Paper No. __
`Filed: August 18, 2014
`
`Filed on behalf of: Zimmer Holdings, Inc. & Zimmer, Inc.
`By: Naveen Modi
`
`Joseph E. Palys
`
`Paul Hastings LLP
`
`875 15th Street, N.W.
`
`Washington, D.C. 20005
`
`Telephone: (202) 551-1700
`
`Facsimile:
`(202) 551-1705
`
`E-mail:
`naveenmodi@paulhastings.com
`
`
`
`josephpalys@paulhastings.com
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_________________
`
`
`ZIMMER HOLDINGS, INC.
`AND ZIMMER, INC.,
`Petitioner
`
`v.
`
`BONUTTI SKELETAL INNOVATIONS LLC,
`Patent Owner
`
`__________________
`
`Case IPR2014-01078
`Patent No. 7,837,736
`__________________
`
`PETITIONER’S REPLY TO PATENT OWNER’S OPPOSITION TO
`PETITIONER’S MOTION FOR JOINDER
`
`
`Filed: August 18, 2014
`
`Filed on behalf of: Zimmer Holdings, Inc. & Zimmer, Inc.
`By: Naveen Modi
`
`Joseph E. Palys
`
`Paul Hastings LLP
`
`875 15th Street, N.W.
`
`Washington, D.C. 20005
`
`Telephone: (202) 551-1700
`
`Facsimile:
`(202) 551-1705
`
`E-mail:
`naveenmodi@paulhastings.com
`
`
`
`josephpalys@paulhastings.com
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_________________
`
`
`ZIMMER HOLDINGS, INC.
`AND ZIMMER, INC.,
`Petitioner
`
`v.
`
`BONUTTI SKELETAL INNOVATIONS LLC,
`Patent Owner
`
`__________________
`
`Case IPR2014-01078
`Patent No. 7,837,736
`__________________
`
`PETITIONER’S REPLY TO PATENT OWNER’S OPPOSITION TO
`PETITIONER’S MOTION FOR JOINDER
`
`
`
`TABLE OF CONTENTS
`
`
`Case IPR2014-01078
`Patent No. 7,837,736
`
`Page
`
`I.
`
`II.
`
`PETITIONER’S MOTION FOR JOINDER WAS TIMELY FILED ........... 1
`
`JOINDER IS APPROPRIATE HERE ............................................................ 3
`
`III. ADJUSTMENT TO THE ’191 IPR SCHEDULE WILL BE
`MINIMAL ...................................................................................................... 4
`
`
`
`-i-
`
`
`
`TABLE OF AUTHORITIES
`
`Case IPR2014-01078
`Patent No. 7,837,736
`
`Page(s)
`
`Federal Cases
`
`ABB Inc. v. Roy-G-Biv Corp.,
`IPR2013-00286, Paper 14 (P.T.A.B. Aug. 9, 2013) ............................................. 3
`
`Ariosa Diagnostics, Inc. v. Isis Innovation Ltd.,
`IPR2013-00250, Paper 25 (P.T.A.B. Sept. 3, 2013) ............................................. 3
`
`Microsoft Corp. v. Proxyconn, Inc.,
`IPR2013-00109, Paper 15 (P.T.A.B. Feb. 25, 2013) ............................................ 3
`
`Samsung v. Va. Innovations Sciences,
` IPR2014-00557, Paper 10 (P.T.A.B. June 13, 2014) .......................................... 3
`
`Sony Corp. et al. v. Network-1 Security Solutions, Inc.,
`IPR2013-00495, Paper 13 (P.T.A.B. Sept. 16, 2013) ........................................... 2
`
`Sony Corp. v. Yissum Research Dev. Co. of the Hebrew Univ. of Jerusalem,
`IPR2013-00327, Paper 15 (P.T.A.B. Sept. 24, 2013) ........................................... 3
`
`Yamaha Corp. of Am. v. Black Hills Media, LLC,
`IPR2013-00593, Paper 22 (P.T.A.B. Mar. 20, 2014) ........................................... 2
`
`Federal Statutes
`
`35 U.S.C. § 315(c) ..................................................................................................... 3
`
`35 U.S.C. § 316(b) ..................................................................................................... 1
`
`Federal Regulations
`
`37 C.F.R. § 42.1(b) .................................................................................................... 1
`
`37 C.F.R. § 42.5(b) .................................................................................................... 2
`
`37 C.F.R. § 42.6 ......................................................................................................... 2
`
`37 C.F.R. § 42.105 ..................................................................................................... 2
`
`
`
`-ii-
`
`
`
`TABLE OF AUTHORITIES
`(continued)
`
`Case IPR2014-01078
`Patent No. 7,837,736
`
`Page(s)
`
`37 C.F.R. § 42.106 ..................................................................................................... 2
`
`37 C.F.R. § 42.122(b) ............................................................................................ 1, 2
`
`
`
`
`
`-iii-
`
`
`
`Case IPR2014-01078
`Patent No. 7,837,736
`
`
`
`Patent Owner Bonutti agrees with essentially all the facts in Petitioner’s
`
`motion for joinder, including the substantial overlap with IPR2014-00191
`
`(“the ’191 IPR”). Nonetheless, it opposes joinder. But Bonutti’s arguments should
`
`be rejected, especially when the joined proceedings will involve only three
`
`additional claims (dependent claims 23-25), and joinder will not unduly delay but
`
`instead help “secure the just, speedy, and inexpensive resolution” of the
`
`proceedings. See 37 C.F.R. § 42.1(b); see also 35 U.S.C. § 316(b).
`
`I.
`
`
`
`PETITIONER’S MOTION FOR JOINDER WAS TIMELY FILED
`
`Petitioner timely filed its motion for joinder under 37 C.F.R. § 42.122(b),
`
`which states that “[a]ny request of joinder must be filed . . . no later than one
`
`month after the institution date of an inter partes review for which joinder is
`
`requested.” (Emphasis added). As the motion was filed on June 30, 2014, within
`
`one month after the institution in the ’191 IPR, the motion was timely.
`
`
`
`Bonutti argues that the motion was filed after the one month date based on a
`
`service issue. See Paper 8 at 3. Specifically, when Petitioner filed its petition and
`
`motion for joinder, it served Bonutti’s IPR counsel of record in the ’191 IPR, and
`
`inadvertently did not serve the correspondence address associated with the patent.
`
`When Petitioner became aware of this issue, Petitioner served another copy at the
`
`correspondence address. See Paper 4. Based on the supplemental service, the
`
`petition was accorded a filing date of July 10, 2014. See Paper 5. Bonutti now
`
`
`
`-1-
`
`
`
`Case IPR2014-01078
`Patent No. 7,837,736
`
`argues that the petition and motion were both accorded that date. See Paper 8 at 3.
`
`But Bonutti conflates the requirements for petitions and motions. While the rules
`
`for petitions state that a petition must be served on the correspondence address, the
`
`rules for motions do not have a similar requirement. Compare 37 C.F.R. §§ 42.105
`
`and 106 with 37 C.F.R. § 42.6.
`
`
`
`Regardless, if the Board determines that the service issue affects the
`
`motion’s filing date, Petitioner requests waiver of Rule 42.122(b) under 37 C.F.R.
`
`§ 42.5(b). Such a waiver is appropriate because Bonutti was made aware of
`
`Petitioner’s intent to file the new petition and instant motion prior to their filing
`
`(see Ex. 1018 at 7-11), the motion was uploaded to PRPS and Bonutti’s IPR
`
`counsel was served with a copy on June 30th (see Paper 3), a copy of the motion
`
`was served on the correspondence address on July 10th (see Paper 4), and the
`
`counsel for this IPR is the same as the ’191 IPR. See Sony Corp. et al. v. Network-1
`
`Security Solutions, Inc., IPR2013-00495, Paper 13 (P.T.A.B. Sept. 16, 2013)
`
`(waiving the one-month requirement because Petitioners attempted joinder within
`
`the one-month time period.). Moreover, the Board has found the filing date to be
`
`the date a paper was uploaded where, as here, Petitioner “made a good faith effort
`
`to effect proper service in a timely manner.” See Yamaha Corp. of Am. v. Black
`
`Hills Media, LLC, IPR2013-00593, Paper 22 (P.T.A.B. Mar. 20, 2014). If
`
`necessary, the Board should reach the same result here.
`
`
`
`-2-
`
`
`
`Case IPR2014-01078
`Patent No. 7,837,736
`
`II.
`
`
`
`JOINDER IS APPROPRIATE HERE
`
`Bonutti argues that petitions filed by the same party cannot be joined. Paper
`
`8 at 4. But the statute contemplates exactly that. See 35 U.S.C. § 315(c) (stating
`
`that the Director “may join as a party to that inter partes review any person who
`
`properly files a petition under section 311” (emphasis added)). In fact, the Board
`
`has joined several times petitions filed by the same party. See e.g., Samsung v. Va.
`
`Innovations Sciences, IPR2014-00557, Paper 10 (P.T.A.B. June 13, 2014);
`
`Microsoft Corp. v. Proxyconn, Inc., IPR2013-00109, Paper 15 (P.T.A.B. Feb. 25,
`
`2013); Ariosa Diagnostics, Inc. v. Isis Innovation Ltd., IPR2013-00250, Paper 25
`
`(P.T.A.B. Sept. 3, 2013); ABB Inc. v. Roy-G-Biv Corp., IPR2013-00286, Paper 14
`
`(P.T.A.B. Aug. 9, 2013); Sony Corp. v. Yissum Research Dev. Co. of the Hebrew
`
`Univ. of Jerusalem, IPR2013-00327, Paper 15 (P.T.A.B. Sept. 24, 2013).
`
`
`
`Bonutti also argues that the Board has declined to join multiple proceedings
`
`involving the same grounds. Paper 8 at 4-10. But that is not the case here. The
`
`grounds in the new petition are supported by additional facts, testimony, and an
`
`additional secondary reference. The new petition addresses deficiencies identified
`
`by the Board in its institution decision in the ’191 IPR. Moreover, the Board has
`
`determined that where there is a substantial overlap (e.g., same patent, parties, and
`
`an overlap in prior art) between the two petitions to be joined, as here, those facts
`
`weigh in favor of joinder. See Ariosa, IPR2013-00250, Paper 25 at 5.
`
`
`
`-3-
`
`
`
`Case IPR2014-01078
`Patent No. 7,837,736
`
`
`
`Bonutti argues that joinder of the proceedings will prejudice it and delay the
`
`’191 IPR. Paper 8 at 8-12. Petitioner disagrees. Bonutti has disclaimed nine of the
`
`seventeen claims at issue in the ’191 IPR (see IPR2014-00191, Paper 26) and the
`
`new petition challenges only three additional dependent claims. The new petition
`
`relies on the same reference (Walker) applied against other claims in the ’191 IPR,
`
`includes only one additional secondary reference, and involves similar issues of
`
`claim construction as in the ’191 IPR. Given this overlap, Bonutti’s claims of
`
`prejudice are suspect. Moreover, Bonutti did not even file a preliminary response
`
`or depose the Petitioner’s expert in the ’191 IPR. Regardless, the minimal amount
`
`of work required by Bonutti is strongly outweighed by the public interest in having
`
`consistency of outcome concerning similar claimed subject matter and prior art.
`
`And any inconvenience is outweighed by the prejudice to Petitioner who would be
`
`time barred if the motion is denied. Finally, Bonutti will not be prejudiced by the
`
`proposed change in the schedule for at least the reasons discussed below.
`
`III. ADJUSTMENT TO THE ’191 IPR SCHEDULE WILL BE MINIMAL
`
`
`
`Bonutti proposes a 5-month change in the schedule of the ’191 IPR. Paper 8
`
`at 12-14. But such a change is not necessary even though the Board has discretion
`
`to adjust the one-year time period for a final determination in joined proceedings.
`
`See Paper 3 at 15. Bonutti has agreed to file its preliminary response by September
`
`12, 2014. Assuming the Board grants the petition and motion for joinder by
`
`
`
`-4-
`
`
`
`Case IPR2014-01078
`Patent No. 7,837,736
`
`September 30, 2014, Petitioner proposes that (1) Bonutti be given until November
`
`14, 2014 to file a supplemental response and any motion to amend to address the
`
`grounds for claims 23-25, and (2) the remaining schedule for the ’191 IPR be
`
`adjusted as follows to accommodate joinder of the proceedings and allow for a
`
`final written decision within one year of institution of the ’191 IPR:
`
`Item
`
`Current Date
`
`Due Date 2
`
`October 10, 2014
`
`Proposed Date
`
`December 19, 2014
`
`Due Date 3
`
`November 10, 2014
`
`January 19, 2015
`
`Due Date 4
`
`December 1, 2014
`
`February 9, 2015
`
`Due Date 5
`
`December 15, 2014
`
`February 23, 2015
`
`Due Date 6
`
`December 22, 2014
`
`March 2, 2015
`
`Due Date 7
`
`January 9, 2015
`
`March 16, 2015
`
`
`
`This is just one example of how the schedule can be adjusted. Petitioner is
`
`willing to accept any other schedule proposed by the Board. Moreover, Petitioner
`
`will accommodate any other reasonable logistical or scheduling request by Bonutti
`
`to facilitate joinder and timely resolution of the proceedings.
`
`
`
`
`
`
`
`
`
`
`
`
`
` Respectfully Submitted,
`
`Dated: August 18, 2014
`
`By:
`
`
`/Naveen Modi/
`Naveen Modi (Reg. No. 46,224)
`
`Counsel for Petitioner
`
`
`
`-5-
`
`
`
`Case IPR2014-01078
`Patent No. 7,837,736
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on this 18th day of August 2014, a copy of the foregoing
`
`Petitioner’s Reply to Patent Owner’s Opposition to Petitioner’s Motion for
`
`Joinder was served by e-mail on the following counsel of record for Patent
`
`Owner, Bonutti Skeletal Innovations, LLC:
`
`Cary Kappel – ckappel@ddkpatent.com
`
`William Gehris – wgehris@ddkpatent.com
`
`
`Dated: August 18, 2014
`
`By:
`
`
`/Naveen Modi/
`Naveen Modi (Reg. No. 46,224)
`
`Counsel for Petitioner
`
`
`
`
`
`
`
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