Single-Spaced Footnotes from Corrected Petition (Paper 6)
`Case IPR2015-01346
`1 A certified English translation of the specification of the FR’034 application is
`attached as EX1007.
`2 KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 420-21 (2007) (a person of ordinary
`creativity is not an automaton and in many cases will be able to fit the teachings of
`multiple patents together like pieces of a puzzle).
`3 KSR, 550 U.S. at 417 (if a PHOSITA would recognize that a technique would
`improve similar devices in the same way, using the technique is obvious).
`4 KSR, 550 U.S. at 416 (the combination of familiar elements according to known
`methods is likely to be obvious when it does no more than yield predictable
`results).
`5 Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356 (Fed. Cir. 2008) (a
`claimed invention is likely to be obvious if it is a combination of known prior art
`elements that would reasonably have been expected to maintain their respective
`properties or functions after they have been combined).
`6 Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 U.S.P.Q.2d
`1161, 1165 (Fed. Cir. 1999); M.P.E.P. § 2111.02.
`7 In re Schreiber, 128 F.3d 1473, 1477-78, 44 U.S.P.Q.2d 1429, 1431-32 (Fed.
`Cir. 1997); M.P.E.P. § 2114.
`8 See, footnote 4, supra.
`9 See, footnote 5, supra.
`10 The preamble of claim 105 merely states the intended use of the invention and
`does not provide any distinct definition of any of the claimed invention’s
`limitations and is of no significance to claim construction. See footnote 6, supra.
`11 The claim language “which is movable into the joint between the first and second
`bones” is a recitation of the intended use for the claimed apparatus; does not
`structurally distinguish the claimed apparatus and, therefore, is not material to
`patentability. As such, this language carries no patentable weight. See, footnote 7,
`supra.
`12 See, footnote 4, supra.
`13 See, footnote 5, supra.
`14 It should be noted also that the ‘531 patent states that “the wedge member 44a is
`porous so that bone can grow through the wedge member.” ‘531 patent, EX1001
`at 10:2-3.
`
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`Exhibit 2004 Page 001
`
`Globus Medical, Inc. v. Bonutti Skeletal Innovations LLC
`Case IPR2015-01346
`Bonutti Skeletal Innovations LLC - Ex. 2004