DOCKET NO.: 0286868-00188
`By: David L. Cavanaugh, Reg. No. 36,476
`
`Michael H. Smith, Reg. No. 71,190
`
`Wilmer Cutler Pickering Hale and Dorr LLP
`
`1875 Pennsylvania Ave., NW
`
`Washington, DC 20006
`Tel: (202) 663-6000
`Email: David.Cavanaugh@wilmerhale.com
`MichaelH.Smith@wilmerhale.com
`
`
`
`
`
`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 of U.S. Patent No. 7,806,896 to Peter M. Bonutti
`
`IPR Trial No. IPR2013-00629, Consolidated
`
`
`
`PETITIONERS’ DEMONSTRATIVE EXHIBITS FOR ORAL ARGUMENT
`
`
`
`
`
`
`
`
`
`
`By: David L. Cavanaugh, Reg. No. 36,476
`
`Michael H. Smith, Reg. No. 71,190
`
`Wilmer Cutler Pickering Hale and Dorr LLP
`
`1875 Pennsylvania Ave., NW
`
`Washington, DC 20006
`Tel: (202) 663-6000
`Email: David.Cavanaugh@wilmerhale.com
`MichaelH.Smith@wilmerhale.com
`
`
`
`
`
`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 of U.S. Patent No. 7,806,896 to Peter M. Bonutti
`
`IPR Trial No. IPR2013-00629, Consolidated
`
`
`
`PETITIONERS’ DEMONSTRATIVE EXHIBITS FOR ORAL ARGUMENT
`
`
`
`
`
`
`
`
`
`
`
`Smith & Nephew, Inc.,
`Wright Medical Group, Inc., and
`Wright Medical Technology, Inc.,
`Petitioners
`v.
`Bonutti Skeletal Innovations LLC,
`Patent Owner of U.S. Patent No. 7,806,896
`IPR Trial No. IPR2013‐00629
`
`PETITIONERS’ ORAL ARGUMENT
`
`CLAIM 1 OF U.S. PATENT NO. 7,806,896
`
`1
`
`
`
`Overview
`
`Overview of Applied Prior Art & Obviousness of
`Claim 1
`
`Issues Raised by Patent Owner
`
`– Whether the Scorpio reference discloses the “transverse
`dimension” limitation (regardless, Patent Owner does not
`dispute the Turner reference discloses this limitation)
`
`– Whether the references would have been combined
`
`2
`
`
`
`The Technology
`
`(Mabrey Decl. ¶ 23 (EX. 1002))
`
`(Pet. at 11)
`
`3
`
`
`
`The Challenged Claim – Claim 1
`
`’896 at Claim 1
`
`4
`
`
`
`The Board’s Decision on Institution
`
`Stulberg in combination with Scorpio or Turner
`
`’896 at Claim 1
`
`5
`
`
`
`The Board’s Decision on Institution
`
`Delp in combination with Scorpio or Turner
`
`’896 at Claim 1
`
`6
`
`
`
`The Board’s Claim Construction
`
`The Board adopted the following claim constructions
`– “cutting guide” means a “guide that has a guide surface”
`– “guide surface” means “a surface that guides a cutting
`instrument”
`
`DI at 9
`
`7
`
`
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`Applied Prior Art: Turner
`
`Turner discloses:
`
`Turner at 181, Figs. 8‐9 (Ex. 1003);
`Petition at 32‐33; DI at 12‐13
`
`8
`
`
`
`Applied Prior Art: Scorpio
`
`Scorpio discloses:
`
`Scorpio at 9, Fig. 15 (Ex. 1009); Mabrey Reply Decl. ¶ 13 (Ex.
`1023); DI at 17
`
`9
`
`
`
`Scorpio: Response to Patent Owner Arguments
`
`BSI Drawings at 2 (Ex. 2007) (drawing of
`alleged cross section of Scorpio’s left and
`right guide surfaces and truncated
`triangular divider)
`
`10
`
`
`
`Scorpio: Response to Patent Owner Arguments
`
`Mabrey Reply Decl. ¶ 15 (Ex. 1023)
`(showing enlarged and annotated
`view of Patent Owner’s drawing)
`
`11
`
`
`
`Obviousness
`
`Obviousness
`
`12
`
`
`
`Patent Owner’s Legally Deficient Arguments
`
`BSI Asserts Three Legally Deficient Arguments
`Against Obviousness
`– Unclaimed Features Cannot Make Patentable An Obvious
`Combination
`– Physical Combinability Is Not the Standard
`– BSI Improperly Argues Against The References Individually
`
`13
`
`
`
`The Obviousness Dispute
`
`Consistent with the Board’s Decision on Institution,
`Petitioners have demonstrated that the prior art
`would have been combined by the person of skill in
`the art to obtain the claimed invention.
`
`Patent Owner argues that the references cannot be
`combined.
`
`14
`
`
`
`The References Would Have Been Combined
`
`Stulberg at 33 (Ex. 1005)
`
`15
`
`
`
`The References Would Have Been Combined
`
`Delp Article at 50 (Ex. 1003)
`
`16
`
`
`
`The References Would Have Been Combined
`
`Delp ’018 at 22:45‐50 (Ex. 1004)
`
`17
`
`
`
`The References Would Have Been Combined
`
`File History for U.S. Patent No. 8,133,229 to Bonutti,
`June 18, 2009 Office Action Response at 20 (Ex. 1024)
`
`18
`
`
`
`The References Would Have Been Combined
`
`Schoifet Dep. at 67:9‐18 (Ex. 1031)
`
`19
`
`
`
`The References Would Have Been Combined
`
`Schoifet Dep. at 51:24‐52:7 (Ex. 1031)
`
`20
`
`
`
`The References Would Have Been Combined
`
`Patent Owner Offers No Evidence Of Secondary
`Considerations
`– Patent Owner does not identify any unexpected results
`– “The combination of familiar elements according to known
`methods is likely to be obvious when it does no more than
`yield predictable results.” KSR Int’l Co. v. Teleflex Inc., 550
`U.S. 398, 416 (2007).
`
`21
`
`
`
`—
`
`Appendix
`
`Appendix
`
`22
`
`
`
`Applied Prior Art: Turner
`
`“The cutting guide that is relied upon by Dr. Mabrey
`(Figure 8) is employed in the geometric technique [of
`Turner].” Schoifet Decl. ¶ 48 (EX. 2004)
`
`23
`
`
`
`Applied Prior Art: Turner
`
`Patent Owner’s Expert Dr. Schoifet admitted:
`
`Schoifet Tr. at 169:8‐23 (Ex. 1031)
`
`24
`
`
`
`The Turner Technique Was Successful
`
`Geometric Total Knee Arthoplasty (EX. 1029)
`
`25
`
`
`
`Scorpio: Response to Patent Owner Arguments
`
`Schoifet Decl. ¶ 77 (Ex. 2004)
`
`Mabrey Reply Decl. ¶ 15
`(Ex. 1023) (showing
`enlarged and annotated
`view of Patent Owner’s
`drawing)
`
`26
`
`
`
`Scorpio: Response to Patent Owner Arguments
`
`Schoifet Dep. at 151:15‐20 (Ex. 1031)
`
`Mabrey Reply Decl. ¶ 15
`(Ex. 1023) (showing
`enlarged and annotated
`view of Patent Owner’s
`drawing)
`
`Schoifet Dep. at 152:7‐16 (Ex. 1031)
`
`27
`
`
`
`Scorpio: Response to Patent Owner Arguments
`
`Schoifet Dep. at 146:21‐147:3 (Ex. 1031)
`
`28
`
`
`
`Scorpio: Response to Patent Owner Arguments
`
`Scorpio Photos at 29 (Ex. 1030); Mabrey
`Reply Decl. ¶ 19 (Ex. 1023)
`
`29
`
`
`
`The References Would Have Been Combined
`
`Schoifet Dep. at 178:12‐17 (Ex. 1031)
`
`30
`
`
`
`Petitioners’ Demonstrative Exhibits for Oral Argument
`Trial No. IPR2013-00629, Consolidated; Docket No.: 0286868-00188
`U.S. Patent No. 7,806,896, Claim 1
`
`
`
`
`
`
`
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`Respectfully submitted,
`
`
`
`/Michael H. Smith/
`Michael H. Smith
`Registration No. 71,190
`Wilmer Cutler Pickering
`Hale and Dorr LLP
`
`Customer Number: 24395
`
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`Tel: 202-663-6055
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`Fax: 202-663-6363
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`31
`
`
`
`Petitioners’ Demonstrative Exhibits for Oral Argument
`Trial No. IPR2013-00629, Consolidated; Docket No.: 0286868-00188
`U.S. Patent No. 7,806,896, Claim 1
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on October 22, 2014, I caused a true and correct copy of
`
`the foregoing materials:
`
`• Petitioners’ Demonstrative Exhibits for Oral Argument
`
`
`to be served by email, as previously agreed between the parties, on the following
`
`counsel of record for Patent Owner:
`
`Cary Kappel, Lead Counsel
`William Gehris, Backup Counsel
`Davidson, Davidson & Kappel, LLC
`485 Seventh Avenue
`New York, NY 10018
`ckappel@ddkpatent.com
`wgehris@ddkpatent.com
`Tel.: 212-736-1257
`
`
`
` /Michael H. Smith/
`
` Michael H. Smith
`
` Registration No. 71,190
`
`
`
`
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`32
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`
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