`By: David L. Cavanaugh, Reg. No. 36,476
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`Michael H. Smith, Reg. No. 71,190
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`Wilmer Cutler Pickering Hale and Dorr LLP
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`1875 Pennsylvania Ave., NW
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`Washington, DC 20006
`Tel: (202) 663-6000
`Email: David.Cavanaugh@wilmerhale.com
`MichaelH.Smith@wilmerhale.com
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________________________________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________________________________________
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`SMITH & NEPHEW INC., WRIGHT MEDICAL GROUP, INC. AND WRIGHT
`MEDICAL TECHNOLOGY, INC.
`Petitioners
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`
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`v.
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`BONUTTI SKELETAL INNOVATIONS, LLC
`Patent Owner of U.S. Patent No. 7,806,896 to Peter M. Bonutti
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`IPR Trial No. IPR2013-00629, Consolidated
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`PETITIONERS’ DEMONSTRATIVE EXHIBITS FOR ORAL ARGUMENT
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`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
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`PETITIONERS’ ORAL ARGUMENT
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`CLAIM 1 OF U.S. PATENT NO. 7,806,896
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`1
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`
`
`Overview
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`Overview of Applied Prior Art & Obviousness of
`Claim 1
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`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)
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`– Whether the references would have been combined
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`2
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`
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`The Technology
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`(Mabrey Decl. ¶ 23 (EX. 1002))
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`(Pet. at 11)
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`3
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`
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`The Challenged Claim – Claim 1
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`’896 at Claim 1
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`4
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`
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`The Board’s Decision on Institution
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`Stulberg in combination with Scorpio or Turner
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`’896 at Claim 1
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`5
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`The Board’s Decision on Institution
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`Delp in combination with Scorpio or Turner
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`’896 at Claim 1
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`6
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`The Board’s Claim Construction
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`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”
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`DI at 9
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`7
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`Applied Prior Art: Turner
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`Turner discloses:
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`Turner at 181, Figs. 8‐9 (Ex. 1003);
`Petition at 32‐33; DI at 12‐13
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`8
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`
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`Applied Prior Art: Scorpio
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`Scorpio discloses:
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`Scorpio at 9, Fig. 15 (Ex. 1009); Mabrey Reply Decl. ¶ 13 (Ex.
`1023); DI at 17
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`9
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`
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`Scorpio: Response to Patent Owner Arguments
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`BSI Drawings at 2 (Ex. 2007) (drawing of
`alleged cross section of Scorpio’s left and
`right guide surfaces and truncated
`triangular divider)
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`10
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`
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`Scorpio: Response to Patent Owner Arguments
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`Mabrey Reply Decl. ¶ 15 (Ex. 1023)
`(showing enlarged and annotated
`view of Patent Owner’s drawing)
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`11
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`
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`Obviousness
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`Obviousness
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`12
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`
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`Patent Owner’s Legally Deficient Arguments
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`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
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`13
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`
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`The Obviousness Dispute
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`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.
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`Patent Owner argues that the references cannot be
`combined.
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`14
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`
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`The References Would Have Been Combined
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`Stulberg at 33 (Ex. 1005)
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`15
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`
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`The References Would Have Been Combined
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`Delp Article at 50 (Ex. 1003)
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`16
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`The References Would Have Been Combined
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`Delp ’018 at 22:45‐50 (Ex. 1004)
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`17
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`
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`The References Would Have Been Combined
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`File History for U.S. Patent No. 8,133,229 to Bonutti,
`June 18, 2009 Office Action Response at 20 (Ex. 1024)
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`18
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`
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`The References Would Have Been Combined
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`Schoifet Dep. at 67:9‐18 (Ex. 1031)
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`19
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`The References Would Have Been Combined
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`Schoifet Dep. at 51:24‐52:7 (Ex. 1031)
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`20
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`The References Would Have Been Combined
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`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
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`—
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`Appendix
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`Appendix
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`22
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`
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`Applied Prior Art: Turner
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`“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)
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`23
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`
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`Applied Prior Art: Turner
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`Patent Owner’s Expert Dr. Schoifet admitted:
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`Schoifet Tr. at 169:8‐23 (Ex. 1031)
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`24
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`
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`The Turner Technique Was Successful
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`Geometric Total Knee Arthoplasty (EX. 1029)
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`25
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`Scorpio: Response to Patent Owner Arguments
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`Schoifet Decl. ¶ 77 (Ex. 2004)
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`Mabrey Reply Decl. ¶ 15
`(Ex. 1023) (showing
`enlarged and annotated
`view of Patent Owner’s
`drawing)
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`26
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`
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`Scorpio: Response to Patent Owner Arguments
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`Schoifet Dep. at 151:15‐20 (Ex. 1031)
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`Mabrey Reply Decl. ¶ 15
`(Ex. 1023) (showing
`enlarged and annotated
`view of Patent Owner’s
`drawing)
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`Schoifet Dep. at 152:7‐16 (Ex. 1031)
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`27
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`Scorpio: Response to Patent Owner Arguments
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`Schoifet Dep. at 146:21‐147:3 (Ex. 1031)
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`28
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`Scorpio: Response to Patent Owner Arguments
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`Scorpio Photos at 29 (Ex. 1030); Mabrey
`Reply Decl. ¶ 19 (Ex. 1023)
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`29
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`The References Would Have Been Combined
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`Schoifet Dep. at 178:12‐17 (Ex. 1031)
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`30
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`
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`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,
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`
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`/Michael H. Smith/
`Michael H. Smith
`Registration No. 71,190
`Wilmer Cutler Pickering
`Hale and Dorr LLP
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`Customer Number: 24395
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`Tel: 202-663-6055
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`Fax: 202-663-6363
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`31
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`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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`CERTIFICATE OF SERVICE
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`I hereby certify that on October 22, 2014, I caused a true and correct copy of
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`the foregoing materials:
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`• Petitioners’ Demonstrative Exhibits for Oral Argument
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`to be served by email, as previously agreed between the parties, on the following
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`counsel of record for Patent Owner:
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`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
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`
`
` /Michael H. Smith/
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` Michael H. Smith
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` Registration No. 71,190
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`32
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