Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`Paper 18
`Entered: June 30, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SMITH & NEPHEW, INC.,
`WRIGHT MEDICAL GROUP, INC.,
`and WRIGHT MEDICAL TECHNOLOGY, INC.,
`Petitioners,
`
`v.
`
`BONUTTI SKELETAL INNOVATIONS LLC,
`Patent Owner.
`____________
`
`Case IPR2013-00629
` Case IPR2014-003541
`Patent 7,806,896 B1
`
`
`Before WILLIAM V. SAINDON, MICHAEL R. ZECHER, and
`RICHARD E. RICE, Administrative Patent Judges.
`
`SAINDON, Administrative Patent Judge.
`
`DECISION GRANTING
`JOINT MOTION FOR JOINDER
`37 C.F.R. § 42.122(b)
`
`
`1 A copy of this Decision is being filed in IPR2014-00354 so that the record
`indicates that it has been joined to IPR2013-00629. The parties are not
`authorized to use this style of heading.
`
`
`571-272-7822
`
`
`
`
`
`
`Paper 18
`Entered: June 30, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SMITH & NEPHEW, INC.,
`WRIGHT MEDICAL GROUP, INC.,
`and WRIGHT MEDICAL TECHNOLOGY, INC.,
`Petitioners,
`
`v.
`
`BONUTTI SKELETAL INNOVATIONS LLC,
`Patent Owner.
`____________
`
`Case IPR2013-00629
` Case IPR2014-003541
`Patent 7,806,896 B1
`
`
`Before WILLIAM V. SAINDON, MICHAEL R. ZECHER, and
`RICHARD E. RICE, Administrative Patent Judges.
`
`SAINDON, Administrative Patent Judge.
`
`DECISION GRANTING
`JOINT MOTION FOR JOINDER
`37 C.F.R. § 42.122(b)
`
`
`1 A copy of this Decision is being filed in IPR2014-00354 so that the record
`indicates that it has been joined to IPR2013-00629. The parties are not
`authorized to use this style of heading.
`
`
`
`Case IPR2013-00629
`Case IPR2014-00354
`Patent 7,806,896 B1
`
`
`I. INTRODUCTION
` On June 26, 2014, Judges Saindon, Zecher, and Rice held a
`conference call with counsel for Patent Owner and Petitioners.2 Patent
`Owner requested the call to request our authorization to file a motion for
`joinder of IPR2014-00354 and IPR2013-00629.
`Background
`This joinder involves two proceedings that address the same claims of
`
`the same patent using the same grounds. In IPR2013-00629 (“the ’629
`IPR”), we instituted an inter partes review of claim 1 of U.S. Patent No.
`7,806,896 (“the ’896 patent”) as unpatentable over two separate obviousness
`grounds asserted by Smith & Nephew. See ’629 IPR, Paper 10. In
`IPR2014-00354 (“the ’354 IPR”), we instituted an inter partes review of
`claim 1 of the ’896 patent as unpatentable over the same two obviousness
`grounds as in the ’629 IPR, but this time asserted by Wright. See ’354 IPR,
`Paper 10.3
`
`The Parties’ Request for Joinder
`Patent Owner requested a conference call to discuss the issue of
`
`joinder. During the call, Patent Owner indicated that the parties have
`reached an agreement regarding a proposed joinder. The parties wished to
`join the ’354 IPR to the ’629 IPR, and to maintain the ’629 IPR schedule.
`
`
`2 We refer to all petitioners jointly as “Petitioners.” “Wright” will be used to
`separately refer to Wright Medical Group, Inc. and Wright Medical
`Technology, Inc., as necessary, and “Smith & Nephew” will be used to
`separately refer to Smith & Nephew, Inc., as necessary.
`3 The ’354 IPR originally included a ground directed to claim 40 but Patent
`Owner subsequently disclaimed claim 40. See ’354 IPR, Paper 12 and
`Exhibit 2004.
`
`
`
`2
`
`
`
`Case IPR2013-00629
`Case IPR2014-00354
`Patent 7,806,896 B1
`
`The parties agreed to a “single deposition” of Patent Owner’s expert, Dr.
`Scott D. Schoifet. Regarding Petitioners’ expert, the declaration filed with
`the petition in the ’354 IPR is essentially the same as the declaration filed
`with the petition in the ’629 IPR. Compare ’629 IPR, Ex. 1002 with ’354
`IPR, Ex. 1002. That declarant, Dr. Jay D. Mabrey, already has been deposed
`in the ’629 IPR, and the parties agreed another deposition was unnecessary.
`Lastly, the parties asked that Smith & Nephew be allowed to file the Reply
`to Patent Owner’s Response and that Wright be allowed a 5-page
`supplemental Reply.
`
`Standards for Joinder
`The America Invents Act (AIA) created new administrative trial
`proceedings, including inter partes review, as an efficient, streamlined, and
`cost-effective alternative to district court litigation. The AIA permits the
`joinder of like proceedings. The Board, acting on behalf of the Director, has
`the discretion to join an inter partes review with another inter partes review.
`35 U.S.C. § 315. Section 315(c) provides (emphasis added):
`JOINDER.—If the Director institutes an inter partes review, the
`Director, in his or her discretion, may join as a party to that
`inter partes review any person who properly files a petition
`under section 311 that the Director, after receiving a
`preliminary response under section 313 or the expiration of the
`time for filing such a response, determines warrants the
`institution of an inter partes review under section 314.
`Thus, joinder may be authorized when warranted, but the decision to
`grant joinder is discretionary. See 35 U.S.C. § 315(c); 37 C.F.R. § 42.122.
`The Board will determine whether to grant joinder on a case-by-case basis,
`taking into account the particular facts of each case, substantive and
`procedural issues, and other considerations. See 157 CONG. REC. S1376
`
`3
`
`
`
`
`Case IPR2013-00629
`Case IPR2014-00354
`Patent 7,806,896 B1
`
`(daily ed. Mar. 8, 2011) (statement of Sen. Kyl) (when determining whether
`and when to allow joinder, the Office may consider factors including “the
`breadth or unusualness of the claim scope” and claim construction issues).
`When exercising its discretion, the Board is mindful that patent trial
`regulations, including the rules for joinder, must be construed to secure the
`just, speedy, and inexpensive resolution of every proceeding. See 35 U.S.C.
`§ 316(b); 37 C.F.R. § 42.1(b).
`When considering whether to grant a motion for joinder, the Board
`considers many factors, including: (1) the differences in the grounds
`asserted in the proceedings; (2) time and cost considerations, including the
`impact joinder would have on the trial schedule; and (3) how briefing and
`discovery may be simplified. See Order Authorizing Motion for Joinder
`(Paper 15) at 4, Kyocera Corp. v. SoftView, LLC., IPR2013-00004 (PTAB
`Apr. 24, 2013).
`
`
`II. DECISION
`During the conference call, the parties set forth several reasons why
`
`joinder is appropriate. We consider the parties’ combined request during the
`call as a joint motion for joinder.
`All parties involved agree joinder would be beneficial, and have
`agreed to a schedule and procedures that simplify briefing and discovery.
`There are no differences in the grounds asserted in the proceedings. The
`schedule of the joined proceedings will be the same as that of the ’629 IPR,
`the earlier-filed IPR. Duplicative briefing on the same issues, as well as
`duplicative depositions of experts, will be eliminated. In this light, we see
`substantial efficiencies and savings gained by the Board and the parties from
`
`4
`
`
`
`
`Case IPR2013-00629
`Case IPR2014-00354
`Patent 7,806,896 B1
`
`joining these proceedings, and we grant the parties’ joint motion for joinder.
`Guidance as to how the joined proceedings will operate is as follows.
`Filings will be made in the ’629 IPR only, and the joined proceeding will
`referred to as “IPR2013-00629” only. The ’354 IPR, having been joined to
`the ’629 IPR, will be considered terminated under 37 C.F.R. § 42.72.
`To streamline and simplify the proceeding, Petitioners will not file
`separate papers, unless filing a paper that does not involve the other
`petitioner (e.g., mandatory notices). Thus, each paper filed by the
`Petitioners will be filed as a single, consolidated paper and will be identified
`as “consolidated.” A single, consolidated paper is required even if one
`petitioner wishes to speak separately from the other petitioner. In that event,
`the paper shall identify when a petitioner is speaking separately, and ensure
`it is clear which petitioner is speaking separately. In recognition that there
`are now two petitioners joined in this proceeding, we will allow a total of 20
`pages for the Consolidated Reply to Patent Owner’s Response. Other
`papers, filed by any party, remain subject to the page limit requirements set
`forth in 37 C.F.R. § 42.24, unless the party receives prior authorization from
`the Board.
`Regarding the schedule of the ’629 IPR, we note that the original
`Scheduling Order of the ’629 IPR (Paper 11) has been modified via
`stipulation (Paper 16). As we explained during the conference call, the
`parties are permitted to stipulate to further changes to Due Dates 1-5.
`Regarding the deposition of Patent Owner’s expert, the Petitioners are
`allowed a single deposition. The parties are encouraged to agree as to the
`format for this deposition early and to contact us if any issues arise.
`
`
`
`
`
`5
`
`
`
`Case IPR2013-00629
`Case IPR2014-00354
`Patent 7,806,896 B1
`
`
`
`III. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that IPR2014-00354 is joined to IPR2013-00629;
`FURTHER ORDERED that the parties will file all papers in
`IPR2013-00629, and that IPR2014-00354 is now terminated under 37 C.F.R.
`§ 42.72;
`FURTHER ORDERED that the joined proceeding will follow the
`schedule effective in IPR2013-00629 as of the date of this Decision, and that
`further stipulations may be made to Due Dates 1-5;
`FURTHER ORDERED that Petitioners will file all papers, except for
`papers that involve only one petitioner, as consolidated papers, and will
`identify such filings as “Consolidated,” and that if a petitioner wishes to
`speak separately from the other petitioner in a consolidated paper, the paper
`must identify and attribute such separate statements clearly;
`FURTHER ORDERED that Petitioners may file a Consolidated Reply
`to the Patent Owner’s Response, limited to 20 pages, no later than Due Date
`2; and
`FURTHER ORDERED that Petitioners are allowed a single
`deposition of Patent Owner’s expert, Dr. Scott D. Schoifet.
`
`
`
`
`6
`
`
`
`Case IPR2013-00629
`Case IPR2014-00354
`Patent 7,806,896 B1
`
`PETITIONER:
`David Cavanaugh
`Michael Smith
`WILMER CUTLER PICKERING AND DORR LLP
`David.Cavanaugh@wilmerhale.com
`Michaelh.Smith@wilmerhale.com
`
`Samuel W. Apicelli
`Jarrad M. Gunther
`DUANE MORRIS LLP
`swapicelli@duanemorris.com
`jmgunther@duanemorris.com
`
`PATENT OWNER:
`
`Cary Kappel
`William Gehris
`DAVIDSON, DAVIDSON & KAPPEL, LLC
`ckappel@ddkpatent.com
`wgehris@ddkpatent.com
`
`
`
`
`
`
`
`
`
`
`7
`
`
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