`571-272-7822
`
`Paper 12
`Entered: June 2, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ZIMMER HOLDINGS, INC.
`
`and ZIMMER, INC.,
`
`Petitioner,
`
`V.
`
`BONUTTI SKELETAL INNOVATIONS LLC,
`Patent Owner.
`
`Case IPR2014-00191
`
`Patent 7,837,736 B2
`
`Before WILLIAM V. SAINDON, MICHAEL R. ZECHER, and
`RICHARD E. RICE, Administrative Patent Judges.
`
`RICE, Administrative Patent Judge.
`
`DECISION
`
`Institution of Inter Partes Review
`
`37 C.F.R. § 42.108
`
`Zimmer Holdings, Inc. and Zimmer, Inc.
`Exhibit 1011 - 1
`
`
`
`Case IPR2014-00191
`
`Patent 7,837,736 B2
`
`1.
`
`INTRODUCTION
`
`Zimmer Holdings, Inc. and Zimmer, Inc. (“Petitioner”) filed a corrected
`
`Petition (Paper 8, “Pet.”) requesting an inter partes review of claims 15-28 and 31-
`
`36 ofU.S. Patent No. 7,837,736 B2 (Ex. 1001, “the ’736 Patent”). The owner of
`
`the ’736 Patent, Bonutti Skeletal Innovations LLC (“Patent Owner”), did not file a
`
`preliminary response. We have jurisdiction under 35 U.S.C. § 314.
`
`The standard for instituting an inter partes review is set forth in 35 U.S.C.
`
`§ 3l4(a), which provides as follows:
`
`THRESHOLD -- The Director may not authorize an inter partes
`review to be instituted unless the Director determines that
`the
`
`information presented in the petition filed under section 311 and any
`response filed under section 313 shows that there is a reasonable
`likelihood that the petitioner would prevail with respect to at least 1 of
`the claims challenged in the petition.
`
`Based upon this standard, we determine that the information presented in the
`
`Petition establishes that there is a reasonable likelihood that Petitioner would
`
`prevail with respect to claims 15-22, 26-28, and 31-36, but not claims 23-25 of the
`
`’736 Patent. Accordingly, pursuant to 35 U.S.C. § 314, we authorize an inter
`
`partes review to be instituted only as to claims 15-22, 26-28, and 31-36.
`
`A. Related Proceeding
`
`Petitioner represents that the ’736 Patent is asserted by Patent Owner against
`
`Petitioner in litigation titled Bonutti Skeletal Innovations, LLC v. Zimmmer
`
`Holdings, Inc., No. 1:12-cv-01107-GMS (D. Del). Pet. 1; see Paper 5, 2.
`
`Zimmer Holdings, Inc. and Zimmer, Inc.
`Exhibit 1011 - 2
`
`
`
`Case IPR2014-00191
`
`Patent 7,837,736 B2
`
`B. The ’736 Patent (Ex. I001)
`
`The ’736 Patent, titled “MINIMALLY INVASIVE SURGICAL
`
`SYSTEMS AND METHODS,” issued on November 23, 2010, based on U.S.
`
`Patent Application No. 11/928,898, filed on October 30, 2007. The ’736 Patent
`
`claims priority to U.S. Patent Application No. 10/681,526, filed on October 8,
`
`2003, which is a continuation of U.S. Patent Application No. 10/191,751, filed on
`
`July 8, 2002. The ’736 Patent also claims priority to a number of earlier-filed U.S.
`
`patent applications.
`
`Figure 90 of the ’736 Patent, which is reproduced below, depicts rotating
`
`platform knee implant 1290.
`
`Fig. 90
`
`,.,129o
`
`n
`
`‘#04
`‘.30?
`
`we
`
`~
`
`13138 -f‘-//
`1296 L129?
`13Ofi rl29AJ
`8, I‘
`idoc
`K ;[l\-1298
`
`U
`
`Figure 90 is a schematic illustration of tibial
`component 1292 of rotating platform knee implant 1290.
`
`As depicted in Figure 90, tibial component 1292 includes tray 1294 and
`
`bearing insert 1296. Ex. 1001, 101:14-15. Tray 1294 includes tapered spike 1298
`
`and plate member 1300. Id. at 101:15-16. The specification discloses that plate
`
`Zimmer Holdings, Inc. and Zimmer, Inc.
`Exhibit 1011 - 3
`
`
`
`Case lPR2014-00191
`
`Patent 7,837,736 B2
`
`member 1300 has a concave, spherically-shaped plateau surface (superior surface
`
`1302). Id. at 101:18-20. Superior surface 1302 is provided with post 1306. Id. at
`
`101 :28-29. As described in the specification, post 1306 cooperates with recess
`
`1308 located on bearing insert 1296 to permit rotation of bearing insert 1296 with
`
`respect to tibial tray 1294. Id. at 101:28-31.
`
`Post 1306 is offset medially toward the medial compartment of the knee. Id.
`
`at 101:56-57; fig. 90. “In prior art rotating platform designs,” according to the
`
`specification, “the post is substantially in line with the central keel.” Id. at 101 :58-
`
`59. The ’736 Patent discloses that “[o]ffsetting post 1306 more toward the medial
`
`compartment of the knee recreates the natural pivoting motion o[f] the knee, with
`
`less translation medially, a more stable joint medially, and more rotational arc or
`
`more movement laterally.” Id. at 101:63-67.
`
`C. Illustrative Claims
`
`Claims 15 and 31 are independent. Claims 16-28 depend directly or
`
`indirectly from claim 15, and claims 32-36 depend directly from claim 31. Claims
`
`15 and 23 are reproduced below:
`
`15. A device to replace an articulating surface of
`a first side of a joint in a body, the joint having first and
`second sides, comprising:
`including a bone contacting
`a base component,
`side connectable with bone on the first side of the joint,
`and a base sliding side on an opposite side of said base
`component relative to said bone contacting side;
`a movable component, including a movable sliding
`said movable
`sliding
`side
`being matably
`side,
`positionable in sliding engagement with said base sliding
`side, and an articulating side on an opposite side of said
`
`Zimmer Holdings, Inc. and Zimmer, Inc.
`Exhibit 1011 - 4
`
`
`
`Case 1PR2014-00191
`
`Patent 7,837,736 B2
`
`movable component relative to said movable sliding side,
`shaped to matingly engage an articulating surface of the
`second side of the joint;
`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;
`a recess sized to receive said protrusion, disposed
`in the other of said base sliding side or movable sliding
`side, said protrusion and recess matable to constrain
`movement of said first and second components relative to
`each other,
`thereby promoting movement of the joint
`within desired anatomical limits.
`
`23.
`The device of claim 15, wherein said
`protrusion is a dovetail pin and said recess is a dovetail
`tail, together forming a dovetail joint.
`
`D. The Asserted Prior Art
`
`Petitioner contends that the “priority date” (earliest effective filing date) for
`
`the challenged claims of the ’736 Patent is July 8, 2002. Pet. 14. Petitioner relies
`
`upon the following prior art references (id. at 4):
`
`Walker
`
`US 5,755,801
`
`Insall ’283
`
`US 6,319,283 B1
`
`Insall ’658
`
`US 6,068,658
`
`May 26, 1998
`(filed July 18,
`1994)
`Nov. 20, 2001
`(filed July 2,
`1999)
`May 30, 2000
`(filed Mar. 9,
`1998)
`
`Ex. 1002
`
`Ex. 1003
`
`Ex. 1004
`
`Zimmer Holdings, Inc. and Zimmer, Inc.
`Exhibit 1011 - 5
`
`
`
`Case 113112014-00191
`
`Patent 7,837,736 B2
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`Petitioner asserts that Walker is prior art to the challenged claims under
`
`35 U.S.C. § 102(b), and Insall ’283 and Insall ’658 are prior art to the challenged
`
`claims under 35 U.S.C. § 102(a) and (e). Id. at 15, 18, and 20-21.
`
`E. The Asserted Grounds
`
`Petitioner challenges claims 15-28 and 31-36 of the ’736 Patent on the
`
`following grounds (id. at 4-5):
`
`T
`
`Insall ’283 Insall ’658
`
`Walker, Insall ’658, and
`
`§ 103
`
`15_28 and 31_36
`
`Insall »283
`
`15, 16, 18-22, 25-28, 31,‘ §1°2<a>:<e>
`
`§ 102(3), (6)1
`
`15a 16a 18-28: 31a and
`34-36
`
`1 Petitioner states on page 5 of the Petition that the statutory basis for the fourth-
`listed ground is 35 U.S.C. § 102(b). This statement is inconsistent with the
`statement on pages 20-21 of the Petition that Insall ’658 is prior art to the
`challenged claims under 35 U.S.C. § 102(a) and (e). Accordingly, we treat the
`fourth-listed ground as asserted under 35 U.S.C. § 102(a) and (e), not 35 U.S.C.
`§ 102(b).
`
`Zimmer Holdings, Inc. and Zimmer, Inc.
`Exhibit 1011 - 6
`
`
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`Case IPR2014-00191
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`Patent 7,837,736 B2
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`II. ANALYSIS
`
`A. Claim Construction
`
`Consistent with the statute and legislative history of the Leahy-Smith
`
`America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”), we
`
`interpret claims using the “broadest reasonable construction in light of the
`
`specification of the patent in which [they] appear[].” 37 C.F.R. § 42.100(b); see
`
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012).
`
`There is a “heavy presumption” that a claim term carries its ordinary and
`
`customary meaning. CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366
`
`(Fed. Cir. 2002). However, a “claim term will not receive its ordinary meaning if
`
`the patentee acted as his own lexicographer and clearly set forth a definition of the
`
`disputed claim term in either the specification or prosecution history.” Id.
`
`“Although an inventor is indeed free to define the specific terms used to describe
`
`his or her invention, this must be done with reasonable clarity, deliberateness, and
`
`precision.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). Also, We must be
`
`careful not to read a particular embodiment appearing in the written description
`
`into the claim if the claim language is broader than the embodiment. See In re Van
`
`Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993) (“[L]imitations are not to be read into
`
`the claims from the specification”). The broadest reasonable construction of a
`
`means-plus-function limitation “is that statutorily mandated in [paragraph f2 of
`
`35 U.S.C. § 112].” In re Donaldson C0,, 16 F.3d 1189, 1194-95 (Fed. Cir. 1994).
`
`2 We note that the provisions of former 35 U.S.C. § 112 1] 6 have been re-codified,
`without change, as 35 U.S.C. § 112 1] f
`
`Zimmer Holdings, Inc. and Zimmer, Inc.
`Exhibit 1011 - 7
`
`
`
`Case IPR2014-00191
`
`Patent 7,837,736 B2
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`Here, challenged claim 25 recites “means associated with said protrusion to
`
`prevent a separation of said base sliding side and said movable sliding side.”
`
`Ex. 1001, 114:61-63 (emphasis added). The use of “means” creates the
`
`presumption that claim 25 recites a means-plus-function limitation. See
`
`Personalized Media C0mmc’ns, LLC v. Int’! Trade Comm ’n, 161 F.3d 696, 703
`
`(Fed. Cir. 1998); Rodime PLC v. Seagate Tech., Inc., 174 F.3d 1294, 1302 (Fed.
`
`Cir. 1999) (“Because the element uses the word “means,” this court presumes that
`
`§ 112 11 6 applies. This court next looks to whether the element specifies a function
`
`for performing the claimed means.”). Claim 25 clearly recites a function for
`
`performing the claimed “means,” i.e., “to prevent a separation of said base sliding
`)7
`CL
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`side and said movable sliding side.
`
`[E]ven if the claim element specifies a
`
`function, [however,] if it also recites sufficient structure or material for performing
`
`that function, § 112 1] 6 does not apply.” Rodime, 174 F.3d at 1302 (citation
`
`omitted). As claim 25 does not recite sufficient structure or material for
`
`performing the specified function, the “means” clause is a “means-plus-fiinction”
`
`limitation.
`
`Because claim 25 contains a means-plus-function limitation, the Petition is
`
`required to state how the means-plus-function limitation in claim 25 should be
`
`construed, and should have identified “the specific portions of the specification
`
`that describe the structure, material, or acts corresponding to each claimed
`
`function.” See 37 C.F.R. § 42.104(b)(3). The Petition does not provide this
`
`required claim construction analysis for claim 25. We will not go through the
`
`specification of the ’736 Patent and determine the corresponding structure and
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`equivalents thereto for the means-plus-function limitation recited in claim 25—this
`
`Zimmer Holdings, Inc. and Zimmer, Inc.
`Exhibit 1011 - 8
`
`
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`Case 1PR2014-00191
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`Patent 7,837,736 B2
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`is something that Petitioner should have done in its Petition. In view of
`
`Petitioner’s failure to comply with 37 C.F.R. § 42.104(b)(3), we do not construe
`
`the means-plus-function limitation in claim 25.
`
`B. Alleged Grounds of Unpatentability
`
`We turn now to Petitioner’s asserted grounds of unpatentability to determine
`
`whether Petitioner has met the threshold standard of 35 U.S.C. § 314(a). Below,
`
`we separately analyze: (1) claims 15-22, 26-28, and 31-36; (2) claim 25; and
`
`(3) claims 23 and 24.
`
`I . Claims I 5-22, 26-28, and 31 -36 as Anticipated by Walker
`
`Based on the current record, we are persuaded that Walker anticipates claims
`
`15-22, 26-28, and 31-36 ofthe ’736 Patent. See Pet. 28-36.
`
`a. Walker (Ex. I 002)
`
`Walker relates to prostheses for knee replacement, and discloses an
`
`embodiment comprising: a femoral component having at least one condylar
`
`bearing surface; a tibial component having tibial platform 41; meniscal component
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`44 located between the condylar bearing surface and the tibial platform; and stud
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`42 upstanding from the platform and received in slot 43 in the meniscal
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`component. Ex. 1002, 1:56-65, 4:7-14. “Rotation of the meniscal component 44
`
`about an axis X at the edge of the tibial platform is controlled by a semi-circular
`
`abutment 50 which is upstanding at the medial side of the platform.” Id. at 4:22-
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`25, figs. 2, 2a, & 2b. “A recess or notch 51 is formed in the corresponding portion
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`Zimmer Holdings, Inc. and Zimmer, Inc.
`Exhibit 1011 - 9
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`
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`Case lPR2014-00191
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`Patent 7,837,736 B2
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`of the meniscal component and is rounded as shown to allow approximately 2 mms
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`movement in an anterior and posterior direction.” Id. at 4:25-28, figs. 2, 2a, & 2b.
`
`Petitioner’s declarant, Arthur G. Erdman, Ph.D., provides an annotated
`
`version of Figure 2 of Walker, reproduced below.
`
`Tibial Platform 41
`
`Upper Surface
`Of Tibial Platform
`
`Meniscal Component
`Movement Path
`
`Meniscal
`Component 44
`
`
`
`51 Recess
`
`50 Abutment
`
`Fig.2
`(A”"'°tatedl
`
`Lateral] Medial
`|
`7_Side | Side_""
`'
`Media -Late.-ra
`Centerline
`Anterior
`
`Petitioner’s annotated version of Figure 2 of Walker
`
`Ex. 1005 (Erdman declaration) 1] 45; see Pet 17.
`
`Dr. Erdman testifies that the embodiment depicted in Figure 2 of Walker
`
`“has a meniscal component 44 that rotates about an abutment 50 (i.e., a projection
`
`or post) on the medial side of the tibial platform 41.” Ex. 1005 1] 45. As shown in
`
`Figure 2, “[t]he meniscal component 44 is fitted to the tibial platform 41 by
`
`engaging the abutment 50 in a recess or notch 51 in the medial side of the meniscal
`
`component.” Ex. 1005 1] 45.
`
`b. Analysis
`
`Claim 15 is directed to a joint replacement device including a base
`
`component having a protrusion (or a recess), and a movable component having a
`
`recess (or a protrusion). Ex. 1001, 114:5-27. Claim 15 recites “said protrusion
`
`10
`
`Zimmer Holdings, Inc. and Zimmer, Inc.
`Exhibit 1011 - 10
`
`
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`Case 1PR2014-00191
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`Patent 7,837,736 B2
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`substantially offset with respect to a midline of the first side of a joint,” and “said
`
`protrusion and recess matable to constrain movement of said first and second
`
`components relative to each other, thereby promoting movement of the joint within
`
`desired anatomical limits.” Id. at 114:20-21, 24-27.
`
`Claim 16 specifies that the protrusion and recess are substantially offset
`
`from a center of the device. Id. at 114:28-30. Claims 17 and 18 both specify that
`
`the joint is a knee, and claim 17 further specifies that the offset is medial. Id. at
`
`114:31-38. Claim 19 requires a second base component connectable to the second
`
`side of the joint. Id. at l14:39-42. Claim 20, which depends from claim 19,
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`additionally specifies the components are connectable, respectively, to the tibia and
`
`the femur. Id. at 114:43-47. Claim 21 specifies that the rotation is about an axis of
`
`the protrusion. Id. at 114:48-51. Claim 22 recites “said protrusion is a pin, and
`
`said recess is a hole sized to receive said pin. Id. at 114:52-53. Claim 26 recites
`
`that “not all articulating compartments of the joint are replaced by said device.”
`
`Id. at 114:64-65. Claim 27 specifies a location in the body where the joint is
`
`located, e.g., a finger. Id. at 114:66-67. Claim 28 recites “said protrusion is offset
`
`with respect to an axis passing through the anterior-posterior or the medial-lateral
`
`center of said base component or movable component.”
`
`Claim 31 is directed to a knee arthroplasty device including a tibial tray
`
`having a post (or a cavity), and a tibial tray insert having a cavity (or a post). Id. at
`
`115:35-55. Claim 31 recites “said post or cavity offset from at least one of a
`
`medial-lateral centerline and an anterior-posterior centerline of said tibial tray,”
`
`and “said tibial tray insert rotationally moves with respect to said tibial tray, about
`
`said post .
`
`.
`
`. such that the rotation of the tibial tray insert is asymmetric with
`
`11
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`Zimmer Holdings, Inc. and Zimmer, Inc.
`Exhibit 1011 - 11
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`
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`Case lPR2014-00191
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`Patent 7,837,736 B2
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`respect to at least one of the medial-lateral centerline and the anterior-posterior
`
`centerline of said tibial tray.” Id. at 115:38-40, 50-55.
`
`Claims 32 and 33 specify that the offset is medial with respect to a medial-
`
`lateral centerline of the tibial tray and the tibial tray insert, respectively. Id. at
`
`115:56-116:4. Claims 34 and 35 both recite “the tibial tray has a keel with a
`
`central axis”; claim 34 additionally recites “said post or cavity of said tibial tray is
`
`offset from the central axis of said keel, and claim 35 additionally recites “said
`
`mating post or mating cavity of said tibial tray insert is offset from the central axis
`
`of said keel.” Id. at 116:5-12. Claim 36 recites “a proximal surface of said tibial
`
`tray insert includes a mound interposing a medial condyle receiver and a lateral
`
`condyle receiver.” Id. at 13-16.
`
`Petitioner asserts that Walker discloses a mobile bearing prosthesis that
`
`includes every limitation of claims 15-22, 26-28 and 31-36. Pet. 28 (citing Ex.
`
`1005 111] 45-69); see also id. at 28-35 (claim chart). Having reviewed Petitioner’s
`
`assertions and the cited portions of the record, we are persuaded that Petitioner has
`
`demonstrated a reasonable likelihood of prevailing on its contention that Walker
`
`anticipates claims 15-22, 26-28 and 31-36 of the ’736 Patent.
`
`2. Claim 25
`
`Claim 25 recites “[t]he device of claim 15, further including means
`
`associated with said protrusion to prevent a separation of said base sliding side and
`
`said movable sliding side.” Ex. 1001, 114:61-63. Petitioner alleges claim 25 is
`
`anticipated by each of Walker, Insall ’283, and Insall ’658, and as obvious over the
`
`combination of Walker and either or both of Insall ’283 and Insall ’658, See Pet.
`
`12
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`Zimmer Holdings, Inc. and Zimmer, Inc.
`Exhibit 1011 - 12
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`
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`Case 1PR2014-00191
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`Patent 7,837,736 B2
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`4-5. As discussed above, however, Petitioner has failed to provide the claim
`
`construction analysis required by 37 C.F.R. § 42.l04(b)(3) for the means-plus-
`
`function limitation recited in claim 25. For this reason alone, we are not persuaded
`
`Petitioner has demonstrated a reasonable likelihood of prevailing on its contention
`
`that claim 25 of the ’736 Patent is unpatentable as alleged.
`
`3. Claims 23 and 24
`
`Claim 23 recites “[t]he device of claim 15, wherein said protrusion is a
`
`dovetail pin and said recess is a dovetail tail, together forming a dovetail joint.”
`
`Claim 24 depends from claim 23, and recites “said dovetail joint is elongated,
`
`extends in a substantially anterior-posterior orientation, and enables anterior-
`
`posterior displacement of the base sliding side relative to the movable sliding
`
`side.”
`
`Petitioner contends that claims 23 and 24 would have been obvious over
`
`(i) Walker and Insall ’658 or (ii) Walker, Insall ’658, and Insall ’283. Pet. 42-44.
`
`Petitioner directs our attention to “the complimentary-shaped and interlocking
`
`guide 23 and track (including recess 30 and slot 32) of the Insall ’658 patent as
`
`elements corresponding to the ‘dovetail’ structures in claims 23 and 24 when those
`
`terms in claims 23 and 24 are given their broadest reasonable interpretations.” Id.
`
`at 27-28; see also id. at 42-44.
`
`Insall ’658 discloses a mobile bearing prosthesis having meniscal
`
`component 7 and tibial platform 20. Ex. 1004, 3:28-39; see Ex. 1005 1] 91. Dr.
`
`Erdman provides an annotated version of Figure 6 of Insall ’658, reproduced
`
`below.
`
`13
`
`Zimmer Holdings, Inc. and Zimmer, Inc.
`Exhibit 1011 - 13
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`
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`Case IPR2014-00191
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`Patent 7,837,736 B2
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`3
`Central Axis
`ofstem '’’’‘‘'E can
`
`Upstanding Guide23
`
`-'
`
`Anterior—Posterior
`Centerline
`
`22
`
`.
`E
`
`21 Ra” Tibial Platform
`2!]
`~~~Nflterior Side
`as H] :"
`0
`
`~
`
`
`
`Post
`
`_ 6
`fianncgelted)
`
`Petitioner’s annotated Version of Figure 6 of Insall ’658
`
`Ex. 1005, 1] 91; see Pet. 22.
`
`As shown in Figure 6, guide 23 comprising cylindrical post 24 and cap 25
`
`stands in an upright position on the tibial platform. See Ex. 1005 1] 92. The cap is
`
`fixed to the top of the post. Ex. 1004, 3:50, fig. 6. Dr. Erdman also provides an
`
`annotated Version of Figure 5 of Insall ’658, reproduced below.
`
`.
`I
`rAfltef|Of-POSt€f|Of
`‘“\\
`Centeriine
`
`.1
`
`\
`
`_,
`
`/"
`
`1-.,_
`
`Slot. /
`i.
`
`Bottom Side of/
`Meniscal Component .
`
` Cut~Away
`
`" Portion
`
`3ForwardEnd
`of Recess
`
`
`
`“xi
`35’?
`
`H
`
`,
`
`'
`
`Reanivard End
`of Recess
`
`
`
`
`Fig.5
`[annotated]
`
`Petitioner’s annotated version of Figure 5 of Insall ’658
`
`Ex. 1005, 1] 92; see Pet. 22.
`
`As shown in Figure 5, the meniscal component includes recess 30 and
`
`slot 32 (together referred to as “the track”). See Ex. 1005 1] 93 (citing Ex. 1004,
`
`14
`
`Zimmer Holdings, Inc. and Zimmer, Inc.
`Exhibit 1011 - 14
`
`
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`Case 1PR2014-00191
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`Patent 7,837,736 B2
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`1:42-67); Pet 23. Dr. Erdman testifies “[t]he upstanding guide 23, recess 30, and
`
`slot 32 cooperate to retain the meniscal component 7 on the tibial platform 20,
`
`while allowing the meniscal component to both rotate about the guide and move in
`
`the anterior—posterior direction.” Ex. 1005 1] 91 (citing Ex. 1004, Abstr., 2:42-46)
`
`(emphasis added). We discuss this functionality further below.
`
`Petitioner relies on Dr. Erdman’s declaration in asserting it would have been
`
`obvious “to substitute the guide and track of the Insall ’658 patent for the abutment
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`and recess, respectively, in the Walker patent.” Pet. 43 (citing Ex. 1005 111] 47, 49).
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`In this regard, Dr. Erdman testifies “it would have been a matter of routine
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`engineering and design choice to replace the recess 51 [of Walker] with a hole or
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`slot that extends partially into the meniscal component 44 .
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`.
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`. to permit relative
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`rotational movement of the meniscal component 44 and tibial tray 41.” Ex. 1005
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`1] 47. Dr. Erdman further testifies “evidence that it would have been a matter of
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`routine skill and design choice to substitute a round post and mating hole,
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`respectively, for the abutment 50 and recess 51 to define the rotational axis of the
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`meniscal component is provided by the Insall ’658.’’ la’. 1] 49. “The Insall ’658
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`patent also shows a post and hole (i.e., upstanding guide 23, and recess 30 and
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`slot 32) for this purpose.” Id.
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`As for the “dovetail joint” limitation, Petitioner additionally asserts, “[t]he
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`guide 23 and track of the implant shown in the Insall ’658 patent [are] structurally
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`at least equivalent to a dovetail joint, and [are] functionally substantially the same
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`as a dovetail joint.” Pet. 43. Claims 23 and 24, however, explicitly require a
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`“dovetail joint,” not a structure that is “structurally at least equivalent to a dovetail
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`joint” or “functionally substantially the same as a dovetail joint.” See id. As
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`15
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`Zimmer Holdings, Inc. and Zimmer, Inc.
`Exhibit 1011 - 15
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`
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`Case 1PR2014-00191
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`Patent 7,837,736 B2
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`described in Insall ’658, the guide comprises a cylindrical post with a cap and the
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`track comprises a recess and a slot. Ex. 1004, 3:44-4:12, figs. 5 & 6. Petitioner
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`has not persuaded us that a person of ordinary skill in the art at the time of the
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`invention would have considered the guide and track of Insall ’658 to disclose or
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`suggest the “dovetail joint” recited in claims 23 and 24.3 Accordingly, we
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`determine that Petitioner has not demonstrated a reasonable likelihood of
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`prevailing on its contention that the subject matter of claims 23 and 24 would have
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`been obvious over (i) Walker and Insall ’658 or (ii) Walker, Insall ’658, and Insall
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`’283.
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`4. Remaining Grounds of Unpatentability
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`Petitioner contends that claims 15, 16, 18-28, 31, and 34-36 are unpatentable
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`under 35 U.S.C. § 102(a) and (e) as anticipated by Insall ’658; claims 15, 16,
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`18-22, 26-28, 31, and 34-36 are unpatentable under 35 U.S.C. § 102(a) and (e) as
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`anticipated by Insall ’283; and claims 15-22, 26-28, and 31-36 are unpatentable
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`under 35 U.S.C. § 103 as obvious over Walker and either or both of Insall ’283 and
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`Insall ’658. Those grounds of unpatentability are redundant to the grounds of
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`unpatentability on which we initiate an interpartes review. Accordingly, we do
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`not authorize an interpartes review on any of those grounds of unpatentability.
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`See 37 C.F.R. § 42.108(a).
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`3 Dr. Erdman’s declaration does not discuss claims 23 and 24 or the “dovetail
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`joint” limitation recited in those claims.
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`16
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`Zimmer Holdings, Inc. and Zimmer, Inc.
`Exhibit 1011 - 16
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`
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`Case IPR2014-00191
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`Patent 7,837,736 B2
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`111. CONCLUSION
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`For the forgoing reasons, we determine that there is a reasonable likelihood
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`that Petitioner would prevail in its challenge of claims 15-22, 26-28, and 31-36 of
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`the ’736 Patent as anticipated under 35 U.S.C. § 102(b) by Walker. We, however,
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`have not made a final determination on the patentability of the challenged claims.
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`Accordingly, it is
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`IV. ORDER
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`ORDERED that pursuant to 35 U.S.C. § 314, an interpartes review is
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`hereby instituted as to claims 15-22, 26-28, and 31-36 of the ’736 Patent based on
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`anticipation under 35 U.S.C. § 102(b) by Walker;
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`FURTHER ORDERED that no other grounds of unpatentability are
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`authorized for the interpartes review as to claims 15-28 and 31-36 of the ’736
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`Patent; and
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`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(d) and 37 C.F.R.
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`§ 42.4, notice is hereby given of the institution of a trial on the ground of
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`unpatentability authorized above; the trial commences on the entry date of this
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`decision.
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`17
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`Zimmer Holdings, Inc. and Zimmer, Inc.
`Exhibit 1011 - 17
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`
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`Case IPR2014-00191
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`Patent 7,837,736 B2
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`For PETITIONER:
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`Walter C. Linder
`
`Daniel Lechleiter
`
`FAEGRE BAKER DANIELS LLP
`
`Walter.Linder@Fae greBD.c0m
`Daniel.Lechleiter@FaegreBD.c0m
`
`For PATENT OWNER :
`
`Cary Kappel
`William Gehris
`
`DAVIDSON, DAVIDSON & KAPPEL, LLC
`ckappel@ddkpatent.c0m
`wgehris@ddkpatent.c0m
`
`Zimmer Holdings, Inc. and Zimmer, Inc.
`Exhibit 1011 - 18