Trials@uspto.gov
`571-272-7822
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`Paper 12
`Entered: June 2, 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`ZIMMER HOLDINGS, INC.
` and ZIMMER, INC.,
`Petitioner,
`
`v.
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`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.
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
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`
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`571-272-7822
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`Paper 12
`Entered: June 2, 2014
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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.
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
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`Case IPR2014-00191
`Patent 7,837,736 B2
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`
`I.
`INTRODUCTION
`Zimmer Holdings, Inc. and Zimmer, Inc. (“Petitioner”) 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”). The owner of
`the ’736 Patent, Bonutti Skeletal Innovations LLC (“Patent Owner”), did not file a
`preliminary response. We have jurisdiction under 35 U.S.C. § 314.
`The standard for instituting an inter partes review is set forth in 35 U.S.C.
`§ 314(a), which provides as follows:
`THRESHOLD -- The Director may not authorize an inter partes
`review to be instituted unless the Director determines that the
`information presented in the petition filed under section 311 and any
`response filed under section 313 shows that there is a reasonable
`likelihood that the petitioner would prevail with respect to at least 1 of
`the claims challenged in the petition.
`
`Based upon this standard, we determine that the information presented in the
`Petition establishes that there is a reasonable likelihood that Petitioner would
`prevail with respect to claims 15-22, 26-28, and 31-36, but not claims 23-25 of the
`’736 Patent. Accordingly, pursuant to 35 U.S.C. § 314, we authorize an inter
`partes review to be instituted only as to claims 15-22, 26-28, and 31-36.
`
`
`A. Related Proceeding
`Petitioner represents that the ’736 Patent is asserted by Patent Owner against
`
`Petitioner in litigation titled Bonutti Skeletal Innovations, LLC v. Zimmmer
`Holdings, Inc., No. 1:12-cv-01107-GMS (D. Del). Pet. 1; see Paper 5, 2.
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`Case IPPR2014-00191
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`Patent 77,837,736 BB2
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`B. The ’7366 Patent (EEx. 1001)
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`TThe ’736 Paatent, titledd “MINIMMALLY INVVASIVE SSURGICAAL
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`SYSTEEMS AND METHODDS,” issuedd on Novemmber 23, 2
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`010, basedd on U.S.
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`Patent AApplicationn No. 11/928,898, filled on Octoober 30, 20007. The ’’736 Patennt
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`claims ppriority to U.S. Patennt Applicattion No. 100/681,526,
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`filed on OOctober 8,
`on
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`2003, wwhich is a ccontinuatioon of U.S. PPatent Appplication NNo. 10/191,,751, filed
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`July 8, 22002. Thee ’736 Pateent also claaims prioritty to a nummber of earrlier-filed UU.S.
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`patent aapplicationns.
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`platformm knee impplant 1290
`.
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`FFigure 90 oof the ’736 Patent, whhich is reprroduced beelow, depiccts rotatingg
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`tibial
`Figure 9
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`0 is a scheematic illusstration of
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`compponent 12992 of rotatiing platforrm knee immplant 12900.
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` A
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`1294 and
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`As depictedd in Figure 90, tibial ccomponennt 1292 inc
`ludes tray
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`1294 incluudes tapereed spike 12298
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`bearing insert 12996. Ex. 10001, 101:144-15. Tray
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`and platte memberr 1300. Id. at 101:15--16. The sspecificatioon disclosees that platte
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`member 1300 has a concave, spherically-shaped plateau surface (superior surface
`1302). Id. at 101:18-20. Superior surface 1302 is provided with post 1306. Id. at
`101:28-29. As described in the specification, post 1306 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.
`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 ’736 Patent discloses 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.
`
`
`C. Illustrative Claims
`Claims 15 and 31 are independent. Claims 16-28 depend directly or
`indirectly from claim 15, and claims 32-36 depend directly from claim 31. Claims
`15 and 23 are reproduced below:
`
`15. A device to replace an articulating surface of
`a first side of a joint in a body, the joint having first and
`second sides, comprising:
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`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;
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`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
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`movable component relative to said movable sliding side,
`shaped to matingly engage an articulating surface of the
`second side of the joint;
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`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;
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`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.
`
`23. The device of claim 15, wherein said
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`protrusion is a dovetail pin and said recess is a dovetail
`tail, together forming a dovetail joint.
`
`
`D. The Asserted Prior Art
`Petitioner contends that the “priority date” (earliest effective filing date) for
`the challenged claims of the ’736 Patent is July 8, 2002. Pet. 14. Petitioner relies
`upon the following prior art references (id. at 4):
`
`Walker
`
`US 5,755,801
`
`May 26, 1998
`(filed July 18,
`1994)
`Insall ’283 US 6,319,283 B1 Nov. 20, 2001
`(filed July 2,
`1999)
`May 30, 2000
`(filed Mar. 9,
`1998)
`
`Ex. 1002
`
`Ex. 1003
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`Ex. 1004
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` 5
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`Insall ’658 US 6,068,658
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`
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`Petitioner asserts that Walker is prior art to the challenged claims under
`35 U.S.C. § 102(b), and Insall ’283 and Insall ’658 are prior art to the challenged
`claims under 35 U.S.C. § 102(a) and (e). Id. at 15, 18, and 20-21.
`
`E. The Asserted Grounds
`Petitioner challenges claims 15-28 and 31-36 of the ’736 Patent on the
`following grounds (id. at 4-5):
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` Reference(s)
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`Case IPR2014-00191
`Patent 7,837,736 B2
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`Walker
`Walker and Insall ’283
`Walker and Insall ’658
`Walker, Insall ’658, and
`Insall ’283
`Insall ’658
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`Insall ’283
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`
` Basis
`§ 102(b)
`§ 103
`§ 103
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`Claims Challenged
`15-22, 25-28, and 31-36
`15-22, 25-28, and 31-36
`15-28 and 31-36
`
`§ 103
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`15-28 and 31-36
`
`§ 102(a), (e)1
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`§ 102(a), (e)
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`15, 16, 18-28, 31, and
`34-36
`15, 16, 18-22, 25-28, 31,
`and 34-36
`
`
`1 Petitioner states on page 5 of the Petition that the statutory basis for the fourth-
`listed ground is 35 U.S.C. § 102(b). This statement is inconsistent with the
`statement on pages 20-21 of the Petition that Insall ’658 is prior art to the
`challenged claims under 35 U.S.C. § 102(a) and (e). Accordingly, we treat the
`fourth-listed ground as asserted under 35 U.S.C. § 102(a) and (e), not 35 U.S.C.
`§ 102(b).
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`Case IPR2014-00191
`Patent 7,837,736 B2
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`II. ANALYSIS
`A. Claim Construction
`Consistent with the statute and legislative history of the Leahy-Smith
`America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”), we
`interpret claims using the “broadest reasonable construction in light of the
`specification of the patent in which [they] appear[].” 37 C.F.R. § 42.100(b); see
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012).
`There is a “heavy presumption” that a claim term carries its ordinary and
`customary meaning. CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366
`(Fed. Cir. 2002). However, a “claim term will not receive its ordinary meaning if
`the patentee acted as his own lexicographer and clearly set forth a definition of the
`disputed claim term in either the specification or prosecution history.” Id.
`“Although an inventor is indeed free to define the specific terms used to describe
`his or her invention, this must be done with reasonable clarity, deliberateness, and
`precision.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). Also, we must be
`careful not to read a particular embodiment appearing in the written description
`into the claim if the claim language is broader than the embodiment. See In re Van
`Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993) (“[L]imitations are not to be read into
`the claims from the specification.”). The broadest reasonable construction of a
`means-plus-function limitation “is that statutorily mandated in [paragraph f2 of
`35 U.S.C. § 112].” In re Donaldson Co., 16 F.3d 1189, 1194-95 (Fed. Cir. 1994).
`
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`2 We note that the provisions of former 35 U.S.C. § 112 ¶ 6 have been re-codified,
`without change, as 35 U.S.C. § 112 ¶ f.
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`Here, challenged claim 25 recites “means associated with said protrusion to
`prevent a separation of said base sliding side and said movable sliding side.”
`Ex. 1001, 114:61-63 (emphasis added). The use of “means” creates the
`presumption that claim 25 recites a means-plus-function limitation. See
`Personalized Media Commc’ns, LLC v. Int’l Trade Comm’n, 161 F.3d 696, 703
`(Fed. Cir. 1998); Rodime PLC v. Seagate Tech., Inc., 174 F.3d 1294, 1302 (Fed.
`Cir. 1999) (“Because the element uses the word “means,” this court presumes that
`§ 112 ¶ 6 applies. This court next looks to whether the element specifies a function
`for performing the claimed means.”). Claim 25 clearly recites a function for
`performing the claimed “means,” i.e., “to prevent a separation of said base sliding
`side and said movable sliding side.” “[E]ven if the claim element specifies a
`function, [however,] if it also recites sufficient structure or material for performing
`that function, § 112 ¶ 6 does not apply.” Rodime, 174 F.3d at 1302 (citation
`omitted). As claim 25 does not recite sufficient structure or material for
`performing the specified function, the “means” clause is a “means-plus-function”
`limitation.
`Because claim 25 contains a means-plus-function limitation, the Petition is
`required to state how the means-plus-function limitation in claim 25 should be
`construed, and should have identified “the specific portions of the specification
`that describe the structure, material, or acts corresponding to each claimed
`function.” See 37 C.F.R. § 42.104(b)(3). The Petition does not provide this
`required claim construction analysis for claim 25. We will not go through the
`specification of the ’736 Patent and determine the corresponding structure and
`equivalents thereto for the means-plus-function limitation recited in claim 25—this
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`is something that Petitioner should have done in its Petition. In view of
`Petitioner’s failure to comply with 37 C.F.R. § 42.104(b)(3), we do not construe
`the means-plus-function limitation in claim 25.
`
`
`B. Alleged Grounds of Unpatentability
`We turn now to Petitioner’s asserted grounds of unpatentability to determine
`whether Petitioner has met the threshold standard of 35 U.S.C. § 314(a). Below,
`we separately analyze: (1) claims 15-22, 26-28, and 31-36; (2) claim 25; and
`(3) claims 23 and 24.
`
`
`1. Claims 15-22, 26-28, and 31-36 as Anticipated by Walker
`Based on the current record, we are persuaded that Walker anticipates claims
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`15-22, 26-28, and 31-36 of the ’736 Patent. See Pet. 28-36.
`
`
`a. Walker (Ex. 1002)
`Walker relates to prostheses for knee replacement, and discloses an
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`embodiment comprising: a femoral component having at least one condylar
`bearing surface; a tibial component having tibial platform 41; meniscal component
`44 located between the condylar bearing surface and the tibial platform; and stud
`42 upstanding from the platform and received in slot 43 in the meniscal
`component. Ex. 1002, 1:56-65, 4:7-14. “Rotation 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.” Id. at 4:22-
`25, figs. 2, 2a, & 2b. “A recess or notch 51 is formed in the corresponding portion
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`of the mmeniscal coomponent aand is rounnded as shoown to alloow approxiimately 2 mmms
`2b.
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`” Id. at 4:225-28, figss. 2, 2a, &
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`movement in an aanterior andd posteriorr direction.
`. Erdman,
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`PPetitioner’ss declarant,, Arthur G
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`Ph.D., proovides an aannotated
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`version of Figure 2 of Walkeer, reproduuced beloww.
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`of Walker f Figure 2 oversion of annotated vPeetitioner’s a
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`on) ¶ 45; seee Pet 17.
`n declaratioEx. 10005 (Erdman
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`of Walkerr
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`DDr. Erdmann testifies thhat the emmbodiment
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`depicted inn Figure 2
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`“has a mmeniscal coomponent 44 that rottates about
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`an abutmeent 50 (i.e.
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`, a projectiion
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`or post)) on the meedial side oof the tibiall platform
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`41.” Ex. 11005 ¶ 45.
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` As shownn in
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`Figure 22, “[t]he mmeniscal commponent 444 is fitted
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`to the tibiaal platformm 41 by
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`componnent.” Ex. 1005 ¶ 45
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`engaginng the abutment 50 inn a recess oor notch 511 in the meedial side oof the meniiscal
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`bb. Analysiss
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`CClaim 15 iss directed to a joint reeplacementt device inncluding a bbase
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`componnent havingg a protrus
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`ion (or a reecess), andd a movablle componeent having
` a
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`protrusionn
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`recess (or a protruusion). Ex.. 1001, 1144:5-27. Cllaim 15 reccites “said
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`Case IPR2014-00191
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`substantially offset with respect to a midline of the first side of a joint,” and “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.” Id. at 114:20-21, 24-27.
`Claim 16 specifies that the protrusion and recess are substantially offset
`from a center of the device. Id. at 114:28-30. Claims 17 and 18 both specify that
`the joint is a knee, and claim 17 further specifies that the offset is medial. Id. at
`114:31-38. Claim 19 requires a second base component connectable to the second
`side of the joint. Id. at 114:39-42. Claim 20, which depends from claim 19,
`additionally specifies the components are connectable, respectively, to the tibia and
`the femur. Id. at 114:43-47. Claim 21 specifies that the rotation is about an axis of
`the protrusion. Id. at 114:48-51. Claim 22 recites “said protrusion is a pin, and
`said recess is a hole sized to receive said pin. Id. at 114:52-53. Claim 26 recites
`that “not all articulating compartments of the joint are replaced by said device.”
`Id. at 114:64-65. Claim 27 specifies a location in the body where the joint is
`located, e.g., a finger. Id. at 114:66-67. Claim 28 recites “said protrusion is offset
`with respect to an axis passing through the anterior-posterior or the medial-lateral
`center of said base component or movable component.”
`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 cavity (or a post). Id. at
`115:35-55. Claim 31 recites “said post or cavity 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
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`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, respectively. Id. at
`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 13-16.
`Petitioner asserts that Walker discloses a mobile bearing prosthesis that
`includes every limitation of claims 15-22, 26-28 and 31-36. Pet. 28 (citing Ex.
`1005 ¶¶ 45-69); see also id. at 28-35 (claim chart). Having reviewed Petitioner’s
`assertions and the cited portions of the record, we are persuaded that Petitioner has
`demonstrated a reasonable likelihood of prevailing on its contention that Walker
`anticipates claims 15-22, 26-28 and 31-36 of the ’736 Patent.
`
`
`2. Claim 25
`Claim 25 recites “[t]he device of claim 15, further including means
`associated with said protrusion to prevent a separation of said base sliding side and
`said movable sliding side.” Ex. 1001, 114:61-63. Petitioner alleges claim 25 is
`anticipated by each of Walker, Insall ’283, and Insall ’658, and as obvious over the
`combination of Walker and either or both of Insall ’283 and Insall ’658. See Pet.
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`4-5. As discussed above, however, Petitioner has failed to provide the claim
`construction analysis required by 37 C.F.R. § 42.104(b)(3) for the means-plus-
`function limitation recited in claim 25. For this reason alone, we are not persuaded
`Petitioner has demonstrated a reasonable likelihood of prevailing on its contention
`that claim 25 of the ’736 Patent is unpatentable as alleged.
`
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`3. Claims 23 and 24
`Claim 23 recites “[t]he device of claim 15, wherein said protrusion is a
`dovetail pin and said recess is a dovetail tail, together forming a dovetail joint.”
`Claim 24 depends from claim 23, and recites “said dovetail joint is elongated,
`extends in a substantially anterior-posterior orientation, and enables anterior-
`posterior displacement of the base sliding side relative to the movable sliding
`side.”
`Petitioner contends that claims 23 and 24 would have been obvious over
`(i) Walker and Insall ’658 or (ii) Walker, Insall ’658, and Insall ’283. Pet. 42-44.
`Petitioner directs our attention to “the complimentary-shaped and interlocking
`guide 23 and track (including recess 30 and slot 32) of the Insall ’658 patent as
`elements corresponding to the ‘dovetail’ structures in claims 23 and 24 when those
`terms in claims 23 and 24 are given their broadest reasonable interpretations.” Id.
`at 27-28; see also id. at 42-44.
`Insall ’658 discloses a mobile bearing prosthesis having meniscal
`component 7 and tibial platform 20. Ex. 1004, 3:28-39; see Ex. 1005 ¶ 91. Dr.
`Erdman provides an annotated version of Figure 6 of Insall ’658, reproduced
`below.
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`Petitioner’s annnotated veersion of FFigure 6 of
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`Insall ’6588
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`Insall ’6588
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`Ex. 10005, ¶ 91; seee Pet. 22.
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`, guide 23
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`comprisinng cylindriccal post 244 and cap 225
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`AAs shown inn Figure 6
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`stands in an uprighht positionn on the tibbial platformm. See Exx. 1005 ¶ 9
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`2. The capp is
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`fixed too the top off the post. Ex. 1004, 3:50, fig. 66. Dr. Erddman also pprovides ann
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`of Figure 5 of Insalll ’658, reprroduced beelow.
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`annotateed version
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`Peti
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`Figure 5 of ersion of Ftioner’s annnotated ve
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`Ex. 10005, ¶ 92; seee Pet. 22.
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`AAs shown inn Figure 5
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`, the menisscal compoonent incluudes recesss 30 and
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`slot 32 ((together rreferred to as “the track”). See
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`Ex. 1005 ¶¶ 93 (citingg Ex. 10044,
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`Case IPR2014-00191
`Patent 7,837,736 B2
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`1:42-67); Pet 23. Dr. Erdman testifies “[t]he upstanding guide 23, recess 30, and
`slot 32 cooperate to retain the meniscal component 7 on the tibial platform 20,
`while allowing the meniscal component to both rotate about the guide and move in
`the anterior-posterior direction.” Ex. 1005 ¶ 91 (citing Ex. 1004, Abstr., 2:42-46)
`(emphasis added). We discuss this functionality further below.
`Petitioner relies on Dr. Erdman’s declaration in asserting it would have been
`obvious “to substitute the guide and track of the Insall ’658 patent for the abutment
`and recess, respectively, in the Walker patent.” Pet. 43 (citing Ex. 1005 ¶¶ 47, 49).
`In this regard, Dr. Erdman testifies “it would have been a matter of routine
`engineering and design choice to replace the recess 51 [of Walker] with a hole or
`slot that extends partially into the meniscal component 44 . . . to permit relative
`rotational movement of the meniscal component 44 and tibial tray 41.” Ex. 1005
`¶ 47. Dr. Erdman further testifies “evidence that it would have been a matter of
`routine skill and design choice to substitute a round post and mating hole,
`respectively, for the abutment 50 and recess 51 to define the rotational axis of the
`meniscal component is provided by the Insall ’658.” Id. ¶ 49. “The Insall ’658
`patent also shows a post and hole (i.e., upstanding guide 23, and recess 30 and
`slot 32) for this purpose.” Id.
`As for the “dovetail joint” limitation, Petitioner additionally asserts, “[t]he
`guide 23 and track of the implant shown in the Insall ’658 patent [are] structurally
`at least equivalent to a dovetail joint, and [are] functionally substantially the same
`as a dovetail joint.” Pet. 43. Claims 23 and 24, however, explicitly require a
`“dovetail joint,” not a structure that is “structurally at least equivalent to a dovetail
`joint” or “functionally substantially the same as a dovetail joint.” See id. As
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`described in Insall ’658, the guide comprises a cylindrical post with a cap and the
`track comprises a recess and a slot. Ex. 1004, 3:44-4:12, figs. 5 & 6. Petitioner
`has not persuaded us that a person of ordinary skill in the art at the time of the
`invention would have considered the guide and track of Insall ’658 to disclose or
`suggest the “dovetail joint” recited in claims 23 and 24.3 Accordingly, we
`determine that Petitioner has not demonstrated a reasonable likelihood of
`prevailing on its contention that the subject matter of claims 23 and 24 would have
`been obvious over (i) Walker and Insall ’658 or (ii) Walker, Insall ’658, and Insall
`’283.
`
`
`4. Remaining Grounds of Unpatentability
`Petitioner contends that claims 15, 16, 18-28, 31, and 34-36 are unpatentable
`under 35 U.S.C. § 102(a) and (e) as anticipated by Insall ’658; claims 15, 16,
`18-22, 26-28, 31, and 34-36 are unpatentable under 35 U.S.C. § 102(a) and (e) as
`anticipated by Insall ’283; and claims 15-22, 26-28, and 31-36 are unpatentable
`under 35 U.S.C. § 103 as obvious over Walker and either or both of Insall ’283 and
`Insall ’658. Those grounds of unpatentability are redundant to the grounds of
`unpatentability on which we initiate an inter partes review. Accordingly, we do
`not authorize an inter partes review on any of those grounds of unpatentability.
`See 37 C.F.R. § 42.108(a).
`
`
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`3 Dr. Erdman’s declaration does not discuss claims 23 and 24 or the “dovetail
`joint” limitation recited in those claims.
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`III. CONCLUSION
`For the forgoing reasons, we determine that there is a reasonable likelihood
`that Petitioner would prevail in its challenge of claims 15-22, 26-28, and 31-36 of
`the ’736 Patent as anticipated under 35 U.S.C. § 102(b) by Walker. We, however,
`have not made a final determination on the patentability of the challenged claims.
`IV. ORDER
`
`Accordingly, it is
`ORDERED that pursuant to 35 U.S.C. § 314, an inter partes review is
`hereby instituted as to claims 15-22, 26-28, and 31-36 of the ’736 Patent based on
`anticipation under 35 U.S.C. § 102(b) by Walker;
`FURTHER ORDERED that no other grounds of unpatentability are
`authorized for the inter partes review as to claims 15-28 and 31-36 of the ’736
`Patent; and
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(d) and 37 C.F.R.
`§ 42.4, notice is hereby given of the institution of a trial on the ground of
`unpatentability authorized above; the trial commences on the entry date of this
`decision.
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`For PETITIONER:
`
`Walter C. Linder
`Daniel Lechleiter
`FAEGRE BAKER DANIELS LLP
`Walter.Linder@FaegreBD.com
`Daniel.Lechleiter@FaegreBD.com
`
`For PATENT OWNER :
`
`Cary Kappel
`William Gehris
`DAVIDSON, DAVIDSON & KAPPEL, LLC
`ckappel@ddkpatent.com
`wgehris@ddkpatent.com
`
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