Paper 25
`Trials@uspto.gov
`571-272-7822
`
`Entered: September 26, 2014
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_____________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`
`SMITH & NEPHEW, INC.,
`WRIGHT MEDICIAL GROUP, INC., and
`WRIGHT MEDICAL TECHNOLOGY, INC.,
`Petitioners,
`
`v.
`
`BONUTTI SKELETAL INNOVATIONS LLC,
`Patent Owner.
`
`
`
`Case IPR2013-00629, Consolidated
`Patent 7,806,896 B1
`
`
`
`
`Before WILLIAM V. SAINDON, MICHAEL R. ZECHER, and
`RICHARD E. RICE, Administrative Patent Judges.
`
`
`ZECHER, Administrative Patent Judge.
`
`
`
`
`
`
`
`
`ORDER
`Oral Argument
`37 C.F.R. § 42.70
`
`
`
`

`

`Case IPR2013-00629, Consolidated
`Patent 7,806,896 B1
`
`
`
`On February 28, 2014, we instituted an inter partes review only as to
`
`
`
`claim 1 of U.S. Patent No. 7,806,896 B1 (“the ’896 patent”). IPR2013-00629,
`
`Paper 10. On June 2, 2014, we instituted an inter partes review only as to claims 1
`
`and 40 of the ’896 patent. IPR2014-00354, Paper 10. On June 23, 2014, Patent
`
`Owner filed a notice indicating that it disclaimed claim 40 of the ’896 patent.
`
`IPR2014-00354, Paper 12. On June 30, 2014, we issued a decision granting the
`
`parties’ joint motion for joinder of Case IPR2013-00629 with Case IPR2014-
`
`00354. IPR2013-00629, Paper 18; IPR2014-00354, Paper 14. Both parties
`
`requested an oral argument pursuant to 37 C.F.R. § 42.70(a). IPR2013-00629,
`
`Papers 23 and 24. The requests are granted. The oral argument will commence at
`
`1:00 PM Eastern Standard Time on October 27, 2014, on the ninth floor of
`
`Madison Building East, 600 Dulany Street, Alexandria, Virginia, 22314.
`
`We have reviewed each request for oral argument. Neither Petitioners nor
`
`Patent Owner requested a specific amount of oral argument time. We have
`
`determined that, because this consolidated proceeding concerns only claim 1 of the
`
`’896 patent, one hour of oral argument time, in total, should be sufficient.
`
`Accordingly, each party will have thirty minutes to present its arguments. We
`
`recognize that, before we joined Case IPR2013-00629 and Case IPR2014-00354,
`
`Petitioners were originally two separate entities—namely, (1) Smith & Nephew,
`
`Inc. from Case IPR2013-00629; and (2) Wright Medical Group, Inc. and Wright
`
`Medical Technology, Inc. from Case IPR2014-00354. Petitioners, however, are
`
`allotted only thirty minutes of oral argument, in total, even if one entity wishes to
`
`argue separately from the other entity.
`
`Petitioners bear the ultimate burden of proof that claim 1 of the ’896 patent
`
`is unpatentable based on the grounds of unpatentability instituted in this
`
`consolidated proceeding. Therefore, Petitioners will proceed first to present their
`
`
`
`2
`
`

`

`Case IPR2013-00629, Consolidated
`Patent 7,806,896 B1
`
`
`
`case as to claim 1 of the ’896 patent and the grounds of unpatentability instituted in
`
`this consolidated proceeding. Petitioners may reserve rebuttal time. Thereafter,
`
`Patent Owner will respond to Petitioners’ case. After that, Petitioners will make
`
`use of their rebuttal time to respond to Patent Owner’s case.
`
`
`
`The hearing will be open to the public for in-person attendance. In-person
`
`attendance will be accommodated on a first-come first-serve basis. We will
`
`provide a court reporter for the hearing and the reporter’s transcript will constitute
`
`the official record of the hearing.
`
`
`
`Under 37 C.F.R. § 42.70(b), demonstrative exhibits must be served no later
`
`than five business days before the hearing. They shall be filed with us no later than
`
`three business days prior to the hearing. The parties must initiate a conference call
`
`with us at least two business days prior to the hearing to resolve any dispute over
`
`the propriety of each party’s demonstrative exhibits. For guidance on what
`
`constitutes an appropriate demonstrative exhibit, the parties are directed to CBS
`
`Interactive Inc., v. Helferich Patent Licensing, LLC, IPR2013-00033 (PTAB
`
`October 23, 2013), Paper 118.
`
`
`
`We expect lead counsel for each party to be present at oral hearing, although
`
`any backup counsel may make the actual presentation, in whole or in part. If lead
`
`counsel for any party is unable to attend the oral argument, we should be notified
`
`via a joint telephone conference call no later than two business days prior to the
`
`oral argument to discuss the matter.
`
`Requests for audio-visual equipment are to be made at least five business
`
`days in advance of the hearing date. The request should be sent to
`
`Trials@uspto.gov. If the request is not received timely, the equipment may not be
`
`available on the day of the hearing.
`
`
`
`3
`
`

`

`
`
`
`
`Case IPR2013-00629, Consolidated
`Patent 7,806,896 B1
`
`For PETITIONERS:
`
`David L. Cavanaugh
`Michael H. Smith
`WILMER CUTLER PICKERING AN DOOR LLP
`David.Cavanaugh@wilmerhale.com
`Michaelh.Smith@wilmerhale.com
`
`Samuel W. Apicelli
`Jarrad M. Gunther
`DUANE MORRIS LLP
`swapicelli@duanemorris.com
`jmgunther@duanemorris.com
`
`
`For PATENT OWNER:
`
`Cary Kappel
`William Gehris
`DAVIDSON, DAVIDSON & KAPPEL, LLC
`ckappel@ddkpatent.com
`wgehris@ddkpatent.com
`
`
`
`
`
`4
`
`