63,947
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`Date: 10/16/2014
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`Customer Number 26171
`Fish & Richardson P.C.
`Telephone: (612) 337-2508
`Facsimile: (612) 288-9696
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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 42.205(b), the undersigned certifies
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`that on October 16, 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 correspondence email address of record as follows:
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`Jeff E. Schwartz
`Fox Rothschild LLP
`1030 15th Street, NW
`Washington, DC 20005
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`Seth A. Kramer
`Fox Rothschild LLP
`2000 Market Street, 20th Floor
`Philadelphia, PA 19103
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`Email: jeschwartz@foxrothschild.com
`Email: skramer@foxrothschild.com
`Email: ipdocket@foxrothschild.com
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`/Diana Bradley/
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`Diana Bradley
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`(858) 678-5667
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