`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`_________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_________________
`
`
`ZIMMER HOLDINGS, INC.
`ZIMMER, INC.
`Petitioners
`
`
`v.
`
`
`BONUTTI SKELETAL INNOVATIONS LLC
`Patent Owner
`
`
`Patent No. 7,837,736
`Filing Date: October 30, 2007
`Issue Date: November 23, 2010
`Title: MINIMALLY INVASIVE SURGICAL SYSTEMS AND METHODS
`
`__________________
`
`Inter Partes Review No. Unassigned
`__________________
`
`PETITION FOR INTER PARTES REVIEW
`UNDER 35 U.S.C. §§ 311-319 AND 37 C.F.R. § 42.100 ET SEQ.
`
`
`
`

`

`Inter Partes Review No. Unassigned
`Petition For Inter Partes Review of U.S. Patent 7,837,736; filed: June 30, 2014
`
`
`TABLE OF CONTENTS
`
`Page
`
`I.
`
`NOTICES AND FORMALITIES ................................................................... 2
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`F.
`
`G.
`
`Real Parties In Interest .......................................................................... 2
`
`Related Matters ...................................................................................... 2
`
`Lead and Back-Up Counsel ................................................................... 3
`
`Service Information ............................................................................... 4
`
`Grounds for Standing ............................................................................ 4
`
`Power of Attorney ................................................................................. 4
`
`Fees ........................................................................................................ 5
`
`II.
`
`STATEMENT OF THE PRECISE RELIEF REQUESTED .......................... 5
`
`III. OVERVIEW OF KNEE ANATOMY AND KNEE REPLACEMENT ......... 6
`
`A. Knee Anatomy ....................................................................................... 6
`
`B. Knee Replacement Surgery ................................................................... 8
`
`IV. OVERVIEW OF THE BONUTTI PATENT ................................................ 10
`
`A.
`
`B.
`
`C.
`
`The Claimed Invention ........................................................................ 10
`
`The Prosecution History ...................................................................... 16
`
`Priority Date of the Bonutti Patent ...................................................... 17
`
`V. OVERVIEW OF THE PRIOR ART RELIED UPON FOR THE
`CHALLENGE ............................................................................................... 18
`
`A.
`
`B.
`
`The Walker Patent ............................................................................... 18
`
`The Buechel Patent .............................................................................. 21
`
`VI. CLAIM CONSTRUCTION AND LEGAL STANDARDS ......................... 23
`
`i
`
`

`

`Inter Partes Review No. Unassigned
`Petition For Inter Partes Review of U.S. Patent 7,837,736; filed: June 30, 2014
`
`
`A.
`
`Construction of Certain Claim Terms ................................................ 23
`
`B.
`
`Threshold Requirement for Inter Partes Review ................................ 25
`
`VII. STATEMENT OF REASONS FOR RELIEF REQUESTED ...................... 26
`
`A. Ground 1: Claim 25 is Unpatentable as Being Anticipated by
`the Walker Patent ................................................................................ 26
`
`
`
`B. Ground 2: Claims 23-25 are Unpatentable as Being Obvious
`Over the Walker Patent in View of the Buechel U.S. Patent .............. 30
`
`VIII. CONCLUSION .............................................................................................. 34
`
`
`
`
`
`
`
`ii
`
`

`

`Inter Partes Review No. Unassigned
`Petition For Inter Partes Review of U.S. Patent 7,837,736; filed: June 30, 2014
`
`
`TABLE OF AUTHORITIES
`
`
`
`Statutes
`
`35 U.S.C. § 102…………………………………………………………passim
`
`35 U.S.C. § 103…………………………………………………………passim
`
`35 U.S.C. §§ 311-319………...……………………………………………….1
`
`35 U.S.C. § 315(b) and (c) ………...………………………………………….4
`
`
`Rules
`
`37 C.F.R. § 42.100 et seq…...…………………………………………………1
`
`37 C.F.R. § 42.100(b) …...…………………………………………..………23
`
`37 C.F.R. § 42.122(b) …...…………………………………………………….4
`
`
`Cases
`
`KSR International Co. v. Teleflex Inc., 550 U.S. 398, 127 S.Ct. 1727
`(2007) …...…………………………………………………………………...32
`
`iii
`
`

`

`Inter Partes Review No. Unassigned
`Petition For Inter Partes Review of U.S. Patent 7,837,736; filed: June 30, 2014
`
`
`LIST OF EXHIBITS
`
`
`Exhibit 1001:
`
`Bonutti U.S. Patent 7,837,736 (“Bonutti patent”)
`
`Exhibit 1002:
`
`Walker et al. U.S. Patent 5,755,801 (“Walker patent”)
`
`Exhibit 1003:
`
`Reserved
`
`Exhibit 1004:
`
`Reserved
`
`Exhibit 1005:
`
`Exhibit 1006:
`
`Copy of Declaration of Arthur G. Erdman, Ph.D. from
`instituted IPR2014-00191 (“Erdman Decl.”)
`
`Bonutti patent file history section - Response To Office Action,
`filed June 18, 2010
`
`Exhibit 1007:
`
`Reserved
`
`Exhibit 1008:
`
`Reserved
`
`Exhibit 1009:
`
`Reserved
`
`Exhibit 1010:
`
`Reserved
`
`Exhibit 1011:
`
`Decision instituting inter partes review in IPR2014-00191
`(“Decision”)
`
`Exhibit 1012:
`
`Buechel et al. U.S. Patent 4,340,978 (“Buechel patent”)
`
`Exhibit 1013:
`
`Second Declaration of Arthur G. Erdman, Ph.D. (“2nd Erdman
`Decl.”)
`
`Exhibit 1014:
`
`Hood et al. U.S. Patent 5,370,699 (“Hood patent”)
`
`Exhibit 1015:
`
`Bahler U.S. Patent 5,282,868 (“Bahler patent”)
`
`Exhibit 1016:
`
`Opening Brief in Support of Defendants’ Joint Motion to Stay
`Litigation Pending Inter Partes Review filed in Bonutti Skeletal
`Innovations LLC v. Zimmer Holdings, Inc. & Zimmer, Inc., No.
`1:12-cv-01107-GMS, Dkt. No. 36 (Jan. 22, 2014 D. Del.)
`
`iv
`
`

`

`Inter Partes Review No. Unassigned
`Petition For Inter Partes Review of U.S. Patent 7,837,736; filed: June 30, 2014
`
`Exhibit 1017:
`
`Memorandum and Order Granting Defendants’ Joint Motion to
`Stay Litigation Pending Inter Partes Review filed in Bonutti
`Skeletal Innovations LLC v. Zimmer Holdings, Inc. & Zimmer,
`Inc., No. 1:12-cv-01107-GMS, Dkt. No. 45 (Apr. 7, 2014 D.
`
`v
`
`

`

`Inter Partes Review No. Unassigned
`Petition For Inter Partes Review of U.S. Patent 7,837,736; filed: June 30, 2014
`
`
`
`
`Pursuant to 35 U.S.C. §§ 311-319 and 37 C.F.R. § 42.100 et seq., Zimmer
`
`Holdings, Inc. and Zimmer, Inc. (“Petitioners”) request inter partes review of
`
`dependent claims 23-25 of the Bonutti U.S. Patent 7,837,736 (“Bonutti patent”)
`
`(Ex. 1001).
`
`This is the second petition filed by Petitioner in connection with the Bonutti
`
`patent. The first such petition (“First Petition”) is the subject of Inter Partes
`
`Review No. IPR2014-00191, in which the Board issued a Decision instituting inter
`
`partes review on June 2, 2014 (the “Instituted IPR”). The Decision in the
`
`Instituted IPR is attached as Exhibit 1011. In that Decision, the Board instituted
`
`trial on some, but not all, of the claims that were challenged in the First Petition.
`
`In particular, the Board instituted trial with respect to claims 15-22, 26-28, and 31-
`
`36, but did not institute a trial on claims 23-25 that depend from claim 15. For
`
`dependent claims 23 and 24, the Board determined that these claims “explicitly
`
`require a ‘dovetail joint,’” and that the prior art relied upon in the First Petition did
`
`not disclose or suggest such a structure. Trial was not instituted on dependent
`
`claim 25 because the First Petition did not provide a claim construction analysis for
`
`the means-plus-function limitation in this claim. Ex. 1011, pp. 8, 12, 13.
`
`1
`
`

`

`Inter Partes Review No. Unassigned
`Petition For Inter Partes Review of U.S. Patent 7,837,736; filed: June 30, 2014
`
`
`This Petition requests inter partes review of only claims 23-25, includes the
`
`allegedly missing features in the prior art for claims 23 and 24 and claim
`
`construction analysis for claim 25, and is based largely on prior art presented in the
`
`First Petition. A motion for joinder accompanies this Petition. Petitioners request
`
`that the Board grant this petition and institute trial.
`
`I.
`
`
`
`NOTICES AND FORMALITIES
`A. Real Parties in Interest
`Zimmer Holdings, Inc. and Zimmer, Inc. are the real parties-in-interest for
`
`this petition (“Petition”).
`
`B. Related Matters
`As noted above, this is the second petition for inter partes review filed by
`
`
`
`Petitioners in connection with the Bonutti patent. The first such petition is the
`
`subject of Inter Partes Review No. IPR2014-00191, in which the Board issued a
`
`Decision instituting inter partes review on June 2, 2014.
`
`The Bonutti patent is the subject of a patent infringement lawsuit brought by
`
`Bonutti Skeletal Innovations LLC (“Patent Owner”) against Petitioners in the
`
`United States District Court for the District of Delaware. The original complaint
`
`was served on January 4, 2013, and the Bonutti patent was added to the lawsuit in
`
`an amended complaint served on January 15, 2013. The Case No. of the lawsuit is
`
`2
`
`

`

`Inter Partes Review No. Unassigned
`Petition For Inter Partes Review of U.S. Patent 7,837,736; filed: June 30, 2014
`
`1:12-cv-01107-GMS. That lawsuit was stayed by a decision dated April 7, 2014,
`
`and remains stayed.
`
`Petitioners are also the petitioners in Inter Partes Review Nos. IPR2014-
`
`00321, directed to U.S. patent 7,806,896, and IPR2014-00311, directed to U.S.
`
`patent 7,959,635, both of which are also the subject of the above-identified lawsuit.
`
`The Board issued a Decision instituting inter partes review, in part, in IPR2014-
`
`00321 on June 2, 2014. The Board issued a Decision denying institution of inter
`
`partes review in IPR2014-00311 on June 4, 2014. Petitioners are filing a second
`
`petition for inter partes review of U.S. patent 7,806,896 on the same date as this
`
`Petition.
`
`
`
`Petitioners are also aware of Inter Partes Review Nos. IPR2013-00605,
`
`IPR2013-00620 and IPR2013-00621 brought by other petitioners, and that are
`
`directed to other patents that are the subject of the above-identified lawsuit.
`
`
`
`C.
`
`Lead and Back-Up Counsel
`
`Lead Counsel
`Walter C. Linder
`Faegre Baker Daniels LLP
`2200 Wells Fargo Center
`90 S. Seventh St.
`Minneapolis, MN 55402
`Telephone: 612-766-8801
`Fax: 612-766-1600
`Walter.Linder@FaegreBD.com
`Reg. No. 31,707
`
`Back-Up Counsel
`Daniel Lechleiter
`Faegre Baker Daniels LLP
`300 N. Meridian St.
`Suite 2700
`Indianapolis, IN 46204-1750
`Telephone: 317-237-1070
`Fax: 317-237-1000
`Daniel.Lechleiter@FaegreBD.com
`Reg. No. 58,254
`
`
`
`3
`
`

`

`Inter Partes Review No. Unassigned
`Petition For Inter Partes Review of U.S. Patent 7,837,736; filed: June 30, 2014
`
`
`D.
`
`Service Information
`
`
`
`Please address all correspondence to the lead counsel at the address shown
`
`above. Petitioners consent to electronic service to the email addresses above.
`
`E. Grounds for Standing
`
`
`
`Petitioners hereby certify that the patent for which review is sought is
`
`available for inter partes review and that Petitioners are not barred or estopped
`
`from requesting an inter partes review challenging the Bonutti patent claims on the
`
`grounds identified in this Petition. As noted above in section I.B., the amended
`
`complaint in the related litigation, which added the Bonutti patent to the litigation,
`
`was served on January 15, 2013. However, this petition is being timely filed with
`
`a motion requesting joinder with Inter Partes Review No. IPR2014-00191, and is
`
`proper pursuant to 35 U.S.C. § 315(b) and (c) and 37 C.F.R. § 42.122(b). Samsung
`
`Elecs. Co. Ltd. v. Va. Innovation Scis., Inc., IPR2014-00557, Paper 10, at 14-16
`
`(P.T.A.B. June 13, 2014); Sony Corp. v. Yissum Res. & Dev. Co. of the Hebrew
`
`Univ. of Jerusalem, IPR2013-00326, Paper 15, at 3-4 (P.T.A.B. Sept. 24, 2013);
`
`Dell Inc. v. Network-1 Sec. Solutions, Inc., IPR2013-00385, Paper 17, at 4-6
`
`(P.T.A.B. July 29, 2013); Microsoft Corp. v. Proxyconn, Inc., IPR2013-00109,
`
`Paper 15, at 3-4 (P.T.A.B. Feb. 25, 2013).
`
`
`
`
`
`F.
`
`Power of Attorney
`
`A power of attorney designating counsel is being filed with this Petition.
`
`4
`
`

`

`Inter Partes Review No. Unassigned
`Petition For Inter Partes Review of U.S. Patent 7,837,736; filed: June 30, 2014
`
`
`G.
`
`Fees
`
`The $9,000 request fee and the $14,000 post-institution fee (total of
`
`$23,000) are being paid with the electronic filing of this Petition. The
`
`Commissioner is authorized to charge any additional fees to our Deposit Account
`
`No. 06-0029, and to notify us of the same.
`
`II.
`
`STATEMENT OF THE PRECISE RELIEF REQUESTED
`
`
`
`Petitioners respectfully request that dependent claims 23-25 of the Bonutti
`
`patent be canceled based on the following grounds. A full statement of the reasons
`
`for this request is presented in later sections of this Petition. The grounds are
`
`supported by the Declaration of Arthur G. Erdman, Ph.D. (“Erdman Decl.,” Ex.
`
`1005; as filed with the First Petition), and a Second Declaration of Arthur G.
`
`Erdman, Ph.D. (“2nd Erdman Decl.,” Ex. 1013)
`
`
`
`•
`
`Ground 1: Claim 25 is unpatentable under 35 U.S.C. § 102(b) as
`
`being anticipated by the Walker et al. U.S. Patent 5,755,801 (“Walker patent,”
`
`Ex.1002).1
`
`
`1 The Bonutti patent issued prior to the America Invents Act (“AIA”). Petitioners
`
`therefore use the pre-AIA statutory framework in this petition.
`
`5
`
`

`

`Inter Partes Review No. Unassigned
`Petition For Inter Partes Review of U.S. Patent 7,837,736; filed: June 30, 2014
`
`
`
`Ground 2: Claims 23-25 are unpatentable under 35 U.S.C. § 103 as
`
`•
`
`being obvious over the Walker Patent in View of the Buechel U.S. Patent
`
`4,340,978 (“Buechel patent,” Ex.1012).
`
`III. OVERVIEW OF KNEE ANATOMY AND KNEE REPLACEMENT
`
`Claims 23-25 depend from independent claim 15. These claims relate
`
`generally to joint repair and replacement - surgical procedures known as joint
`
`arthroplasty. More particularly, the challenged claim relates to knee joint
`
`replacement implants. See, e.g., Ex. 1001, claims 15 and 25. The following
`
`overview of knee anatomy is substantially the same as that presented in the First
`
`Petition.
`
`
`
`
`
`A. Knee Anatomy
`
`A simplified description of the components and operation of the knee that
`
`are relevant to the challenged claims of the Bonutti patent can be provided with
`
`reference to the following illustrations of a right-side human knee joint and
`
`schematic.
`
`6
`
`

`

`Inter Partes Review No. Unassigned
`Petition For Inter Partes Review of U.S. Patent 7,837,736; filed: June 30, 2014
`
`
`
`
`
`
`
`
`
`
`As shown, the knee joint connects the femur (upper leg bone) to the tibia
`
`(lower leg bone). The anterior side (front) of the joint is protected by the patella
`
`(kneecap). Two generally convex-shaped rounded areas, known as condyles, are
`
`located at the distal end (bottom) of the femur. The lateral condyle is located on
`
`the lateral side (outside) of the femur, and the medial condyle is located on the
`
`medial side (inside) of the femur. A groove-shaped area on the distal end of the
`
`femur, known as the trochlear groove, separates the lateral and medial condyles.
`
`Ex. 1005, Erdman Decl., ¶¶ 14-15.
`
`
`
`The lateral and medial sides of the tibia have generally concave-shaped
`
`depressions that receive the corresponding condyles of the femur. A pad of
`
`cartilage, known as the meniscus, is located on the proximal end (top) of the tibia
`
`to protect the surfaces of the femur and tibia. Ex. 1005, Erdman Decl., ¶ 16.
`
`7
`
`

`

`Inter Partes Review No. Unassigned
`Petition For Inter Partes Review of U.S. Patent 7,837,736; filed: June 30, 2014
`
`
`When the knee bends, the condyles on the end of the femur move in a hinge-
`
`like manner with respect to the depressions in the tibia. The patella slides along
`
`the trochlear groove during bending of the knee. The kinematics of the knee joint
`
`are complex. In addition to providing the hinge-like movement, the condyles and
`
`meniscus accommodate axial rotation of the femur and tibia about their central
`
`longitudinal axes as the knee bends. Ex. 1005, Erdman Decl., ¶¶ 14, 18.
`
`B. Knee Replacement Surgery
`
`
`
`The following overview of knee replacement surgery is substantially the
`
`same as that presented in the First Petition. Features of a typical replacement knee
`
`implant or prosthesis that are pertinent to the challenged claims of the Bonutti
`
`patent can be described with reference to the following illustrations.
`
`
`As shown, the replacement knee prosthesis includes a tibial component and
`
`a femoral component. The tibial component includes a tibial tray, and a bearing or
`
`8
`
`

`

`Inter Partes Review No. Unassigned
`Petition For Inter Partes Review of U.S. Patent 7,837,736; filed: June 30, 2014
`
`articular surface on the proximal upper surface of the tray. A mounting structure,
`
`such as a stem or post, can extend distally from the underside or bottom of the
`
`tibial tray. The femoral component has lateral and medial condyles that replace the
`
`surfaces of the corresponding condyles of the patient’s femur. Similarly, the
`
`articular surface replaces the meniscus of the patient’s knee joint, and has lateral
`
`and medial depressions that receive the corresponding condyles of the femoral
`
`component. Ex. 1005, Erdman Decl., ¶¶ 21-26.
`
`
`
`During a surgical procedure to implant a prosthesis of this type, the surgeon
`
`will remove any remaining meniscus and cut off a thin slice from the proximal end
`
`of the tibia bone, a process known as resecting the tibia. The surgeon will also
`
`resect the femur by cutting the surfaces of the condyles to a shape that corresponds
`
`to the backside shape of the femoral component. The tibial component is mounted
`
`to the resected tibia, for example, by urging the stem into the bone. The femoral
`
`component is similarly mounted to the resected condyles of the femur. The
`
`articular surface is mounted to the upper surface of the tibial tray, between the tray
`
`and the femoral component. Ex. 1005, Erdman Decl., ¶¶ 28-38.
`
`
`
`In operation, the articular surface of the implant functions as a replacement
`
`for the meniscus. The condyles of the femoral component move in the depressions
`
`of the articular surface when the knee bends. Ex. 1005, Erdman Decl., ¶¶ 24-25.
`
`9
`
`

`

`Inter Partes Review No. Unassigned
`Petition For Inter Partes Review of U.S. Patent 7,837,736; filed: June 30, 2014
`
`IV. OVERVIEW OF THE BONUTTI PATENT
`
`
`
`A.
`
`The Claimed Invention
`
`As a preliminary matter, Petitioners note that portions of the following
`
`overview through the discussion of Fig. 90 of the Bonutti patent are substantially
`
`the same as those in the First Petition.
`
`The specification of the Bonutti patent describes a number of different
`
`implants, instruments and surgical procedures relating generally to knee and other
`
`joint replacement. See, e.g., Ex. 1001, col. 1, ln. 40-col. 2, ln. 61. All the claims
`
`of the Bonutti patent, however, are directed to joint replacement devices and
`
`methods having a sliding or otherwise movable component that corresponds to the
`
`meniscal component of the joint. In particular, all the claims generally recite: (1) a
`
`first or base component, such as a tibial tray, that is fixed to a bone on a first side
`
`of the joint (e.g., is fixed to the tibia), and (2) a second or movable component,
`
`such as a tibial tray insert, that moves with respect to the base component and has a
`
`surface that engages a bone on a second side of the joint (e.g., engages the
`
`condyles of the femur).
`
`In the context of knee joint replacement prostheses for the tibial side of the
`
`joint (i.e., tibial components), devices of this type are often referred to as “mobile
`
`bearing” knee prostheses. The Bonutti patent admits that mobile bearing knee
`
`prostheses were known in the prior art. See, e.g., Ex. 1001, col. 101, ll. 35-43.
`
`10
`
`

`

`Inter Partes Review No. Unassigned
`Petition For Inter Partes Review of U.S. Patent 7,837,736; filed: June 30, 2014
`
`
`Claim 15, the dependent claim from which challenged claim 25 depends, is
`
`directed to mobile bearing prostheses having specific features. In particular, claim
`
`15 is directed to a mobile bearing prosthesis that is configured to cause asymmetric
`
`movement of the movable component or tibial tray insert with respect to the center
`
`of the base component or tibial tray. An embodiment relating to claim 15 is
`
`described in the Bonutti patent at columns 101-102 with respect to Fig. 90. An
`
`annotated version of Fig. 90 is reproduced below.
`
`Upper Bearing Surface
`of Bearing Insert
`
`Inferior Surface
`of Bearing Insert
`Superior Surface
`of Plate Member
`
`Implant
`
`Bearing Insert
`
`Recess
`Post
`
`Tray
`
`Tibial Component
`
`Plate Member
`
`Spike
`
`
`
`
`
`The implant 1290 is a mobile bearing knee implant that includes a tibial
`
`component 1292 and a femoral component (not shown in Fig. 90). Tibial
`
`component 1292 includes a tray 1294 and a bearing insert 1296 (also referred to as
`
`the “movable component” in the claims). Tray 1294 includes a plate member 1300
`
`and a tapered spike 1298 (i.e., a stem or post) that extends from the bottom or
`
`11
`
`

`

`Inter Partes Review No. Unassigned
`Petition For Inter Partes Review of U.S. Patent 7,837,736; filed: June 30, 2014
`
`underside of the of the plate member for fixing the tibial component to the
`
`patient’s tibia. The upper surface 1302 of the plate member 1300 is provided with
`
`a post 1306 that cooperates with a recess 1308 located in the underside 1304 of the
`
`bearing insert 1296. The post 1306 and recess 1308 permit rotation of the bearing
`
`insert 1296 with respect to the tibial tray 1294. See, e.g., Ex. 1001, col. 101, ll. 6-
`
`34.
`
`As shown in Fig. 90, the post 1306 is not located directly over the spike
`
`1298 (a location defined as the center of the tibia). Ex. 1001, col. 101, ll. 55-56.
`
`Instead, the post 1306 is offset medially toward the medial compartment of the
`
`knee. Offsetting the post 1306 toward the medial compartment of the knee is said
`
`to recreate the natural pivoting motion of the knee. See, e.g., Ex. 1001, col. 101, ll.
`
`63-67.
`
`
`
`
`
`
`
`1.
`
`Claim 15
`
`Claim 15, the independent claim from which the challenged claims 23-25
`
`depend, recites a device to replace an articulating surface of a first side of a joint in
`
`a body. Limitations recited by claim 15 include, inter alia:
`
`
`
`(1)
`
`“a base component, including a bone contacting side … and a base
`
`sliding side on an opposite side … relative to said bone contacting side;”
`
`12
`
`

`

`Inter Partes Review No. Unassigned
`Petition For Inter Partes Review of U.S. Patent 7,837,736; filed: June 30, 2014
`
`
`
`“a movable component, including a movable sliding side … matably
`
`(2)
`
`positionable in sliding engagement with said base sliding side, and an articulating
`
`side on an opposite side … relative to said movable sliding side …;”
`
`
`
`(3)
`
`“a protrusion extending from … said base sliding side …, said
`
`protrusion substantially offset with respect to a midline of the first side of a joint;”
`
`and
`
`
`
`(4)
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`“a recess sized to receive said protrusion, disposed in the … movable
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`sliding side, said protrusion and recess matable to constrain movement of said first
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`and second components relative to each other, thereby promoting movement of the
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`joint within desired anatomical limits.”
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`2.
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`Claims 23-25
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`Challenged claim 23 depends from claim 15 and recites the protrusion as
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`being a dovetail pin, the recess as being a dovetail tail, and the elements together
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`forming a dovetail joint.
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`
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`Challenged claim 24 depends from claim 23 and recites the dovetail joint as
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`being elongated, extending in an anterior-posterior orientation to enable “anterior-
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`posterior displacement of the base sliding side relative to the movable sliding
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`side.”
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`Inter Partes Review No. Unassigned
`Petition For Inter Partes Review of U.S. Patent 7,837,736; filed: June 30, 2014
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`
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`Challenged claim 25 depends from claim 15 and recites the device as further
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`including “means associated with said protrusion to prevent a separation of said
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`base sliding side relative to the movable sliding side.”
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`The specification of the Bonutti patent, however, has no disclosure of the
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`dovetail joint recited in claims 23 and 24 or the means associated with the
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`protrusion recited in claim 25. Ex. 1013, 2nd Erdman Decl., ¶ 11. The embodiment
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`relevant to the claims-at-issue is the one shown in Fig. 90. Ex. 1005, Erdman
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`Decl., ¶ 42. Ex. 1013, 2nd Erdman Decl., ¶¶ 9-11. Specifically, with respect to
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`claims 23 and 24, that figure and the associated description do not disclose that the
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`claimed protrusion is a dovetail pin and the recess is a dovetail tail. As for claim
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`25, Fig. 90 and the associated description also fail to disclose structure associated
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`with the claimed protrusion (e.g., post 1306) to prevent separation of the base
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`sliding side and the movable sliding side (e.g., bearing insert 1296 and the tray
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`1294). See, e.g., Ex. 1001, col. 101, ln. 6 – col. 102, ln. 28.
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`Patent Owner may rely on Figs. 80, 88 and 89 and the description
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`corresponding to these figures to show support for the features of claims 23-25.
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`Specifically, the Patent Owner may ask that the Board consider (1) the tibial
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`component 1254 of what is characterized as a “self-centering” mobile bearing
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`implant shown in Figs. 88 and 89 and described at col. 99, ln. 34 – col. 101, ln. 5,
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`Inter Partes Review No. Unassigned
`Petition For Inter Partes Review of U.S. Patent 7,837,736; filed: June 30, 2014
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`and (2) the tibial tray 1186 shown in Fig. 80 and described at col. 97, ln. 33 – col.
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`98, ln. 5. Fig. 88 is reproduced below.
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`
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`
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`The described tibial component includes a tray 1266 having a tapered keel or
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`spike 1270, and a bearing insert 1268. The superior surface 1274 is provided with
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`a track 1276 that cooperates with a groove 1286 located on bearing insert 1268 so
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`that sliding motion can occur substantially in the anterior-posterior direction. Ex.
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`1001, col. 99, ll. 56-77.
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`Patent Owner may argue that although there is no express description of the
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`cooperating track and groove as a dovetail joint as required by claims 23 and 24 or
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`Inter Partes Review No. Unassigned
`Petition For Inter Partes Review of U.S. Patent 7,837,736; filed: June 30, 2014
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`as providing a “separation prevention” function as required by claim 25, one of
`
`ordinary skill would have relied on these disclosures as support for claims 23-25.
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`In so doing, the Patent Owner may also point to Fig. 80 and argue that a similarly
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`shaped slot 1190 on the bottom, tibia-engaging side of the tibial tray 1186, which
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`is referred to in the Bonutti patent as having a “dove tail shape,” supports such an
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`interpretation of Figures 88 and 89. Ex. 1001, col. 97, ln. 59 – col. 98, ln. 5.
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`Petitioners would disagree with any such Patent Owner’s interpretation at
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`least because Figures 80, 88 and 89 do not relate to the claimed invention as they
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`do not include a protrusion substantially offset with respect to a midline of the first
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`side of a joint, as required by the claims.
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`In addition, Patent Owner may argue that the shape of the post 1306
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`provides the structure for the means recited in claim 25. Petitioners would again
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`disagree at least because the drawing and the corresponding description of post
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`1306 do not show or discuss a shape that provides the separation function recited
`
`in claim 25.
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`
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`
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`B. The Prosecution History
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`Claims 15 and 23-25 were originally added to the Bonutti patent application
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`(as claims 138 and 144-146, respectively) in a restriction requirement response
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`filed on January 19, 2010. In the next Office Action mailed on March 11, 2010,
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`claim 15 and all the claims depending therefrom (including claims 23-25) were
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`Inter Partes Review No. Unassigned
`Petition For Inter Partes Review of U.S. Patent 7,837,736; filed: June 30, 2014
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`rejected under 35 U.S.C. § 102 as being anticipated by the Herrington U.S. Patent
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`5,997,577. In a responsive amendment filed on June 18, 2010, the applicant made
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`amendments that it asserted “serve to clarify the present invention and are
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`independent of patentability,” and argued that the Herrington patent disclosed a
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`tibial component having a tibial insert “firmly fixed” to the tibial tray when the
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`tibial component is used in the body. Ex. 1006, June 18, 2010 response, pp. 11-12.
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`In effect, the patent applicant distinguished the applied Herrington patent as not
`
`even disclosing a mobile bearing knee component, much less such a component
`
`having the features recited in the claims. All the claims were allowed in a Notice
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`of Allowability that followed the June 18, 2010 response.
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`
`
`
`
`C.
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`Priority Date of the Bonutti Patent
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`The Bonutti patent claims priority to a number of other U.S. patent
`
`applications. Based on a review of these earlier applications, application no.
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`10/191,751, filed on July 8, 2002 (now patent 7,104,996), is the earliest that
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`includes the mobile bearing tibial component embodiment discussed above and
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`described with reference to Fig. 90 in the Bonutti patent. But as discussed above,
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`claims 23-25 are not supported by the specification, including Fig. 90. For
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`purposes of this petition, however, Petitioners have assumed the priority date for
`
`the claims of the Bonutti patent challenged in this Petition is July 8, 2002.
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`Inter Partes Review No. Unassigned
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`
`
`The Petitioners reserve the right to respond accordingly in the event the
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`Patent Owner alleges an earlier date of invention.
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`V. OVERVIEW OF THE PRIOR ART RELIED UPON FOR THE
`CHALLENGE
`
`
`
`
`
`A.
`
`The Walker Patent
`
`The Walker et al. U.S. Patent 5,755,801 (“Walker patent,” Ex. 1002)
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`discloses a replacement knee prosthesis. The Walker patent issued on May 26,
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`1998, and is a § 102(b) prior art patent to the Bonutti patent.
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`The prosthesis has a femoral component and a tibial component. The tibial
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`component is a “mobile bearing” device that includes a tibia-engaging tibial
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`platform and a meniscal component configured to provide for limited movement of
`
`the meniscal component on the tibial platform. Importantly, like the challenged
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`claims of the Bonutti patent, the Walker patent discloses a mobile meniscal
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`component that moves about an axis that is substantially offset in the medial
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`direction from the center of the component.
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`The “second embodiment” of the Walker patent shown in Figs. 2-2c has
`
`certain features of particular relevance to the challenged claim of the Bonutti
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`patent. As noted in the Walker patent, the second embodiment shown in Figs. 2-2c
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`“has a number of similarities with that shown in FIGS. 1 to 1e and only the
`
`differences are described.” Ex. 1002, col. 4, ll. 3-6. FIGS. 4a-4d also show
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`Inter Partes Review No. Unassigned
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`features of the embodiments shown in FIGS. 1-3. See, e.g., Ex. 1002, col. 5, ll. 23-
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`28. For these reasons, the relevant features of the device shown in the Walker
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`patent are described below with reference to the drawing figures of the different
`
`embodiments.
`
`
`As shown in the annotated version of Fig. 4c above, the replacement knee
`
`prosthesis has a femoral component 141 and a two-part tibial component that
`
`includes a tibial platform 150 and the movable meniscal component 142. See, e.g.,
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`Ex. 1002, col. 4, ln. 59-col. 5, ln. 37.
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`
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`Inter Partes Review No. Unassigned
`Petition For Inter Partes Review of U.S. Patent 7,837,736; filed: June 30, 2014
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`As shown in the annotated version of Fig. 1b, above, the tibial platform 1 has an
`
`underside that engages the tibia, and an upper surface 4 to which the meniscal
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`component 44 is mounted. The movable meniscal component 44 is shown in the
`
`annotated version of Fig. 1e, above, and has an underside and an upper bearing
`
`surface side. The upper side has depressions 23 to receive the condylar bearing
`
`surfaces of the femoral component 141 (shown in Fig. 4c, above). See, e.g., Ex.
`
`1002, col. 3, ln. 12-col. 4, ln. 53.
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`
`
`
`
`The above annotated version of Fig. 2 illustrates other features and the
`
`operation of the tibial component. An abutment 50 is upstanding on the upper
`
`surface of the tibial platform 41. As shown, the abutment 50 is located on the
`
`medial side of the medial-lateral centerline of the tibial platform 41. A recess 51 is
`
`formed in the medial side of the meniscal component 44. The meniscal component
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`44 is f