Trials@uspto.gov
`571-272-7822
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` Paper 23 IPR2014-00191
` Paper 25 IPR2014-00321
` Paper 12 IPR2014-01078
`
`Paper 12 IPR2014-01080
` Date: July 30, 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.
`____________
`
`IPR2014-00191 (Patent 7,837,736 B2)
`IPR2014-00321 (Patent 7,806,896 B1)
`IPR2014-01078 (Patent 7,837,736 B2)
` IPR2014-01080 (Patent 7,806,896 B1)1
`____________
`
`Before WILLIAM V. SAINDON, MICHAEL R. ZECHER, and
`RICHARD E. RICE, Administrative Patent Judges.
`
`SAINDON, Administrative Patent Judge.
`
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`1 We exercise our discretion to issue one Order to be filed in each case. The parties
`are not authorized to use this style heading for any subsequent papers.
`
`
`
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`
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`571-272-7822
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` Paper 23 IPR2014-00191
` Paper 25 IPR2014-00321
` Paper 12 IPR2014-01078
`
`Paper 12 IPR2014-01080
` Date: July 30, 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.
`____________
`
`IPR2014-00191 (Patent 7,837,736 B2)
`IPR2014-00321 (Patent 7,806,896 B1)
`IPR2014-01078 (Patent 7,837,736 B2)
` IPR2014-01080 (Patent 7,806,896 B1)1
`____________
`
`Before WILLIAM V. SAINDON, MICHAEL R. ZECHER, and
`RICHARD E. RICE, Administrative Patent Judges.
`
`SAINDON, Administrative Patent Judge.
`
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`1 We exercise our discretion to issue one Order to be filed in each case. The parties
`are not authorized to use this style heading for any subsequent papers.
`
`
`
`
`
`
`
`IPR2014-00191 (Patent 7,837,736 B2)
`IPR2014-00321 (Patent 7,806,896 B1)
`IPR2014-01078 (Patent 7,837,736 B2)
`IPR2014-01080 (Patent 7,806,896 B1)
`
`
`
`On July 29, 2014, a conference call was held between respective
`
`counsel of the parties and Judges Saindon, Zecher, and Rice. The call was to
`
`discuss IPR2014-00191 and IPR2014-00321,2 and IPR2014-01078 and
`
`IPR2014-01080.3
`
`Petitioner requested the call. Petitioner provided a court reporter and
`
`indicated that it would file the transcript of the call as an exhibit in each of
`
`the above-identified proceedings.
`
`The following topics were discussed.
`
`Change in Petitioner’s Counsel
`
`
`
`Petitioner first noted that, on July 23, 2014, Petitioner filed a new
`
`Power of Attorney in each of these proceedings designating Messrs. Modi
`
`and Palys as lead and back-up counsel, respectively. IPR2014-00191, Paper
`
`20; IPR2014-00321, Paper 22; IPR2014-01078, Paper 9; IPR2014-01080,
`
`Paper 9. Of these two attorneys, prior to that date, only Mr. Modi was listed
`
`as back-up counsel, and that was only in IPR2014-00191 and IPR2014-
`
`00321. IPR2014-00191, Paper 16; IPR2014-00321, Paper 18. Petitioner
`
`wished to clarify the status of lead and back-up counsel in each of these
`
`proceedings.
`
`
`
`We advised Petitioner’s counsel present on the call, Mr. Modi, that we
`
`considered his status to be back-up counsel for Petitioner in each of these
`
`four proceedings, as we have not received a motion from Petitioner’s lead
`
`counsel (or any other counsel) to withdraw. Notably, in each of these
`
`2 We instituted inter partes review in these two proceedings on June 2, 2014.
`3 In these two proceedings, Petitions were filed after our June 2, 2014
`institution decisions in IPR2014-00191 and IPR2014-00321; those later-
`filed petitions challenge the same patents as the earlier-filed proceedings.
`
`
`
`2
`
`
`
`IPR2014-00191 (Patent 7,837,736 B2)
`IPR2014-00321 (Patent 7,806,896 B1)
`IPR2014-01078 (Patent 7,837,736 B2)
`IPR2014-01080 (Patent 7,806,896 B1)
`
`proceedings, the lead counsel and back-up counsel indicated by Petitioner in
`
`the Petition, as well as counsel pro hac vice in IPR2014-00191 and
`
`IPR2014-00321, are from a different law firm than Messrs. Modi and Palys.
`
`During the call, we authorized Petitioner to file, in each proceeding, a
`
`motion under 37 C.F.R. § 42.10(e) requesting withdrawal of lead counsel
`
`and substitution of new lead counsel. Further, we directed Petitioner to
`
`indicate in that motion which attorney(s) are back-up counsel so as to clarify
`
`the record. Patent Owner did not request permission to file an opposition to
`
`this motion. As such, we do not authorize Patent Owner to file an
`
`opposition at this time.
`
`Petitioner’s Request to Move Forward Patent Owner’s Preliminary Response
`
`Period
`
`
`
`The due date for Patent Owner’s Preliminary Response in IPR2014-
`
`01078 and IPR2014-01080 is currently October 15, 2014, three months after
`
`the mailing of the Board’s Notice of Filing Date Accorded. IPR2014-01078,
`
`Paper 5; IPR2014-01080, Paper 5. Petitioner requested we shorten Patent
`
`Owner’s time period to file its Preliminary Response in IPR2014-01078 and
`
`IPR2014-01080 in order to expedite these proceedings to align them more
`
`closely with IPR2014-00191 and IPR2014-00321. The two latter-filed
`
`IPRs—namely, IPR2014-01078 and IPR2014-01080—only challenge claims
`
`on which we denied institution in IPR2014-00191 and IPR2014-00321.
`
`Petitioner made similar arguments in its Motion for Joinder. IPR2014-
`
`01078, Paper 3; IPR2014-01080, Paper 3.
`
`
`
`Patent Owner indicated that it opposed Petitioner’s Motion for Joinder
`
`and it opposed Petitioner’s request to expedite the latter IPRs. Nevertheless,
`
`
`
`3
`
`
`
`IPR2014-00191 (Patent 7,837,736 B2)
`IPR2014-00321 (Patent 7,806,896 B1)
`IPR2014-01078 (Patent 7,837,736 B2)
`IPR2014-01080 (Patent 7,806,896 B1)
`
`Patent Owner represented that it intended to file its Patent Owner
`
`Preliminary Response by September 12, 2014.
`
`
`
`We will issue our ruling on Petitioner’s Motion for Joinder in the
`
`event we institute an inter partes review in IPR2014-01078 or IPR2014-
`
`01080, which we will decide in due course.
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`Petitioner’s Request to Discuss Petitioner’s Filing Date of IPR2014-01078
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`and IPR2014-01080
`
`
`
`Petitioner indicated that, while a Petition was filed with the Board on
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`June 30, 2014 for IPR2014-01078 and IPR2014-01080, Petitioner did not
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`serve Patent Owner with a copy of the Petitions until July 10, 2014.
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`IPR2014-01078, Paper 4; IPR2014-01080, Paper 4. Based on that service
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`date, the Board accorded Petitioner a filing date of July 10, 2014, in both of
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`these proceedings. IPR2014-01078, Paper 5; IPR2014-01080, Paper 5.
`
`
`
`Petitioner noted that Patent Owner argues, in its Oppositions to
`
`Petitioner’s Motion for Joinder in these two proceedings (IPR2014-01078,
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`Paper 8; IPR2014-01080, Paper 8), that Petitioner’s Motions for Joinder are
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`untimely, as the Petitioner was accorded a filing date of July 10, 2014 in the
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`latter-filed proceedings, whereas the two earlier proceedings were instituted
`
`on June 2, 2014. See 37 C.F.R. § 42.122(b) (“Any request for joinder must
`
`be filed . . . no later than one month after the institution date of any inter
`
`partes review for which joinder is requested.”). Petitioner indicated that it
`
`intended to discuss this issue in its Reply to Patent Owner’s Opposition to
`
`Petitioner’s Motion for Joinder. We noted that a Reply is the proper avenue
`
`to respond to Patent Owner’s argument that the Motions for Joinder are
`
`untimely. See 37 C.F.R. § 42.23(b) (“A reply may only respond to
`
`
`
`4
`
`
`
`IPR2014-00191 (Patent 7,837,736 B2)
`IPR2014-00321 (Patent 7,806,896 B1)
`IPR2014-01078 (Patent 7,837,736 B2)
`IPR2014-01080 (Patent 7,806,896 B1)
`
`arguments raised in the corresponding opposition or patent owner
`
`response.”).
`
`Patent Owner’s Potential Disclaimer of Claims or Motion to Cancel Claims
`
`by Amendment in IPR2014-00191 and IPR2014-00321
`
`
`
`Patent Owner noted its duty to confer with the Board before filing any
`
`Motion to Amend under 37 C.F.R. § 42.121(a), and stated that it may seek to
`
`cancel one or more claims in one or more of these proceedings by
`
`amendment. We advised Patent Owner that its duty to confer with the Board
`
`prior to filing a motion to amend is met to the extent it seeks to file a motion
`
`canceling one or more claims by amendment. We also note that Patent
`
`Owner may disclaim one or more claims under 35 U.S.C. § 253(a) and 37
`
`C.F.R. § 1.321(a), in the manner described therein, which would not require
`
`the filing of a motion to amend. See, e.g., IPR2014-00321, Paper 15 (Notice
`
`of Filing of Disclaimer of claim 40).
`
`
`
`In consideration of the foregoing, it is:
`
`ORDER
`
`ORDERED Petitioner is authorized, in IPR2014-00191, IPR2014-
`
`00321, IPR2014-01078, and IPR2014-01080, to file a Motion to Withdraw
`
`Lead Counsel by August 6, 2014;
`
`FURTHER ORDERED that, in its Motion to Withdraw Lead Counsel,
`
`Petitioner will designate one attorney as lead counsel and will list all
`
`attorneys that are back-up counsel.
`
`
`
`
`
`
`
`5
`
`
`
`IPR2014-00191 (Patent 7,837,736 B2)
`IPR2014-00321 (Patent 7,806,896 B1)
`IPR2014-01078 (Patent 7,837,736 B2)
`IPR2014-01080 (Patent 7,806,896 B1)
`
`For PETITIONER:
`
`Naveen Modi
`Joseph Palys
`Paul Hastings LLP
`naveenmodi@paulhastings.com
`josephpalys@paulhastings.com
`
`For PATENT OWNER:
`
`Cary Kappel
`William Gehris
`Davidson, Davidson, & Kappel, LLC
`ckappel@ddkpatent.com
`wgehris@ddkpatent.com
`
`
`
`6
`
`
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