Trials@uspto.gov
`571-272-7822
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`Paper 43
`Entered: May 8, 2018
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`SMITH & NEPHEW, INC.,
`Petitioner,
`
`v.
`
`CONFORMIS, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-00511
`Patent No. 7,981,158 B2
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`
`
`Before PATRICK R. SCANLON, JAMES A. WORTH, and
`AMANDA F. WIEKER, Administrative Patent Judges.
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`WIEKER, Administrative Patent Judge.
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`
`Conduct of the Proceeding
`37 C.F.R. § 42.5
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`
`
`

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`IPR2017-00511
`Patent No. 7,981,158 B2
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`A conference call was held on May 1, 2018, between Administrative
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`Patent Judges Scanlon, Bunting, Worth, and Wieker; counsel for Petitioner,
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`Ms. Christy Lea, Mr. Joseph Re, and Mr. Colin Heideman; and counsel for
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`Patent Owner, Mr. Timothy McAnulty, Mr. Sanya Sukduang, Mr. Daniel
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`Klodowski, Ms. Kassandra Officer, and Ms. Sydney Kestle.1 The
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`conference call was held to discuss the impact of the U.S. Supreme Court’s
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`recent decision in SAS Institute Inc. v. Iancu, 2018 WL 1914661 (U.S.
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`Apr. 24, 2018).2
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`I. BACKGROUND
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`In this proceeding, we instituted an inter partes review as to claims
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`66–72 and 81, under 35 U.S.C. § 103(a), as unpatentable over CAOS,
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`Woolson, and Alexander. Paper 9 (“Dec. on Inst.”), 27. We did not institute
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`an inter partes review as to claims 73–80, under 35 U.S.C. § 103(a), as
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`unpatentable over CAOS, Woolson, Alexander, and Radermacher.
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`Subsequent to the decision in SAS, however, we modified our Decision on
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`Institution to include the ground challenging claims 73–80. Paper 42
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`(modifying the Decision on Institution to include all claims and all grounds
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`presented in the Petition).
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`This proceeding is at a late stage. Specifically, an oral hearing was
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`held on March 13, 2018, and a Final Written Decision is due, by statute, on
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`June 14, 2018. See Paper 41 (hearing transcript); 35 U.S.C. § 316(a)(11);
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`1 The parties arranged for a court reporter to transcribe the conference call.
`As stated during the call, the transcript must be filed as an exhibit in this
`proceeding, as soon as it becomes available.
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`2 The conference call addressed several proceedings. Orders will issue for
`the additional proceedings in due course.
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`2
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`

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`IPR2017-00511
`Patent No. 7,981,158 B2
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`37 C.F.R. § 42.100(c). The panel convened this conference call to ascertain
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`the parties’ position as to whether any further briefing is needed, given the
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`recent addition of the ground challenging claims 73–80 to the proceeding.
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`See, e.g., Paper 42. The parties indicated that they had met and conferred
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`but were unable to reach agreement regarding a course of conduct for this
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`proceeding.
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`Mr. McAnulty expressed Patent Owner’s opinion that no further
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`briefing is needed, and that the Board could proceed to Final Written
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`Decision on the current record. However, to the extent Petitioner requests
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`and is granted an opportunity to brief this newly-added challenge, Patent
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`Owner requests the same opportunity, including an opportunity to conduct
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`discovery, provide briefing, and participate in a supplemental oral hearing.
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`Relevant to other proceedings discussed during the call, but not relevant to
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`IPR2017-00511, Mr. McAnulty also expressed concern that several Petitions
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`identify the grounds upon which the challenges are based using alternative
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`language, as noted by the Board in its Decisions on Institution. See, e.g.,
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`IPR2017-00778, Paper 7, 6–7. Accordingly, Mr. McAnulty argued that the
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`Petitions fail to set forth the grounds with particularity, and requested
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`clarification as to the grounds at issue prior to offering supplemental briefs
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`in these proceedings.3 35 U.S.C. § 312(a)(3).
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`3 Mr. McAnulty’s argument in this regard does not take SAS into account,
`which requires the Board make “a binary choice—either institute review or
`don’t.” SAS, at *5. SAS states that 35 U.S.C. § 314(a) requires the USPTO
`Director “to decide whether the petitioner is likely to succeed on ‘at least 1’
`claim. Once that single claim threshold is satisfied, it doesn’t matter
`whether the petitioner is likely to prevail on any additional claims; the
`Director need not even consider any other claim before instituting review.
`Rather than contemplate claim-by-claim institution, then, the language
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`3
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`

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`IPR2017-00511
`Patent No. 7,981,158 B2
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`For Petitioner, Ms. Lea stated that Petitioner understood Patent
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`Owner’s position that no further briefing is required to be a waiver of
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`argument with respect to the newly-added challenge. Regardless of Patent
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`Owner’s position, Ms. Lea indicated that Petitioner requests an opportunity
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`to file its own brief, addressing the Decision on Institution and Patent
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`Owner’s Preliminary Response, and to file supplemental information under
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`37 C.F.R. § 41.123, regarding certain admissions purportedly made by
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`Patent Owner’s declarants during the course of the proceeding. Ms. Lea also
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`indicated a desire to conduct discovery and participate in a supplemental oral
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`hearing, although Ms. Lea indicated that Petitioner is unlikely to offer
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`supplemental declaration testimony, if Patent Owner does not offer such
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`testimony.
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`Mr. McAnulty responded that Patent Owner was not waiving any
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`arguments, but is of the opinion that briefing simply is not needed, in light of
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`the Board’s preliminary findings made in the Decisions on Institution.
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`Mr. McAnulty reaffirmed that, to the extent Petitioner desires briefing,
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`Patent Owner does as well.
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`The panel stated that they would take the parties’ arguments under
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`advisement and would issue an Order in due course. At that time, the
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`conference call was adjourned.
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`anticipates a regime where a reasonable prospect of success on a single
`claim justifies review of all.” Id. at *6. Thus, even if the Petition presents
`ambiguity in identifying its grounds of challenge, our supplemental Order
`institutes an inter partes review of all claims and all grounds presented,
`because we have determined that Petitioner met its burden with respect to at
`least one claim.
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`4
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`

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`IPR2017-00511
`Patent No. 7,981,158 B2
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`II. SUPPLEMENTAL ACTIVITY
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`In light of the stated requests, we find good cause to permit additional
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`briefing. 37 C.F.R. § 42.5. Therefore, the parties are authorized to file
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`additional briefing to address the newly added challenge in this proceeding.
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`Patent Owner is authorized to file a Supplemental Patent Owner
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`Response by May 17, 2018, in which Patent Owner may address only the
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`newly added challenge to claims 73–80. The Supplemental Response is
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`limited to five (5) pages, for which we waive 37 C.F.R. § 42.6(a)(3) to allow
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`express incorporation by reference of material from Patent Owner’s
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`Preliminary Response (Paper 7). Any arguments for patentability regarding
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`the newly added challenge that are not raised in the Supplemental Patent
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`Owner Response are waived.
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`Petitioner is authorized to file a Supplemental Reply to the
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`Supplemental Patent Owner Response by May 28, 2018. The Supplemental
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`Reply is limited to five (5) pages. In addition to addressing the
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`Supplemental Patent Owner Response, the Supplemental Reply may respond
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`to preliminary findings made by the Board in the Decision on Institution, but
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`otherwise is subject to 37 C.F.R. § 42.23(b) (“A reply may only respond to
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`arguments raised in the corresponding . . . [supplemental] patent owner
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`response.”). The Supplemental Reply is limited to the existing record, and
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`may not raise new arguments or new evidence without prior authorization by
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`the Board.4
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`4 In lieu of filing a Supplemental Patent Owner Response and Supplemental
`Reply, the parties may file a paper stating that they agree not to file any
`additional papers regarding the newly-added challenge. In such a case, the
`Final Written Decision will address this challenge based on the existing
`record.
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`5
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`IPR2017-00511
`Patent No. 7,981,158 B2
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`Any motion to exclude or motion for observation regarding cross-
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`examination of a reply witness may be filed by June 1, 2018 (only a single
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`motion for observation is authorized for each party).
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`If requested by the parties by May 30, 2018, we will conduct a
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`supplemental oral hearing on June 5, 2018.5
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`As an alternative, the Board authorizes the parties to file, within
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`three (3) business days of this Order, a Joint Motion to Limit the Petition by
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`removing the claims and ground upon which we did not institute in our
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`Decision on Institution (see Dec. on Inst. 56–58). See, e.g., Apotex Inc., v.
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`OSI Pharms., Inc., Case IPR2016-01284 (PTAB Apr. 3, 2017) (Paper 19)
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`(granting, after institution, a joint motion to limit the petition by removing a
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`patent claim that was included for trial in the institution decision). Such a
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`Joint Motion would moot the schedule detailed above.
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`As always, should issues arise in complying with this Order, the
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`parties should make every effort to resolve those issues without intervention
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`by the Board. However, if issues remain unresolved, the parties should
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`contact the Board as soon as reasonably practicable.
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`
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`In consideration of the foregoing, it is hereby:
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`ORDERED that Patent Owner is authorized to file a Supplemental
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`Patent Owner Response by May 17, 2018, addressing only the challenge to
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`claims 73–80, which is limited to five (5) pages, wherein we waive
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`5 This oral argument may be conducted telephonically and is limited to the
`arguments and evidence of record addressed in the Supplemental Patent
`Owner Response and Petitioner’s Supplemental Reply.
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`6
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`IPR2017-00511
`Patent No. 7,981,158 B2
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`37 C.F.R. § 42.6(a)(3) to allow Patent Owner to expressly incorporate by
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`reference arguments and evidence from the Preliminary Response;
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`FURTHER ORDERED that Petitioner is authorized to file a
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`Supplemental Reply to the Supplemental Patent Owner Response by May
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`28, 2018, wherein the Supplemental Reply:
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`(a) is limited to five (5) pages,
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`(b) may address the Decision on Institution and Supplemental Patent
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`Owner Response, and is otherwise subject to 37 C.F.R § 42.23(b),
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`(c) is limited to the existing record in the proceeding, and
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`(d) may not raise new arguments or new evidence;
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`FURTHER ORDERED that, if requested by May 30, 2018, a
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`supplemental oral hearing will occur on June 5, 2018;
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`FURTHER ORDERED that a motion to exclude or a single motion
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`for observation regarding cross-examination of a reply witness may be filed
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`by June 1, 2018;
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`FURTHER ORDERED that the parties are authorized to file, within
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`three (3) business days of the date of this Order, a Joint Motion to Limit the
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`Petition by removing the claims and ground upon which we did not institute
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`upon in our Decision on Institution (see Dec. on Inst. 56–58).
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`7
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`

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`IPR2017-00511
`Patent No. 7,981,158 B2
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`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, FARABOE,
`GARRETT & DUNNER, LLP
`sanya.sukduang@finnegan.com
`timothy.mcanulty@finnegan.com
`daniel.klodowski@finnegan.com
`kassandra.offier@finnegan.com
`
`8
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