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`Paper __
`Filed on behalf of: BONUTTI SKELETAL INNOVATIONS LLC
`Date: August 6, 2014
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`By: Cary Kappel, Lead Counsel
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`William Gehris, Backup Counsel
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`Davidson, Davidson & Kappel, LLC
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`485 Seventh Avenue
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` New York, NY 10018
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`Telephone (212) 736-1257
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`
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`(212) 736-2015
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`Facsimile (212) 736-2427
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`E-mail:
`ckappel@ddkpatent.com
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`
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`wgehris@ddkpatent.com
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`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ZIMMER HOLDNGS,
`INC. and ZIMMER, INC.
`Petitioner,
`
`
`
`
`v.
`
`
`
`
`
`BONUTTI SKELETAL INNOVATIONS LLC
`
`Patent Owner
`Case: IPR2014-00191
`
`Patent 7,837,736
`_______________
`PATENT OWNER’S RESPONSE
`PURSUANT TO 37 C.F.R. § 42.120
`
`
`
`
`
`Case: IPR2014-00191
`Patent 7,837,736
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`Table of Contents
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`
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`
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`I. Introduction ............................................................................................................. 1
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`II. The '736 Patent .................................................................................................... 2
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`III. Claims 21, 22, And 31 Of The ‘736 Patent Are Not Anticipated
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`Under 35 U.S.C. 102(b) By Walker .............................................................................. 6
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`A. Walker ................................................................................................................... 6
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`B. Walker Does Not Disclose The Pin/Hole Limitations Of Claim 22
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`Or The Post/Cavity Limitations Of Claim 31 ............................................................ 7
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`C. Walker Does Not Disclose The Rotation/Rotational Limitations
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`Of Claims 21 And 31 ............................................................................................... 18
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`D. Claims 32-36 ....................................................................................................... 20
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`IV. Conclusion ............................................................................................................ 21
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`Cases
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`Case: IPR2014-00191
`Patent 7,837,736
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`Table of Authorities
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`Ex parte Cramer, 1937 Pat. App. LEXIS 98; 36 U.S.P.Q. 77 (Pat. App. 1937) .....17
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`Ex parte David E. Anderson, Appeal 2011-012922, 2013 Pat. App. LEXIS 7274
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`(Pat. App. 2013) ....................................................................................................16
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`Ex parte David Shafer et al., Appeal 2009-000868, 2010 Pat. App. LEXIS 15638
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`(Pat. App. 2009) ....................................................................................................19
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`Ex parte Kevin Stones et al, Appeal 2011-004426, 2013 Pat. App. LEXIS 4068
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`*10-11 ...................................................................................................................19
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`Ex parte YI YANG et al., Appeal 2009-006608, 2009 Pat. App. LEXIS 9281, * 15
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`(Pat. App. 2009) ....................................................................................................16
`
`In re Bond, 910 F.2d 831, 833 (Fed. Cir. 1990) ......................................................11
`
`In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) .............11
`
`In re Sneed, 710 F.2d 1544, 1548 (Fed. Cir. 1983) .................................................11
`
`In re Suitco Surface Inc., 603 F.3d 1255, 1259 (Fed. Cir. 2010) ............................11
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`Joy MM Delaware, Inc. v. Cincinnati Mine Machinery, Co., 497 Fed. Appx. 970,
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`973, 2012 U.S. App. LEXIS 23027 (Fed. Cir. 2012) ...........................................15
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`Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001)..
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` ...........................................................................................................................6, 10
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`
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`ii
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`Patent 7,837,736
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`Marquip, Inc. v. Fosber Am., 1998 U.S. App. LEXIS 10200 (Fed. Cir. May 19,
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`
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`1998) .....................................................................................................................19
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`Sunbeam Products, Inc, v. Hamilton Beach Brands, Inc., 2010 U.S. Dist. LEXIS
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`85281, *19 (E.D. Va. 2010) ..................................................................................16
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`Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628, 631 (Fed. Cir. 1987)
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` ................................................................................................................................. 6
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`Versata Development Group, Inc., v. Sap America, Inc., Appeal No. 2014-1194..
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` ...............................................................................................................................11
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`iii
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`I.
`
`Introduction
`Pursuant to 35 U.S.C. § 316(a)(8) and 37 C.F.R. § 42.120, Patent Owner
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`
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`Case: IPR2014-00191
`Patent 7,837,736
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`Bonutti Skeletal Innovations, LLC ("Bonutti") responds to the Corrected Petition
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`filed by Zimmer Holdings, Inc. and Zimmer, Inc. ("Zimmer") concerning claims
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`15-22, 26-28, and 31-36 of U.S. Patent No. 7,837,736 ("the '736 patent") (Paper
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`8).
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`
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`In the Corrected Petition, the Petitioner sought inter partes review with
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`respect to five separate grounds of unpatentability: (1) anticipation of claims 15-
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`22, 25-28 and 31-36 by U.S. Patent No. 5,755,801 to Walker ("Walker"); (2)
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`obviousness of claims 15-22, 25-28 and 31-36 over Walker in view of U.S. Patent
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`6,319,283 to Insall ("Insall '283") and/or U.S. Patent 6,068,658 to Insall ("Insall
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`'658"); (3) obviousness of claims 23 and 24 over Walker in view of Insall '658
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`and/or Insall '283; (4) anticipation of claims 15-16, 18-28, 31 and 34-36 by Insall
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`'658; and (5) anticipation of claims 15-16, 18-22, 25-28, 31 and 34-36 by Insall
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`'283.
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`Of the three anticipation grounds and two obviousness grounds, the Board
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`instituted review solely with respect to Ground 1: anticipation under 35 U.S.C.
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`102(b) by Walker, and only with respect to claims 15-22, 26-28, and 31-36. (See
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`Institution Decision, Paper 12, page 17).
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`Petitioner did not seek reconsideration of the Board's decision to not institute
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`
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`review under grounds 2 through 5, or of the Board's decision not to institute
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`ground 1 with respect to claim 25.
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`Patent Owner has filed a statutory disclaimer under 37 C.F.R. § 1.321(a)
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`with respect to claims 15-20 and 26-28. Accordingly, claims 21, 22, and 31-36
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`remain under review in this proceeding.
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`Petitioner bears "the burden of proving a proposition of unpatentability by a
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`preponderance of the evidence." 35 U.S.C. § 316(e). Accordingly, the sole issue in
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`this proceeding is whether Petitioner has proven, by a preponderance of the
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`evidence, that claims 21, 22, and 31-36 are unpatentable as anticipated by Walker.
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`For the reasons set forth below, Petitioner has not.
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`II. The '736 Patent
`The '736 patent describes a number of surgical techniques, surgical
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`instruments, and implants. The subject matter of claims 15-22, 26-28, and 31-36
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`relates to embodiments of the '736 patent illustrated in Figures 88-90 reproduced
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`below:
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`Figures 88-90 show two embodiments of a self-centering mobile bearing
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`implant. ('736 patent, col. 99, ll. 34-35, col. 101, lines 6-8). Figures 88-89
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`illustrate a mobile bearing implant 1250 including a femoral component 1252 and
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`a tibial component 1254. (Id., col. 99, ll. 36-38). Mobile bearing implant 1290 of
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`Figure 90 includes "a femoral component" which is "analogous to femoral
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`component 1252" and a tibial component 1292. (Id., col. 101, ll. 6-14, Exhibit
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`2001, Schoifet Declaration, par. 21 ("Schoifet Decl.")).
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`The tibial component 1254/1292, in turn, is comprised of a tibial tray (1266
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`in Figs. 88-89, 1294 in Fig. 90) and a bearing insert (1268 in Figs 88-89, 1296 in
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`Fig. 90). Tray 1266/1294 includes a tapered spike 1270/1298 and a plate member
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`1272/1300. ('736 patent, col. 99, ll. 50-51, col. 101, ll. 15-16). Plate member
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`1272/1300 has a superior surface 1274/1302 which is shown as "a concave,
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`spherically shaped plateau surface." (Id., col. 99, ll. 53-54, col. 101, ll. 18-20).
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`Bearing insert 1268/1296 has a spherically shaped inferior surface 1284/1304 so
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`that the interface between tibial tray 1266/1294 and bearing insert 1268/1296
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`enables sliding motions along these inferior (1284/1304) and superior (1274/1302)
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`surfaces. (Id., col. 99, ll. 56-60, col. 101, ll. 21-25, Schoifet Decl., par. 22).
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`The superior surface of the bearing insert 1268/1294 interfaces with the
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`femoral component 1252. In this regard, the superior surface of the bearing insert
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`includes a pair of depressions (1280 in Figure 89, dotted lines in Figure 90) that
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`form bearing surfaces for the condyles surfaces of the femoral component. ('736
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`patent, col. 100, ll. 6-8, Schoifet Decl., par. 23).
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`The embodiment of Figures 88-89 and the embodiment of Figure 90 differ in
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`some respects.
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`4
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`In the embodiment of Figures 88-89, the bearing insert 1268 includes a
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`recess in the form of a dovetail shaped groove 1286 which mates with a protrusion
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`in the form of a dovetail pin shaped track 1276. Although "shown centrally
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`located, track 1276 can be located elsewhere along superior surface 1274 . . .."
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`('736 patent, Figures 88-89. col. 99, l. 62 to col. 100, l. 1, Schoifet Decl., par. 25).
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`In the embodiment of Figure 90, the bearing insert 1294 includes a recess
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`1308 in the form of a hole or cavity which mates with a protrusion 1306 in the
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`form of a post or pin. (Schoifet Decl., pars. 26, 37). The hole or cavity 1308
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`extends from inferior surface 1304 upward into the interior of bearing insert 1296,
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`as indicated by the dashed lines depicting component 1308. (Schoifet Decl., pars.
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`26, 38). The pin/post 1306 cooperates with hole/cavity 1308 "to permit rotation of
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`bearing insert 1296 with respect to tibial tray 1294." ('736 patent, Figure 90, col.
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`101, ll. 28-31).
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`Pin/post 1306 of Figure 90 is not located at "the center of the tibia", but
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`rather, "is offset medially toward the medial compartment of the knee" ( Id , Figure
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`90, col. 101, ll. 55-57). The '736 patent explains that "[o]ffsetting post 1306 more
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`toward the medial compartment of the knee recreates the natural pivoting motion
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`on the knee, with less translation medially, a more stable joint medially, and more
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`rotational arc or more movement laterally. " ( Id , col. 101, ll. 63-67).
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`5
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`Although Figures 88-90 depict the protrusion 1276/1306 on the tray
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`1266/1294 and the recess 1268/1308 on the bearing insert 1268/1294, this
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`arrangement can be switched so that the protrusion is on the bearing insert and the
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`recess is on the tray. (Id., col. 100, ll. 2-5, col. 101,ll. 31-34).
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`Further, although these self-centering mobile bearing implants are illustrated
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`with reference to total knee replacement, they can also be "applied to . . . partial
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`knee replacement." (Id., col. 102, ll. 1-4).
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`III. Claims 21, 22, And 31 Of The ‘736 Patent Are Not Anticipated
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`Under 35 U.S.C. 102(b) By Walker
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`To establish anticipation under § 102(b), “all of the elements and limitations
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`of the claim must be shown in a single prior reference, arranged as in the claim.”
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`Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001).
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`“A claim is anticipated only if each and every element as set forth in the claim is
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`found, either expressly or inherently described, in a single prior art reference.”
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`Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628, 631 (Fed. Cir.
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`1987).
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`A. Walker
`Walker is directed to prostheses for knee replacement. (Walker, title). In
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`the Corrected Petition, the Petitioner relies upon the embodiment shown in Figures
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`2, 2A, 2B, and 2C. (Corrected Petition, pp. 15-17, 24-26, 28-36). This is also the
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`embodiment relied upon by the Board in its Institution Decision. (Institution
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`Decision, pp. 9-10).
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`Referring to Figure 2a, there is provided a tibial platform 41and a meniscal
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`component 44. Tibial platform 41includes an "upstanding stud 42", a "rail 48",
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`and "a semicircular abutment 50 which is upstanding at the medial side of the
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`platform." (Walker, col. 4, ll. 12-13, 20, 23-25).
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`Meniscal component 44 includes a "slot 43" which receives the stud 42, "a recess
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`49" that engages with the rail 48, and "a recess or notch 51" which is "rounded."
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`(Id., col. 4, ll. 13, 20-21, 25-29)(emphasis added). "Rotation of the meniscal
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`component 44 about an axis X at the edge of the tibial platform is controlled by
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`[the] abutment 50." (Id., col. 4, ll. 23-25)(emphasis added).
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`B. Walker Does Not Disclose The Pin/Hole Limitations Of Claim 22
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`Or The Post/Cavity Limitations Of Claim 31
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`Claim 22 and claim 15 upon which it depends recite:
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`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
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`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 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.
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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. (Emphasis added).
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`Claim 31 recites
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`31. A knee arthroplasty device, comprising:
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`a tibial tray including a lower distal surface and an upper proximal
`surface, said proximal surface having either a post or a cavity, said
`post or cavity offset from at least one of a medial-lateral centerline
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`and an anterior-posterior centerline of said tibial tray;
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`a tibial tray insert engageable with said proximal surface and having a
`mating second cavity if said tibial tray has a post, or a mating post if
`said tibial tray has a cavity, said mating post or mating cavity offset
`from at least one of the medial-lateral centerline and the anterior-
`posterior centerline of said tibial tray, wherein said mating cavity is
`adapted to receive at least a portion of said post, or said mating post is
`adapted to be received in at least a portion of said cavity;
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`wherein said tibial tray insert rotationally moves with respect to said
`tibial tray, about said post, when the device is used within the body
`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. (Emphasis added).
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`In the Corrected Petition, Petitioner alleges that tibial component 41
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`corresponds to the claimed base component (claim 22) or tibial tray (claim 31),
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`meniscal component 44 corresponds to the claimed movable component (claim 22)
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`or tibial tray insert (claim 31), that semicircular abutment 50 corresponds to the
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`claimed pin (claim 22) or post (claim 31), and that "recess or notch 51"
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`corresponds to the claimed hole (claim 22) or cavity (claim 31).
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`Notch 51, however, is not "a hole", as required by claim 22, or a cavity as
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`required by claim 31. Accordingly, the Petition must be denied with regard to
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`claim 22 because Walker fails to show “all of the elements and limitations of the
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`9
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`claim . . ., arranged as in the claim.” Karsten Mfg. Corp. v. Cleveland Golf Co.,
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`Patent 7,837,736
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`242 F.3d 1376, 1383 (Fed. Cir. 2001).
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`In the Corrected Petition, the Petitioner asserts that "abutment 50 is a pin and
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`recess 51 is a hole." (Corrected Petition, p. 33). In support of this assertion,
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`Petitioner simply states: "Petitioners assert that the abutment 50 and recess 51
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`shown in the Walker patent correspond to the claimed 'pin' and 'hole', respectively,
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`when those terms are given their broadest reasonable interpretations." (Id., at p.
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`25). No other support or rationale is provided in the Corrected Petition.
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`Further at paragraph 47 of his Declaration, Petitioner's expert, Dr. Erdmann
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`contradicts Petitioner's position, stating "[i]t would be a matter of routine
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`engineering and design choice at the time of the Bonutti patent invention to replace
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`the recess 51 with a hole or slot . . .." (emphasis added). Later Dr. Erdman states:
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`For the reasons discussed above, it is my opinion that the Walker
`patent discloses a knee implant having all the features of claim 22. In
`particular, the abutment 50 is a pin, and the recess 51 is a hole size to
`receive the abutment. (Erdman Decl., par. 58).
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`However, as noted, what Dr. Erdman "discussed above" was the opposite:
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`that you would need to replace the recess or notch 51 with a hole.
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`Put simply, "recess 51" of Walker is described and illustrated as a notch, and
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`a notch is not a hole or cavity, even considered under the broadest reasonable
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`construction standard currently in place for inter partes review.1
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`Under the broadest reasonable construction standard, "the PTO must give
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`claims their broadest reasonable construction consistent with the specification." In
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`re Suitco Surface Inc., 603 F.3d 1255, 1259 (Fed. Cir. 2010), citing In re ICON
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`Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (emphasis added).
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`Further, the Federal Circuit has repeatedly "instructed that any such construction
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`be 'consistent with the specification, . . . and that claim language should be read in
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`light of the specification as it would be interpreted by one of ordinary skill in the
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`art.'" In re Suitco Surface, Inc., 603 F.3d 1255, 1260 (Fed. Cir. 2010), quoting In re
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`Bond, 910 F.2d 831, 833 (Fed. Cir. 1990) and In re Sneed, 710 F.2d 1544, 1548
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`(Fed. Cir. 1983).
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`1 Patent Owner does not agree that this is the proper standard and notes that the
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`issue of the proper standard for claim construction in an inter partes review is
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`currently before the Court of Appeal for the Federal Circuit in Versata
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`Development Group, Inc., v. Sap America, Inc., Appeal No. 2014-1194.
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`What is described and depicted in Walker is a notch 51, not a hole or cavity.
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`Walker refers to component 51 as "a recess or notch 51" which is "rounded":
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`Walker thus uses the term "notch" in accordance with its ordinary meaning:
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`a v-shaped cut (American Heritage Dictionary, p. 1237 (3d Ed. 1992) (Exhibit
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`2002), further explaining that it has been "rounded." A hole, in contrast, is "a
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`cavity in a solid", and a cavity is "a hollow . . . a hole … a hollow cavity within the
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`body" (Id., pp. 862, 306).
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`The words "notch", "hole", and "cavity" are terms of ordinary usage in the
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`English language, and a person of ordinary skill in the art at the time of the
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`invention would understand that a notch is not a hole or a cavity. (Schoifet Decl.,
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`pars 39-44). Even a cursory search on the internet reveals the distinction:
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`(Exhibit 2003)
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`The distinction between notches and holes or cavities is also borne out in the
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`specification of the '736 patent. For example, the '736 patent specification states:
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`"[t]he drill 128 is utilized to form a hole 130 in the center of the intercondylar
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`notch in the distal end portion 124 of the femur 126 in a known manner. The drill
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`128 is used to form the hole 130 while the leg 70 is in the orientation illustrated in
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`FIGS. 2 and 3. "(Col. 17, ll. 24-30). The hole 130 and notch are illustrated in the
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`figures:
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`The '736 patent also discusses a pilot hole with respect to Figure 68. ('736
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`patent, col. 92, ll. 20-21).
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`Further, in discussing the mobile bearing implants of Figures 88-90, the '736
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`patent describes and illustrates a bearing insert which includes a recess in the form
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`of a slot or notch 1286 (Figure 89) and a different bearing insert which includes a
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`recess in the form of a cavity or hole 1308 (Figure 90):
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`Further, this distinction has also been recognized by the Courts and by the
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`Board in numerous decisions.
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`In Joy MM Delaware, Inc. v. Cincinnati Mine Machinery, Co., 497 Fed.
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`Appx. 970, 973, 2012 U.S. App. LEXIS 23027 (Fed. Cir. 2012), the court found
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`"The term [indentation] has a commonly accepted meaning that does not include a
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`hole. See Webster's Third International Dictionary (1993) (defining 'indentation' as
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`'an angular cut' or 'a notch' or 'a small surface depression'); Oxford English
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`15
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`Dictionary (2d ed. 1989) (defining 'indentation' as a 'cut, notch, or angular
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`incision')."
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`In Sunbeam Products, Inc, v. Hamilton Beach Brands, Inc., 2010 U.S. Dist.
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`LEXIS 85281, *19 (E.D. Va. 2010), the Court explained "[a]s differentiated from
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`the narrower disputed claim term 'drinking cap having a drinking hole' (which is
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`necessarily a subset of 'drinking cap') discussed infra, a 'drinking cap' includes not
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`just a cap with a hole through which a person may drink. It also includes a cap with
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`a notch or other portion cut out so that the cap itself does not have a hole, but that
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`the user has an opening through which to drink when the cap is affixed."
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`(Emphasis added).
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`In Ex parte David E. Anderson, Appeal 2011-012922, 2013 Pat. App.
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`LEXIS 7274 (Pat. App. 2013), the Board noted that the "Examiner's proposed
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`modification to Shin includes modifying the windshield to have slots or notches
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`instead of holes." (Emphasis added).
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`In Ex parte YI YANG et al., Appeal 2009-006608, 2009 Pat. App. LEXIS
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`9281, * 15 (Pat. App. 2009), the Board found "Fulkerson teaches what a person of
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`ordinary skill in the art would interpret as a 'notch.' A 'notch' is not a 'hole' as
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`required by the claims, when the claims are reasonably read in view of Appellant's
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`Specification figures."
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`In Ex parte Cramer, 1937 Pat. App. LEXIS 98; 36 U.S.P.Q. 77 (Pat. App.
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`Patent 7,837,736
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`1937), the Board noted that the Examiner had found the prior art taught "to provide
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`notches in end plates to receive such rods alternately to holes drilled in them."
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`(Emphasis added).
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`Further, the abutment 50 of Walker cannot meet the claim requirement of a
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`pin (claim 22) or post (claim 31), particularly in the context in which the terms
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`pin/hole and post/cavity are used in the claims. Claim 22 requires a pin and recites
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`that the claimed hole is sized to receive the pin. Claim 31 requires a post, and
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`recites that the claimed post is adapted to be received in the cavity, or that the
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`claimed cavity is adapted to receive the claimed post.
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`As explained by Dr. Schoifet, in orthopedics a pin or post is typically used to
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`fix or align one device (or bone) to another device (or bone) by drilling (or passing
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`through) a hole cavity through the two devices (or bones), and a person of
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`ordinary skill in the art would not use an abutment such as abutment 50 of Walker
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`to fix or align one device (or bone) to another device (or bone) nor would an
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`abutment reside within a hole or cavity as claimed. (Schoifet Decl., pars. 45-46).
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`A person of ordinary skill in the art of orthopedics at the time would not consider
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`the abutment of Walker to be a pin or post as those terms are used in claims 22 and
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`31. (Id.)
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`17
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`Patent 7,837,736
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`The notch of Walker cannot meet the claim requirement of a hole, as recited
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`
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`in claim 22, or of a cavity as recited in claim 31, nor is the abutment 50 a pin or
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`post arranged as claimed. Accordingly, Petitioner cannot establish by a
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`preponderance of the evidence that claim 22 or claim 31 is anticipated by Walker.
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`C. Walker Does Not Disclose The Rotation/Rotational Limitations
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`Of Claims 21 And 31
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`Claim 21 recites "[t]he device of claim 15, wherein said protrusion and
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`recess engage to permit relative rotation of said base sliding side and said movable
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`sliding side about an axis of said protrusion." (Emphasis Added).
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`Walker does not meet this claim requirement. Walker states that "[r]otation
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`of the meniscal component 44 about an axis X at the edge of the tibial platform is
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`controlled by [the] abutment 50." (Id., col. 4, ll. 23-25) (emphasis added).
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`However, no axis X appears in Walker. Further, the alleged axis is described at the
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`edge of the tibial platform 41, not at the abutment 50, which is the alleged
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`protrusion. Further, in Walker, there is no rotation about "an axis of said
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`protrusion" because Walker is quite explicit in pointing out that the protrusion is
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`located in the notch to allow for translational movement. Specifically, Walker
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`explains that the "notch 51" is "rounded as shown to allow approximately 2 mms
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`movement in an anterior posterior direction." (Walker, col. 4, ll. 26-29).
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`18
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`Accordingly, there is not an axis of the protrusion about which the movable
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`Case: IPR2014-00191
`Patent 7,837,736
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`sliding slide 44 rotates relative to base sliding side 41. See Marquip, Inc. v. Fosber
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`Am., 1998 U.S. App. LEXIS 10200 (Fed. Cir. May 19, 1998)( finding that the
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`claim term "a transverse axis" . . . means a single axis)(emphasis added); Ex parte
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`Kevin Stones et al, Appeal 2011-004426, 2013 Pat. App. LEXIS 4068 *10-11 (Pat.
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`App. 2011) ("an axis" requires "single axis"); Ex parte David Shafer et al., Appeal
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`2009-000868, 2010 Pat. App. LEXIS 15638 (Pat. App. 2009) (interpreting an axis
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`as a single axis).
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`
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`A person of ordinary skill in the art at the time of the invention would
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`understand Walker as describing a translational/rotational movement, and would
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`not consider that as being a rotation "about an axis of said protrusion" as claimed.
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`(Schoifet Decl., pars. 51-53).
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`
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`For the forgoing reasons, Walker does not disclose each and every limitation
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`of claim 21, and the Petitioner cannot meet its burden of proving by a
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`preponderance of the evidence that claim 21 is anticipated by Walker.
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`
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`Claim 31, discussed in Section III (B) supra, requires a post that mates with
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`a cavity, and further requires "wherein said tibial tray insert rotationally moves
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`with respect to said tibial tray, about said post." A person of ordinary skill in the
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`art at the time of the invention would understand Walker as describing a
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`translational/rotational movement, and would not consider that as being a rotation
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`19
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`about a post as required by claim 31. (Schoifet Decl., pars. 48-53). Accordingly,
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`Case: IPR2014-00191
`Patent 7,837,736
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`for this reason, as well as the reasons set forth in Section III(B), Walker does not
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`disclose each and every limitation of claim 31, and the Petitioner cannot meet its
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`burden of proving by a preponderance of the evidence that claim 31 is anticipated
`
`by Walker.
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`D. Claims 32-36
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`Claims32-36 depend from and incorporate the limitations of claim 31. For
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`the reasons set forth above, Walker does not disclose each and every limitation of
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`independent claim 31. Accordingly, Walker cannot disclose each and every
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`limitation of any of claims 32-36, and the Petitioner cannot meet its burden of
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`proving by a preponderance of the evidence that claims 32-36 are anticipated by
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`Walker.
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`20
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`IV. Conclusion
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`Case: IPR2014-00191
`Patent 7,837,736
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`For the foregoing reasons, Petitioner has failed to establish by a
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`preponderance of the evidence that any of claims 21, 22, or 31-36 of the ‘736
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`patent is unpatentable. Accordingly, the Petition should be denied.
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`
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`August 6, 2014
`
`By:
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`
`
`Respectfully submitted,
`
`
`
` /Cary Kappel/
`Cary Kappel, Reg. 36,561
`William Gehris, Reg. 38,156
`Davidson, Davidson & Kappel, LLC
`485 Seventh Avenue
`New York, NY 10018
`
`Counsel for Patent Owner
`BONUTTI SKELETAL INNOVATIONS
`LLC
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`21
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`Case: IPR2014-00191
`Patent 7,837,736
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`List of Exhibits for Patent Owner’s Response
`
`
`Description
`Exhibit No.
`Exhibit 2001 Declaration of Scott Schoifet
`Exhibit 2002 American Heritage Dictionary, pp. 306, 862, 1237 (3d Ed. 1992)
`Exhibit 2003
`http://hostedmedia.reimanpub.com/TFH/Attachments/FH00JUN_N
`OTBOR_01.pdf (downloaded 6/27/2014 )
`http://www.kneeguru.co.uk/KNEEnotes/knee-
`dictionary/intercondylar-notch (downloaded 7/31/2014)
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`Exhibit 2004
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`22
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`Case: IPR2014-00191
`Patent 7,837,736
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`CERTIFICATE OF
`SERVICE
`
` hereby certify that on this 6h day of August, 2014, a true and correct copy of the
`foregoing PATENT OWNER’S RESPONSE PURSUANT TO 37 C.F.R. § 42.120
`including Exhibits was served by electronic mail upon the following counsel of
`record for Petitioners ZIMMER HOLDINGS, INC. and ZIMMER, INC.:
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`Naveen Modi
`Paul Hastings LLP
`875 15th Street N.W.
`Washington, D.C. 20005
`naveenmodi@paulhastings.com
`
`
`Joseph Palys
`Paul Hastings LLP
`875 15th Street N.W.
`Washington, D.C. 20005
`josephpalys@paulhastings.com
`
` /Cary Kappel/
`Cary Kappel
`
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`23
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` I
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