`Trials@uspto.gov
`571-272-7822
`
`Entered: September 26, 2014
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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`_____________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
`
`
`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
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`and 40 of the ’896 patent. IPR2014-00354, Paper 10. On June 23, 2014, Patent
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`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
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`parties’ joint motion for joinder of Case IPR2013-00629 with Case IPR2014-
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`00354. IPR2013-00629, Paper 18; IPR2014-00354, Paper 14. Both parties
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`requested an oral argument pursuant to 37 C.F.R. § 42.70(a). IPR2013-00629,
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`Papers 23 and 24. The requests are granted. The oral argument will commence at
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`1:00 PM Eastern Standard Time on October 27, 2014, on the ninth floor of
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`Madison Building East, 600 Dulany Street, Alexandria, Virginia, 22314.
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`We have reviewed each request for oral argument. Neither Petitioners nor
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`Patent Owner requested a specific amount of oral argument time. We have
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`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.
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`Accordingly, each party will have thirty minutes to present its arguments. We
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`recognize that, before we joined Case IPR2013-00629 and Case IPR2014-00354,
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`Petitioners were originally two separate entities—namely, (1) Smith & Nephew,
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`Inc. from Case IPR2013-00629; and (2) Wright Medical Group, Inc. and Wright
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`Medical Technology, Inc. from Case IPR2014-00354. Petitioners, however, are
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`allotted only thirty minutes of oral argument, in total, even if one entity wishes to
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`argue separately from the other entity.
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`Petitioners bear the ultimate burden of proof that claim 1 of the ’896 patent
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`is unpatentable based on the grounds of unpatentability instituted in this
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`consolidated proceeding. Therefore, Petitioners will proceed first to present their
`
`
`
`2
`
`
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`Case IPR2013-00629, Consolidated
`Patent 7,806,896 B1
`
`
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`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.
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`
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`The hearing will be open to the public for in-person attendance. In-person
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`attendance will be accommodated on a first-come first-serve basis. We will
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`provide a court reporter for the hearing and the reporter’s transcript will constitute
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`the official record of the hearing.
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`
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`Under 37 C.F.R. § 42.70(b), demonstrative exhibits must be served no later
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`than five business days before the hearing. They shall be filed with us no later than
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`three business days prior to the hearing. The parties must initiate a conference call
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`with us at least two business days prior to the hearing to resolve any dispute over
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`the propriety of each party’s demonstrative exhibits. For guidance on what
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`constitutes an appropriate demonstrative exhibit, the parties are directed to CBS
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`Interactive Inc., v. Helferich Patent Licensing, LLC, IPR2013-00033 (PTAB
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`October 23, 2013), Paper 118.
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`
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`We expect lead counsel for each party to be present at oral hearing, although
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`any backup counsel may make the actual presentation, in whole or in part. If lead
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`counsel for any party is unable to attend the oral argument, we should be notified
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`via a joint telephone conference call no later than two business days prior to the
`
`oral argument to discuss the matter.
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`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
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`Trials@uspto.gov. If the request is not received timely, the equipment may not be
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`available on the day of the hearing.
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`
`
`3
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`
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`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
`
`
`
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`4
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