Paper No. __
`Filed: October 31, 2014
`
`Filed on behalf of: Zimmer Holdings, Inc. & Zimmer, Inc.
`By: Naveen Modi
`
`Joseph E. Palys
`
`Paul Hastings LLP
`
`875 15th Street, N.W.
`
`Washington, D.C. 20005
`
`Telephone: (202) 551-1700
`
`Facsimile:
`(202) 551-1705
`
`E-mail:
`naveenmodi@paulhastings.com
`
`
`
`josephpalys@paulhastings.com
`
`
`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 No. 7,837,736
`__________________
`
`PETITIONER’S REPLY UNDER 37 C.F.R. § 42.23
`TO PATENT OWNER’S RESPONSE
`
`
`Filed: October 31, 2014
`
`Filed on behalf of: Zimmer Holdings, Inc. & Zimmer, Inc.
`By: Naveen Modi
`
`Joseph E. Palys
`
`Paul Hastings LLP
`
`875 15th Street, N.W.
`
`Washington, D.C. 20005
`
`Telephone: (202) 551-1700
`
`Facsimile:
`(202) 551-1705
`
`E-mail:
`naveenmodi@paulhastings.com
`
`
`
`josephpalys@paulhastings.com
`
`
`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 No. 7,837,736
`__________________
`
`PETITIONER’S REPLY UNDER 37 C.F.R. § 42.23
`TO PATENT OWNER’S RESPONSE
`
`
`
`Case IPR2014-00191
`Patent No. 7,837,736
`
`TABLE OF CONTENTS
`
`
`I.
`
`Introduction ..................................................................................................... 1
`
`II. Walker Discloses the Claimed “Pin”/“Post” .................................................. 2
`
`III. Walker Discloses the Claimed “Hole”/“Cavity” ............................................ 6
`
`B.
`
`A.
`
`Recess 51 of Walker is a “Hole”/“Cavity” Under the Broadest
`Reasonable Interpretation ..................................................................... 7
`Patent Owner’s Arguments Place too Much Emphasis on the
`“Notch” in Walker and Ignore the Broadest Reasonable
`Interpretations of “Hole”/“Cavity” ...................................................... 8
`IV. Walker Discloses the Claimed Rotation “About an axis of [a]
`Protrusion”/“About [a] Post” ........................................................................ 11
`
`V. Dr. Schoifet’s Testimony Should Not Be Given Any Weight ..................... 14
`
`VI. Conclusion .................................................................................................... 15
`
`
`
`
`
`
`
`
`
`
`-i-
`
`
`
`TABLE OF AUTHORITIES
`
`Case IPR2014-00191
`Patent No. 7,837,736
`
`
`Page(s)
`
`Cases
`Allen Eng'g Corp. v. Bartell Indus., Inc.,
`299 F.3d 1336 (Fed. Cir. 2002) .......................................................................... 13
`
`BAE Systems Information and Systems v. Cheetah Omni, LLC, IPR2013-00175,
`Paper 45 (P.T.A.B. June 19, 2014). .................................................................... 4
`
`In re Huai-Hung Kao,
`639 F.3d 1057 (Fed. Cir. 2011) .......................................................................... 12
`
`In re Zletz,
`893 F.2d 319 (Fed. Cir. 1989) .............................................................................. 4
`
`Liberty Mutual Insurance Co. v. Progressive Casualty Insurance Co., CBM2013-
`00009, Paper 68 (P.T.A.B. Feb. 11, 2014). ....................................................... 4
`
`Nazomi Commc'ns, Inc. v. Arm Holdings, PLC,
`403 F.3d 1364 (Fed. Cir. 2005) .......................................................................... 13
`
`Orion IP, LLC v. Hyundai Motor America,
`605 F.3d 967 (Fed. Cir. 2010) ............................................................................ 14
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) .......................................................................... 10
`
`Rhine v. Casio, Inc.,
`183 F.3d 1342 (Fed. Cir. 1999) .......................................................................... 13
`
`
`
`Federal Regulations
`
`37 C.F.R. § 1.321(a) ................................................................................................... 1
`
`42 C.F.R. § 42.100(b) ................................................................................................ 1
`
`
`
`
`
`ii
`
`
`
`Introduction
`
`Case IPR2014-00191
`Patent No. 7,837,736
`
`
`Zimmer Holdings, Inc. and Zimmer, Inc. (collectively, “Petitioner”) submit
`
`I.
`
`
`this reply to Bonutti Skeletal Innovations, LLC’s (“Patent Owner”) response to the
`
`Board’s Decision instituting an inter partes review of U.S. Patent No. 7,837,736
`
`(“the ’736 patent”). The Board found that “there is a reasonable likelihood that
`
`Petitioner would prevail in its challenge of claims 15-22, 26-28, and 31-36 of the
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`’736 patent” based on U.S. Patent No. 5,755,801 to Walker (“Walker”). Paper 12
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`(“Decision”) at 17. Following the Decision, Patent Owner filed a statutory
`
`disclaimer under 37 C.F.R. § 1.321(a) with respect to claims 15-20 and 26-28,
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`Exhibit 2005, and a response addressing the patentability of claims 21, 22, and 31-
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`36, Paper 26 (“Response”). In its Response, Patent Owner makes essentially three
`
`arguments in an attempt to salvage the validity of claims 21, 22, and 31-36. But as
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`discussed below, all three arguments lack merit and should be rejected.
`
`Patent Owner’s first two arguments turn on the meaning of the terms “pin,”
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`“post,” “hole,” and “cavity” in claims 22 and 31. Patent Owner argues that Walker
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`does not disclose these features. See Response at 7-18. As confirmed by the cross-
`
`examination of Patent Owner’s expert, Dr. Scott D. Schoifet, however, Patent
`
`Owner has not applied the broadest reasonable interpretation in light of the
`
`specification (37 C.F.R.§ 42.100(b)) to these terms. See e.g., Ex. 1022 at 97:19-21
`
`(defining cavity); 137:18-19 (defining hole). Under the broadest reasonable
`
`
`
`1
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`
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`construction and as the Board found in its Decision, Walker’s abutment 50 is the
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`Case IPR2014-00191
`Patent No. 7,837,736
`
`
`claimed pin/post and recess 51 is the claimed hole/cavity. See Decision at 11-12.
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`
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`Patent Owner also argues that Walker cannot anticipate claims 21 and 31
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`because meniscal component 44 does not rotate about “an axis of rotation” located
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`at abutment 50. See Response at 18-20. Claims 21 and 31, however, have no such
`
`requirement, reciting only that rotation occurs “about an axis of [a] protrusion”
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`(claim 22) or “about [a] post” (claim 31). Under the broadest reasonable
`
`construction and as the Board found in its Decision, Walker’s meniscal component
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`44 rotates about an axis of or about abutment 50. See Decision at 11-12.
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`Because Walker discloses element-for-element all that is required in claims
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`21, 22, and 31-36 of the ’736 patent, and Patent Owner’s arguments disregard the
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`claim language and the disclosure of Walker, the Board should issue a final
`
`decision cancelling claims 21, 22, and 31-36 of the ’736 patent.
`
`II. Walker Discloses the Claimed “Pin”/“Post”
`
`Relying on the Petition and supporting evidence, the Decision found that
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`Walker discloses the “pin” of claim 21 and the “post” of claim 31. Decision at 11-
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`12 (citing to Paper 8 (“Corrected Petition”) at 28-35). Specifically, Walker
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`expressly discloses a “semi-circular abutment 50 which is upstanding at a medial
`
`side of the platform,” and explains that “meniscal component can be fitted to the
`
`
`
`2
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`
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`tibial platform by engaging abutment 50.” Ex. 1002 at 4:24-26, 4:30-32; see also
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`Case IPR2014-00191
`Patent No. 7,837,736
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`Figs. 2, 2a-2c.
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`
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`In an attempt to distinguish Walker, Patent Owner argues that “[a] person of
`
`ordinary skill in the art of orthopedics at the time would not consider the abutment
`
`of Walker to be a pin or post as those terms are used in claims 22 and 31.”
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`Response at 17. To further its argument, Patent Owner relies on Dr. Schoifet, who
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`states that “a pin or post is typically used to fix or align one device (or bone) to
`
`another device (or bone),” and contends that “[w]e would not use an abutment to
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`fix align [sic] one device (or bone) to another device (or bone).” Ex. 2001, ¶ 45.
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`This argument should be rejected for two reasons.
`
`
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`First, the claims at issue do not require “pin” or “post” to “fix or align.”
`
`Claim 15 recites a protrusion and recess (Ex. 1001 at 114:19-27), and claim 22
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`further limits claim 15 providing that “said protrusion is a pin” and “said recess is a
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`hole sized to receive said pin” (id. at 114:52-53). Claim 31 recites a “post,” and
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`provides that “[a] mating cavity is adapted to receive at least a portion of said post,
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`or [a] mating post is adapted to be received in at least a portion of said cavity.” Id.
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`at 115:37-38, 46-49. Nowhere do claims 22 or 31 require “pin” or “post” to “fix or
`
`align one device (or bone) to another device (or bone).” Moreover, even if the
`
`claims did require “pin” or “post” to “fix or align,” Walker teaches this feature.
`
`See Ex. 1002 at 4:30-33 (“FIG. 2c shows the manner in which the meniscal
`
`
`
`3
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`
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`component can be fitted to the tibial platform by engaging the abutment 50 in
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`Patent No. 7,837,736
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`recess 51”).
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`
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`Second, Dr. Schoifet’s interpretation of “pin” and “post” is inconsistent with
`
`his testimony that he interpreted the claims following the broadest reasonable
`
`interpretation standard.1 Ex. 2001, ¶ 30; Ex. 1022 at 128:20 – 129:2. Under that
`
`standard, words of the claim must be given their plain meaning unless the plain
`
`meaning is inconsistent with the specification. See In re Zletz, 893 F.2d 319, 321
`
`(Fed. Cir. 1989); see also, e.g., BAE Systems Information and Systems v. Cheetah
`
`Omni, LLC, IPR2013-00175, Paper 45 at 5 (P.T.A.B. June 19, 2014).
`
`
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`The plain and ordinary meaning of a post is a structure set upright to serve as
`
`a support, which is not inconsistent with the specification. Compare Ex. 10232 at
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`1414 (defining “post” as “[a] long piece of wood or other material set upright into
`
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`1 Patent Owner disagrees that this is the standard that should be applied here.
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`Response at 11 n.1. It, however, does not provide support for its argument. Id.
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`Because the Patent Owner’s argument is conclusory, it should be rejected
`
`summarily. See Liberty Mutual Insurance Co. v. Progressive Casualty Insurance
`
`Co., CBM2013-00009, Paper 68 at 30 (P.T.A.B. Feb. 11, 2014).
`
`2 Ex. 1023 includes definitions from the same dictionary relied upon by Patent
`
`Owner.
`
`
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`4
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`
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`the ground to serve as a marker or support”) with Ex. 1001 at 101:28-31.
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`Case IPR2014-00191
`Patent No. 7,837,736
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`Abutment 50 of Walker is an upstanding or upright structure. See Ex. 1002 at
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`4:23-26. Dr. Schoifet admitted as much. Ex. 1022 at 39:7-12, 39:22 – 40:7.
`
`Abutment 50 of Walker also serves as a support at least because it applies “lateral
`
`pressure” to recess or notch 51 of meniscal component 44. Id. at 35:21 – 38:6. As
`
`such, Walker discloses a “post” under the broadest reasonable interpretation.3
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`Further, Dr. Schoifet agreed that abutment 50 is received in recess 51. Id. at 50:21-
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`23. Walker, therefore, discloses a “post . . . adapted to be received in at least a
`
`portion of said cavity,” as recited in claim 31.
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`
`
`Walker similarly discloses “pin” of claim 22, especially when the
`
`specification does not support a different meaning for “pin” and Patent Owner and
`
`its expert did not differentiate a “pin” from a “post.” Specifically, the ’736 patent
`
`describes superior surface of tibial component 1292 as having a “post 1306,” and
`
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`3 Indeed, Figure 1 of another reference discloses a structure similar to abutment 50
`
`of Walker and refers to the structure as a post. See Ex. 1003 at Fig. 1, 3:14-18
`
`(describing item 32 as a “post”). When given a copy of Fig. 1 of Exhibit 1003,
`
`however, Dr. Schoifet refused to testify as to this figure (see Ex. 1021). See, e.g.,
`
`Ex. 1022 at 109:3-114:11. And when asked whether item 32 in Fig. 1 is a post, he
`
`“was unable to comment on that as an expert witness.” Id. at 114:5-11.
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`
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`5
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`
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`includes no separate disclosure or description of a “pin” outside of claim 22. See
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`Case IPR2014-00191
`Patent No. 7,837,736
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`Ex. 1001 at 101:28-31, Fig. 90. Patent Owner and its expert contend that this
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`disclosure of a post provides support for the “pin” of claim 22. Response at 5;
`
`Ex. 2001, ¶¶ 26-27. In fact, Dr. Schoifet confirmed that he did not differentiate
`
`between a “post” and a “pin” in his analysis of claims 22 and 31 and Walker.
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`Ex. 1022 at 130:9-12; see also e.g., Ex. 2001, ¶ 27 (“[p]in/post of Figure 90”). As
`
`a result, because Walker discloses the “post” of claim 31, it also discloses the “pin”
`
`of claim 22.
`
`III. Walker Discloses the Claimed “Hole”/“Cavity”
`The Decision found that recess 51 of Walker is the claimed “hole” and
`
`“cavity.” Decision at 11-12 (relying on the Petition and supporting evidence).
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`Specifically, as shown in Figure 2, Walker discloses a recess 51 to receive an
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`abutment 50. Ex. 1002 at 4:26-33, 6:29-33.
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`
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`As discussed below, the Board correctly found that recess 51 is the claimed
`
`“hole”/“cavity,” and Patent Owner’s arguments to the contrary should be rejected.
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`
`
`6
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`
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`A. Recess 51 of Walker is a “Hole”/“Cavity” Under
`the Broadest Reasonable Interpretation
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`Case IPR2014-00191
`Patent No. 7,837,736
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`The broadest reasonable interpretation of the terms “hole” and “cavity” in
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`light of the specification supports the Board’s conclusion. For instance, a
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`dictionary, which the Patent Owner relies upon (Response at 12), defines “cavity”
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`as “[a] hollow; a hole” and defines “hole” as “[a] cavity in a solid.” Ex. 2002 at
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`306, 862. Thus, the dictionary uses these terms interchangeably, as do the Patent
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`Owner and its expert. Response at 12; Ex. 1022 at 132:2-25. Recess 51 of Walker
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`plainly meets this dictionary definition: it is hollow. Indeed, Patent Owner’s
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`expert agreed with as much. Ex. 1022 at 50:6-8 (“Q. Do you agree recess 51
`
`contains a hollow area? A. I do.”)
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`Moreover, the specification of the ’736 patent, and Patent Owner’s reading
`
`of it, supports the Board’s conclusion. Patent Owner relies on Figure 90 of the
`
`’736 patent as support for the claimed features.4 Figure 90 shows a recess 1308
`
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`4 Petitioner does not agree with Patent Owner’s assertion that claims 21, 22, and
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`31-36 find support in the ’736 patent. See Response at 2-6. Although Patent
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`Owner relies on Figs. 88-90 as support for the features of the claims, Patent
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`Owner’s own expert admitted that the drawings without more are insufficient to
`
`convey to a person of ordinary skill in the art that post 1306 is a “pin” or recess
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`130 is a “hole”/”cavity.” See, e.g., Ex. 1022 at 142:16-25.
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`7
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`
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`and post 1306. See Ex. 1001 at 101:28-31. Patent Owner contends that this
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`Case IPR2014-00191
`Patent No. 7,837,736
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`disclosure of a recess in the ’736 patent provides support for the “hole” of claim 22
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`and “cavity” of claim 31. Response at 5. Similarly, Dr. Schoifet confirmed that
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`“[i]n the context of this patent [a] hole or cavity is [a] recess.” Ex. 1022 at 133:23-
`
`25. Dr. Schoifet also confirmed that the only mention of a hole or cavity is in the
`
`claims. Ex. 1022 at 108:14 – 19:2. As a result, if recess 1308 supports the claimed
`
`“hole” and “cavity”, as alleged by the Patent Owner, the disclosure of Walker
`
`certainly supports the conclusion that recess 51 is the claimed “hole”/“cavity”,
`
`especially in light of the broadest reasonable construction of the terms “hole” and
`
`“cavity.”
`
`B.
`
`Patent Owner’s Arguments Place too Much Emphasis on the
`“Notch” in Walker and Ignore the Broadest Reasonable
`Interpretations of “Hole”/“Cavity”
`
`
`
`Patent Owner and its expert do not apply the broadest reasonable
`
`interpretations of the terms “hole” and “cavity” and as such their arguments should
`
`be rejected. For instance, during cross-examination Dr. Schoifet testified regarding
`
`the broadest reasonable interpretation of “recess,” “cavity,” and “hole.” According
`
`to Dr. Schoifet, “[a] recess is a cavity” (Ex. 1022 at 96:20-21), a cavity is a “hole
`
`with dimensionality” (see id. at 97:19-21), and a hole is “a contained cavity” that
`
`can be an opening (see id. at 137:17 – 138:13). These definitions are not only
`
`circular, they are not the broadest reasonable interpretations. See Section III.A.
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`
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`8
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`
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`Regardless, even if these definitions are applied here, item 51 of Walker meets
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`Case IPR2014-00191
`Patent No. 7,837,736
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`them. Item 51 of Walker has both an opening and “dimensionality.” See Ex. 1002
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`at 4:26-33, Figs. 2, 2a-2c. In fact, Dr. Schoifet agreed that item 51 contains a
`
`hollow area, thus showing that it has an opening. Ex. 1022 at 50:6-8. Moreover,
`
`item 51 has dimensionality as it extends through the thickness of meniscal
`
`component 44. See, e.g., Ex. 1002 at Fig. 2. Walker, therefore, discloses a “hole”
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`and a “cavity” even under Patent Owner’s and its expert’s narrow construction.
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`Patent Owner also argues that what is actually described and depicted in
`
`Figure 2 of Walker is a notch. Response at 11-12. But Walker only once refers to
`
`item 51 a notch. In this instance, Walker is written in the alternative: “recess or
`
`notch.” Ex. 1002 at 4:26-28 (emphasis added). In all other instances, Walker
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`refers to item 51 as a recess. Id. at 4:30-33; 6:29-33. And as described above,
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`recess 51 meets the broadest reasonable construction of a “hole” or “cavity.”
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`
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`In addition, Patent Owner contends that the plain and ordinary meaning of
`
`notch is distinct from “hole” and “cavity,” relying on dictionary definitions and
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`Internet description of the terms “notch,” “hole,” and “cavity.” Response at 12-13;
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`Ex. 2002; Ex. 2003. On cross-examination, however, Dr. Schoifet dismissed such
`
`evidence. Ex. 1022 at 102:10-18. Moreover, it is improper to use the dictionary
`
`definition of “notch” when Walker clearly describes item 51 as a “recess or notch”
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`(Ex. 1002 at 4:26) and when Walker’s alleged notch does not fit the ordinary
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`9
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`
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`meaning of notch as defined by the Patent Owner, i.e., a v-shaped cut. See
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`Response at 12.
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`
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`Patent Owner also contends that “notch” is not the same as a “hole” or
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`“cavity” because they are common terms within the medical field as understood by
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`Dr. Schoifet. Response at 12 (citing Ex. 2002, ¶¶ 39-44). Dr. Schoifet relies on
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`the definition of the intercondylar notch as an example of a notch. See Ex. 2001,
`
`¶ 39. The “notch” in meniscal component 44 of Walker, however, is not the
`
`intercondylar notch. Therefore Dr. Schoifet’s reliance on the intercondylar notch
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`is irrelevant.
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`
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`Patent Owner and Dr. Schoifet also contend that the ’736 patent
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`distinguishes between a “hole” and a “notch.” See Response at 13 (citing Ex. 1001
`
`at 17:24-30, 92:20-21, Fig. 8, Fig. 31); Ex. 2001, ¶¶ 40-41 (same). But, the cited
`
`portions of the ’736 patent refer to a femoral procedure and not mobile bearing
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`implants. See Ex. 1001 at 17:24-30, 92:20-21. Indeed, Dr. Schoifet confirmed that
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`the only mention of a hole or cavity relevant to the claimed embodiment is in the
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`claims. Ex. 1022 at 108:14 – 109:2. Moreover, just because the ’736 patent may
`
`distinguish between a “hole” and a “notch” does not mean that the alleged “notch”
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`in Walker is not the claimed “hole” or “cavity” under the broadest reasonable
`
`interpretation of “hole”/”cavity.” See Phillips v. AWH Corp., 415 F.3d 1303, 1317
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`
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`10
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`
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`(Fed. Cir. 2005) (en banc) (emphasizing that “claims must be read in view of the
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`specification, of which they are a part”).
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`
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`Finally, Patent Owner cites to alleged inconsistent testimony from
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`Petitioner’s expert and relies on other cases to support its arguments. Response at
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`10, 15-17. The testimony, however, is not inconsistent. Petitioner’s expert
`
`provided various theories to support his positions and the testimony relied upon by
`
`Patent Owner is for one of the alternative theories. Ex. 1005, ¶ 47. In fact, under
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`his primary theory, Petitioner’s expert testified that item 51 is the claimed hole or
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`cavity. Id. at ¶¶ 58, 63. Patent Owner chose not to cross-examine Petitioner’s
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`expert and should not be allowed to now raise any alleged inconsistency, especially
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`when the record supports the conclusion that item 51 of Walker is the claimed hole
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`or cavity. Likewise, the cases that Patent Owner relies upon are irrelevant
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`especially when the totality of the evidence supports the conclusion that item 51 of
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`Walker is the claimed “hole” or “cavity.”
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`IV. Walker Discloses the Claimed Rotation “About an axis of [a]
`Protrusion”/“About [a] Post”
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`
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`The Decision correctly found that Walker discloses the claimed rotation
`
`features. Decision at 11-12 (relying on the Petition and supporting evidence).
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`
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`Patent Owner does not dispute abutment 50 of tibial platform 41 is received
`
`in a recess or notch 51 of meniscal component 44, nor does Patent Owner dispute
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`11
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`
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`that meniscal component 44 of Walker rotates with respect to tibial platform 41.
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`Case IPR2014-00191
`Patent No. 7,837,736
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`See Ex. 1002 at Abstract, 4:22-26; Fig. 2a-2b; see also Ex. 1020. Indeed, Patent
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`Owner’s expert marked the direction of rotation on Fig. 2 of Walker, reproduced
`
`below:
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`Ex. 1022 at 70:8-24.
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`
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`Instead, Patent Owner argues that an axis of rotation of meniscal component
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`44 is at an edge of tibial platform 41 and not at abutment 50 (Response at 18), and
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`abutment 50 permits translation not rotation of meniscal component 44 (Response
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`at 18-20). Both arguments lack merit.
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`
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`Patent Owner’s first argument, which requires an axis of rotation to be
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`located at abutment 50, should be rejected. Claim 31 does not recite an axis, let
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`alone that the claimed tibial tray insert rotationally moves with respect to the
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`claimed tibial tray about an axis of rotation. Nor does claim 21 require relative
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`12
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`rotation of the claimed base sliding side of the base component and the claimed
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`movable sliding side of the movable component to be about an axis of rotation.
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`Patent Owner’s argument is thus irrelevant to the features recited in the claims and
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`improperly attempts to import limitations from the specification. See, e.g., In re
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`Huai-Hung Kao, 639 F.3d 1057, 1073 (Fed. Cir. 2011) (court declines to import
`
`limitation into claim); cf. Nazomi Commc'ns, Inc. v. Arm Holdings, PLC, 403 F.3d
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`1364, 1368 (Fed. Cir. 2005) (“courts should not rewrite claims to preserve
`
`validity”); Allen Eng'g Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1349 (Fed. Cir.
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`2002) (same); Rhine v. Casio, Inc., 183 F.3d 1342, 1345 (Fed. Cir. 1999) (same).
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`
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`Claim 31 merely requires rotation “about said post,” and claim 21 merely
`
`requires rotation “about an axis of said protrusion.” Walker discloses that meniscal
`
`component 44 rotationally moves with respect to the tibial platform 41 about
`
`abutment 50. See Ex 1002 at 4:23-26 (“[r]otation of the meniscal component 44
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`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.”); see also id.,
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`6:29-33 (“an abutment . . . engages with a recess in one edge of the meniscal
`
`component, thereby guiding and limiting movement of the meniscal component in
`
`an arc around the abutment”). As abutment 50 has an axis, Walker also discloses
`
`that meniscal component 44 rotates about an axis of abutment 50, and thus Walker
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`satisfies claim 21. Ex. 1005, ¶ 45.
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`
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`13
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`
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`Patent Owner’s second argument, that abutment 50 is located in recess 51 to
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`Case IPR2014-00191
`Patent No. 7,837,736
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`
`
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`also allow for translational movement, is irrelevant. While its expert contends that
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`abutment 50 allows for translational movement of meniscal component 44 in the
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`anterior-posterior direction, he does not dispute that such movement guides
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`meniscal component in an arc about abutment 50. Ex. 1022 at 67:5-20. In fact,
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`Patent Owner described the movement of meniscal component as
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`“translational/rotational movement.” Response at 19-20. Prior art that discloses
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`more than what is claimed still anticipates the claims. Orion IP, LLC v. Hyundai
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`Motor America, 605 F.3d 967, 977 (Fed. Cir. 2010). Thus, Walker anticipates
`
`claims 21 and 31.
`
`V. Dr. Schoifet’s Testimony Should Not Be Given Any Weight
`Patent Owner relies on its expert, Dr. Schoifet, to support its arguments. But
`
`Dr. Schoifet’s testimony should not be given any weight because he applied the
`
`incorrect level of ordinary skill to arrive at his conclusions. He testified that a
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`person having an undergraduate degree in mechanical engineering is considered
`
`“skilled in the art” without more. Ex. 1022 at 126:6 – 127:2; see also
`
`Ex. 2001, ¶ 16. But the appropriate level of skill for this case requires not only an
`
`undergraduate degree but also some years of experience in the relevant field (e.g.,
`
`knee replacement implants). Ex. 1005, ¶ 13. Thus, because Dr. Schoifet applied
`
`
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`14
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`
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`the incorrect level of ordinary skill in rendering his opinions, his opinions should
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`Case IPR2014-00191
`Patent No. 7,837,736
`
`
`not be given any weight.
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`VI. Conclusion
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`Patent Owner did not challenge that Walker discloses the limitations of
`
`claims 32-36, thereby conceding that these claims fall with anticipated claim 31.
`
`Based on the analysis above and the record before the Board, Petitioner has
`
`demonstrated by a preponderance of the evidence that Walker discloses each and
`
`every feature of claims 21, 22, and 31-36 of the ’736 patent and therefore
`
`anticipates these claims. The Board should cancel these claims and enter judgment
`
`against Patent Owner.
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`
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` Respectfully Submitted,
`
`Dated: October 31, 2014
`
`By:
`
`
`
`/Naveen Modi/
`Naveen Modi
`Reg. No. 46,224
`
`Counsel for Petitioner
`
`
`
`15
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`
`
`CERTIFICATE OF SERVICE
`
`Case IPR2014-00191
`Patent No. 7,837,736
`
`
`I hereby certify that on this 31st day of October 2014, a copy of the
`
`foregoing Petitioner’s Reply Under 37 C.F.R. § 42.23 to Patent Owner’s
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`Response was served by e-mail on the following counsel of record for Patent
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`Owner, Bonutti Skeletal Innovations, LLC:
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`Cary Kappel – ckappel@ddkpatent.com
`
`William Gehris – wgehris@ddkpatent.com
`
`
`Dated: October 31, 2014
`
`
`
`By:
`
`/Naveen Modi/
`Naveen Modi
`Reg. No. 46,224
`
`Counsel for Petitioner
`
`
`
`
`
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