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`In the United States Patent and Trademark Office
` _________________
` Before the Patent Trial and Appeal Board
` _________________
` ZIMMER HOLDINGS, INC.
` ZIMMER, INC.
` Petitioners
` v.
` BONUTTI SKELETAL INNOVATIONS LLC
` Patent Owner
`
` __________________
` Case No. IPR2014-00191
` Case No. IPR2014-00321
` Case No. IPR2014-00354
` __________________
`
` CONFERENCE CALL
`
` Monday, June 30, 2014
`
` 2:01 p.m.
`
` Job No: 81798
`
`TSG Reporting - Worldwide 877-702-9580
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`Zimmer Holdings, Inc. and Zimmer, Inc.
`Exhibit 1018 - 1
`
`
`
`In the United States Patent and Trademark Office
` _________________
` Before the Patent Trial and Appeal Board
` _________________
` ZIMMER HOLDINGS, INC.
` ZIMMER, INC.
` Petitioners
` v.
` BONUTTI SKELETAL INNOVATIONS LLC
` Patent Owner
`
` __________________
` Case No. IPR2014-00191
` Case No. IPR2014-00321
` Case No. IPR2014-00354
` __________________
`
` CONFERENCE CALL
`
` Monday, June 30, 2014
`
` 2:01 p.m.
`
` Job No: 81798
`
`TSG Reporting - Worldwide 877-702-9580
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`Zimmer Holdings, Inc. and Zimmer, Inc.
`Exhibit 1018 - 1
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`Page 2
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`On Behalf of Patent Owner:
`DAVIDSON DAVIDSON & KAPPEL
` 485 Seventh Avenue
` New York, New York 10018
`BY: CARY KAPPEL, ESQ
`
`On Behalf of Petitioner:
`FAEGRE BAKER DANIELS
` 2200 Wells Fargo Center
` 90 South Seventh Street
` Minneapolis, Minnesota 55402
`BY: WALTER LINDER, ESQ
` - AND -
` 300 North Meridian Street
` Indianapolis, Indiana 46204
`BY: DANIEL LECHLEITER, ESQ
`
`PAUL HASTINGS
` 875 15th Street, N.W.
` Washington, D.C. 20005
`BY: NAVEEN MODI, ESQ
`Additional Counsels on Call:
`DUANE MORRIS
` 30 South 17th Street
` Philadelphia, Pennsylvania 19103
`BY: SAMUEL APICELLI, ESQ
`BY: JARRAD GUNTHER, ESQ
`
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`Zimmer Holdings, Inc. and Zimmer, Inc.
`Exhibit 1018 - 2
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` CONFERENCE CALL
` THE COURT: This is the conference
`call IPR 2014/00191 IPR 2014/00321 and IPR
`2014/00354.
` Can I go ahead and take a roll call
`and see who's online. Let's start with the
`petitioners for the 191 and the 321 case.
` MR. LINDER: Hi, this is Walter
`Linder for Zimmer on the 191 and 321 cases.
`With me I got backup counsel Dan Lechleiter
`and also Naveen Modi. Mr. Modi will be
`speaking today on behalf of Zimmer for
`those two IPRs.
` THE COURT: Is Mr. Modi an attorney
`of record in this proceeding?
` MR. LINDER: He is, we just filed
`the power of attorney and the notice this
`morning.
` THE COURT: Okay. So he's listed as
`backup?
` MR. LINDER: Correct.
` THE COURT: Okay. Can I verify the
`patent owner is on the line here.
` MR. KAPPEL: Yes, this is Cary
`Kappel, counsel for patent owner.
`
`TSG Reporting - Worldwide 877-702-9580
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`Zimmer Holdings, Inc. and Zimmer, Inc.
`Exhibit 1018 - 3
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` THE COURT: Okay. Just you today,
`Mr. Kappel?
` MR. KAPPEL: Yes, sir.
` THE COURT: The petitioner for the
`354, do we have them on the line.
` MR. APICELLI: Yes, your Honor, this
`is Sam Apicelli on behalf of Wright Medical
`and with me is backup counsel Jerrad
`Gunther.
` THE COURT: As a preliminary matter
`real quick we received an e-mail from
`Mr. Lechleiter indicating that Zimmer
`petitioner is going to have a court
`reporter on the line, is that still true?
` MR. LECHLEITER: Yes, your Honor,
`this is Dan Lechleiter for Zimmer. I
`believe the court reporter is on the line.
`We wanted to verify with the board that the
`board didn't have an objection to that
`before we continue.
` THE COURT: No, we don't. We just
`ask that you make the transcript readily
`available to all parties involved, so after
`this call is concluded, and you get the
`
`TSG Reporting - Worldwide 877-702-9580
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`Zimmer Holdings, Inc. and Zimmer, Inc.
`Exhibit 1018 - 4
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` CONFERENCE CALL
`transcript from the court reporter, you can
`file it into the record as an exhibit, we
`would appreciate it.
` MR. LECHLEITER: Your honor, we will
`do that, thank you.
` THE COURT: Okay. Let's start with
`the 354 IPR because I believe we can
`dispose of that relatively quickly.
` As the parties are well aware we had
`a conference call last week for a motion on
`joinder, which we granted. A decision on
`that will be entered into the record at the
`close of business today, so given that IPR
`is going to be joined with 69 IPR, I don't
`believe we have anything else to discuss,
`but if there are some issues from the
`parties, why don't we go ahead and get
`those out of the way now.
` Petitioner for 354, do you have
`anymore you would like to discuss with
`respect to that case?
` MR. APICELLI: We have no issues to
`discuss today.
` THE COURT: Okay. Patent owner.
`
`TSG Reporting - Worldwide 877-702-9580
`
`Zimmer Holdings, Inc. and Zimmer, Inc.
`Exhibit 1018 - 5
`
`
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` MR. KAPPEL: No, we have nothing to
`discuss on the 354 case.
` THE COURT: Okay. The petitioner for
`354, you can remain on the line or get off
`the line, it is up to you because we are
`technically done with the issue we have
`involved in your case.
` MR. APICELLI: Thank you, your
`Honor. We'll get off, thank you again.
` THE COURT: Okay. Thank you.
` (Mr. Apicelli and Mr. Gunther has
`exited call.)
` THE COURT: All right, so now let's
`move to the 191 and 321 case, the first
`thing I wanted to discuss with the parties,
`there is the scheduling order, do we have
`any objections or issues with the
`scheduling order, which I believe is the
`number 14 in the -- we have a number 14 in
`the 191 case, is that correct.
` MR. KAPPEL: Yes.
` THE COURT: The bottom line is do we
`have any objections or issues with the
`scheduling order that we need to discuss up
`
`TSG Reporting - Worldwide 877-702-9580
`
`Zimmer Holdings, Inc. and Zimmer, Inc.
`Exhibit 1018 - 6
`
`
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`front.
` MR. KAPPEL: From the patent owner's
`perspective, no.
` THE COURT: From the petitioner?
` MR. MODI: Your honor, this Naveen
`Modi for Zimmer. We don't have any issues
`right now, but we do want to make the board
`aware we are actually filing two new
`petitions. We've been having problems with
`the system. We were hoping to get them on
`file before the call, but, you know, we
`haven't been able to do that, we just
`wanted to make the board aware of that.
` These two petitions, one will be
`related to the 896 patent, and it is only
`affected to one of the patent claims, claim
`43, that as you are probably well aware in
`the 321 proceeding, the board did not
`institute with respect to that claim, so we
`are filing a new petition for just that
`claim along with a motion for joinder. And
`then for the 736 patent, the board had not
`instituted with respect to claims 23 to 25,
`so we'll be filing a new petition with
`
`TSG Reporting - Worldwide 877-702-9580
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`Zimmer Holdings, Inc. and Zimmer, Inc.
`Exhibit 1018 - 7
`
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`respect to those claims, and moving to join
`that new proceeding with the 191
`proceeding.
` I just want to make the board and
`the patent owner are aware of that. I don't
`think at this point we need to discuss any
`scheduling issues, but once filing dates
`are granted on those new petitions, I think
`it would be appropriate, your Honor, to
`seek the board's permission to have a
`conference call and discuss those new
`proceedings and see what we can do in terms
`of scheduling, and consolidating those
`proceedings.
` I'm happy to go into more detail now
`if the board wants, but we at least wanted
`to make you aware of those new cases that
`will be filed later today.
` THE COURT: I don't think it is
`necessary to go into detail with those at
`the moment.
` With respect to those proceedings
`and whether or not a call is necessary to
`adjust the scheduling order, I would say
`
`TSG Reporting - Worldwide 877-702-9580
`
`Zimmer Holdings, Inc. and Zimmer, Inc.
`Exhibit 1018 - 8
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`that it would probably be premature to have
`that call until the motion for joinder
`board has instituted inter. So once that
`does happen, a decision on whether to
`institute as inter, I don't want get ahead
`of ourselves and say we are actually going
`to inter, once that happens, we can have a
`call regarding a scheduling order if
`necessary. But before then, I don't think
`it would be productive.
` MR. MODI: Your Honor, this is
`Naveen Modi, if I can make one comment or
`observation.
` In other cases that I've had with
`the board, we've actually had calls,
`obviously we'll do what the board desires
`here, but we've had in other situations
`that are similar where there are only
`dependent claims being raised, we have
`sought permission from the board to
`basically to shorten the schedule for the
`preliminary response so we can actually
`align those new proceedings that have been
`filed, with the, you know, with these
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`TSG Reporting - Worldwide 877-702-9580
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`Zimmer Holdings, Inc. and Zimmer, Inc.
`Exhibit 1018 - 9
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`pending proceedings, so if the board will
`be willing to at least entertain the call,
`like I said, if and when those petitions
`get a filing date, so that we can discuss
`that, the issues at that point. I'd just
`ask for that courtesy.
` THE COURT: Maybe I misunderstood, I
`think I was assuming that you were strictly
`talking about scheduling order if we were
`to institute those proceedings and whatnot,
`but if we are talking about shortening
`preliminary responses for those, yes. Once
`a filing date is accorded, which may take a
`few days depending on paralegal processing,
`feel free to contact the patent owner, get
`a time that's convenient for both parties
`and contact the board and we will entertain
`that call.
` MR. MODI: Thank you, your Honor. I
`was just going to add we'll actually
`discuss those issues with the patent owner
`also before we reach up to the board and
`see even if we can try and agree and reach
`some sort of an agreement with the patent
`
`TSG Reporting - Worldwide 877-702-9580
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`Zimmer Holdings, Inc. and Zimmer, Inc.
`Exhibit 1018 - 10
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`owner before we approach the board.
` THE COURT: And the patent owner has
`something to say?
` MR. KAPPEL: Yeah, I would just say,
`I haven't seen these petitions that are
`filed, and certainly I'm not prepared to
`state that I'm going to reassure our time
`for a preliminary response.
` THE COURT: And I don't expect you
`to state that now. Once you've had an
`opportunity to look at them and talk with
`the other parties, and then you can arrange
`your call and have that conversation.
` Is that all right with the patent
`owner?
` MR. KAPPEL: Yeah. The filing of
`this issue doesn't indicate that I'm in any
`way agreeable to the petitioner's
`proprietary or what petitioner thinks we
`should do on our preliminary response.
` THE COURT: Understood.
` Okay. Let's move to, if there is no
`further issues regarding scheduling, let's
`move to the list of proposed motions, I
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`TSG Reporting - Worldwide 877-702-9580
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`Zimmer Holdings, Inc. and Zimmer, Inc.
`Exhibit 1018 - 11
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`think they are relatively the same for both
`proceedings. Let's use the 191 as
`exemplary. Let's start with the patent
`owner, here is the list of the possible
`motions of amend, I'm assuming which you
`are still contemplating and kind of a place
`number here reserving your right to file
`other motions or seek authorization to
`follow other motions, do you have anything
`particular with respect to the motion to
`amend or is that something that --
` MR. KAPPEL: I have 1 or 2
`procedural questions on how it proceeds.
` I understand that if I were go going
`to amend the claims, I would probably need
`another conference call and I would explain
`the nature of the amendment. What I'm not
`clear is in case, if we were simply to
`decide to simply cancel a claim, is that
`still considered a motion to amend or is
`that something you have to simply list in
`your patent owner response as a cancel. I
`haven't seen what the procedure is for
`that, in the event that I wanted to cancel,
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`TSG Reporting - Worldwide 877-702-9580
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`Zimmer Holdings, Inc. and Zimmer, Inc.
`Exhibit 1018 - 12
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`would that be considered a motion to amend
`or would that simply something that I note
`to your response.
` THE COURT: With respect to your
`first points, yes, we prefer another call
`to decide the motion to amend, whatever
`that may be, an amendment or cancellation.
`If you are going to cancel, we prefer a
`second call to quickly discuss that.
`Obviously there wouldn't be a whole lot to
`discuss, but to at least put us on notice.
`It is your decision. You consider motions,
`cancellation of claims is part of a motion
`to amend, so another call would be
`preferred.
` MR. KAPPEL: As I said, we are still
`considering that, if we'll be amending or
`whether or not we'll be canceling the
`claim. If we were to do that, we'll place
`another call.
` THE COURT: Anything else with the
`motion to amend, or that's all the
`questions have you?
` MR. KAPPEL: That was all.
`
`TSG Reporting - Worldwide 877-702-9580
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`Zimmer Holdings, Inc. and Zimmer, Inc.
`Exhibit 1018 - 13
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` THE COURT: I think that takes care
`of that, and then it appears that
`petitioner's list of proposed motions at
`this time, they don't contend to seek
`authorization or file any, is that correct?
` MR. MODI: Yes, your Honor, that's
`correct.
` THE COURT: And that applies to both
`the 191 and the 321?
` MR. MODI: That's right, your Honor.
` THE COURT: Is there any other
`issues that we need to discuss today from
`either party.
` MR. LECHLEITER: Your Honor, this is
`Dan Lechleiter for Zimmer. I was just made
`aware of an issue related to our powers of
`attorney. Our paralegal went to file the
`power of attorney and updated mandatory
`disclosures to include Mr. Modi as
`additional backup counsel. She informed me
`that she was able to, in the system,
`actually delete the existing powers of
`attorney, and my understanding is that that
`was something she should not have been able
`
`TSG Reporting - Worldwide 877-702-9580
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`Zimmer Holdings, Inc. and Zimmer, Inc.
`Exhibit 1018 - 14
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`to do, and was a mistake, and was not meant
`to be a a revocation of those existing
`powers of attorney. She spoke with a
`paralegal for the board who instructed her,
`who instructed me to raise this issue and
`let everyone on the call know what has
`occur, and that I believe a paralegal with
`the board is working to correct the issue,
`but just so that's reflected on the record
`what occurred.
` THE COURT: Okay. I appreciate you
`bringing that to our attention, hopefully
`we can get that worked out with the
`paralegal. I understand our system is not
`perfect. Once again, thanks for bringing
`that to our attention. I think patent
`owner, I'm sure, understands you didn't
`intend to revoke your power of attorney,
`and hopefully there will be no issues on
`their end from that mishap.
` Does patent owner have anything to
`say about that?
` MR. KAPPEL: I was going to say that
`everything that Mr. Lechleiter said should
`
`TSG Reporting - Worldwide 877-702-9580
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`Zimmer Holdings, Inc. and Zimmer, Inc.
`Exhibit 1018 - 15
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`
`
`Page 16
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` CONFERENCE CALL
`be stricken for the record, but I won't
`make that joke.
` THE COURT: We appreciate that.
` If there is no other issues that we
`need to discuss today, we will draft up an
`order that briefly summarizes our
`discussions in this call, or the issues
`that we discussed in this call.
` I'd appreciate it if the petitioner
`could file the transcript separately as an
`exhibit, we may get it from the court
`reporter, and that should be it.
` Have a good afternoon.
` (Time noted: 2:15 p.m.)
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`25
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`TSG Reporting - Worldwide 877-702-9580
`
`Zimmer Holdings, Inc. and Zimmer, Inc.
`Exhibit 1018 - 16
`
`
`
` C E R T I F I C A T E
`
`Page 17
`
`STATE OF NEW YORK )
` ) ss.:
`COUNTY OF NEW YORK )
`
` I, ROBIN NUNEZ, a Notary
`Public within and for the State of New
`York, do hereby certify that the within is a
`true and accurate transcript, to the best of my
`ability, of the proceedings held on June 30,
`2014.
` That I am not related to any of the
` parties to this action by blood or
` marriage; and that I am in no way
` interested in the outcome of this matter.
` I have hereunto set my hand this 1st
` day of July, 2014.
`
` -------------------------
` ROBIN NUNEZ
`
`1
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`22
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`23
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`24
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`25
`
`TSG Reporting - Worldwide 877-702-9580
`
`Zimmer Holdings, Inc. and Zimmer, Inc.
`Exhibit 1018 - 17
`
`
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