Paper
`Filed on behalf of: BONUTTI SKELETAL INNOVATIONS LLC
`Date: March 13, 2014
`
`By: Cary Kappel, Lead Counsel
`
`William Gehris, Backup Counsel
`
`Davidson, Davidson & Kappel, LLC
`
`485 Seventh Avenue
`
` New York, NY 10018
`
`Telephone (212) 736-1257
`
`
`
`(212) 736-2015
`
`Facsimile (212) 736-2427
`
`E-mail:
`ckappel@ddkpatent.com
`
`
`
`wgehris@ddkpatent.com
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`WRIGHT MEDICAL GROUP, INC.
` and WRIGHT MEDICAL TECHOLOGY, INC.
`
`Petitioner,
`
`
`
`
`v.
`
`
`
`BONUTTI SKELETAL INNOVATIONS LLC
`
`Patent Owner
`
`
`
`
`
`Case: IPR2014-00354
`
`Patent 7,806,896
`_______________
`
`
`
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Filed on behalf of: BONUTTI SKELETAL INNOVATIONS LLC
`Date: March 13, 2014
`
`By: Cary Kappel, Lead Counsel
`
`William Gehris, Backup Counsel
`
`Davidson, Davidson & Kappel, LLC
`
`485 Seventh Avenue
`
` New York, NY 10018
`
`Telephone (212) 736-1257
`
`
`
`(212) 736-2015
`
`Facsimile (212) 736-2427
`
`E-mail:
`ckappel@ddkpatent.com
`
`
`
`wgehris@ddkpatent.com
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`WRIGHT MEDICAL GROUP, INC.
` and WRIGHT MEDICAL TECHOLOGY, INC.
`
`Petitioner,
`
`
`
`
`v.
`
`
`
`BONUTTI SKELETAL INNOVATIONS LLC
`
`Patent Owner
`
`
`
`
`
`Case: IPR2014-00354
`
`Patent 7,806,896
`_______________
`
`
`
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Case: IPR2014-00354
`Patent 7,806,896
`
`Pursuant to 35 U.S.C. § 313 and 37 C.F.R. § 42.107, Patent Owner,
`
`BONUTTI SKELETAL INNOVATIONS LLC, submits the following Patent
`
`Owners Preliminary Response in response to the Petition for Inter Partes Review
`
`of U.S. Patent No. 7,806,896 (hereinafter the “ '896 patent”).
`
`BACKGROUND
`
`
`
`The '896 patent is the subject of two previously filed inter partes reviews:
`
`IPR 2013-00629, filed by Smith & Nephew, Inc. (“Smith & Nephew”) on
`
`September 26, 2013, and IPR 2014-00321 filed by Zimmer, Inc. et al. (“Zimmer”)
`
`on January 3, 2014. At the time IPR-2013-00629 and IPR 2014-00321 were filed,
`
`Zimmer, Smith & Nephew and Petitioner Wright were defendants in a consolidated
`
`litigation pending in District of Delaware, which asserts infringement of the ‘896
`
`patent, among others. (Exhibit 2001). The action against Smith & Nephew has
`
`since been dismissed without prejudice. (Exhibit 2002).
`
`
`
`IPR 2013-00629 sought inter partes review of claims 1 and 13 of the '896
`
`patent. On February 28, 2014, the Board instituted review of claim 1, but denied
`
`review of claim 13.
`
`
`
`IPR 2014-00321 sought review of claims 40-46 of the '896 patent. On
`
`March 13, 2014, Patent Owner filed a waiver of preliminary response.
`
`
`
`1
`
`
`
`Case: IPR2014-00354
`Patent 7,806,896
`The instant proceeding seeks inter partes review of claims 1, 13, 25, and 40
`
`
`
`
`
`of the '896 patent.
`
` The grounds recited in the instant petition with regard to claims 1 and 13
`
`are identical to the grounds recited with regard to claims 1 and 13 in IPR 2013-
`
`00629. The instant petition relies on an unsigned copy of the declaration of Jay
`
`Mabrey that was submitted in IPR 2013-00629. The arguments support of the
`
`alleged invalidity of claims 1 and 13 are substantively, and in large part textually,
`
`identical to the arguments in IPR 2013-00629, except that the Petitioner moved the
`
`claim charts copied from IPR2013-00629 into Appendices.
`
`The grounds recited in the instant petition with regard to claim 40 are
`
`identical to the grounds recited with regard to claim 40 in IPR 2014-00311. The
`
`instant petition relies on copy of the declaration of Arthur Erdman that was
`
`submitted in IPR 2014-00311. The arguments support of the alleged invalidity of
`
`claim 40 are substantively, and in large part textually, identical to the arguments in
`
`IPR 2014-00311, except that the Petitioner moved the claim charts copied from
`
`IPR2014-00311 into Appendices.
`
`The only ground of unpatentability that is new in the instant IPR is found in
`
`Section VIII(C), a 7 seven page discussion of claim 25. However, even in this case,
`
`the instant petition uses the same prior art combination and much of the argument
`
`
`
`2
`
`
`
`Case: IPR2014-00354
`Patent 7,806,896
`
`relied upon with regard to claim 1 in Section VIII (A)(1), and that argument was,
`
`
`
`as noted above, substantively, and in large part textually, identical to the arguments
`
`in IPR 2013-00629.
`
`THE BOARD SHOULD DECLINE TO INSTITUTE AN INTER
`PARTES REVIEW OF CLAIMS 1, 13, AND 40 AS REDUNDANT OF
`IPR 2013-00629 AND IPR 2014-00311
`
`Pursuant to 37 CFR § 42.122 (a), “[w]here another matter involving the
`
`patent is before the Office, the Board may during the pendency of the inter partes
`
`review enter any appropriate order regarding the additional matter including
`
`providing for the stay, transfer, consolidation, or termination of any such matter.”
`
`See also 35 U.S.C. § 315(d). The Board also has authority under 35 U.S.C. §
`
`315(c): “the Director, in his or her discretion, may join as a party to that inter partes
`
`review any person who properly files a petition under section 311 that the Director,
`
`after receiving a preliminary response under section 313 or the expiration of the
`
`time for filing such a response, determines warrants the institution of an inter partes
`
`review under section 314”.
`
`Indeed, the Board is specifically authorized to reject a request for an inter
`
`partes review when the same or substantially the same prior art and/or arguments
`
`were previously presented:
`
`In determining whether to institute or order a proceeding under this
`chapter, chapter 30, or chapter 31 [inter partes review], the Director
`may take into account whether, and reject the petition or request
`
`
`
`3
`
`
`
`
`
`Case: IPR2014-00354
`Patent 7,806,896
`because, the same or substantially the same prior art or arguments
`previously were presented to the Office.
`35 U.S.C. § 325 (d).
`
`
`
`The Board should exercise its authority under these provisions and decline to
`
`institute review of claims 1, 13, and 40. In the instant action, the Petitioner has
`
`literally copied the Petitions of two prior petitioners and sought to have a separate
`
`review of the same claims on the same evidence. Petitioner’s filing of the instant
`
`petition three months after the IPR 2013-00629 Petition is a naked attempt to
`
`obtain a second bite at responding to identical evidence.
`
`The policy implication of allowing this type of gamesmanship is manifest.
`
`Patent Owners will be subject to cascading petitions using the same grounds and
`
`evidence, and the Board will be obliged to consider cascading responses on
`
`identical evidence. For example, Petitioner Wright can effectively observe Patent
`
`Owners strategy in the earlier IPRs, and tailor its responses; effectively getting a
`
`second bite of the apple.1 The Board has broad authority to manage related
`
`proceedings under 37 CFR § 42.122 (a) and 35 U.S.C.§ § 315(c, d) and 325(d) and
`
`should use that authority to decline to institute review of claims 1, 13, and 40.
`
`
`1 For example, upon reviewing Patent Owner’s evidence, Wright could introduce
`
`supplemental information under 37 C.F.R. § 42.123.
`
`
`
`4
`
`
`
`Case: IPR2014-00354
`Patent 7,806,896
`Alternatively, the Board should order the three IPRs joined and order that
`
`
`
`
`
`Petitioner Wright act in an “understudy role” with regard to claims 12 and 40 that,
`
`absent specific board authorization, is “not permitted to file papers, engage in
`
`discovery, or participate in any deposition or oral argument.” Cf. IPR2013-00495,
`
`paper 13, page 10. To extent review is instituted on claim 25, Patent Owner
`
`requests that the Board set due dates in IPR 2013-00629 and the instant inter partes
`
`review to be the same, so that Petitioner does not obtain an unfair advantage due to
`
`its delay in filing for review.
`
`THE BOARD SHOULD DECLINE TO INSTITUTE INTER PARTES
`REVIEW OF CLAIM 13 BECAUSE THE GROUNDS ASSERTED ARE
`IDENTICAL TO THE GROUNDS DENIED IN IPR 2013-00629
`
`
`
`As noted above, the grounds recited in the instant petition with regard to
`
`claim 13 are identical to the grounds recited with regard to claim 13 in IPR 2013-
`
`00629. The instant petition relies on an unsigned copy of the declaration of Jay
`
`Mabrey that was submitted in IPR 2013-00629. The arguments support of the
`
`
`2 As set forth in the next Section, in no event should the Board institute review of
`
`claim 13 based on the instant petition in view of the fact that the grounds,
`
`argument and evidence are identical to the grounds the Board rejected in IPR 2013-
`
`00629.
`
`
`
`5
`
`
`
`Case: IPR2014-00354
`Patent 7,806,896
`
`alleged invalidity of claims 1 and 13 are substantively, and in large part textually,
`
`
`
`identical to the arguments in IPR 2013-00629, except that the Petitioner moved the
`
`claim charts copied from IPR2013-00629 into Appendices.
`
` The Board declined to institute a review of claim 13 in IPR 2013-00629, on
`
`the same evidence presented in the instant petition, finding that “Petitioner [Smith
`
`& Nephew] has not demonstrated a reasonable likelihood of prevailing on its
`
`assertion that claim 13 of the ’896 patent is unpatentable.” Accordingly, the Board
`
`should decline to institute review of claim 13 in the instant petition for the same
`
`reasons.
`
`THE BOARD SHOULD AFFORD NO WEIGHT TO THE IMPROPER
`DECLARATIONS OF MABREY AND ERDMAN, AND NOT INSTITUTE
`REVIEW OF ANY CLAIM
`
`
`
`
`
`The Declarations of Mabrey and Erdman do not constitute testimony in the
`
`instant proceeding, and are therefore entitled to no weight whatsoever.
`
`Declarations are considered in an inter partes review as uncompelled direct
`
`testimony. 37 C.F.R. § 43.53(a).
`
`Jay Mabrey is an expert witness paid by Petitioner Smith & Nephew to
`
`submit testimony on behalf of Smith & Nephew in IPR 2013-00629. (Exh. 1002,
`
`dated September 25, 2013, bearing the attorney docket number for IPR 2013-
`
`
`
`6
`
`
`
`Case: IPR2014-00354
`Patent 7,806,896
`
`00629). He is not a witness for Petitioner Wright; Petitioner Wright has no
`
`
`
`apparent authority to submit Jay Mabrey’s paid work-product as evidence in this
`
`proceeding; and there is no indication whatsoever that Jay Mabrey has agreed to be
`
`cross-examined in this proceeding. In fact, Petitioner does not even allege that Jay
`
`Mabrey is a witness for Petitioner. Rather, Petitioner simply states that it relies on
`
`the declaration submitted in IPR 2013-00629. (Petition, p. 2).
`
`Glaringly, Petitioner relies on the Mabrey Declaration to support its
`
`arguments regarding claim 25, notwithstanding the fact that there is no indication
`
`whatsoever that Mabrey considered claim 25 in his analysis. Rather, Mabrey’s
`
`Declaration, which was submitted as testimony for Smith & Nephew in IPR 2013-
`
`00629, dealt strictly with claims 1 and 13.
`
`Jay Mabrey is not a witness for Petitioner Wright, and cannot be compelled
`
`by Wright to subject himself to cross-examination in this proceeding. Accordingly,
`
`Exhibit 1002 is inadmissible. 37 C.F.R. § 42.53 (c)(2) (cross-examination of
`
`uncompelled testimony); Fed. R. Evid. 801; Spivey v. United States, 912 F.2d 80,
`
`85 (4th Cir. 1990) (“Fed. R. Evid. 801 states that a prior statement such as an
`
`affidavit is not hearsay only if ‘the declarant testifies at the trial or hearing and is
`
`subject to cross-examination concerning the statement.’”); In re Roberts, 210 B.R.
`
`325 (Bankr. N.D. Iowa 1997), citing In re Brown, 82 F.3d 801, 805 (8th Cir. 1996)
`
`
`
`7
`
`
`
`Case: IPR2014-00354
`Patent 7,806,896
`
`(“affidavits which are tendered as substantive evidence when the affiant is not
`
`
`
`present for cross-examination are inadmissible hearsay”); Gill v. Arab Bank PLC,
`
`893 F. Supp. 2d 523, 530, 531 (E.D.N.Y. 2012)(excluding report of expert witness
`
`Zakay on the grounds that he would not be subject to effective cross-examination).
`
`Exhibit 1002 is also inadmissible because it is unsigned. Petitioner was
`
`informed of the lack of signature by Patent Owner on February 24, 2014, and has
`
`made no attempt to submit a signed declaration. (Exhibit 20033)
`
`Arthur Erdman is an expert witness paid by Petitioner Zimmer to submit
`
`testimony on behalf of Zimmer in IPR 2014-00311. (Exh. 1027, dated September
`
`25, 2013 bearing the caption “ZIMMER HOLDINGS, INC. ZIMMER, INC.
`
`Petitioners v. BONUTTI SKELETAL INNOVATIONS LLC”). He is not a witness
`
`for Petitioner Wright; Petitioner Wright has no apparent authority to submit
`
`Erdman’s paid work-product as evidence in this proceeding; and there is no
`
`indication whatsoever that Erdman has agreed to be cross-examined in this
`
`proceeding. Accordingly, Exhibit 1027 is inadmissible. 37 C.F.R. 42.53 (c)(2),
`
`Fed. R. Evid. 801; Spivey v. United States; In re Roberts; Gill v. Arab Bank PLC ,
`
`supra.
`
`3 Although Petitioner’s counsel has confirmed by telephone that he has received
`
`this email, Patent Owner has yet to receive a response.
`
`
`
`8
`
`
`
`Case: IPR2014-00354
`Patent 7,806,896
`It is respectfully submitted that Petitioner should not be allowed to use
`
`
`
`
`
`testimony that is not subject to cross-examination to bolster its Petition. The
`
`prejudice to Patent Owner is significant. If this Board institutes a review based in
`
`part on the testimony of a witness that is not subject to cross-examination, the
`
`Patent Owner will be at a significant disadvantage in attempting to rebut that
`
`testimony.
`
`The Declarations of Mabrey and Erdman should be disregarded entirely.
`
`Further, with this evidence disregarded, there is insufficient evidence in the
`
`Petition to support institution of review of any claim.
`
`CONCLUSION
`
`
`
`
`
`For the foregoing reasons, the Board should not institute an inter partes
`
`review in the instant proceeding.
`
`Patent Owner understands that joinder can only be requested by a party
`
`after the Board’s institution decision (Paper 7). Patent Owner reserves the right
`
`to do so.
`
`However, the Board has broad authority under 37 CFR § 42.122 (a) and
`
`35 U.S.C.§ § 315(c, d) to manage proceedings, and should use that authority to
`
`consolidate or join the three IPRs-- or at minimum set the scheduled due dates
`
`of all three IPRs to coincide --in the interests of both efficiency for the Board,
`
`9
`
`
`
`Case: IPR2014-00354
`Patent 7,806,896
`and to mitigate the prejudice and increased cost to Patent Owner.
`
`
`
`
`
`
`
`
`
`
`March 13, 2014
`
`
`
`
`
`Respectfully submitted,
`
`
`
`By:
`
` /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
`
`10
`
`
`
`Case: IPR2014-00354
`Patent 7,806,896
`List of Exhibits for Patent Owner’s Preliminary Response
`
`
`
`
`
`
`Description
`Exhibit No.
`Exhibit 2001 Order, 1:12-cv-01107-GMS, 1:12-cv-01109-GMS, 1:12-cv-
`01110-GMS, 1:12-cv-01111-GMS
`Exhibit 2002 Order , 1:12-cv-01111-GMS
`Exhibit 2003
`Email to Petitioner’s counsel sent February 24, 2014
`
`
`
`
`
`
`
`
`11
`
`
`
`
`
`Case: IPR2014-00354
`Patent 7,806,896
`
`CERTIFICATE OF
`SERVICE
`
`I hereby certify that on this 13th day of March, 2014, a true and correct
`
`copy of the foregoing Patent Owner Preliminary Response with Exhibits was served
`
`by electronic mail and U.S. Post Office Express Mail, upon the following counsel
`
`of record for Petitioners:
`
`Samuel W. Apicelli
`Jarrad M. Gunther
`Duane Morris LLP
`30 South 17th Street
`Philadelphia, PA 19103
`swapicelli@duanemorris.com
`
` /Cary Kappel/
`Cary Kappel
`
`
`
`12
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
