UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________
`
`
`
`MAKO SURGICAL CORP.,
`Petitioner
`
`v.
`
`BLUE BELT TECHNOLOGIES, INC.,
`Patent Owner
`
`______________________
`
`Case IPR2015-00630
`Patent No. 6,205,411 B1
`_______________________
`
`
`PETITIONER MAKO SURGICAL CORP.’S REPLY
`TO PATENT OWNER RESPONSE
`
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`dc-819442
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`Petitioner’s Reply to Patent Owner’s Response
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`IPR2015-00630
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`TABLE OF CONTENTS
`
`I. 
`II. 
`
`III. 
`
`INTRODUCTION ........................................................................................... 1 
`DIGIOIA QUALIFIES AS § 102(B) PRIOR ART ......................................... 4 
`A. 
`There is No Support for Knee, Hand and Wrist, Elbow, Shoulder, and
`Foot and Ankle Joints in the Parent ‘933 Application .......................... 5 
`Examiner’s Rejection is Consistent with Obviousness ......................... 8 
`B. 
`IF NOT § 102(B) PRIOR ART, DIGIOIA QUALIFIES AS § 102(A)
`PRIOR ART ..................................................................................................... 9 
`A.  A Prima Facie Case is Made Out Due to Authorship Differences ..... 10 
`Jaramaz’ Declaration is Not Sufficient to Overcome the Prima Facie
`B. 
`§ 102(a) Case ....................................................................................... 11 
`IV.  CLAIMS 1, 10, AND 17 WERE OBVIOUS IN LIGHT OF DIGIOIA ....... 17 
`A. 
`It Would Have Been Obvious to Output A Position for Implantation
`Based on DiGioia ................................................................................ 17 
`DiGioia Discloses a Preoperative Planner that Outputs a Model ....... 23 
`B. 
`DiGioia Discloses Creating a Three-Dimensional Model .................. 23 
`C. 
`CONCLUSION .............................................................................................. 25 
`
`
`V. 
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`Petitioner’s Reply to Patent Owner’s Response
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`Table of Authorities
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`
`CASES
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`IPR2015-00630
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`Page(s)
`
`Ariad Pharms., Inc. v. Eli Lilly & Co.,
`598 F.3d 1336 (Fed. Cir. 2010) .........................................................................................9
`
`Aventis Pharma Deutschland GmbH v. Lupin, Ltd.,
`499 F.3d 1293 (Fed. Cir. 2007) .......................................................................................22
`
`Centocor Ortho Biotech, Inc. v. Abbott Labs.,
`636 F.3d 1341 (Fed. Cir. 2011) .........................................................................................4
`
`Eisai Co. v. Dr. Reddy's Labs., Ltd.,
`533 F.3d 1353 (Fed. Cir. 2008) .........................................................................................9
`
`Fujikawa v. Wattanasin,
`93 F.3d 1559 (Fed. Cir. 1996) ...........................................................................................5
`
`Hyatt v. Boone,
`146 F.3d 1348 (Fed. Cir. 1998) .........................................................................................7
`
`In re Aoyama, No. 00-1213,
`2000 U.S. App. LEXIS 33139 (Fed. Cir. Dec. 18, 2000) ...........................................9
`
`In re Katz,
`687 F.2d 450 (C.C.P.A. 1982) ...................................................................................10, 11
`
`In re Lukach,
`442 F.2d 967 (C.C.P.A. 1971) ...........................................................................................7
`
`In re Ruschig,
`379 F.2d 990 (C.C.P.A. 1967) ...........................................................................................6
`
`In re Smith,
`458 F.2d 1389 (C.C.P.A. 1972) .........................................................................................8
`
`Novozymes A/S v. DuPont Nutrition Biosciences APS,
`723 F.3d 1336 (Fed. Cir. 2013),
`cert. denied, 134 S. Ct. 1501 (2014) ............................................................................4, 5
`
`Purdue Pharma L.P. v. Faulding Inc.,
`230 F.3d 1320, 56 USPQ2d 1481 (Fed. Cir. 2000) ..................................................6, 8
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`Petitioner’s Reply to Patent Owner’s Response
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`Rozbicki v. Chiang,
`590 F. App’x 990 (Fed. Cir. 2014) ...................................................................................7
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`OTHER AUTHORITIES
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`M.P.E.P. § 2132.01(I) ..............................................................................................................10
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`Petitioner’s Reply to Patent Owner’s Response
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`Exhibit List for Inter Partes Review of U.S. Patent No. 6,205,411
`Exhibit Description
`
`Exhibit #
`
`U.S. Patent No. 6,205,411 (“the ’411 patent”)
`
`Prosecution History of U.S. Patent No. 6,205,411
`
`Prosecution History of U.S. Patent No. 5,880,976
`
`Declaration of Robert D. Howe
`
`A.M. DiGioia et al., “HipNav: Pre-operative Planning and
`Intraoperative Navigational Guidance for Acetabular Implant
`Placement in Total Hip Replacement Surgery,” 2nd CAOS
`Symposium, 1996 (“DiGioia”)
`
`Anthony M. DiGioia III et al., “An Integrated Approach to
`Medical Robotics and Computer Assisted Surgery in
`Orthopaedics,” Proc. 1st Int’l Symposium on Medical Robotics
`and Computer Assisted Surgery, pp. 106-111, 1995 (“DiGioia II”)
`
`E.Y.S. Chao et al., “Simulation and Animation of Musculoskeletal
`Joint System,” Transactactions of the ASME, Vol. 115, pp. 562-
`568, Nov. 1993 (“Chao”)
`
`R.V. O’Toole III et al., “Towards More Capable and Less Invasive
`Robotic Surgery in Orthopaedics,” Computer Vision, Virtual
`Reality and Robotics in Medicine Lecture Notes in Computer
`Science, Vol. 905, pp. 123-130, 1995 (“O’Toole”)
`
`Russell H. Taylor et al., An Image-Directed Robotic System for
`Precise Orthopaedic Surgery, IEEE Transactions on Robotics and
`Automation, Vol. 10, No. 3, June 1994 (“Taylor”)
`
`1001
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`*Petitioner’s Exhibits 1001 – 1009 were previously filed and are simply listed
`based on 37 C.F.R. § 42.63.
`
`Deposition Transcript of Dr. Cleary
`
`Deposition Transcript of Dr. Jaramaz – Filed Under Seal
`
`1010
`
`1011
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`Petitioner’s Reply to Patent Owner’s Response
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`Exhibit Description
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`IPR2015-00630
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`Exhibit #
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`Deposition Transcript of Dr. Jaramaz – Redacted
`
`Declaration of Eric R. Kischell
`
`Intentionally left blank
`
`Intentionally left blank
`
`U.S. Patent No. 5,880,976 (“the ’976 patent”)
`
`Intentionally left blank
`
`Web page from Carnegie Mellon University for Branislav Jaramaz
`
`A.M. DiGioia et al., “HipNav: Pre-operative Planning and Intra-
`Operative Navigational Guidance for Acetabular Implant
`Placement in Total Hip Replacement Surgery,” Proc. of the CAOS
`Symposium, Nov. 1995
`
`CAOS Symposium Final Program, 18 November 30 - December 2,
`1995
`
`D.A. Simon et al., “Development and Validation of a Navigational
`Guidance System for Acetabular Implant Placement”
`
`1012
`
`1013
`
`1014
`
`1015
`
`1016
`
`1017
`
`1018
`
`1019
`
`1020
`
`1021
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`Petitioner provides this Reply under 37 C.F.R. § 42.23 to Patent Owner’s
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`Response on Behalf of Party Named as Patent Owner, dated November 10, 2015
`
`(Paper 11) (“Response”).1 With this Reply and its Petition filed on January 28,
`
`2015, Petitioner requests relief through the cancellation of claims 1-17 of U.S.
`
`Patent No. 6,205,411 (“the ’411 patent”) (Ex. 1001).
`
`I.
`
`INTRODUCTION
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`The Board instituted inter partes review of claims 1-15 and 17 based on
`
`DiGioia (Ex. 1005) and claim 16 based on DiGioia in view of DiGioia II (Ex.
`
`1006). (Decision (Paper 6) at 11.) In its Response, Patent Owner seeks to
`
`overcome the instituted grounds by arguing that DiGioia does not qualify as prior
`
`art, and that Petitioner’s obviousness grounds lack the required “rational
`
`underpinning” to support an obviousness determination. Patent Owner is wrong on
`
`both counts.
`
`Because the ’411 patent claims recite specific joints that constitute subject
`
`matter not found in the parent ’933 application, the ’411 patent is not entitled to the
`
`parent application’s filing date, and instead must stand on its own filing date of
`
`November 12, 1998. DiGioia is an article published at least as early as 1996, more
`
`1 Petitioner refers to both Patent Owner Carnegie Mellon University and named
`
`Patent Owner, Blue Belt Technologies, Inc. as “Patent Owner” in this Reply. See
`
`the Board’s December 17, 2015 Order (Paper 13).
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`than one year prior to the filing date of the continuation-in-part application that led
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`to the ’411 patent, and it thus qualifies as prior art under 35 U.S.C. § 102(b).
`
`Even if the ’411 patent were somehow entitled to claim the parent
`
`application’s February 21, 1997 filing date (which it is not), DiGioia qualifies as §
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`102(a) prior art. Because the inventive entities of the ’411 patent and the system
`
`described in DiGioia differ, a prima facie § 102(a) prior art showing has been
`
`made. Patent Owner has not overcome this prima facie showing with Dr.
`
`Jaramaz’s declaration, which lacks foundation and is not a reliable statement
`
`regarding the inventive entity involved with the article. Indeed, while Patent
`
`Owner failed to submit a declaration from anyone who had actual knowledge about
`
`the naming of the authors who contributed to DiGioia, Petitioner has submitted a
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`declaration from Mr. Eric Kischell, one of the authors who was not named on the
`
`’411 patent, explaining his role in drafting the article and developing the system
`
`described therein. Because he clearly belongs to the inventive entity of the
`
`DiGioia article, the inventive entity of DiGioia is not the same as that of the ’411
`
`patent, such that DiGioia is at least § 102(a) prior art.
`
`Finally, Petitioner has shown that DiGioia renders claims 1, 10, and 17
`
`obvious. The requirement in claims 1 and 10 that the pre-operative simulator
`
`output a position for implantation was shown to be an obvious variation of
`
`DiGioia. Patent Owner’s argument to the contrary, that one of ordinary skill in the
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`art would not seek to modify the DiGioia system in that way because surgeons
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`preferred to retain control over implant positioning, is inapposite because the
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`required modification can be made in a semiautonomous system that allows for
`
`surgeon input.
`
`DiGioia also renders obvious the requirement in claims 1 and 10 that the
`
`pre-operative geometric planner “outputs at least one geometric model of the
`
`joint.” In DiGioia, the geometric model is stored in memory and is an input to
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`both the pre-operative planner and the range of motion simulator; the range of
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`motion simulator estimates range of motion based on the parameters provided by
`
`the planner, which are based on the geometric model; and DiGioia Figure 3 depicts
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`bi-directional communication between the pre-operative planner and the range of
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`motion simulator. Given this system as described in the article, it would not be
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`difficult for a person of ordinary skill to see that the pre-operative planner could
`
`output a geometric model along with the placement parameters rather than having
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`the geometric model stored in memory and accessed separately.
`
`The claim 17 requirement of “creating a three-dimensional component
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`model of the artificial implant” is disclosed by DiGioia Figure 4, which depicts
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`positioning of the implant across three orthogonal views of the pelvis, and which
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`one of ordinary skill in the art would understand represents a three-dimensional
`
`model.
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`Petitioner’s Reply to Patent Owner’s Response
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`II. DIGIOIA QUALIFIES AS § 102(B) PRIOR ART
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`The independent claims of the ’411 patent, which specifically recite
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`implantation in “. . . a knee joint, a hand and wrist joint, an elbow joint, a shoulder
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`joint, [or] a foot and ankle joint[,]” cannot find support sufficient to satisfy § 112 in
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`the written description of the parent ’933 application, and thus the ’411 patent
`
`claims are only entitled to the actual filing date of the continuation-in-part
`
`application that led to the ’411 patent on November 12, 1998. Novozymes A/S v.
`
`DuPont Nutrition Biosciences APS, 723 F.3d 1336, 1344 (Fed. Cir. 2013), cert.
`
`denied, 134 S. Ct. 1501 (2014); see also Centocor Ortho Biotech, Inc. v. Abbott
`
`Labs., 636 F.3d 1341, 1348 (Fed. Cir. 2011) (“To satisfy the written description
`
`requirement, the applicant must convey with reasonable clarity to those skilled in
`
`the art that, as of the filing date sought, he or she was in possession of the
`
`invention, and demonstrate that by disclosure in the specification of the patent”)
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`(internal quotations and citations omitted). From this it follows that DiGioia
`
`qualifies as prior art under § 102(b) because DiGioia was published in 1996 (Ex.
`
`1005 at 1; see also Ex. 1001 at 9:33-38 (dating the publication of the DiGioia
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`article in 1996), more than one year prior to the November 12, 1998 filing date of
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`the continuation-in-part application.
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`A.
`
`There is No Support for Knee, Hand and Wrist, Elbow, Shoulder,
`and Foot and Ankle Joints in the Parent ‘933 Application
`
`Introducing claim changes which narrow the claims by introducing
`
`limitations that are not supported by the as-filed disclosure violates the written
`
`description requirement. See Fujikawa v. Wattanasin, 93 F.3d 1559, 1571 (Fed.
`
`Cir. 1996) (“a ‘laundry list’ disclosure of every possible moiety” does not
`
`“constitute a written description of every species in the genus . . . because such a
`
`disclosure would not ‘reasonably lead’ those skilled in the art to any particular
`
`species”).
`
`In its Response, Patent Owner misleadingly omits the key fact that the
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`specific “knee,” “hand and wrist,” “elbow,” “shoulder,” and “foot and ankle” joints
`
`are found nowhere in the claimed priority ’993 application. (Ex. 1003.)
`
`References to these specific joints are only found in the continuation-in-part
`
`application having been added in 1998.
`
`Additionally, the case law is consistent and clear that disclosure of a genus
`
`does not provide written description support for unstated, specific species of the
`
`genus. See e.g., Novozymes A/S, 723 F.3d at 1346 (“We have often . . . h[e]ld
`
`claims invalid in cases where a patent’s written description disclosed certain
`
`subject matter in terms of a broad genus but its claims specified a particular
`
`subgenus or species contained therein”).
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`Patent Owner argues that “one of ordinary skill in the art would have
`
`understood that surgeries involving a hip joint are representative of a class of
`
`surgeries involving regions of the body that have ‘bony landmarks’”. (Response at
`
`24.) And Patent Owner’s expert, Dr. Cleary, went even further in his deposition to
`
`claim that when the parent application referenced a patient’s joint, “it could define
`
`any joint that you could kind of define by bony landmarks or that were commonly
`
`performed orthopedic procedures[,]” which would include the specific joints
`
`provided in claims 1-17 of the ’411 patent and many more. (Deposition Transcript
`
`of Dr. Cleary (filed herewith as Ex. 1010) at 26:12-27:7.)
`
`However, the “trouble is that there is no such disclosure, easy though it is to
`
`imagine it.” In re Ruschig, 379 F.2d 990, 995 (C.C.P.A. 1967). And this is just
`
`what the case law rejects. Patent Owner has not sufficiently provided support in
`
`the parent application for every species within the genus “joint.” Instead, the
`
`parent application provided support specifically for a “hip” joint, as that was
`
`provided as a specific example of “joint” (see, e.g., Ex. 1003, p. 21at 1:17-33
`
`(discussing hip replacement operations)), but provided no support for the unstated
`
`laundry list of other joints with “bony landmarks,” including the knee, hand and
`
`wrist, elbow, shoulder, and foot and ankle joints identified in the ’411 patent
`
`claims. See Purdue Pharma L.P. v. Faulding Inc., 230 F.3d 1320, 1328, 56
`
`USPQ2d 1481, 1487 (Fed. Cir. 2000) (“the specification does not clearly disclose
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`to the skilled artisan that the inventors . . . considered the [] ratio to be part of their
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`invention. . . . There is therefore no force to Purdue’s argument that the written
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`description requirement was satisfied because the disclosure revealed a broad
`
`invention from which the [later-filed] claims carved out a patentable portion”); In
`
`re Lukach, 442 F.2d 967 (C.C.P.A. 1971) (applicant not entitled to benefit of
`
`parent filing date where claim was directed to subgenus range, and parent
`
`application contained generic disclosure and specific example that fell within
`
`recited range because subgenus range not described).
`
`Additionally, Patent Owner’s argument that because the movements of the
`
`knee, hand and wrist, elbow, shoulder, and foot and ankle joints were well known
`
`and because locations on these joints could be tracked using light emitting diodes,
`
`the parent application somehow disclosed them is unavailing. (Response at 25-26.)
`
`Even Dr. Cleary acknowledged that “each joint has a different geometry.” (Ex.
`
`1010 at 28:18-22.) The Patent Owner’s general observations are not sufficient to
`
`show that the specific joints claimed in the ’411 patent were named or exemplified
`
`in the parent application. See Rozbicki v. Chiang, 590 F. App’x 990, 999 (Fed. Cir.
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`2014) (vacating PTAB’s written description decision where PTAB did not provide
`
`any analysis as to how a brief discussion about “etching,” which can occur without
`
`an “etch to deposition ratio greater than 1 in the bottom of the plurality of vias,”
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`also disclosed that limitation); Hyatt v. Boone, 146 F.3d 1348, 1353-54 (Fed. Cir.
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`1998) (“It is insufficient as written description . . . to provide a specification that
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`does not unambiguously describe all limitations”); In re Smith, 458 F.2d 1389,
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`1395 (C.C.P.A. 1972) (“it cannot be said that such a subgenus is necessarily
`
`always implicitly described by a genus encompassing it and a species upon which
`
`it reads”).
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`“[O]ne cannot disclose a forest in the original application, and then later pick
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`a tree out of the forest and say ‘here is my invention.’ In order to satisfy the
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`written description requirement, the blaze marks directing the skilled artisan to that
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`tree [] must be in the originally filed disclosure.” Purdue Pharma L.P., 230 F.3d at
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`1326-27 (citing In re Ruschig, 54 C.C.P.A. 1551, 379 F.2d 990, 994-95, 154 USPQ
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`118, 122 (1967)). Here, Patent Owner has not provided the blaze marks directing
`
`the skilled artisan to the specific “knee,” “hand and wrist,” “elbow,” “shoulder,”
`
`and “foot and ankle” joints in the parent application. Therefore, Patent Owner can
`
`only rely on the ’411 patent’s November 12, 1998 filing date, and DiGioia
`
`qualifies as prior art under § 102(b).
`
`B.
`
`Examiner’s Rejection is Consistent with Obviousness
`
`Patent Owner argues that the obvious-type double patenting rejection that
`
`the Examiner issued during prosecution of the ’411 patent application somehow
`
`demonstrates written description support because Patent Owner did not amend the
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`scope of the claims to overcome the rejection. (Response at 26-27.) But this
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`rejection only shows that the specific joints added to the ’411 patent application
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`were obvious over the subject matter claimed in the ’976 patent. See e.g., In re
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`Aoyama, No. 00-1213, 2000 U.S. App. LEXIS 33139, at*9 (Fed. Cir. Dec. 18,
`
`2000) (“When the rejection . . . is for obviousness-type double patenting, the test is
`
`whether the claims in the application define an obvious variation of the claim in
`
`the earlier issued patent”). Nothing in this rejection shows that the specific joints
`
`claimed were adequately disclosed in the earlier specification for written
`
`description purposes. See Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336,
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`1352 (Fed. Cir. 2010) (“a description that merely renders the invention obvious
`
`does not satisfy the [written description] requirement”) (citing Lockwood v. Am.
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`Airlines, 107 F.3d 1565, 1571–72 (Fed. Cir.1997). Further, Patent Owner did not
`
`have to amend the claims to overcome the rejection because it filed a terminal
`
`disclaimer instead. See e.g., Eisai Co. v. Dr. Reddy's Labs., Ltd., 533 F.3d 1353,
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`1360 (Fed. Cir. 2008) (noting that “applicants routinely overcome [obviousness-
`
`type double patenting] rejection . . . by amending claims or filing a terminal
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`disclaimer”).
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`III.
`
`IF NOT § 102(B) PRIOR ART, DIGIOIA QUALIFIES AS § 102(A)
`PRIOR ART
`
`If the Board determines that the ’411 patent is entitled to claim the parent
`
`application’s February 21, 1997 filing date, DiGioia still qualifies as prior art under
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`§ 102(a) because it predates the filing date and the authorship of DiGioia is not the
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`same as the inventors of the ’411 patent.
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`A.
`
`A Prima Facie Case is Made Out Due to Authorship Differences
`
`When a printed publication is filed that describes the subject matter of the
`
`claimed invention and is published before an application, the article may raise a
`
`substantial question whether the applicant is the inventor. In re Katz, 687 F.2d
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`450, 455 (C.C.P.A. 1982); see also M.P.E.P. § 2132.01(I) (“[a] prima facie case is
`
`made out under pre-AIA 35 U.S.C. 102(a) if, within 1 year of the filing date, the
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`invention, or an obvious variant thereof, is described in a ‘printed publication’
`
`whose authorship differs in any way from the inventive entity unless it is stated
`
`within the publication itself that the publication is describing the applicant’s
`
`work”).
`
`A prima facie case that DiGioia is prior art has been made out under §
`
`102(a) because DiGioia was published no later than 1996 and the authorship of
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`DiGioia differs from that of the ’411 patent: Dr. Takeo Kanade, who is listed as an
`
`inventor of the ’411 patent, is not listed as an author of DiGioia; and DiGioia lists
`
`Mr. Bruce Colgan and Mr. Eric Kischell as authors, neither of whom are listed as
`
`inventors of the ’411 patent. (Ex. 1005 at 1; Ex. 1001 at 1.)
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`B.
`
`Jaramaz’ Declaration is Not Sufficient to Overcome the Prima
`Facie § 102(a) Case
`
`Because of the different authors of DiGioia, it was incumbent on Patent
`
`Owner to provide a showing which would lead to a reasonable conclusion that the
`
`inventive entity of DiGioia and the ’411 patent are identical. In re Katz, 687 F.2d
`
`at 455. Patent Owner has failed to do so. Patent Owner has submitted only one
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`declaration on the subject, that of Dr. Jaramaz, the founder and CTO of Blue Belt.
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`At his deposition, it became clear that he did not have the factual knowledge
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`necessary to establish that the inventive entities were identical. Indeed, Dr.
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`Jaramaz appears to have signed a declaration without having actual recollections to
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`support what was written.
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`Dr. Jaramaz states in his declaration that Dr. Kanade, an inventor of the ’411
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`patent, was not listed as an author of the DiGioia article because he was not
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`working day-to-day on the system at the time. (Ex. 2002 at ¶ 11.) Dr. Jaramaz
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`named Dr. Kanade to other articles at the time, but not this one. (Deposition
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`Transcript of Dr. Jaramaz (filed herewith as Ex. 1012) at 23:16-25:13.) Although
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`Dr. Jaramaz’s declaration contains extensive comments on the contributions to the
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`article, he did not know who decided to omit Dr. Kanade as an author of the article,
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`and did not ask anyone else how this process occurred:
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`Q Do you know who decided to not list Dr. Kanade on the
`HipNav article? Do you know who made that decision?
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`A No.
`Q Was it you?
`A No. It wasn't me.
`Q You haven't spoken with anyone who made the decision to
`determine why they did it, have you?
`A Not that I recall. No.
`Q If you didn't make the decision yourself and you haven't
`spoken to anyone who did make the decision and you are not sure
`who made the decision, you can't really tell us why he was left off.
`Correct?
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`. . .
`A I can tell you my opinion, if that is worth anything. I cannot
`tell you the exact reasons.
`(Ex. 1012 at 25:14-26:5 (objection omitted).) Thus, at the end of the day, Patent
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`Owner has not offered any factual testimony explaining Dr. Kanade’s omission
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`from the article. Without such testimony, his omission from the inventive entity of
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`DiGioia means that there is a different inventive entity pertaining to the system
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`described in the article than the one in the ’411 patent, and DiGioia qualifies as §
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`102(a) prior art.
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`There are further problems with Patent Owner’s “same inventive entity”
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`argument. Mr. Kischell is listed as a co-author of DiGioia, but is not listed as an
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`inventor of the ’411 patent. Because he is part of the inventive entity of the system
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`included in DiGioia, there is an additional hurdle that Patent Owner has not
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`overcome. In Dr. Jaramaz’s declaration, he admitted that Mr. Kischell was
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`involved in developing the HipNav System discussed in DiGioia on a day-to-day
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`basis, and that Mr. Kischell developed a user interface for the HipNav system.
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`(Ex. 2002 at ¶¶ 11, 16.) In his deposition, Dr. Jaramaz further admitted that the
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`software that Mr. Kischell developed made it possible to convert the data from CT
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`scans into 3D geometric models in the HipNav system. (Ex. 1012 at 26:6-29:18.)
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`This software was not commercially available and needed to be created specifically
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`for the HipNav system. (Id. at 27:14-18.) All of these admissions point to Mr.
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`Kischell being part of the inventive entity of the DiGioia article.
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`Although Dr. Jaramaz’s declaration attempts to minimize Mr. Kischell’s
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`contribution to the system and the article, in his deposition, it became clear that he
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`did not know what Mr. Kischell’s contribution had been to the article. (Ex. 1012 at
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`47:9-19.) Mr. Kischell did not report to Dr. Jaramaz. (Id. at 29:5-11.) Thus, once
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`again, in describing Mr. Kischell’s role in the article, Dr. Jaramaz was simply
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`providing his opinion about what might have happened, rather than what did in fact
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`happen.
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`Fortunately, we do not need to speculate about Mr. Kischell’s contribution
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`as he has provided a declaration on the subject. (See Declaration of Eric R.
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`Kischell (filed herewith as Ex. 1013).) At the time of his work on the article, Mr.
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`Kischell held a M.S. in Electrical Engineering from Texas A&M University, and a
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`B.S. in Electrical Engineering from Northeastern University. (Ex. 1013 at ¶ 1.)
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`His expertise encompasses image processing, pattern recognition, 3D visualization,
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`object oriented architecture, user interface prototyping and code optimization. (Id.)
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`In working on the HipNav system, he solved the problem of how to integrate the
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`intra-operative tracking and guidance system into a graphical user interface. (Id. at
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`¶¶ 7-8.) The data had to be integrated and tracked in real time in a capable
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`graphical user interface so that the surgeon could utilize the intra-operative
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`tracking and guidance system to accurately place the implant in the predetermined
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`optimal position. (Id. at ¶ 8.) He also developed a way to process the CT scans so
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`that they could be utilized in the pre-operative planner. (Id. at ¶ 9.) Both of these
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`solutions were utilized in the HipNav System as represented in the DiGioia article.
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`(Id. at ¶¶ 7-9.) It took approximately 14 months to create the graphical user
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`interface, and approximately 20 months to develop the CT scan pre-processing
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`software. (Id. at ¶ 10.) Mr. Kischell reviewed and edited the DiGioia article
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`before its publication. (Id. at ¶ 11.) Mr. Kischell’s contributions to solving the
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`software problems in the HipNav system were important to the project’s success
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`and in any event were not insubstantial. (Id. at ¶ 11.) Because Mr. Kischell was
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`properly a part of the inventive entity in DiGioia and was not part of the ’411
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`patent, Patent Owner’s “same inventive entity” argument fails.
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`Beyond these problems with his statements on the authors of DiGioia, Dr.
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`Jaramaz made further factual statements in his declaration that, at a minimum,
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`lacked foundation. While stating in his declaration that “[o]n February 22, 1996,
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`we created an initial version of [DiGioia]”, his own publication list dates the article
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`as having been published in 1995. (Ex. 1012 at 17:6-18:7; (Web page from
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`Carnegie Mellon University for Branislav Jaramaz (filed herewith as Ex. 1018) at
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`8).) He also cites DiGioia as having been published in 1995 in one of his earlier
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`articles and the “pdf” of the article on his website states that it was published in
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`1995. (Ex. 1012 at 20:24-21:20; (A.M. DiGioia et al., “HipNav: Pre-operative
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`Planning and Intra-Operative Navigational Guidance for Acetabular Implant
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`Placement in Total Hip Replacement Surgery,” Proc. of the CAOS Symposium,
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`Nov. 1995 (filed herewith as Ex. 1019) at 1); D.A. Simon et al., “Development and
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`Validation of a Navigational Guidance System for Acetabular Implant Placement”
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`(filed herewith as Ex. 1021) at 10).) On cross examination, he agreed that the
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`article was first published in 1995 and that his dating of the article as being created
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`on February 22, 1996 was incorrect. (Ex. 1012 at 21:21-22:11.) However, after
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`meeting with his counsel during a break, he testified on redirect that in fact the
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`article had been published in 1996, blaming the 1995 dates in his materials on his
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`secretary. (Ex. 1012 at 59:2-64:25.) Although the testimony is unclear, it is very
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`apparent that Dr. Jaramaz does not know or recall when the first version of the
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`article had been drafted or published. He simply signed the declaration that had
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`been drafted for him saying that DiGioia had been written on February 22, 1996,
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`conveniently exactly one year before the filing date, without actually knowing
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`when the article had actually been drafted.
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`Dr. Jaramaz’s willingness to help the Patent Owner’s cause may be the
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`product of bias. He recently received
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` due to the sale of Blue
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`Belt to Smith & Nephew for $275 million. (Ex. 1012 at 4:9-6:11.) There is also a
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`holdback amount of around
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` percent of the $275 million in escrow that will be
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`paid out -- or not paid out -- based on subsequent events. (Ex. 1012 at 6:12-6:16.)
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`When asked whether success or failure in this proceeding could affect the amount
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`of the payment of the
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` of funds in escrow, he testified that he
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`did not know. (Ex. 1012 at 6:17-7:10.) It is not credible that the head of
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`technology in a company with only a few patents would not know whether a patent
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`matter involving two of those patents could impact a
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` escrow account
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`or not. It appears more likely than not that it does, and if Patent Owner maintains
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`to the contrary, the terms of that escrow should be produced.
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`Given the weaknesses of Dr. Jaramaz’s declaration, the fact that no
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`disclaiming affidavits were filed by any of the other DiGioia co-autho