Paper 33
`Entered: February 14, 2018
`
`Trials@uspto.gov
`571–272–7822
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SMITH & NEPHEW, INC.,
`Petitioner,
`
`v.
`
`CONFORMIS, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-00373 (Patent 8,551,169 B2)
`Case IPR2017-00510 (Patent 7,981,158 B2)
`Case IPR2017-00511 (Patent 7,981,158 B2)1
`____________
`
`Before PATRICK R. SCANLON, BEVERLY M. BUNTING,
`JAMES A. WORTH, and AMANDA F. WIEKER,
`Administrative Patent Judges.
`
`WIEKER, Administrative Patent Judge.
`
`ORDER
`Oral Argument
`35 U.S.C. § 316(a)(10) and 37 C.F.R. § 42.70
`
`
`1 We exercise our discretion to issue a common paper in each proceeding
`with a joint caption. The parties are not authorized to do the same.
`
`
`Entered: February 14, 2018
`
`Trials@uspto.gov
`571–272–7822
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SMITH & NEPHEW, INC.,
`Petitioner,
`
`v.
`
`CONFORMIS, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-00373 (Patent 8,551,169 B2)
`Case IPR2017-00510 (Patent 7,981,158 B2)
`Case IPR2017-00511 (Patent 7,981,158 B2)1
`____________
`
`Before PATRICK R. SCANLON, BEVERLY M. BUNTING,
`JAMES A. WORTH, and AMANDA F. WIEKER,
`Administrative Patent Judges.
`
`WIEKER, Administrative Patent Judge.
`
`ORDER
`Oral Argument
`35 U.S.C. § 316(a)(10) and 37 C.F.R. § 42.70
`
`
`1 We exercise our discretion to issue a common paper in each proceeding
`with a joint caption. The parties are not authorized to do the same.
`
`
`
`IPR2017-00373 (Patent 8,551,169 B2)
`IPR2017-00510 (Patent 7,981,158 B2)
`IPR2017-00511 (Patent 7,981,158 B2)
`
`
`Inter partes review proceedings have been instituted in the above-
`captioned proceedings. IPR2017-00373, Paper 8; IPR2017-00510, Paper 9;
`IPR2017-00511, Paper 9. Pursuant to a joint request from the parties, a
`single oral hearing date has been scheduled for the captioned proceedings, if
`oral hearings are requested by the parties and granted by the Board. See
`IPR2017-00373, Papers 9, 13; IPR2017-00510, Papers 10, 13; IPR2017-
`00511, Papers 10, 13. Both parties request oral argument for each of these
`proceedings, pursuant to 37 C.F.R. § 42.70(a). IPR2017-00373, Papers 27,
`28; IPR2017-00510, Papers 27, 28; IPR2017-00511, Papers 27, 28. The
`parties’ requests are granted.
`The hearing will commence at 10:00 AM Eastern Time on Tuesday,
`March 13, 2018, and will be open to the public for in-person attendance on
`the ninth floor of Madison Building East, 600 Dulany Street, Alexandria,
`Virginia (Hearing Room A). In-person attendance will be accommodated on
`a first-come, first-served basis. We will provide a court reporter for the
`hearing, and the reporter’s transcript will constitute the official record of the
`hearing.
`Petitioner, Smith & Nephew, Inc. (“Smith & Nephew”), requests
`thirty (30) minutes of total argument time. See, e.g., IPR2017-00373,
`Paper 27, 1. Patent Owner, ConforMIS, Inc. (“ConforMIS”), requests forty-
`five (45) minutes of total argument time. See, e.g., IPR2017-00373,
`Paper 28, 1. We have reviewed the issues that the parties intend to address
`in these proceedings, and we determine that each party should be accorded
`forty-five (45) minutes of total argument time to present arguments for all
`three proceedings. Because the composition of the panels presiding over
`these proceedings vary, the oral hearing will be conducted as detailed below.
`2
`
`
`
`
`
`IPR2017-00373 (Patent 8,551,169 B2)
`IPR2017-00510 (Patent 7,981,158 B2)
`IPR2017-00511 (Patent 7,981,158 B2)
`
`
`Smith & Nephew bears the ultimate burden of proof that the
`challenged claims are unpatentable. 35 U.S.C. § 316(e). Smith & Nephew,
`therefore, will open the hearing by presenting its case regarding the
`challenged claims for which the Board instituted trial in IPR2017-00373.
`Smith & Nephew will have fifteen (15) minutes of total time to address this
`proceeding. After Smith & Nephew’s presentation, ConforMIS will respond
`to Smith & Nephew’s argument, with fifteen (15) minutes of total time to
`address this proceeding. Smith & Nephew may reserve time for rebuttal, out
`of its allotted time, to respond to argument presented by ConforMIS.
`A short recess will then take place, to allow the panel for IPR2017-00510
`and IPR2017-00511 to be seated.
`Thereafter, Smith & Nephew will present its case regarding the
`challenged claims for which the Board instituted trial in IPR2017-00510 and
`IPR2017-00511. Smith & Nephew will have thirty (30) minutes of total
`time to address these two proceedings. After Smith & Nephew’s
`presentation, ConforMIS will respond to Smith & Nephew’s argument, with
`thirty (30) minutes of total time to address these proceedings. Smith &
`Nephew may reserve time for rebuttal, out of its allotted time, to respond to
`argument presented by ConforMIS.
`Pursuant to 37 C.F.R. § 42.70(b), demonstrative exhibits must be
`served no later than seven (7) business days before the hearing date. They
`shall be filed with the Board no later than five (5) business days before the
`hearing date. Demonstrative exhibits are not evidence, but merely a
`visual aid for use at the hearing. Demonstrative exhibits shall not
`introduce new arguments or evidence. The parties shall meet and confer to
`discuss any objections to demonstrative exhibits at least three (3) business
`3
`
`
`
`
`
`IPR2017-00373 (Patent 8,551,169 B2)
`IPR2017-00510 (Patent 7,981,158 B2)
`IPR2017-00511 (Patent 7,981,158 B2)
`
`days before the hearing. If any issues regarding demonstratives remain
`unresolved after the parties meet and confer, the parties shall file jointly a
`one-page list of objections to the demonstrative exhibits at least two (2)
`business days before the hearing. For each objection, the list must identify
`with particularity the demonstratives subject to the objection and include a
`short, one-sentence statement explaining the objection. We will consider the
`objections and schedule a conference call if necessary. Regardless of
`whether the propriety of any demonstrative exhibit is disputed by either
`party, we consider demonstrative exhibits only to the extent (1) they
`elucidate the parties’ arguments presented during the hearing and (2) they
`include only arguments and/or evidence already of record in the
`proceedings. For further guidance on what constitutes an appropriate
`demonstrative exhibit, the parties are directed to CBS Interactive Inc. v.
`Helferich Patent Licensing, LLC, Case IPR2013-00033 (PTAB Oct. 23,
`2013) (Paper 118).
`We expect lead counsel for each party to be present at the hearing;
`however, any backup counsel may make the actual presentation, in whole or
`in part. See Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,758
`(Aug. 14, 2012). If lead counsel for either party is unable to attend the
`hearing, the parties shall request a joint telephone conference call no later
`than two (2) business days prior to the hearing date to discuss the matter.
`At least one member of the panel will be attending the hearing
`electronically from a remote location and will have access only to the
`courtesy copy of the demonstratives provided in advance, as referenced
`above, and will not be able to view the projection screen in the hearing
`room. We take this opportunity to remind the parties that each presenter
`4
`
`
`
`
`
`IPR2017-00373 (Patent 8,551,169 B2)
`IPR2017-00510 (Patent 7,981,158 B2)
`IPR2017-00511 (Patent 7,981,158 B2)
`
`must identify clearly and specifically each demonstrative exhibit (e.g., by
`slide or screen number) referenced during the hearing to ensure the clarity
`and accuracy of the reporter’s transcript, and to enable any judge that is
`attending the hearing from a remote location to follow the presentation.
`Requests for special accommodations or audio-visual equipment are
`to be made at least five (5) business days in advance of the hearing date.
`Such requests must be sent to Trials@uspto.gov. If the requests are not
`received timely, requested accommodations and/or equipment may not be
`available on the day of the hearing.
`
`
`
`
`
`5
`
`
`
`IPR2017-00373 (Patent 8,551,169 B2)
`IPR2017-00510 (Patent 7,981,158 B2)
`IPR2017-00511 (Patent 7,981,158 B2)
`
`PETITIONER:
`
`Christy Lea
`Joseph Re
`Colin Heideman
`Benjamin Anger
`KNOBBE, MARTENS, OLSON, & BEAR, LLP
`2cgl@knobbe.com
`2jrr@knobbe.com
`2cbh@knobbe.com
`2bba@knobbe.com
`
`PATENT OWNER:
`
`Sanya Sukduang
`Timothy McAnulty
`Daniel Klodowski
`Kassandra Officer
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
`sanya.sukduang@finnegan.com
`timothy.mcanulty@finnegan.com
`daniel.klodowski@finnegan.com
`kassandra.officer@finnegan.com
`
`
`
`6
`
`
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