Zimmer Holdings, Inc.v.Bonutti Skeletal Innovations LLC

Patent Trial and Appeal Board

Oct 31, 2014

10722102 (P.T.A.B. Oct. 31, 2014)

Trials@uspto.gov Paper 17
Tel: 571–272–7822 Entered: October 31, 2014

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 IPR2014-01080
Patent 7,806,896 B1

Before WILLIAM V. SAINDON, MICHAEL R. ZECHER, and
RICHARD E. RICE, Administrative Patent Judges.

SAINDON, Administrative Patent Judge.

DECISION
Denial of Institution of Inter Partes Review
37 C.F.R. § 42.108
Dismissing Motion for Joinder
37 C.F.R. § 42.122
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I. INTRODUCTION
Petitioner filed a petition (Paper 1, “Pet.”) requesting an inter partes review
of claim 43 of U.S. Patent No. 7,806,896 B1 (Ex. 1001, “the ’896 patent”).
Petitioner also timely filed a motion requesting joinder (Paper 3, “Mot. Join.”) of
this proceeding to IPR2014-00321, in which we instituted an inter partes review of
claims 40–42 and 44–47 of the ’896 patent, but denied review of claim 43. Mot.
Join. 3. Patent Owner filed a preliminary response (Paper 16, “Prelim. Resp.”) and
an opposition to Petitioner’s motion for joinder (Paper 8, “PO Opp. Mot. Join.”).
We have jurisdiction under 35 U.S.C. § 314.
We have reviewed the aforementioned papers. For the reasons given below,
we do not institute an inter partes review, and we dismiss as moot Petitioner’s
motion for joinder.
A. Related Matters
Petitioner states that the ’896 patent has been asserted against it in the co-
pending district court lawsuit Bonutti Skeletal Innovations LLC v. Zimmer
Holdings, Inc., 1:12-cv-01107-GMS (D. Del.). Pet. 2. Patent Owner identifies that
lawsuit, as well as several other lawsuits against other entities, that may affect, or
be affected by, a decision in this proceeding. Paper 7, 2.
Petitioner seeks to join this proceeding to Zimmer, Inc. v. Bonutti Skeletal
Innovations LLC, Case IPR2014-00321 (PTAB) (hereinafter “Zimmer”), in which
Petitioner challenged claims 40–47 of the ’896 patent, and on June 2, 2014, we
instituted trial on claims 40–42 and 44–47 but did not institute trial on claim 43.
Petitioner identifies itself as the petitioner in IPR2014-00191 (challenging U.S.
Patent No. 7,837,736 B2) and IPR2014-00311 (challenging U.S. Patent No.
7,959,635 B1), as well as a petition, again challenging U.S. Patent No. 7,837,736
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B2, filed the same day as the present Petition (IPR2014-01078). Pet. 2–3.
Petitioner also is aware of IPR2013-00605, IPR2013-00620, and IPR2013-00621,
brought by other petitioners, which are directed to other patents at issue in the
above-identified lawsuit. Id.
B. The ’896 Patent (Ex. 1001)
Claim 43 depends from independent claim 40 and is the sole claim
challenged. Claim 40 is directed to a method for performing joint replacement
surgery. An alignment guide is custom fabricated for a patient based on the
patient’s imaging information. Ex. 1001, 116:18–24. A cutting guide is
referenced to the alignment guide, and using the cutting guide, a cut is made. Id. at
116:25–31. Claim 43 specifies that the guide surface of the cutting guide has a
width less than the width of the cut portion of the bone. Id. at 116:38–39.
C. The Asserted Grounds and Prior Art
Petitioner asserts that claim 43 is unpatentable under 35 U.S.C. § 103 in
view of Radermacher ’157,
1
Radermacher Article,
2
and Androphy.
3
Pet. 5, 25–33.
II. ANALYSIS
A. Background
In Zimmer, Petitioner asserted that claim 43 of the ’896 patent was
unpatentable in view of Radermacher ’157, Radermacher Article, and Androphy.
Pet. 1. We did not institute an inter partes review of claim 43 based on this ground

1
Int’l Pub. No. WO 93/25157, published Dec. 23, 1993 (Ex. 1003).
2
Klaus Radermacher et al., Computer-Integrated Orthopaedic Surgery:
Connection of Planning and Execution in Surgical Intervention, in Computer-
Integrated Surgery (Russell H. Taylor et al. eds., 1996) (“Radermacher Article”)
(Ex. 1004).
3
US Patent No. 4,567,885, issued Feb. 4, 1986 (Ex. 1005).
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in Zimmer:
With respect to claim 43, Petitioner asserts that it would
have been obvious to include teachings from Androphy
or Casey into the disclosures of the individual templates
in Radermacher ’157 and the Radermacher Article
because these references “all relate to total knee
replacement instruments.” Pet. 34. As above, arguing
that references are analogous art is insufficient, by itself,
to show it would have been obvious to combine the
teachings of those references in a particular manner to
arrive at the claimed invention. As such, we determine
that Petitioner has not demonstrated a reasonable
likelihood of prevailing in its contention that the subject
matter of claim 43 would have been obvious in view of
Radermacher ’157, the Radermacher Article, and either
Androphy or Casey.
Zimmer, Case IPR2013-00321, slip op. at 9 (PTAB June 2, 2014) (Paper 13).
Accordingly, we denied institution with respect to claim 43 because Petitioner did
not provide a sufficient reason to combine the teachings of Radermacher ’157,
Radermacher Article, and Androphy. Id. Indeed, Petitioner merely alleged that
the prior art references were analogous art. Id.
To bolster the prior reasoning that we deemed insufficient, Petitioner, in this
proceeding, “ha[s] more fully articulated the reasons why it would have been
obvious to a person of ordinary skill in the art to combine these references.” Pet.
32; see also id. at 30–32 (presenting Petitioner’s reasons). We do not reach the
merits of Petitioner’s additional reasoning. Instead, for the reasons discussed
below, we exercise our discretion under 35 U.S.C. § 325(d) to deny institution of
inter partes review in this proceeding.
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B. Principles of Law
A petitioner is not entitled to unlimited challenges against a patent:
In determining whether to institute or order a proceeding
under . . . chapter 31, the Director may take into account
whether, and reject the petition or request because, the
same or substantially the same prior art or arguments
previously were presented to the Office.
35 U.S.C. § 325(d). Further, in construing our authority to institute inter partes
review under 37 C.F.R. § 42.108, we are mindful of the guidance provided in
§ 42.1(b): “[37 C.F.R. § 42] shall be construed to secure the just, speedy, and
inexpensive resolution of every proceeding.”
C. Analysis
The sole difference between what Petitioner presents in this proceeding and
what Petitioner presented in Zimmer with respect to the challenge of claim 43 of
the ’896 patent is that Petitioner now provides further reasoning in support of the
same combination of prior art. Pet. 32; Mot. Join. 4; PO Opp. Mot. Join. 2–3.
Therefore, the “same prior art” was “previously presented” to the Board, with
respect to the same claim. See 35 U.S.C. § 325(d).
Petitioner is requesting, essentially, a second chance to address claim 43. In
this proceeding, however, we are not apprised of a reason that merits a second
chance. Petitioner simply presents an argument now that it could have made in
Zimmer, had it merely chosen to do so. Petitioner discusses the public policy
consideration of invalidating what Petitioner believes to be an “invalid patent,” but
does not address the key issue here, namely, whether a second petition to bolster an
inadequate argument from a first petition is warranted. Mot. Join. 11–12.
In addition, we are not persuaded that a second chance, under the facts of
this case, would help “secure the just, speedy, and inexpensive resolution of every
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proceeding.” 37 C.F.R. § 42.1(b). Permitting second chances in cases like this one
ties up the Board’s limited resources; we must be mindful not only of this
proceeding, but of “every proceeding.” Id.; see also ZTE Corp. v. ContentGuard
Holdings, Inc., Case IPR2013-00454, slip op. at 5–6 (PTAB Sept. 25, 2013) (Paper
12) (“The Board is concerned about encouraging, unnecessarily, the filing of
petitions which are partially inadequate.”); cf. Ariosa Diagnostics v. Isis
Innovation, Ltd., Case IPR2013-00250, slip op. at 3 (PTAB 2013) (Paper 4)
(granting joinder when a new product was launched, leading to a threat of new
assertions of infringement); Microsoft Corp. v. Proxyconn, Inc., Case IPR2013-
00109, slip op. at 3 (PTAB 2014) (Paper 15) (granting joinder when additional
claims had been asserted against petitioner in concurrent district court litigation).
In view of the above, we exercise our discretion under 35 U.S.C. § 325(d) to
deny the Petition and decline to institute inter partes review with respect to the
challenge asserted in the Petition, because it presents merely “the same or
substantially the same prior art or arguments” presented to us in Zimmer. As a
consequence, Petitioner’s motion for joinder is dismissed as moot.
III. ORDER
In view of the foregoing, it is hereby:
ORDERED that no trial is instituted; and
FURTHER ORDERED that Petitioner’s motion for joinder is dismissed.

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PETITIONER:
Naveen Modi
naveenmodi@paulhastings.com

Joseph Palys
josephpalys@paulhastings.com

PATENT OWNER:
Cary Kappel
ckappel@ddkpatent.com

William Gehris
wgehris@ddkpatent.com