UNITED STATES PATENT AND TRADEMARK OFFICE
`
`---------------------------------------
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`---------------------------------------
`
`MEDTRONIC, INC.
`Petitioner
`
`v.
`
`NUVASIVE, INC.
`Patent Owner
`---------------------------------------
`
`Case IPR2013-00506
`Patent 8,361,156
`---------------------------------------
`
`PETITIONER’S RESPONSE TO PATENT OWNER’S
`MOTION FOR OBSERVATION REGARDING
`CROSS-EXAMINATION OF LOIC JOSSE
`
`ACTIVE 27778470v4 10/21/2014
`
`
`
`---------------------------------------
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`---------------------------------------
`
`MEDTRONIC, INC.
`Petitioner
`
`v.
`
`NUVASIVE, INC.
`Patent Owner
`---------------------------------------
`
`Case IPR2013-00506
`Patent 8,361,156
`---------------------------------------
`
`PETITIONER’S RESPONSE TO PATENT OWNER’S
`MOTION FOR OBSERVATION REGARDING
`CROSS-EXAMINATION OF LOIC JOSSE
`
`ACTIVE 27778470v4 10/21/2014
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`
`
`IPR2013-00506
`
`I.
`
`Introduction
`
`Petitioner Docket No. 108136.00029
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`Pursuant to the Board’s Order dated October 15, 2014, Petitioner Medtronic,
`
`Inc. (“Petitioner”) submits the following responses to Patent Owner NuVasive,
`
`Inc.’s (“Patent Owner”) Motion for Observation Regarding Cross-Examination of
`
`Loic Josse.1
`
`II.
`
`Responses
`
`A.
`
`Response to Observation #1
`
`In Ex. 2038, at 19:25 to 20:11 and 31:15 to 32: 6, Mr. Josse testified about
`
`U.S. Patent No. 6,156,037 as follows:
`
`Page 19
`25 Q. Wonderful. In that section you
`Page 20
`2 actually state that the "above mentioned
`3 U.S. patent number 5,727,661 issued
`4 January 30, 1998 to Michaelson, the
`5 disclosure of which is incorporated herein
`6 by reference to an extent which may be
`7 needed to understand the device and method
`8 of the present invention."
`9 That is written in your '037
`10 patent. Correct?
`
`1 Patent Owner includes in the exhibit list preceding the Motion Exhibit Nos. 2031,
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`2032, 2033, 2034, 2035, 2036, 2037, 2038, each of which have been expunged by
`
`the Order dated October 15, 2014. See IPR2013-00506, Paper 37, at 5 (PTAB
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`October 15, 2014).
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`ACTIVE 27778470v4 10/21/2014
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`IPR2013-00506
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`Petitioner Docket No. 108136.00029
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`11 A. Correct.
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`Page 31
`15 A. So, in the claim, the first
`16 claim, this is described as implants can
`17 have elongated length. As I describe here
`18 in my declaration, length of implant is
`19 dependent on the approach of the implant
`20 as well as the anatomy of the patient,
`21 anatomy of the vertebra where the device
`22 or implant is going to be implanted as
`23 described in the claim number 1 in the
`24 disc space in the case of this Boomerang
`25 cages.
`Page 32
`2 Yes, the cage can be
`3 40 millimeters long or even longer if
`4 necessary or if directed by the anatomy of
`5 the patient or by the approach used to
`6 implant.
`
`This testimony is relevant to the reply at pages 3-5 regarding implant length.
`
`B.
`
`Response to Observation #2
`
`In Ex. 2038, at 37:19 to 38: 4, Mr. Josse testified as follows:
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`Page 37
`19 Q. On this page, in the left side
`20 of the page, kind of two thirds of the way
`21 down, it identifies standard cages.
`22 Correct? Do you see that?
`23 A. Correct. I see that.
`24 Q. And it lists the length of those
`25 standard cages as 30 millimeters,
`Page 38
`2 35 millimeters or 40 millimeters.
`3 Correct?
`4 A. Correct.
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`2
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`IPR2013-00506
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`Petitioner Docket No. 108136.00029
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`This testimony is relevant to Mr. Josse’s testimony at ¶ 4 of the Josse Declaration
`
`where he states that “Medtronic has commercialized interbody spinal fusion
`
`implants having a length of at least 40 mm.” Ex. 1116, at ¶ 4.
`
`C.
`
`Response to Observation #3
`
`In Ex. 2038, at 48:19 to 49:12, Mr. Josse testified as follows:
`
`Page 48
`19 Q. And this is a draft of the
`20 marketing materials. Correct?
`21 [objection omitted]
`22 [objection omitted]
`23 A. No. Actually, I believe this is
`24 the final version as we describe at the
`25 last page where you can find the Medtronic
`Page 49
`2 reference and date of release.
`3 Q. But the cover page says "draft
`4 copy." Correct?
`5 A. Correct. But I believe it is a
`6 typo. I don't know for which reason they
`7 mention "draft copy, internal use only."
`8 Q. I didn't understand your last
`9 response. Can you say it again, please?
`10 A. I said I don't know why the
`11 mention "Draft copy, for internal use
`12 only" remained on the final version.
`
`This testimony is relevant to Ex. 2038, at 43:6-22, because it places that testimony
`
`in the proper context, and to Mr. Josse’s testimony at ¶ 4 of the Josse Declaration
`
`where he indicates that the Appendix D to his declaration was publicly available.
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`ACTIVE 27778470v4 10/21/2014
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`3
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`IPR2013-00506
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`Petitioner Docket No. 108136.00029
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`D.
`
`Response to Observation #4
`
`In Ex. 2038, at 45:22 to 46:10, Mr. Josse testified as follows:
`
`Page 45
`22 Q. In paragraph 4 you state that
`23 you are aware of Medtronic commercializing
`24 interbody fusion implants having a length
`25 of at least 40 millimeters. Correct?
`Page 46
`2 A. That is correct, in Europe.
`3 Yes, that is correct.
`4 Q. The only implant you identify in
`5 paragraph 4 being commercialized is the
`6 Butterfly implant. Correct?
`7 MR. SCHWARTZ: Objection to
`8 form.
`9 A. That is correct, with the
`10 Boomerang implant mentioned before.
`
`This testimony is relevant to Mr. Josse’s testimony at ¶ 4 of the Josse Declaration
`
`where he indicates that the Butterfly implant described in Appendix D to his
`
`declaration was commercialized.
`
`E.
`
`Response to Observation #5
`
`In Ex. 2038, at 71:19 to 76:3, Mr. Josse testifies about Appendix B to his
`
`declaration. See Ex. 2038, at 71:19-22 (“Now, if you turn back to Appendix B,
`
`which is the email exchange between Ming Liu and gfrey2sun@aol.com? Yes.”).
`
`This is relevant to Ex. 2038, at 73:2-17, because it shows that Mr. Josse was
`
`testifying to the dimension D as being the width of the implant described in
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`4
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`IPR2013-00506
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`Petitioner Docket No. 108136.00029
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`Appendix B. Appendix B is not the Frey reference. Appendix B was not relied on
`
`by Petitioner in any of the asserted grounds of invalidity in the Petition.
`
`F.
`
`Response to Observation #6
`
`In Ex. 2038, at 71:19 to 76:3, Mr. Josse testifies about Appendix B to his
`
`declaration. See Ex. 2038, at 71:19-22 (“Now, if you turn back to Appendix B,
`
`which is the email exchange between Ming Liu and gfrey2sun@aol.com? Yes.”).
`
`This is relevant to Ex. 2038, at 74:4 to 76:3, because it show that Mr. Josse was
`
`testifying regarding the dimensions of the implant described in Appendix B.
`
`Appendix B, the “boomerang implant,” and the information contained therein, was
`
`not relied on or referred to by Petitioner in the Petition or any of the asserted
`
`grounds of invalidity in the Petition.
`
`G.
`
`Response to Observation #7
`
`In Ex. 2038, at 72:13-19, Mr. Josse testified as follows:
`
`13 Q. Now, in this document, in the
`14 part that is not blocked out with black
`15 boxes, how many total implants, according
`16 to this document, were prepared for
`17 Dr. Frey?
`18 A. Twelve implants were made
`19 according to this document.
`
`This testimony is relevant to Mr. Josse’s statement in his declaration that
`
`boomerang implants greater than 40 mm were made. See Ex. 1116, at ¶ 2.
`
`In Ex. 2038, at 50:10 to 51:8, Mr. Josse testified as follows:
`5
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`IPR2013-00506
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`Petitioner Docket No. 108136.00029
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`Page 50
`10 Q. Then in paragraph 5 to your
`11 declaration you make reference to Appendix
`12 F, which is a study that was performed
`13 regarding the Butterfly device. Correct?
`14 A. That is correct.
`15 Q. You were an author to that
`16 study?
`17 A. Yes, I was.
`18 Q. Did you review that study in
`19 preparing your declaration in this matter?
`20 A. Yes, I did review but not in
`21 detail.
`22 Q. Did you review that study in
`23 preparing for your deposition here today?
`24 A. Yes, but not in detail.
`25 Q. The study that is at Appendix F
`Page 51
`2 to your declaration, that was conducted in
`3 France?
`4 A. Yes, it was.
`5 Q. The study was on cadavers;
`6 correct?
`7 A. It was on cadavers, on a portion
`8 of the cadaver, yes.
`
`This testimony is relevant to the Reply in IPR2013-00507, at p. 11, to statements
`
`that implants having expanded dimensions were implanted.
`
`H.
`
`Response to Observation #8
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`In this observation, Patent Owner discusses solicitations of expert opinion
`
`testimony from Mr. Josse. Mr. Josse was offered in this proceeding as a fact
`
`witness pertaining to the limited facts set out in his declaration.
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`6
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`IPR2013-00506
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`Petitioner Docket No. 108136.00029
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`Dated: October 21, 2014
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`Respectfully submitted,
`
`/Jeff E. Schwartz/ d
`Jeff E. Schwartz, Reg. No. 39,019
`Fox Rothschild LLP
`1030 15th Street, NW
`Washington, DC 20005
`Tele: 202-696-1470
`Fax: 202-461-3102
`
`Attorneys for Petitioner
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`ACTIVE 27778470v4 10/21/2014
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`7
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`
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies that on the 21st day of
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`October 2014 a complete and entire copy of “Petitioner’s Response to Patent
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`Owner’s Motion for Observation Regarding Cross-Examination of Loic Josse” was
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`provided via email to the Patent Owner by serving the following email addresses:
`
`schaefer@fr.com
`
`hawkins@fr.com
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`snelson@fr.com
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`IPR13958-0116IP2@fr.com
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`Electronic service was used with the agreement of the Patent Owner’s counsel.
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`Dated: October 21, 2014
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`ACTIVE 27778470v4 10/21/2014
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`/Jeff E. Schwartz/ d
`Jeff E. Schwartz, Reg. No. 39,019
`Fox Rothschild LLP
`1030 15th Street, NW
`Washington, DC 20005
`Tele: 202-696-1470
`Fax: 202-461-3102
`
`Attorneys for Petitioner
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