Trials@uspto.gov Paper 44
`571-272-7822
` Entered: July 23, 2019
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ORTHOPEDIATRICS CORP.,
`Petitioner,
`
`v.
`
`K2M, INC.,
`Patent Owner.
`____________
`
`Case IPR2018-00429
`Patent 9,532,816 B2
`____________
`
`
`
`Before LYNNE H. BROWNE, MICHAEL L. WOODS, and
`ROBERT L. KINDER, Administrative Patent Judges.
`
`BROWNE, Administrative Patent Judge.
`
`
`
`
`DECISION ON REQUEST FOR REHEARING
`35 U.S.C. § 42.71
`
`
`
`
`
`
`
`
`
`
`571-272-7822
` Entered: July 23, 2019
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ORTHOPEDIATRICS CORP.,
`Petitioner,
`
`v.
`
`K2M, INC.,
`Patent Owner.
`____________
`
`Case IPR2018-00429
`Patent 9,532,816 B2
`____________
`
`
`
`Before LYNNE H. BROWNE, MICHAEL L. WOODS, and
`ROBERT L. KINDER, Administrative Patent Judges.
`
`BROWNE, Administrative Patent Judge.
`
`
`
`
`DECISION ON REQUEST FOR REHEARING
`35 U.S.C. § 42.71
`
`
`
`
`
`
`
`
`
`
`
`IPR2018-00429
`Patent 9,532,816 B2
`
`
`I.
`
`INTRODUCTION
`
`Orthopediatrics Corp. (“Petitioner”), on January 8, 2018, filed a
`
`Petition to institute inter partes review of claims 16, 18, 19, 21, and 22 of
`
`U.S. Patent No. 9,532,816 B2 (“the ’816 patent”). Paper 1 (“Pet.”). We
`
`issued a Decision to Institute an inter partes review (Paper 8, “Dec.”) of all
`
`challenged claims (16, 18, 19, 21, and 22) under all grounds. After
`
`institution of trial, K2M, Inc. (“Patent Owner”) filed a Patent Owner
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`Response (Paper 24, “PO Resp.”), to which Petitioner replied (Paper 30,
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`“Pet. Reply”), and Patent Owner then filed a Sur-Reply (Paper 35, “PO Sur-
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`Reply). We heard oral arguments February 21, 2019. On June 4, 2019, we
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`issued a Final Written Decision (Paper 45, “Final Dec.”) determining that
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`Petitioner has not shown by a preponderance of the evidence that claims 16,
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`18, 19, 21, and 22 of the ’ 816 patent are unpatentable. On July 5, 2019,
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`Petitioner filed a Request for Rehearing of Final Written Decision (Paper 43,
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`“Req.”).
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`II.
`
`PRINCIPLES OF LAW
`
`A party dissatisfied with a decision may file a request for
`rehearing, without prior authorization from the Board. The
`burden of showing a decision should be modified lies with the
`party challenging the decision. The request must specifically
`identify all matters the party believes the Board
`misapprehended or overlooked, and the place where each
`matter was previously addressed in a motion, an opposition, or
`a reply.
`
`37 C.F.R. § 42.71(d). “When rehearing a decision on petition, a panel will
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`review the decision for an abuse of discretion.” 37 C.F.R. § 42.71(c).
`
`Further, “[t]he burden to prove unpatentability is on the petitioner, not
`
`on the patent owner or the Board. Dynamic Drinkware, LLC v. National
`
`Graphics, Inc., 800 F.3d 1375, 1380 (Fed. Cir. 2015) (noting that the
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`2
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`IPR2018-00429
`Patent 9,532,816 B2
`
`petitioner in an inter partes proceeding has the initial burden of production
`
`and the burden of persuasion to prove unpatentability).
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`III. ANALYSIS
`
`Petitioner contends that the Board misapprehended or overlooked
`
`three issues. Req. 2, 5, 8. We are not persuaded that we overlooked or
`
`misapprehended these issues for the reasons discussed below.
`
`A.
`
`Petitioner’s Allegation That Iott’s Rod Reducer Shaft Contacts Its Rod
`
`Acknowledging that “the Board disagreed with Petitioner that Iott's
`
`reducer shaft 304 need not directly contact a rod,” Petitioner alleges that we
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`“overlooked that Iott, in fact, discloses such direct contact” between rod
`
`contact member 304 and rod 228. Req. 2. In our Final Written Decision,
`
`however, we focused specifically on Petitioner’s showing with respect to the
`
`limitation requiring a rod contact member. Final Dec. 7–11, 19–20.
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`First, we explicitly construed the term “rod contact member” to
`
`require direct contact with a rod. Final Dec. 11. Then, we applied the
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`proper claim interpretation in considering whether the Petition adequately
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`showed that Iott’s rod reducer shaft fairly reads on the claimed rod contact
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`member. Id. at 9–11. In so doing, we explicitly considered Petitioner’s
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`evidence that Iott’s rod reducer shaft contacts its rod, namely paragraph 71
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`of Iott, which we reproduced in full in our Final Written Decision. Id. at 20.
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`Upon such consideration, we concluded that “[n]othing in this paragraph
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`supports Petitioner’s position that Iott’s reducer shaft 304 contacts the rod as
`
`required by claim 16. Rather, this paragraph explicitly states that the cap
`
`engages the rod.” Id. (citing Ex. 1002 ¶ 71). Having fully considered
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`Petitioner’s evidence on this issue, including Iott’s Figures 30–32, we are
`
`not persuaded that we overlooked or misapprehended Petitioner’s evidence.
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`3
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`IPR2018-00429
`Patent 9,532,816 B2
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`B.
`
`Petitioner’s Allegation That Runco Discloses the Claimed Housing
`
`Petitioner alleges that we “overlooked Petitioner's argument in the
`
`Reply and Patent Owner’s own admissions concerning ‘fixed.’” Req. 5
`
`(citing Pet. Reply, 15, 19–20; PO Resp., 14, 43–44). In support of this
`
`allegation, Petitioner contends that “Patent Owner introduced and repeatedly
`
`recognized that the housing must be ‘fixed’ only when ‘the invention is
`
`activated,’ i.e., while ‘the rotatable member passes through the
`
`passageway’” and that “Petitioner addressed this matter in the Reply, and
`
`Patent Owner ignored it.” Id. at 6 (citations omitted). Then, Petitioner
`
`concludes that we overlooked Patent Owner’s “admission” and Petitioner’s
`
`response thereto. Id. at 6–7. Even if, however, we did overlook this
`
`argument and Patent Owner failed to address it in their Sur-Reply, our
`
`consideration of this argument does not change the outcome in this
`
`proceeding for the reasons discussed below.
`
`To the extent that we overlooked Petitioner’s argument, we take this
`
`opportunity to clarify the record. Specifically, we consider Petitioner’s
`
`assertion that “Runco is indeed ‘fixed’ during activation of the device.”
`
`Req. 6. In its Reply, Petitioner asserts that “K2M erroneously argues that
`
`engaging tool 412 cannot be a claimed housing because it allegedly is not
`
`‘fixed.’” Pet. Reply 19. According to Petitioner, “K2M concedes that the
`
`housing need only be ‘fixed’ when ‘the invention is activated,’ i.e., when
`
`‘the rotatable member passes through the passageway.” Id. at 19–20 (citing
`
`PO Resp. 14; Ex. 2100, 4, n.3). Petitioner further asserts that “K2M does
`
`not argue that engaging tool 412 moves while the rotatable member ‘passes
`
`through the passageway.’ Instead, K2M argues that portions of Runco move
`
`while ‘the device [is] placed onto a bone anchor.’” Req. 20 (citing PO Resp.
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`4
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`IPR2018-00429
`Patent 9,532,816 B2
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`44). Then, Petitioner concludes that “[a]s such, tool 412 discloses a
`
`‘housing.’” Id.
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`In an inter partes review, Petitioner has the burden of proving
`
`unpatentability by a preponderance of the evidence. See 35 U.S.C. § 316(e);
`
`see also In re Magnum Oil Tools Int’l, Ltd., 892 F.3d 1364, 1380–81 (Fed.
`
`Cir. 2016) (holding that because “petitioner ... bears the burden of proof,”
`
`the Board is not “free to adopt arguments on behalf of petitioners that ...
`
`were not[ ] raised” and “must base its decision on arguments that were
`
`advanced by [petitioner], and to which [patent owner] was given a chance to
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`respond”). “To satisfy its burden of proving obviousness, a petitioner cannot
`
`employ mere conclusory statements. The petitioner must instead articulate
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`specific reasoning, based on evidence of record, to support the legal
`
`conclusion of obviousness.” Magnum Oil Tools, 892 F.3d at 1380 (citing
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`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)).
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`In the present case, Petitioner identifies no evidence either in Runco
`
`itself or in the declarations to show that Runco’s tool 412 is fixed during
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`activation of the device. See Pet. Reply 18–21; see also Pet. 22–32; see also
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`Ex. 1006 ¶¶ 70–117. Rather, Petitioner attempts to shift the burden to Patent
`
`Owner to demonstrate that this is not the case. See Pet. Reply 20 (“K2M
`
`does not argue that engaging tool 412 moves while the rotatable member
`
`‘passes through through the passageway.’”). Further, to the extent that
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`Petitioner is now taking the position that Runco’s ends 420A/420B
`
`correspond to the claimed housing (a position that does not appear to be
`
`clearly argued in its Petitioner or Reply), Petitioner provides no evidence in
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`support of its allegation that ends 420A/420B are fixed during activation of
`
`the device, either. See Pet. Reply 18–21; see also Pet. 22–32. Thus, on the
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`5
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`IPR2018-00429
`Patent 9,532,816 B2
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`record before us, Petitioner has not met its burden of demonstrating that
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`Runco meets the “housing” limitation.
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`Accordingly, Petitioner’s argument does not apprise of us of error in
`
`our Decision that would impact the ultimate determination.
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`C.
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`Petitioner’s Allegation That Trudeau Discloses
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`the Claimed “Rod Contact Member”1
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`
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`Petitioner alleges that we “overlooked that Patent Owner never
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`argued—let alone demonstrated—that the preamble is limiting under the
`
`applicable standard.” Req. 8. As noted above, however, a request for
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`rehearing is limited to matters alleged overlooked or misapprehended by the
`
`Board. Thus, Petitioner’s allegation that Patent Owner failed to make an
`
`argument is inapposite.
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`Further, whether or not the preamble of claim 16 is limiting did not
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`factor into our decision regarding Petitioner’s challenged based on Trudeau
`
`and Pond. Rather, as we determined in our Final Written Decision,
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`Petitioner did not adequately explain why one skilled in the art would
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`modify Trudeau in the manner proposed. Final. Dec. 38. For this reason,
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`Petitioner failed to establish by a preponderance of evidence that Trudeau
`
`and Pond render claims 16, 18, 19, 21, and 22 unpatentable. Id.
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`Accordingly, we are not persuaded that we overlooked or misapprehended
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`Petitioner’s argument.
`
`
`1 We follow Petitioner’s lead in captioning this argument in this manner,
`however, we not that Petitioner’s argument pertains to whether or not the
`preamble of claim 16 is limiting. Other than mentioning Trudeau in the first
`sentence of this argument, Petitioner does not address that reference in this
`argument.
`
`6
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`IPR2018-00429
`Patent 9,532,816 B2
`
`
`IV. CONCLUSION
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`For the foregoing reasons, we are not persuaded by Petitioner’s
`
`contentions.
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`Accordingly, it is:
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`IV. ORDER
`
`ORDERED that the Petitioner’s Rehearing Request is granted to the
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`extent that we address Petitioner’s argument that Runco discloses the
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`claimed “housing,” but otherwise is denied.
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`7
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`IPR2018-00429
`Patent 9,532,816 B2
`
`PETITIONER:
`
`Paul M. Ulrich
`Christopher A. Singh
`John Bennett
`Ulmer & Berne LLP
`pulrich@ulmer.com
`csingh@ulmer.com
`jbennett@ulmer.com
`
`
`PATENT OWNER:
`
`Christopher Douglas
`Michael S. Connor
`Lauren E. Burrow
`Brian D. Hill
`Alston & Bird LLP
`christopher.douglas@alston.com
`mike.connor@alston.com
`lauren.burrow@alston.com
`brian.hill@alston.com
`
`
`8
`
`
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