Trials@uspto.gov
`571-272-7822
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`Paper: 39
`Entered: May 12, 2015
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`
`
`ZIMMER HOLDINGS, INC.
` and ZIMMER, INC.,
`Petitioner,
`
`v.
`
`BONUTTI SKELETAL INNOVATIONS LLC,
`Patent Owner.
`____________
`
`Case IPR2014-00191
`Patent 7,837,736 B2
`____________
`
`
`Before WILLIAM V. SAINDON, MICHAEL R. ZECHER, and
`RICHARD E. RICE, Administrative Patent Judges.
`
`RICE, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73(b)
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`571-272-7822
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`Paper: 39
`Entered: May 12, 2015
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`
`
`ZIMMER HOLDINGS, INC.
` and ZIMMER, INC.,
`Petitioner,
`
`v.
`
`BONUTTI SKELETAL INNOVATIONS LLC,
`Patent Owner.
`____________
`
`Case IPR2014-00191
`Patent 7,837,736 B2
`____________
`
`
`Before WILLIAM V. SAINDON, MICHAEL R. ZECHER, and
`RICHARD E. RICE, Administrative Patent Judges.
`
`RICE, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73(b)
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`IPR2014-00191
`Patent 7,837,736 B2
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`I.
`
`INTRODUCTION
`
`Zimmer Holdings, Inc. and Zimmer, Inc. (collectively, “Zimmer”)
`filed a corrected Petition (Paper 8, “Pet.”) requesting an inter partes review
`of claims 15–28 and 31–36 of U.S. Patent No. 7,837,736 B2 (Ex. 1001, “the
`’736 Patent”). Zimmer included a Declaration of Arthur G. Erdman, Ph.D.
`(Ex. 1005), to support its positions.
`On June 2, 2014, we instituted an inter partes review only as to claims
`15–22, 26–28, and 31–36 on the single ground of anticipation under 35
`U.S.C. § 102(b) by Walker.1 Paper 12 (“Inst. Dec.”), 17.
`After institution of trial, the patent owner, Bonutti Skeletal
`Innovations LLC (“Bonutti”), filed a statutory disclaimer under 37 C.F.R.
`§ 1.321(a) with respect to claims 15–20 and 26–28. Paper 26; Ex. 2005. As
`a result, only claims 21, 22, and 31–36 remain under review in this
`proceeding. See 37 C.F.R. § 42.107(e).
`Bonutti filed a Patent Owner Response (Paper 25, “PO Resp.”) with a
`Declaration of Scott D. Schoifet, M.D. (Ex. 2001) to support its positions.
`Bonutti did not depose Dr. Erdman. Zimmer deposed Dr. Schoifet and filed
`a Reply to Bonutti’s Response (Paper 30, “Pet. Reply”) with a transcript of
`Dr. Shoifet’s deposition (Ex. 1022).
`An oral hearing was held on January 9, 2015. The transcript of the
`oral hearing has been entered into the record. Paper 38 (“Tr.”).
`We have jurisdiction under 35 U.S.C. § 6(c). This Final Written
`Decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
`
`
`1 U.S. Patent No. 5,755,801, issued May 26, 1998 (Ex. 1002).
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`For the reasons explained below, Zimmer has shown, by a
`
`preponderance of the evidence, that claims 21, 22, and 31–36 of the ’736
`Patent are unpatentable.
`
`A. Related Matters
`
`Zimmer indicates that the ’736 Patent has been asserted against it in
`
`Bonutti Skeletal Innovations, LLC v. Zimmmer Holdings, Inc., No. 1:12-cv-
`01107-GMS, pending in the U.S. District Court for the District of Delaware.
`Pet. 1.
`
`B. The ’736 Patent (Ex. 1001)
`
`The ’736 Patent, titled “MINIMALLY INVASIVE SURGICAL
`SYSTEMS AND METHODS,” issued November 23, 2010, from U.S.
`Patent Application No. 11/928,898, filed on October 30, 2007. Ex. 1001 at
`[54], [45], [21], [22]. The ’736 Patent is a continuation of U.S. Patent
`Application No. 10/681,526, filed October 8, 2003, now U.S. Patent No.
`7,635,390, which is a continuation of U.S. Patent Application No.
`10/191,751, filed July 8, 2002, now U.S. Patent No. 7,104,996, and is a
`continuation-in-part of a number of earlier-filed applications. Id. at [63].
`The ’736 Patent discusses apparatus for use in knee replacement
`surgery, including self-centering mobile bearing implants. Id. at 2:50–53,
`99:35–102:4. As described in the Specification, the implants are in the form
`of a prosthetic knee, comprising a femoral component secured to the femur
`and a tibial component secured to the tibia. Id. at 99:35–39, 101:6–13.
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`Figure 90 of the ’736 Patent is reproduced below.
`
`
`Figure 90 is a schematic illustration of tibial component 1292 of
`rotating platform knee implant 1290. Id. at 9:66–67, 101:6–10. As depicted
`in Figure 90, tibial component 1292 comprises tray 1294 and bearing insert
`1296. Id. at 101:14–15. Tray 1294 includes plate member 1300. Id. at
`101:15–16. The Specification discloses that plate member 1300 has a
`concave, spherically-shaped plateau surface (superior surface 1302), and that
`bearing insert 1296 has a spherically-shaped inferior surface 1304, such that
`the interface between tibial tray 1294 and bearing insert 1296 is defined by
`cooperating spherically shaped surfaces that enable sliding motion. Id. at
`101:18–25. Superior surface 1302 is provided with post 1306, which
`cooperates with recess 1308 located on bearing insert 1296 to permit rotation
`of bearing insert 1296 with respect to tibial tray 1294. Id. at 101:28–31.
`The Specification asserts that “unlike prior art mobile bearing knee
`implants that rely on a post mechanism to control the rotational movement,
`the articulating surfaces are not flat,” but rather “are mating curved
`surfaces.” Id. at 101:38–43. The curvature is described as a “a self-
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`centering mechanism that draws bearing insert 1296 back to the center of
`post 1306 (also resisting posterior rollback), the lowest point in tibial tray
`1294 when they are at rest.” Id. at 101:49–53.
`As illustrated in Figure 90, “post 1306 is offset medially toward the
`medial compartment of the knee.” Id. at 101:56–57, Fig. 90. “In prior art
`rotating platform designs,” according to the Specification, “the post is
`substantially in line with the central keel.” Id. at 101:58–59. The
`Specification asserts that “[o]ffsetting post 1306 more toward the medial
`compartment of the knee recreates the natural pivoting motion o[f] the knee,
`with less translation medially, a more stable joint medially, and more
`rotational arc or more movement laterally.” Id. at 101:63–67.
`Bonutti directs our attention to the dashed line depicting recess 1308
`in Figure 90. E.g., Tr. 20:9–13. Bonutti notes that the dashes indicate a
`hidden line, and asserts that recess 1308 is a “hidden member,” i.e., a “hole,”
`that is hidden from view in Figure 90. Id. at 20:14–20 (citing Manual of
`Patent Examining Procedure § 608.02(IX), which provides a table of
`drawing symbols for use in patent application drawings, including a dashed
`line symbol for indicating a hidden line).
`
`C. Illustrative Claims
`
`Claims 21 and 22 depend from claim 15,2 claim 31 is independent,
`and claims 32–36 depend from claim 31. Claims 15, 21, and 22 are
`reproduced below:
`
`15. A device to replace an articulating
`surface of a first side of a joint in a body, the joint
`
`2 As discussed above, claim 15 has been disclaimed. Paper 26; Ex. 2005.
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`having first and second sides, comprising:
`
`a base component,
`including a bone
`contacting side connectable with bone on the first
`side of the joint, and a base sliding side on an
`opposite side of said base component relative to
`said bone contacting side;
`
`a movable component, including a movable
`sliding side, said movable sliding side being
`matably positionable in sliding engagement with
`said base sliding side, and an articulating side on
`an opposite side of said movable component
`relative to said movable sliding side, shaped to
`matingly engage an articulating surface of the
`second side of the joint;
`
`a protrusion extending from one of said base
`sliding side or movable sliding side, said
`protrusion substantially offset with respect to a
`midline of the first side of a joint;
`
`a recess sized to receive said protrusion,
`disposed in the other of said base sliding side or
`movable sliding side, said protrusion and recess
`matable to constrain movement of said first and
`second components relative to each other, thereby
`promoting movement of the joint within desired
`anatomical limits.
`
`Ex. 1001, 114:5–27.
`
`21. The device of claim 15, wherein said
`
`protrusion and recess engage to permit relative
`rotation of said base sliding side and said movable
`sliding side about an axis of said protrusion.
`
`Id. at 114:48–51.
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`22. The device of claim 15, wherein said
`
`protrusion is a pin, and said recess is a hole sized
`to receive said pin.
`Id. at 114:52–53.
`
`D. The Instituted Ground
`
`We instituted an inter partes review of claims 15–22, 26–28, and 31–
`36 under § 102(b) as anticipated by Walker. Inst. Dec. 17. Bonutti
`subsequently disclaimed claims 15–20 and 26–28. Paper 26; Ex. 2005. The
`following ground remains to be decided:
`
` Reference
`
` Basis
`§ 102(b)
`
`Claims Challenged
`21, 22, and 31–36
`
`Walker
`
`
`
`II. ANALYSIS
`
`A. Claim Interpretation
`
`In an inter partes review, we give claim terms in an unexpired patent
`their broadest reasonable interpretation in light of the specification of the
`patent in which they appear. 37 C.F.R. § 42.100(b); see also In re Cuozzo
`Speed Techs., LLC, 778 F.3d 1271, 1281–82 (Fed. Cir. 2015) (“Congress
`implicitly adopted the broadest reasonable interpretation standard in
`enacting the AIA,” and “the standard was properly adopted by PTO
`regulation.”). Under the broadest reasonable interpretation standard, and
`absent any special definitions, claim terms are given their ordinary and
`customary meaning, as would be understood by one of ordinary skill in the
`art in the context of the entire disclosure. In re Translogic Tech., Inc., 504
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`F.3d 1249, 1257 (Fed. Cir. 2007). Further, “the specification and
`prosecution history only compel departure from the plain meaning in two
`instances: lexicography and disavowal.” GE Lighting Solutions, LLC v.
`AgiLight, Inc., 750 F.3d 1304, 1309 (Fed. Cir. 2014) (citing Thorner v. Sony
`Computer Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012)). The
`standards for lexicography and disavowal are exacting, and require clear
`intent to define or narrow a term. Thorner, 669 F.3d at 1365–66. Any
`special definition for a claim term must be set forth with reasonable clarity,
`deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir.
`1994).
`
`1. “Hole”
`
`Claim 22 depends from claim 15 and recites that “said recess is a
`hole.” Ex. 1001, 114:52–53. Bonutti proposes to construe the term “hole”
`as “a cavity in a solid” based on a dictionary definition. PO Resp. 12
`(quoting Ex. 2002 (THE AMERICAN HERITAGE DICTIONARY OF THE ENGLISH
`LANGUAGE (3d ed. 1992)), 862). Bonutti argues that a “hole” is
`distinguishable from a “notch” and contends that the Specification supports
`that distinction. See, e.g., id. at 13–15 (citing Ex. 1001, 17:24–30, 92:20–21,
`Figs. 8, 31, 89, 90).
`In response, Zimmer argues that under Bonutti’s proposed
`construction the term “hole” encompasses a “cavity” or “hollow area.” Pet.
`Reply. 7 (citing Ex. 2002, 306, 862); see also Tr. 10:4 (arguing that
`“essentially a hole or cavity is a hollow area”). Zimmer further argues that
`Bonutti’s asserted distinction between a “hole” and a “notch” is not
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`supported by the Specification or the evidence of record, and that the
`distinction is irrelevant in any event. Pet. Reply 9–10.
`We are persuaded by Bonutti that the Specification uses the term
`“hole” in accordance with its ordinary meaning as “a cavity in a solid.” See
`PO Resp. 13–14 (citing Ex. 1001, 17:24–30, Fig. 8). We determine that the
`broadest reasonable interpretation consistent with the Specification of the
`term “hole,” as used in claim 22, is a cavity in a solid.
`
`2. “Cavity”
`
`Claim 31 recites a “cavity.” Ex. 1001, 115:38. Bonutti proposes to
`construe the term “cavity” based on the following dictionary definitions (PO
`Resp. 12): “1. [a] hollow; a hole” and “2. [a] hollow area within the body: a
`sinus cavity.” Ex. 2002, 306. Zimmer does not dispute Bonutti’s proposed
`construction, but argues that the terms “hole” and “cavity” are synonymous.
`Pet. Reply 7.
`The use of the term “cavity” in the Specification accords with
`Bonutti’s asserted dictionary definitions. Ex. 1001, 17:24, 93:33. We
`determine that the broadest reasonable interpretation consistent with the
`Specification of the term “cavity” in claim 31 is a hollow or hole.
`
`3. “Pin” or “post”
`
`Claim 22, which depends from claim 15, recites that “said protrusion
`is a pin.” Id. at 114:52–53. Claim 31 recites a “post.” Id. at 115:37–38.
`Bonutti does not distinguish between the term “pin” and “post” in arguing
`that a person of ordinary skill in the art would have understood that a pin or
`post typically is used in cooperation with a hole or cavity to fix or align:
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`As explained by Dr. Schoifet, in orthopedics a pin or
`post is typically used to fix or align one device (or bone) to
`another device (or bone) by drilling (or passing through) a hole
`cavity through the two devices (or bones), and a person of
`ordinary skill in the art would not use an abutment such as
`abutment 50 of Walker to fix or align one device (or bone) to
`another device (or bone) nor would an abutment reside within a
`hole or cavity as claimed.
`
`PO Resp. 17 (emphasis added) (citing Ex. 2001 ¶¶ 45–46).
`
`Zimmer responds, and we agree, that the claims do not limit the terms
`“pin” and “post” to the function of fixing or aligning as Bonutti contends.
`Pet. Reply 3. Zimmer argues that the ordinary meaning of the term “post” is
`a structure set upright to serve as a support, and that the term is used in the
`Specification in accordance with its ordinary meaning. Id. at 4–5 (citing
`Ex. 1023 (THE AMERICAN HERITAGE DICTIONARY OF THE ENGLISH
`LANGUAGE (3d ed. 1992)), 1414; Ex. 1001, 101:28–31). Zimmer further
`argues that Bonutti and Dr. Schoifet do not differentiate between the terms
`“pin” and “post.” Id. at 5–6 (citing PO Resp. 5 (referring to “[p]in/post 1306
`of Figure 90” of the ’736 Patent); Ex. 2001 ¶ 27 (ditto); Ex. 1022, 130:9–12
`(acknowledging no differentiation)).
`We determine that the broadest reasonable interpretation consistent
`with the Specification of the term “post” is a structure set upright to serve as
`a support. See Ex. 1001, 101:28–34, 44–66, Fig. 90 (describing post 1306).
`Similarly, we determine that the broadest reasonable interpretation
`consistent with the Specification of the term “pin” is a post-like protrusion.
`See, e.g., Ex. 1001, 23:7–8, 38:53, 99:45, Figs. 16, 31 (describing pins 196
`and 198), Fig. 89 (describing fixation pins 1264).
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`4. “Relative rotation of said base sliding side
`and said movable sliding side about an axis
`of said protrusion”
`
`
`Claim 21 recites “relative rotation of said base sliding side and said
`movable sliding side about an axis of said protrusion.” Ex. 1001, 114:49–
`51. Neither party proposes an express construction for this limitation.
`Bonutti implicitly argues, however, that “an axis” in claim 21 requires
`a fixed or single axis of rotation. PO Resp. 18–19. More specifically,
`Bonutti attempts to distinguish claim 21 from the Walker prior art reference
`by arguing that “there is no rotation about ‘an axis of said protrusion’
`because Walker is quite explicit in pointing out that the protrusion is located
`in the notch to allow for translational movement.” Id. at 18. Bonutti also
`argues with respect to Walker that “there is not [a single] axis of the
`protrusion about which the movable sliding s[]ide 44 rotates relative to base
`sliding side 41.” Id. at 19 (citations omitted; emphasis supplied by Bonutti).
`Further, according to Bonutti, “rotation ‘about an axis of said protrusion’”
`does not encompass “translational/rotational movement.” Id. at 19 (citing
`Ex. 2001 ¶¶ 51–53).
`Zimmer argues that claim 21 does not require “relative rotation of the
`claimed base sliding side of the base component and the claimed movable
`sliding side of the movable component to be about an axis of rotation.” Pet.
`Reply 12–13. Zimmer contends that “claim 21 merely requires rotation
`‘about an axis of said protrusion.’” Id. at 13.
`We are not persuaded that Bonutti’s implicit claim construction is
`consistent with the Specification. In the embodiment depicted in Figure 90
`of the ’736 Patent, the mating surfaces are not flat, but rather are mating
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`curved surfaces that function as “a self-centering mechanism that draws
`bearing insert 1296 back to the center of post 1306 (also resisting posterior
`rollback), the lowest point in tibial tray 1294 when they are at rest.” Id. at
`101:49–53. Bonutti has not explained adequately why a person of ordinary
`skill in the art would have understood post 1306 to be a fixed or single axis
`in light of the description in the Specification that a centering mechanism is
`utilized to draw bearing insert 1296 back to the center of post 1306. Id. at
`101:50–51. Nor has Bonutti explained adequately how bearing insert 1296
`can move away from the center of post 1306, so as to require being drawn
`back, unless there is sufficient looseness between post 1306 and recess 1308
`to allow some translational/rotational movement.
`We determine that the broadest reasonable construction consistent
`with the Specification of the limitation “relative rotation of said base sliding
`side and said movable sliding side about an axis of said protrusion” requires
`rotation about an axis of the protrusion; however, it does not require rotation
`about a fixed or single axis, nor does it exclude translational/rotational
`movement.
`
`5. “Said tibial tray insert rotationally moves with
` respect to said tibial tray, about said post”
`
`Claim 31 recites “said tibial tray insert rotationally moves with respect
`to said tibial tray, about said post.” Ex. 1001, 115:50–51. Neither party
`proposes an express construction for this limitation.
`Bonutti implicitly argues, however, that the requirement for “rotation
`about a post” excludes “translational/rotational movement.” PO Resp. 19–
`20 (citing Ex. 2001 ¶¶ 48–53). Zimmer responds that “[c]laim 31 does not
`recite an axis, let alone that the claimed tibial tray insert rotationally moves
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`with respect to the claimed tibial tray about an axis of rotation” (Pet. Reply
`12), and that “[c]laim 31 merely requires rotation ‘about said post’” (id. at
`13).
`
`For the reasons discussed above in connection with claim 21 (see
`supra section II.A.4), we determine that the broadest reasonable construction
`consistent with the Specification of the limitation “said tibial tray insert
`rotationally moves with respect to said tibial tray, about said post” requires
`rotation about the post; however, it does not require rotation about a fixed or
`single axis, nor does it exclude translational/rotational movement.
`
`B. Anticipation by Walker
`
`Zimmer challenges claims 21, 22, and 31–36 of the ’736 Patent as
`anticipated by Walker. Pet. 28–30, 32–36 (claim chart). To anticipate a
`patent claim under 35 U.S.C. § 102, “a single prior art reference must
`expressly or inherently disclose each claim limitation.” Finisar Corp. v.
`DirecTV Group, Inc., 523 F.3d 1323, 1334 (Fed. Cir. 2008). The
`evidentiary standard in this case is a preponderance of the evidence. See 35
`U.S.C. § 316(e); 37 C.F.R. § 42.1(d). Upon consideration of the parties’
`arguments and evidence, we determine that Zimmer has established, by a
`preponderance of the evidence, that Walker anticipates each of these
`challenged claims, for the reasons explained below.
`
`1. Overview of Walker
`
`Walker relates to prostheses for knee replacement, and discloses
`
`several embodiments. Ex. 1002, 1:6, 2:33–35. A “second” embodiment
`comprises a femoral component having at least one condylar bearing
`surface; a tibial component having a tibial platform and an anterior-posterior
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`center line; a meniscal component located between the condylar bearing
`surface and the tibial platform; and a stud upstanding from the platform. Id.
`at 1:56–66. The stud is
`engaged in a recess in the meniscal component in such a way as
`to permit relative movement between the meniscal component
`and said stud and guide means, (normally remote from said stud
`and said recess), for guiding movement of the meniscal
`component relative to said platform in an arc which is
`cent[er]ed on an axis which is substantially at right angles to the
`tibial platform, and is displaced medially from the anterior-
`posterior cent[er] line of the platform.
`
`Id. at 1:66–2:8. Walker discloses that “guide means for guiding the
`meniscal component about an arc cent[er]ed on a[n] axis medially of the
`cent[er] line of the tibial platform, are preferably formed by suitably
`engaging surfaces on the tibial platform and meniscal component.” Id. at
`2:23–26. Further, Walker discloses that “[p]referably, the guidance is such
`that the axis about which the meniscal component rotates is cent[er]ed at the
`edge of the tibial platform or beyond its physical extent.” Id. at 2:23–25,
`29–32.
`
`In the “Description of the Invention” section, Walker discloses a
`“second” embodiment that is depicted in Figures 2–2c. Ex. 1002, 4:3–4.
`With respect to the second embodiment, Walker states that the upper surface
`of tibial platform 41 is substantially flat, except for upstanding stud 42,
`which is received in slot 43 of meniscal component 44. Id. at 4:10–14.
`Figure 2a of Walker is reproduced below.
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`Figure 2a shows the position of meniscal component 44 rotated 10°
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`externally on tibial platform 41. Ex. 1002, 2:53–54, 4:34–36. As shown in
`Figure 2a, slot 43 of meniscal component 44 is closed at one end, which
`“provide[s] a stop for movement of the meniscal component in the posterior
`direction.” Id. at 4:17–19. As also shown in Figure 2a, “[a] stop or brake
`for movement in the opposite direction is provided by a rail 48 which
`engages in a corresponding recess 49 of the meniscal component.” Id. at
`4:19–21.
`
`Zimmer focuses on Walker’s description of the second embodiment as
`depicted in Figure 2. Pet. 15–18. Zimmer’s annotated version of Figure 2 of
`Walker is reproduced below.
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`Zimmer’s Annotated Version of Figure 2 of Walker
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`Id. at 17; Ex. 1005 (Erdman declaration) ¶ 45.
`Walker states with respect to the second embodiment that “[r]otation
`of the meniscal component 44 about an axis X at the edge of the tibial
`platform is controlled by a semi-circular abutment 50 which is upstanding at
`the medial side of the platform.” Ex. 1002, 4:22–25. Walker further states
`that “[a] recess or notch 51 is formed in the corresponding portion of the
`meniscal component and is rounded as shown to allow approximately 2 mms
`movement in an anterior and posterior direction.” Id. at 4:25–28, Fig. 2.
`Walker also states:
`In all the embodiments, the meniscal component is
`assymetric about the [centerline] P-Q. This ensures that when
`the meniscal component rotates about a medially displaced axis,
`any ligaments which extend through the posterior cut-away
`portion in the tibial base plate are not trapped between the
`meniscal component and the base plate.
`Id. at 5:38–43; see Fig. 1 (depicting centerline P-Q).
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`2. Anticipation Analysis
`
`Claims 21 and 22 each incorporate the limitations of disclaimed claim
`15, including a base component having a protrusion (or a recess), and a
`movable component having a recess (or a protrusion). Ex. 1001, 114:5–27.
`As recited in claim 15, the protrusion is “offset with respect to a midline of
`the first side of a joint,” and the protrusion and recess are “mat[e]able to
`constrain movement of said first and second components relative to each
`other, thereby promoting movement of the joint within desired anatomical
`limits.” Id. at 114:20–21, 114:24–27.
`Claim 21 specifies that “said protrusion and recess engage to permit
`relative rotation of said base sliding side and said movable sliding side about
`an axis of said protrusion.” Ex. 1001, 114:48–51. Claim 22 specifies that
`“said protrusion is a pin, and said recess is a hole sized to receive said pin.”
`Id. at 114:52–53.
`Independent claim 31 is directed to a knee arthroplasty device,
`including a tibial tray having a post (or a cavity), and a tibial tray insert
`having a mating cavity (or a mating post). Ex. 1001, 115:35–55. As recited
`in claim 31, the mating post (or mating cavity) is “offset from at least one of
`a medial-lateral centerline and an anterior-posterior centerline of said tibial
`tray,” and “said tibial tray insert rotationally moves with respect to said tibial
`tray, about said post . . . such that the rotation of the tibial tray insert is
`asymmetric with respect to at least one of the medial-lateral centerline and
`the anterior-posterior centerline of said tibial tray.” Id. at 115:38–40, 50–55.
`Claims 32 and 33 specify that the offset is medial with respect to a
`medial-lateral centerline of the tibial tray and the tibial tray insert,
`
`
`17
`
`
`
`IPR2014-00191
`Patent 7,837,736 B2
`
`respectively. Ex. 1001, 115:56–116:4. Claims 34 and 35 both recite “the
`tibial tray has a keel with a central axis”; claim 34 additionally recites “said
`post or cavity of said tibial tray is offset from the central axis of said keel”;
`and claim 35 additionally recites “said mating post or mating cavity of said
`tibial tray insert is offset from the central axis of said keel.” Id. at 116:5–12.
`Claim 36 recites “a proximal surface of said tibial tray insert includes a
`mound interposing a medial condyle receiver and a lateral condyle receiver.”
`Id. at 116:13–16.
`For each of challenged claims 21, 22, and 31–36, and relying on the
`claim interpretations discussed above (see supra section II.A), we analyze
`below the parties’ competing arguments and evidence with respect to the
`ground on which we instituted trial—unpatentability for anticipation by
`Walker.
`
`a. Claim 21
`
`Zimmer contends that Walker discloses every limitation of claim 21.
`See Pet. 28–30, 32 (claim chart). Citing Walker’s second embodiment and
`pertinent portions of Dr. Erdman’s Declaration as supporting evidence,
`Zimmer asserts, for example, as follows:
`Abutment 50 upstanding from the tibial platform 41 is engaged
`by the recess 51 in the meniscal component 44 to enable
`rotation of the upper surface of the tibial platform with respect
`to the undersurface of the meniscal component about the axis of
`the abutment. The meniscal component 44 rotates about a
`medially displaced axis.
`
`Id. at 32 (citing Ex. 1002, 4:22–28, 5:38–40, Figs. 2a–2b; Ex. 1005 ¶¶ 45,
`46, 57).
`
`
`18
`
`
`
`IPR2014-00191
`Patent 7,837,736 B2
`
`
`Zimmer contends that meniscal component 44 of Walker’s second
`embodiment rotates relative to tibial platform 41 along an arcuate path about
`the medially displaced axis of abutment 50. Pet. 17. In that regard, Dr.
`Erdman testifies that “meniscal component 44 . . . rotates about an abutment
`50 (i.e., a projection or post) on the medial side of the tibial platform 41.”
`Ex. 1005 ¶ 45. Dr. Erdman further testifies that “meniscal component 44 is
`fitted to the tibial platform 41 by engaging the abutment 50 in a recess or
`notch 51 in the medial side of the meniscal component,” and that “abutment
`50 and recess 51 that define the axis of rotation of the meniscal component
`44 are on the edge of the medial side of the prosthesis.” Id. ¶¶ 45, 46.
`According to Dr. Erdman, “abutment 50 and recess 51 constrain or limit the
`movement of the meniscal component 44 with respect to the tibial platform
`41 to rotational movement about the axis defined by the abutment.” Id.
`¶ 46.
`
`In response, Bonutti argues that, “in Walker, there is no rotation about
`‘an axis of said protrusion’ because Walker is quite explicit in pointing out
`that the protrusion is located in the notch to allow for translational
`movement,” and, “[a]ccordingly, there is not [a single] axis of the protrusion
`about which the movable sliding s[]ide 44 rotates relative to base sliding
`side 41.” PO Resp. 18–19 (citations omitted; emphasis supplied by Bonutti).
`Bonutti further argues that “[a] person of ordinary skill in the art at the time
`of the invention would understand Walker as describing a
`translational/rotational movement, and would not consider that as being a
`rotation ‘about an axis of said protrusion’ as claimed.” Id. at 19 (citing Ex.
`2001 ¶¶ 51–53).
`
`
`19
`
`
`
`IPR2014-00191
`Patent 7,837,736 B2
`
`
`Bonutti’s argument is unpersuasive because it relies fundamentally on
`an erroneous claim construction. As discussed above, the claim limitation
`“relative rotation of said base sliding side and said movable sliding side
`about an axis of said protrusion,” recited in claim 21, does not require
`rotation about a fixed or single axis, nor does it exclude
`translational/rotational movement. See supra section II.A.4.
`Bonutti also disputes Zimmer’s assertion that meniscal component 44
`of Walker’s second embodiment rotates about an axis of abutment 50. See,
`e.g., PO Resp. 18–19 (citing Ex. 2001 ¶¶ 51–53). In reference to Walker’s
`disclosure that “[r]otation of the meniscal component 44 about an axis X at
`the edge of the tibial platform is controlled by a semi-circular abutment 50”
`(Ex. 1002, 4:22–24) (emphasis added), Bonutti argues that “no axis X
`appears in Walker” and “the alleged axis is described at the edge of the tibial
`platform 41, not at the abutment 50.” PO Resp. 18. Bonutti, however, did
`not cross-examine Dr. Erdman. Nor did Bonutti provide evidence with its
`Patent Owner Response to challenge specifically Dr. Erdman’s testimony
`that abutment 50 defines an axis of rotation at the edge of tibial platform 41.
`See Ex. 1005 ¶ 46. Dr. Schoifet’s declaration testimony that “[i]n Walker,
`there is no rotation about ‘an axis of said protrusion’ . . . and the tibial tray
`insert does not move ‘rotationally . . . about said post’” is conclusory and
`unsupported. See Ex. 2001 ¶ 51. In particular, that testimony does not
`acknowledge or address Walker’s disclosure that the meniscal component
`rotates about an axis at the edge of the tibial platform and that abutment 50,
`which is located at the edge of the tibial platform, controls the rotation. Ex.
`1002, 4:22–28, Fig. 2.
`
`
`20
`
`
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`IPR2014-00191
`Patent 7,837,736 B2
`
`
`Zimmer cross-examined Dr. Schoifet in this proceeding, and we have
`considered Dr. Schoifet’s cross-examination testimony in reaching our
`decision in this case. Dr. Schoifet testified on cross-examination that the
`axis of rotation in Walker’s second embodiment is not in abutment 50. For
`convenience, the relevant portions of Dr. Schoifet’s cross-examination
`testimony are reproduced below:
`Q. What’s axis X?
`
`A. Axis X is the rotational axis that the meniscal
`component rotates about at the edge of the -- does it say -- tibial
`platform.
`
`Q. So what would that be in Figure 2?
`
`A. Somewhere out past the edge or at the edge of the
`tibial platform.
`
`Q. Okay. I’m going to hand you a pen. Can you
`please identify axis X with an X for us [on a copy of Figure 2 of
`Walker marked as Exhibit 1020]?
`
`A.
`
`Q. Why not?
`
`A. Because it’s at the edge of the tibial platform and
`the tibial platform edge is very extensive.
`
`Ex. 1022, 54:19–55:11.
`
`Q. But it also says it’s controlled by the semi-circular
`abutment 50.
`
`A. Correct.
`
`
`I cannot.
`
`
`21
`
`
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`IPR2014-00191
`Patent 7,837,736 B2
`
`
`Q. That doesn’t help you in any way?
`
`the semi-circular abutment allows 2
`A. Well,
`millimeters of movement, so that allows the axis to move as
`well. So without being a mathematician, with the 2 millimeters
`of translation and the axis being at the edge of the tibial
`component, it would be very difficult for me to pick out exactly
`where on the edge of the platform axis X is.
`
`Q. So it’s your sworn testimony that the component
`44 does not rotate about the abutment 50?
`
`A. My testimony is that the abutment controls the
`rotation about an axis at the edge of the platform based on the 2
`millimeters of translation. That will allow that axis to move
`and that axis is located somewhere at the edge of the tibial
`platform. Walker did not indicate exactly where it was, but he
`said approximately
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