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`Paper __
`Filed on behalf of: BONUTTI SKELETAL INNOVATIONS LLC
`Date: September 12, 2014
`
`By: Cary Kappel, Lead Counsel
`
`William Gehris, Backup Counsel
`
`Davidson, Davidson & Kappel, LLC
`
`485 Seventh Avenue
`
` New York, NY 10018
`
`Telephone (212) 736-1257
`
`
`
`(212) 736-2015
`
`Facsimile (212) 736-2427
`
`E-mail:
`ckappel@ddkpatent.com
`
`
`
`wgehris@ddkpatent.com
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ZIMMER HOLDNGS,
`INC. and ZIMMER, INC.
`Petitioner,
`
`v.
`
`
`
`BONUTTI SKELETAL INNOVATIONS LLC
`
`Patent Owner
`
`
`
`
`
`
`
`
`Case: IPR2014-001078
`
`Patent 7,837,736
`_______________
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`
`
`Case: IPR2014-01078
`Patent 7,837,736
`Pursuant to 35 U.S.C. §313 and 37 C.F.R. §42.107, Patent Owner, Bonutti
`
`
`
`Skeletal Innovations, LLC ("Bonutti"), submits the following Patent Owner’s
`
`Preliminary Response in response to a Petition for inter partes review filed by Zimmer
`
`Holdings, Inc. and Zimmer Inc. ("Zimmer") concerning claims 23, 24 and 25 of U.S.
`
`Patent No. 7,837,736 ("the '736 patent") (Ex. 1001).
`
`Petitioner contends under Ground 1 that claim 25 is anticipated by Walker et al.
`
`U.S. Patent 5,755,801 ("Walker") (Ex. 1002); and contends under Ground 2 that claims
`
`23-25 are obvious over Walker in view of Buechel et al. U.S. Patent 4,340,978
`
`("Buechel") (Ex. 1012). (See Petition, Paper 1, pp. 26-30, 30-34).
`
`Petitioner previously challenged the validity of claims 23 and 24 in IPR2014-
`
`00191, and the Board rejected Petitioner's challenge finding that "Petitioner has not
`
`demonstrated a reasonable likelihood of prevailing on its contention that the
`
`subject matter of claims 23 and 24 would have been obvious over (i) Walker and
`
`Insall '658 or (ii) Walker, Insall '658, and Insall '283. See Zimmer v. Bonutti
`
`Skeletal Innovations, LLC, IPR2014-00191, Institution Decision, Paper 12, p. 16 (Pat.
`
`App. 2014). Petitioner also challenged the validity of claim 25 in IPR2014-00191 on
`
`multiple grounds, including anticipation by Walker, all of which were rejected because
`
`"Petitioner has failed to provide the claim construction analysis required by 37 C.F.R. §
`
`42.104(b) (3) for the means-plus function limitation recited in claim 25." (Id. at 13).
`
`Petitioner was served with a complaint alleging infringement of the '736
`
`
`
`2
`
`
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`Case: IPR2014-01078
`Patent 7,837,736
`patent on January 4, 2013, more than a year prior to the July 10, 2014 filing date
`
`
`
`of the Petition (Petitioner's Motion for Joinder, Paper 3, p. 1). Accordingly, the
`
`Petition is barred under 37 C.F.R. § 42.102(b) absent joinder with IPR2014-00191
`
`under 37 C.F.R. § 42.122(b). Patent Owner opposed the Petitioner's Motion for
`
`Joinder (Paper 3) on the grounds that it is untimely and not an appropriate
`
`mechanism to seek reconsideration of a denial of an inter partes review of claims,
`
`particularly in this case where the Petitioner seeks review on the identical claims
`
`previously denied. (See Patent Owner Opposition to Joinder, Paper 8).
`
`For at least1 the reasons set forth herein, Petitioner has, for a second time, failed to
`
`meet its burden to establish a reasonable likelihood that claim 25 is anticipated by Walker or
`
`that claims 23-25 are unpatentable as obvious over of Walker in view of Buechel, and thus,
`
`the inter partes review of claims 23-25 of the '736 patent should again be denied
`
`under 35. U.S.C. § 314(a).
`
`I.
`
`The '736 Patent
`
`The '736 patent describes a number of surgical techniques, surgical
`
`instruments, and implants. Claims 23-25 are directed to an embodiment of the '736
`
`1 This paper sets forth Patent Owner's preliminary response to the petition under 37
`
`C.F. R. § 42.107(a). Patent Owner expressly reserves the right to contest any ground
`
`of patentability for which review is instituted, and to contest any and all factual and
`
`legal contentions asserted in the Petition.
`
`
`
`3
`
`
`
`Case: IPR2014-01078
`Patent 7,837,736
`patent, which can be illustrated with Figures 88-89, reproduced below:
`
`
`
`
`
`Figures 88-89 illustrate a mobile bearing implant 1250 including a femoral
`
`component 1252 and a tibial component 1254. (Id., col. 99, ll. 36-38).The tibial
`
`component 1254, in turn, is comprised of a tibial tray 1266 and a bearing insert
`
`1268. Tray 1266 includes a tapered spike 1270 and a plate member 1272. (Id., col.
`
`99, ll. 50-51). Plate member 1272 has a superior surface 1274 which is shown as "a
`
`concave, spherically shaped plateau surface." (Id., col. 99, ll. 53-54). Bearing insert
`
`1268 has a spherically shaped inferior surface 1284 so that the interface between
`
`tibial tray 1266 and bearing insert 1268 enables sliding motions along these inferior
`
`(1284) and superior (1274) surfaces. (Id., col. 99, ll. 56-60).
`
`The superior surface of the bearing insert 1268 interfaces with the femoral
`4
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`Case: IPR2014-01078
`Patent 7,837,736
`component 1252. In this regard, the superior surface of the bearing insert includes a
`
`
`
`pair of depressions (1280 in Figure 89) that form bearing surfaces for the condyles
`
`surfaces of the femoral component. (Id., col. 100, ll. 6-8).
`
`The bearing insert 1268 includes a recess in the form of a dovetail shaped
`
`groove 1286 which mates with a protrusion in the form of a dovetail pin shaped track
`
`1276. Although "shown centrally located, track 1276 can be located elsewhere along
`
`superior surface 1274 . . .." (Id., Figures 88-89. col. 99, l. 62 to col. 100, l. 1).
`
`Although Figures 88-89 depict the protrusion 1276 on the tray 1266 and the
`
`recess 1268 on the bearing insert 1268, this arrangement can be switched so that the
`
`protrusion is on the bearing insert and the recess is on the tray. (Id., col. 100, ll. 2-5).
`
`Further, although this self-centering mobile bearing implant is illustrated with
`
`reference to total knee replacement, it can also be "applied to . . . partial knee
`
`replacement." (Id., col. 102, ll. 1-4).
`
`II. Claims 23-25 Of The '736 Patent
`
`Claims 23-25 depend from claim 15.2 Claims 15, 23-25 are set forth
`
`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:
`
`
`2 A statutory disclaimer has previously been filed with regard to Claim 15. See
`
`Zimmer v. Bonutti Skeletal Innovations, LLC, IPR2014-00191, Paper 26.
`
`
`
`5
`
`
`
`
`
`Case: IPR2014-01078
`Patent 7,837,736
`a base component, including a bone contacting 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 side, said
`movable sliding side being matably positionable in sliding engagement
`with said base sliding side, and an articulating side on an opposite side
`of said 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.
`
`24. The device of claim 23, wherein 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.
`
`25. The device of claim 15, further including means associated
`
`
`
`6
`
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`Case: IPR2014-01078
`Patent 7,837,736
`with said protrusion to prevent a separation of said base sliding side and
`said movable sliding side.
`
`
`
`III. Claim Construction
`
`Claim 25 recites "means associated with said protrusion to prevent a
`
`separation of said base sliding side and said movable sliding side." Patent Owner
`
`believes that claim 25 should be construed under 35 U.S.C. § 112, ¶ 6. Turning to
`
`the specification of the '736 patent, the corresponding structure in the specification
`
`which is "associated with said protrusion" and which performs the function of
`
`preventing "a separation of said base sliding side and said movable sliding side" is
`
`the dovetail of track 1276 of Figure 88 and 89. In this regard, patent owner notes
`
`that the specification expressly states that although "shown centrally located, track
`
`1276 can be located elsewhere along superior surface 1274 . . .." ('736 patent,
`
`Figures 88-89. col. 99, l. 62 to col. 100, l. 1), and thus can be "substantially offset
`
`with respect to a midline of the first side of a joint" as required by claim 15.
`
`Accordingly, Patent Owner believes that the means of claim 25 should be
`
`construed to mean a dovetail track, or equivalent thereof, which performs the
`
`function of preventing a separation of said base sliding side and said movable
`
`sliding side.
`
`
`
`
`
`
`
`7
`
`
`
`IV. The Prior Art
`
`
`
`Case: IPR2014-01078
`Patent 7,837,736
`
`Petitioner relies on two prior art references in challenging claims 23-25 of
`
`the '736 Patent: (i) Walker et al. U.S. Patent 5,755,801 ("Walker") (Ex. 1002); and
`
`(ii) Buechel et al. U.S. Patent 4,340,978 ("Buechel") (Ex. 1012).
`
`A. Walker
`
`Walker is a U.S. Patent issued on May 26, 1998 and is directed to prostheses for
`
`knee replacement. (Walker, title). Referring to Figure 2a, there is a tibial platform 41
`
`and a meniscal component 44. Tibial platform 41 includes an "upstanding stud 42", a
`
`"rail 48", and "a semicircular abutment 50 which is upstanding at the medial side of
`
`the platform." (Walker, col. 4, ll. 12-13, 20, 23-25).
`
`Meniscal component 44 includes a "slot 43" which receives the stud 42, "a recess
`
`49" that engages with the rail 48, and "a recess or notch 51" which is "rounded." (Id.,
`
`col. 4, ll. 13, 20-21, 25-29) (emphasis added). "Rotation of the meniscal component
`
`44 about an axis X at the edge of the tibial platform is controlled by [the] abutment
`
`50." (Id., col. 4, ll. 23-25).
`
`Figures 2a-b show "different relative positions of the meniscal component on
`
`the tibial platform at different degrees of internal and external rotation" (Id., col. 4,
`
`8
`
`
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`Case: IPR2014-01078
`Patent 7,837,736
`ll. 34-36; see also col. 2, ll. 50-56) and figure 2c "shows the manner in which the
`
`
`
`meniscal component can be fitted to the tibial platform by engaging the abutment 50
`
`in the recess 51 and then stud 42 in its corresponding slot 43." (Id., col. 4, ll. 30-33;
`
`see also col. 2, ll. 58-60).
`
`B.
`
`Buechel
`
`Buechel is a U.S. Patent issued on July 27, 1982 that is directed to a meniscal
`
`bearing knee replacement prosthesis. The prosthesis includes a tibial platform, one or
`
`two tibial bearing inserts and a femoral component (Buechel, Abst.). The dovetail
`
`joint in Buechel is made up of a curved track 148 (dovetail tail) and an intermediate
`
`tibial bearing component 117 (dovetail pin).
`
`
`
`
`
`There are two curved tracks 148 and 153 that are part of a tibial platform 116.
`
`As illustrated in Figure 16 (above), the curved tracks 148 and 153 are curved about a
`
`9
`
`
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`Case: IPR2014-01078
`Patent 7,837,736
`point generally center to tibial platform component 116. Each curved track 148 and
`
`
`
`153 receives and partially constrains tibial bearing components 117. Each tibial
`
`bearing component 117 has a dovetail surface 144 that engages curved track 148.
`
`(See id., figures 15-21, 32A-B, col. 15, ll. 19-29). As the intermediate tibial bearing
`
`components 117 move forward and rearward from the central position they move
`
`closer together due to the shape of curved tracks 148. (Id., col. 15, ll. 47-51). Figure
`
`36 (below) shows the inward motion of tibial bearing components 117 when they
`
`move in the posterior direction in their respective curved tracks 148 and 153 (Id, col.
`
`11, ll. 32-41). The curved tracks 148 and 153 guide tibial bearing components about
`
`a point generally center to tibial platform component 116.
`
`
`
`The inward motion of the tibial bearing components 117 provides a rotational
`
`movement that is about an axis generally center to tibial bearing component 117.
`
`
`
`
`
`
`
`10
`
`
`
`V.
`
`
`
`Case: IPR2014-01078
`Patent 7,837,736
`Petitioner Has Not Established A Reasonable Likelihood That
`Claim 25 Is Unpatentable Under 35 U.S.C. §102 As Anticipated By
`Walker
`For the reasons set forth below, Petitioner has not met its burden to show that
`
`there is a reasonable likelihood that claim 25 is unpatentable under 35 U.S.C. §102
`
`as anticipated by Walker.
`
`Petitioner asserts that claim 25 is unpatentable because "abutment 50 and its
`
`semicircular shape prevent separation of the base sliding side and the movable
`
`sliding side." (Petition, p. 29).
`
`As explained above, when properly construed, claim 25 requires that the
`
`protrusion include a dovetail track or equivalent thereof.
`
`Semicircular abutment 50 is not a dovetail track or equivalent thereof.
`
`Petitioner's contention that claim 25 is anticipated by Walker should be rejected on
`
`this basis alone.
`
`Further, Petitioner’s explanation that abutment 50 and its semicircular shape
`
`prevents separation of the meniscal component 44 (i.e., movable sliding side) from
`
`tibial platform 41 (i.e., base sliding side) is incorrect. Meniscal component 44 can be
`
`fitted to and removed from tibial platform 41 by engaging abutment 50 in recess 51.
`
`Further, Walker expressly discloses the purpose of abutment 50 and recess 51 as
`
`something different than preventing separation. Specifically, abutment 50 controls
`
`rotation about an axis X at the edge of the tibial platform while recess or notch 51
`
`
`
`11
`
`
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`Case: IPR2014-01078
`Patent 7,837,736
`allows approximately 2 mm of movement in the anterior and posterior direction.
`
`
`
`(Walker, col. 4, ll. 23-28).
`
`If anything, stud 42, slot 43 and end 47 of Walker control the separation
`
`between meniscal component 44 and tibial platform 41.
`
`"Stud 42 is received in a slot 43 in the meniscal component 44 and slot
`43 includes an upper groove 45 for receiving the head of the stud 42 in
`such a way as to prevent lift-off of the meniscal component from the
`platform. Slot 43 is closed at the anterior end 47 in order to provide a
`stop for movement of the meniscal component in the posterior direction.
`A stop or brake for movement in the opposite direction is provided by a
`rail 48 which engages in a corresponding recess 49 of the meniscal
`component." (Id., col. 4, ll. 14-22) (emphasis added).
`
`However, stud 42 cannot be the claimed protrusion because it is not
`
`"substantially offset with respect to a midline of the first side of a joint."
`
`Accordingly, Walker neither performs the function recited by claim 25, nor
`
`includes the corresponding structure or equivalents of the claimed means under 35
`
`U.S.C. § 112,¶ 6.
`
`Accordingly, for at least these reasons, Petitioner has not met its burden to
`
`establish that there is a reasonable likelihood that claim 25 is unpatentable under 35
`
`U.S.C. §102 as anticipated over Walker.
`
`
`
`
`
`12
`
`
`
`Case: IPR2014-01078
`Patent 7,837,736
`VI. Petitioner Has Not Established That There Is A Reasonable Likelihood
`That Claims 23-25 Are Unpatentable Under 35 U.S.C. §103 As Obvious
`Over Walker In View Buechel
`For the reasons set forth below, Petitioner has not met its burden to show that
`
`
`
`there is a reasonable likelihood that claims 23-25 are unpatentable as obvious over
`
`Walker in view of Buechel.
`
`A. The Proposed Modification Of Walker In View Of Buechel
`Changes The Principle Of Operation Of Walker
`Petitioner proposes that it would have been "obvious to a person of ordinary
`
`skill in the art to substitute the dovetail joint structure of the Buechel patent for the
`
`abutment and recess of the Walker patent." (Petition p. 31) (emphasis added) (see
`
`also Petition p. 32, 34).
`
`However, this proposed substitution changes the principle operation of
`
`Walker, and thus, is not sufficient to render the claims prima facie obvious. See Ex
`
`parte Yasuhisa Ito, Appeal 2009-001701, 2009 Pat. App. Lexis 8758, 5-6 (Pat. App.
`
`2009) and MPEP 2143.01 (VI) (9th Ed. March 2014) both citing In re Ratti, 270 F.2d
`
`810, 813, 123 USPQ 349, 352 (CCPA 1959) ("If the proposed modification or
`
`combination of the prior art would change the principle of operation of the prior art
`
`invention being modified, then the teachings of the references are not sufficient to
`
`render the claims prima facie obvious."); Ex parte James R. Almeda et al, Appeal
`
`2010-006998, 2012 Pat. App. LEXIS 1281 (Pat. App. 2012), citing In re Ratti, 270
`
`F.2d at 813 ( "we conclude that the proposed modification would change the
`
`13
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`Case: IPR2014-01078
`Patent 7,837,736
`principle of operation of Ito, and the combined teachings of Ito and Sutcliffe are not
`
`
`
`sufficient to render the claims prima facie obvious").
`
`
`
`
`
`1.
`
`The Principle of Operation of Walker Requires Rotational of
`Meniscal Component 44 About an Axis Located At the Edge
`of Tibial Platform 44
`Claims 22-25 depend from claim 15 and accordingly require a "protrusion
`
`substantially offset with respect to a midline of the first side of a joint.” To meet this
`
`limitation of claim 15, Petitioner relies on abutment 50 in the embodiment shown in
`
`Figures 2a-2c of Walker. (Petition, p. 28). No other embodiment of Walker is alleged
`
`to provide the claimed protrusion. The principle operation of this embodiment of
`
`Walker requires a meniscal component that is guided in an anterior-posterior
`
`direction on a tibial component where the meniscal component has a limited
`
`rotational movement centered about an X axis at a medial edge of the tibial platform.
`
`(Walker, col. 2, ll. 29-33). Abutment 50 on tibial platform 41 controls rotation of the
`
`meniscal component about an X axis "at the edge of the tibial platform" and a recess
`
`or notch 51 in meniscal component 44 is shaped to allow approximately 2 mm of
`
`movement in the anterior and posterior direction. (Id., col. 4, ll. 23-28).
`
`Figures 2a-b in Walker show different positions of meniscal component 44 on
`
`tibial platform 41 at different degrees of internal and external rotation. (Id., col. 4, ll.
`
`34-36; see also col. 2, ll. 50-66). Figure 2c shows the manner in which meniscal
`
`component 44 can be fitted onto tibial platform 41 by engaging the abutment 50 in
`
`
`
`14
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`Case: IPR2014-01078
`Patent 7,837,736
`the recess 51 and then stud 42 in its corresponding slot 43. (Id., col. 4, ll. 30-33; see
`
`
`
`also col. 2, ll. 58-60). In each case, Walker requires a recess or notch shaped to allow
`
`approximately 2 mm of movement in the anterior and posterior direction and requires
`
`that the meniscal component be guided in an anterior-posterior direction having a
`
`limited rotational movement centered about an X axis at a medial edge of the tibial
`
`platform. (Id., Abst.; col. 4, ll. 23-28). Notably, the rotational movement in Walker is
`
`not about an axis center to tibial platform 41.
`
`
`
`
`
`2.
`
`The Principle of Operation of Buechel Is for the
`Dovetail Joint to Provide Rotation of the Bearing
`Component About a Central Axis of the Tibial Platform
`The dovetail joint in Buechel is made up of a curved track 148 (dovetail tail)
`
`and an intermediate tibial bearing component 117 (dovetail pin). (See Buechel, Figs.
`
`16, 19). There are two curved tracks 148 and 153 that are part of a tibial platform
`
`116. The curved tracks 148 and 153 are curved about a point generally center to
`
`tibial platform component 116. Each curved track 148 and 153 receives and partially
`
`constrains a tibial bearing component 117 that has a dovetail surface 144 that
`
`engages curved track 148. (See id., Figs. 15-21, 32A-B; col. 15, ll. 19-29). As tibial
`
`bearing components 117 move forward and rearward from the central position they
`
`move closer together in an inward motion because of the shape of curved tracks 148.
`
`(See id., col. 15, ll. 47-51). The curved tracks 148 and 153 guide tibial bearing
`
`components 117 about a point generally center to tibial platform component 116.
`
`
`
`15
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`Case: IPR2014-01078
`Patent 7,837,736
`The inward motion of the tibial bearing components 117 provides a rotational
`
`
`
`movement that is about an axis generally center to tibial bearing component 117.
`
`
`
`
`
`3. Walker And Buechel Are Not Combinable
`
`Petitioner argues that "the abutment 50 and recess 51 of the Walker patent
`
`cooperate to provide an ‘offset’ rotational axis for the meniscal component 44 with
`
`respect to the tibial platform 41 in a mobile bearing implant [and the] Buechel patent
`
`similarly discloses a dovetail joint structure including a dovetail surface 144 on the
`
`bearing component that mates with the dovetail tracks on the tibial platform
`
`component 116 to enable constrained movement of the bearing component on the
`
`platform component." (Petition, pp. 30-31) (emphasis added). However, the only
`
`similarity is that there is "constrained movement" in both references, nothing more.
`
`Relying on Dr. Erdman’s declaration, Petitioner simply argues that it is a mere
`
`design choice to substitute an abutment and recess with a dovetail. (Ex. 1013, 2nd
`
`Erdman ¶ 27).
`
`However, substituting the abutment and recess with the dovetail joint of
`
`Buechel does not provide a limited rotational movement centered about an X axis at a
`
`medial edge of the tibial platform, as required in Walker. To the contrary, the
`
`dovetail joint of Buechel provides a rotational axis generally center to the tibial
`
`platform component. In Buechel, the curved tracks are curved around an axis point
`
`generally center to the tibial platform component and guide the tibial bearing
`
`
`
`16
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`Case: IPR2014-01078
`Patent 7,837,736
`components about this center. If the dovetail joint in Buechel were to be
`
`
`
`"substituted" for the abutment and recess in Walker (as proposed by the Petitioner),
`
`meniscal component 44 in Walker could no longer rotate or pivot about an X axis at
`
`the edge of the tibial platform 41, but rather would rotate about stud 42 located in the
`
`center of the tibial platform 41.
`
`Further, Buechel teaches a dovetail track with openings at both ends that in no
`
`way can control the "approximately 2 mms movement in an anterior and posterior
`
`direction," also required by Walker. (Walker, col. 4, ll. 26-29). Without this specific
`
`requirement none of the positions of the meniscal component on the tibial platform
`
`shown in figures 2a-c can be achieved.
`
`In his Declaration, Dr. Erdman alleges that dovetail joint structures of Buechel
`
`provide "the same function as that provided by the abutment 50 and recess 51 in the
`
`Walker patent." On this basis he concludes that it would have been obvious to
`
`"substitute the dovetail joint structures of the Buechel patent for the abutment and
`
`recess of the Walker patent." (Ex. 1013, 2nd Erdman ¶ 27). However, as established
`
`above, the dovetail joint structures of Buechel do not provide rotational movement
`
`centered about an X axis at a medial edge of the tibial platform, and do not provide
`
`"approximately 2 mms movement in an anterior and posterior direction," as required
`
`by Walker. Further, Dr. Erdman does not even attempt to explain how the dovetail
`
`joint structures of Buechel could provide such motion.
`
`
`
`17
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`Case: IPR2014-01078
`Patent 7,837,736
`The abutment and recess in Walker function in an entirely different way than
`
`
`
`the dovetail pin and tail in Buechel. Further the dovetail pin and tail in Buechel are
`
`designed to provide an entirely different rotation motion than the abutment and
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`recess of Walker. In particular, the principle of operation of Walker is to use the
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`abutment and recess to provide rotation about an axis on the edge of the tibial
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`platform. In sharp contrast, the dovetail joint of Buechel is designed to provide
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`rotation about the center of the tibial platform.
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`Accordingly, the Petitioner’s proposed substitution changes the principle
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`operation of Walker, and thus, is not sufficient to render the claims 23-25 prima
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`facie obvious.
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`18
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`VII. Conclusion
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`
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`Case: IPR2014-01078
`Patent 7,837,736
`
`Accordingly, the Petitioner has not met its burden of establishing a reasonable
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`likelihood that claim 25 is anticipated by Walker or that claims 23-25 are obvious
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`over Walker in view of Buechel, and thus, the inter partes review of '736 patent should
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`be denied under 35 U.S.C. § 314(a).
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`Respectfully submitted,
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`
`
` /Cary Kappel/
`Cary Kappel, Reg. 36,561
`William Gehris, Reg. 38,156
`Davidson, Davidson & Kappel, LLC
`485 Seventh Avenue
`New York, NY 10018
`
`Counsel for Patent Owner
`BONUTTI SKELETAL INNOVATIONS
`LLC
`
`September 12, 2014
`
`By:
`
`
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`19
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`
`
`Case: IPR2014-01078
`Patent 7,837,736
`
`CERTIFICATE OF SERVICE
`
` hereby certify that on this 12th day of September, 2014, a true and correct copy of
`the foregoing PATENT OWNER’S PRELIMINARY RESPONSE was served by
`electronic mail pursuant to Petitioner's consent, upon the following counsel of record
`for Petitioners ZIMMER HOLDINGS, INC. and ZIMMER, INC.:
`
`Naveen Modi
`Paul Hastings LLP
`875 15th Street N.W.
`Washington, D.C. 20005
`Telephone: (202) 551-1990
`Facsimile: (202) 551-0490
`naveenmodi@paulhastings.com
`
`
`Joseph Palys
`Paul Hastings LLP
`875 15th Street N.W.
`Washington, D.C. 20005
`Telephone: (202) 551-1996
`Facsimile: (202) 551-0496
`josephpalys@paulhastings.com
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` /Cary Kappel/
`Cary Kappel
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` I
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