`571-272-7822
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` Paper 8
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`Entered: September 11, 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`MEDTRONIC, INC.,
`Petitioner,
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`
`
`
`
`v.
`
`NUVASIVE, INC.,
`Patent Owner.
`____________
`
`Case IPR2014-00487
`Patent 8,361,156 B2
`____________
`
`Before SALLY C. MEDLEY, LORA M. GREEN, and STEPHEN C. SIU,
`Administrative Patent Judges.
`
`GREEN, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
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`
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`I.
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`BACKGROUND
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`Medtronic, Inc. (“Medtronic”) filed a Petition (“Pet.”) requesting an
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`inter partes review of claims 1–14, 19, 20, and 23–27 of U.S. Patent No.
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`8,361,156 B2 (Ex. 1013, “the ’156 patent”) on March 5, 2014. Paper 1.
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`Patent Owner, NuVasive, Inc. (“NuVasive”), filed a Patent Owner
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`Preliminary Response (“Prelim. Resp.”). Paper 6. We have jurisdiction
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`under 35 U.S.C. §§ 6(b) and 314.
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`ALPHATEC HOLDINGS, INC., ALPHATEC SPINE INC. - IPR2019-00362, Ex. 1044, p. 1 of 8
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`Inter partes review is instituted only if the petition supporting the
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`ground demonstrates “that there is a reasonable likelihood that the petitioner
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`would prevail with respect to at least 1 of the claims challenged in the
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`petition.” 35 U.S.C. § 314(a); see also 37 C.F.R. § 42.108(c) (noting that
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`inter partes review is only instituted if the petition demonstrates “that there
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`is a reasonable likelihood that at least one of the claims challenged in the
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`petition is unpatentable”).
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`Based on the circumstances in this case, we exercise our discretion
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`under 35 U.S.C. § 325(d) to deny the Petition, and, therefore, decline to
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`institute inter partes review.
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`
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`A. Related Proceedings
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`Petitioner states it is a named counterclaim-defendant in a district
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`court case involving the ’156 patent, Warsaw Orthopedic, Inc. v. NuVasive
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`Inc., Case No: 3:12-cv-02738-CAB-MDD (S.D. Cal.).. Pet. 1–2.
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`Petitioner also indicates that it previously filed two other petitions for
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`inter partes review of the ’156 patent on August 14, 2013: “the ’504
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`Petition” in IPR2013-00504 and “the ’506 Petition” in IPR2013-00506. Pet.
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`2. Petitioner notes that the Board instituted trial as to the ’506 Petition as
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`claims 1–14, 19, 20, and 23–27 of the ’156 patent (“the ’506 Proceeding”),
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`but denied the ’504 Petition. Id. According to Petitioner, the instant Petition
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`remedies the deficiencies of the ’504 Petition, and also “adds new arguments
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`and evidence as to the length disclosure of U.S. Patent Appl. Pub. No.
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`2002/0165550 to Frey.” Id.
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`2
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`ALPHATEC HOLDINGS, INC., ALPHATEC SPINE INC. - IPR2019-00362, Ex. 1044, p. 2 of 8
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`B. The ’156 Patent (Ex. 1013)
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`The ’156 patent is drawn to a spinal implant, and methods of spinal
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`fusion using the implant. ’156 patent, col. 1, ll. 20–24. A spinal fusion
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`procedure generally involves removing some, or all, of a diseased spinal
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`disc, and inserting an intervertebral implant into the disc space. Id. at col. 1,
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`ll. 30–33. The spinal fusion implant is introduced into the disc space via a
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`lateral approach to the spine, or via a posterior, anterior, antero-lateral, or
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`postero-lateral approach. Id. at col. 5, ll. 29–35. As taught by the ’156
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`patent, the implant is made from a material “having suitable radiolucent
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`characteristics,” such as poly-ether-ether-ketone (PEEK). Id. at col. 5, ll. 10-
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`15.
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`C. Representative Claim
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`Medtronic challenges claims 1–14, 19, 20, and 23–27 of the ’156
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`patent. Claim 1 is the only independent claim, and reads as follows
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`(emphasis added):
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`1. A spinal fusion implant of non-bone construction positionable
`within an interbody space between a first vertebra and a second
`vertebra, said implant comprising:
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`an upper surface including anti-migration elements to
`contact said first vertebra when said implant is positioned
`within the interbody space, a lower surface including anti-
`migration elements to contact said second vertebra when said
`implant is positioned within the interbody space, a distal wall, a
`proximal wall, a first sidewall, and a second sidewall generally
`opposite from the first sidewall, wherein said distal wall,
`proximal wall, first sidewall, and second sidewall comprise a
`radiolucent material;
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`3
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`ALPHATEC HOLDINGS, INC., ALPHATEC SPINE INC. - IPR2019-00362, Ex. 1044, p. 3 of 8
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`wherein said implant has a longitudinal length extending
`from a proximal end of said proximal wall to a distal end of
`said distal wall, said implant has a maximum lateral width
`extending from said first sidewall to said second sidewall along
`a medial plane that is generally perpendicular to said
`longitudinal length, and said longitudinal length is greater than
`said maximum lateral width;
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`at least a first fusion aperture extending through said
`upper surface and lower surface and configured to permit bone
`growth between the first vertebra and the second vertebra when
`said implant is positioned within the interbody space, said first
`fusion aperture having: a longitudinal aperture length extending
`generally parallel to the longitudinal length of said implant, and
`a lateral aperture width extending between said first sidewall to
`said second sidewall, wherein the longitudinal aperture length is
`greater than the lateral aperture width; and
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`at least first and second radiopaque markers oriented
`generally parallel to a height of the implant, wherein said first
`radiopaque marker extends into said first sidewall at a position
`proximate to said medial plane, and said second radiopaque
`marker extends into said second sidewall at a position
`proximate to said medial plane.
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`D. Prior Art Relied Upon
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`Medtronic relies upon the following prior art references:
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`Frey et al., US Patent Appl. Pub. No. 2002/0165550 A1,
`published November 7, 2002 (Ex. 1003) (“Frey”).
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`Baccelli et al., US Patent Appl. Pub. No. 2003/0028249 A1,
`published February 6, 2003 (Ex. 1004) (“Baccelli”).
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`Michelson, US 5,860,973, issued January 19, 1999 (Ex. 1005)
`(“Michelson”).
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`4
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`ALPHATEC HOLDINGS, INC., ALPHATEC SPINE INC. - IPR2019-00362, Ex. 1044, p. 4 of 8
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`Moret, US Patent Appl. Pub. No. 2003/0100950 A1, published
`May 29, 2003 (Ex. 1006) (“Moret”).
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`Messerli et al., US Patent Appl. Pub. No. 2003/0139813 A1,
`published July 24, 2003 (Ex. 1007) (“Messerli”).
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`E. The Asserted Grounds of Unpatentability
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`Medtronic challenges the patentability of claims of the ’156 patent on
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`the following grounds. Pet. 4.
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`Reference(s)
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`Frey and Baccelli
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`Basis
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`§ 103
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`§ 103
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`Frey, Baccelli, and
`Messerli
`Frey, Baccelli, and
`Michelson
`Frey, Baccelli, and Moret § 103
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`§ 103
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`Baccelli and Frey and/or
`Michelson
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`§ 103
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`II. ANALYSIS
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`Claims challenged
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`1–8, 10–14, 19, 20,
`and 23–27
`1–8, 10–14, 19, 20,
`and 23–27
`1–14, 19, 20, and
`23–27
`1–8, 10–14, 19, 20,
`and 23–27
`1–8, 10–14, 19, 20,
`and 23–27
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`Patent Owner argues that Petitioner is seeking inter partes review of
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`claims 1–14, 19, 20, and 23–27 of the ’156 patent for a third time. Prelim.
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`Resp. 1. According to Patent Owner, the instant Petition “is essentially a
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`duplicate of its previously denied petition in the ’504 IPR.” Id. at 2.
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`As set forth in 35 U.S.C. § 325(d):
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`In determining whether to institute or order a proceeding under this
`chapter, chapter 30, or chapter 31, the Director may take into account
`whether, and reject the petition or request because, the same or
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`5
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`ALPHATEC HOLDINGS, INC., ALPHATEC SPINE INC. - IPR2019-00362, Ex. 1044, p. 5 of 8
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`substantially the same prior art or arguments previously were
`presented to the Office.
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`Petitioner argues that while it “is mindful of 35 U.S.C. § 325(d), the
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`denial of the ’504 Petition has no bearing on this Petition.” Pet. 2.
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`According to Petitioner, it is responding to “a noted deficiency,” and is
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`providing new evidence and argument as to how the previously supplied
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`prior art renders the challenged claims obvious. Id. at 2–3. Petitioner argues
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`further that the grounds presented in the instant Petition are not redundant to
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`those that were instituted in the ’506 Proceeding, as “those grounds are
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`based on different prior art references and different arguments.” Id. at 3.
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`Trial was instituted in the ’506 Proceeding on February 13, 2013.
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`That proceeding involves the same patent, as well as the same claims, for
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`which Petitioner is requesting inter partes review in the instant Proceeding.
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`While Petitioner argues that the grounds are not redundant to those instituted
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`on in the ’506 Proceeding, Petitioner does not provide any specific reasoning
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`to support that argument, other than to state that the grounds are based on
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`different prior art references. Oral argument is currently scheduled for
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`November 18, 2014, in the ’506 proceeding.
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`Moreover, the instant Petition presents the same prior art previously
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`presented in the ’504 Petition, and the proposed challenges to the claims are
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`nearly identical to the proposed challenges in the ’504 Petition. Compare
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`Pet. 4, with ’504 Petition 3 (same claims are challenged over the same prior
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`art references). As in the ’504 Petition, in the instant proceeding Petitioner
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`is relying on Frey (Ex. 1003) for teaching, or suggesting, the limitation of
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`claim 1 that the “implant has a maximum lateral width extending from said
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`first sidewall to said second sidewall along a medial plane that is generally
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`6
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`ALPHATEC HOLDINGS, INC., ALPHATEC SPINE INC. - IPR2019-00362, Ex. 1044, p. 6 of 8
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`perpendicular to said longitudinal length, and said longitudinal length is
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`greater than said maximum lateral width.” Pet. 19, 48 (discussion of
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`element “Claim 1 [E]”); see also IPR2013-00504, Paper 7, 6 (noting that
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`Frey is relied upon as to all the asserted challenges to teach the recited
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`limitation).
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`We have considered the papers filed in this proceeding, as well as the
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`Petition and papers filed in the request for inter partes review in IPR2013-
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`00504. Petitioner has not provided any persuasive reasoning as to why we
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`should institute inter partes review over “the same or substantially the same
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`prior art or arguments” that were presented by the ’504 Petition. In addition,
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`Petitioner is involved in the ’506 Proceeding, which involves all of the same
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`claims challenged here. Based on the totality of the facts before us, we
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`exercise our discretion under 35 U.S.C. § 325(d), and deny the Petition in
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`this proceeding.
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`III. ORDER
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`In consideration of the foregoing, it is hereby:
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`ORDERED that the Petition is denied as to all challenged claims of
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`the ’156 patent.
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`7
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`ALPHATEC HOLDINGS, INC., ALPHATEC SPINE INC. - IPR2019-00362, Ex. 1044, p. 7 of 8
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`Case IPR2014-00487
`Patent 8,361,156
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`PETITIONER:
`
`Jeff E. Schwartz
`Seth A. Kramer
`Fox Rothschild LLP
`jeschwartz@foxrothschild.com
`skramer@foxrothschild.com
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`PATENT OWNER:
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`Stephen R. Schaefer
`Michael Hawkins
`Fish & Richardson P.C. (TC)
`schaefer@fr.com
`IPR13958-0116IP3@fr.com
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`8
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`ALPHATEC HOLDINGS, INC., ALPHATEC SPINE INC. - IPR2019-00362, Ex. 1044, p. 8 of 8
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