Trials@uspto.gov Paper 40
`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 IPR2018-00521
`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 IPR2018-00521
`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
`
`
`
`
`
`
`
`
`
`
`
`IPR2018-00521
`Patent 9,532,816 B2
`
`
`I.
`
`INTRODUCTION
`
`Orthopediatrics Corp. (“Petitioner”), on January 22, 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
`
`Response (Paper 20, “PO Resp.”), to which Petitioner replied (Paper 26,
`
`“Pet. Reply”), and to which Patent Owner filed a Sur-Reply (Paper 29, “PO
`
`Sur-Reply”). We heard oral arguments February 21, 2019. On June 4,
`
`2019, we issued a Final Written Decision (Paper 38, “Final Dec.”)
`
`determining that Petitioner has not shown by a preponderance of the
`
`evidence that claims 16, 18, 19, 21, and 22 of the ’816 patent are
`
`unpatentable. On July 5, 2019, Petitioner filed a Request for Rehearing of
`
`Final Written Decision (Paper 39, “Req.”).
`
`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
`
`review the decision for an abuse of discretion.” 37 C.F.R. § 42.71(c).
`
`We further remind Petitioner, that “[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
`
`2
`
`
`
`IPR2018-00521
`Patent 9,532,816 B2
`
`(Fed. Cir. 2015) (noting that the petitioner in an inter partes proceeding has
`
`the initial burden of production and the burden of persuasion to prove
`
`unpatentability).
`
`III. ANALYSIS
`
`Petitioner contends that the Board misapprehended or overlooked two
`
`issues. Req. 2, 5. We are not persuaded that we overlooked or
`
`misapprehended these issues for the reasons discussed below.
`
`A.
`
`Petitioner’s Allegation That
`
`Varieur Discloses the Claimed “Housing”
`
`Petitioner alleges that we “overlooked Petitioner’s argument in the
`
`Reply and Patent Owner’s own admissions concerning ‘fixed.’” Req. 2
`
`(citing Pet. Reply, 23–24; PO Resp., 14, 52). 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 3 (citations omitted). Then, Petitioner
`
`concludes that we overlooked Patent Owner’s “admission” and Petitioner’s
`
`response thereto. Id. at 4. 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 “‘Varieur's jaw members 18A/18B do not move while the
`
`rotatable member is rotating.’” Req. 3 (citing PO Reply 23–24).
`
`3
`
`
`
`IPR2018-00521
`Patent 9,532,816 B2
`
`According to Petitioner, “the district court—and K2M—both recognize that
`
`‘fixed’ refers to when the rotatable member is passing through the
`
`housing.’” Pet. Reply 23. Petitioner argues that “Varieur's jaw members
`
`18A/18B do not move while the rotatable member is rotating.” Id. at 24.
`
`Then, Petitioner concludes that “jaw members 18A/18B indeed teach a
`
`‘housing.’” Id.
`
`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., 829F.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
`
`respond”). “To satisfy its burden of proving obviousness, a petitioner cannot
`
`employ mere conclusory statements. The petitioner must instead articulate
`
`specific reasoning, based on evidence of record, to support the legal
`
`conclusion of obviousness.” Magnum Oil Tools, 829F.3d at 1380 (citing
`
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)).
`
`In the present case, Petitioner identifies no evidence either in Varieur
`
`itself or in the declarations to show that jaw members 18A/18B do not move
`
`while the rotatable member is rotating. See Pet. Reply 23–24; see also Pet.
`
`58–68; see also Ex. 1104 ¶¶ 32–34, 39, 43, 46, 47, 49. Rather, Petitioner
`
`attempts to shift the burden to Patent Owner to demonstrate that this is not
`
`the case. See Req. 3 (“Patent Owner does not argue that the first and second
`
`jaw members 18A, 18B of Varieur (i.e., collectively, the ‘housing’) move
`
`while the rod adjusting tool 14 (i.e., the ‘rotatable member’) ‘passes through
`
`4
`
`
`
`IPR2018-00521
`Patent 9,532,816 B2
`
`the passageway.’”). Thus, on the record before us, Petitioner has not met its
`
`burden of demonstrating that Varieur meets the “housing” limitation.
`
`Accordingly, Petitioner’s argument does not apprise of us of error in
`
`our Decision that would impact the ultimate determination.
`
`B. Petitioner’s Allegation That Jackson Discloses
`
`the Claimed “Rod Contact Member”1
`
`
`
`Petitioner alleges that we “overlooked that Patent Owner never
`
`argued—let alone demonstrated—that the preamble is limiting under the
`
`applicable standard.” Req. 6. As noted above, however, a request for
`
`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.
`
`Further, whether or not the preamble of claim 16 is limiting did not
`
`factor into our decision regarding Petitioner’s challenges based on Jackson
`
`and Jackson in combination with Trudeau. Rather, we credited “the
`
`testimony of Mr. Drewry that ‘Jackson makes it clear that a portion of
`
`closure top 52 remains in the body after rod reduction’ such that ‘a person of
`
`ordinary skill in the art would not have understood Jackson to disclose ‘a rod
`
`contact member positioned at a distal end of the rotatable member,’” as
`
`required by claim 16. Final Dec. 37. Thus, Petitioner did not establish by a
`
`preponderance of evidence that Jackson alone or in combination with
`
`Trudeau renders claims 16, 18, 19, 21, and 22 unpatentable. Id.
`
`
`1 We follow Petitioner’s lead in captioning this argument in this manner;
`however, we note 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.
`
`5
`
`
`
`IPR2018-00521
`Patent 9,532,816 B2
`
`Accordingly, we are not persuaded that we overlooked or misapprehended
`
`Petitioner’s argument.
`
`IV. CONCLUSION
`
`For the foregoing reasons, we are not persuaded by Petitioner’s
`
`contentions.
`
`Accordingly, it is:
`
`IV. ORDER
`
`ORDERED that the Petitioner’s Rehearing Request is granted to the
`
`extent that we address Petitioner’s argument that Varieur discloses the
`
`claimed “housing,” but otherwise is denied.
`
`
`
`
`
`
`
`
`
`6
`
`
`
`IPR2018-00521
`Patent 9,532,816 B2
`
`PETITIONER:
`
`Paul Ulrich
`Christopher Singh
`John Bennett
`pulrich@ulmer.com
`csingh@ulmer.com
`jbennett@ulmer.com
`
`
`
`
`PATENT OWNER:
`
`Christopher Douglas
`Michael Connor
`Lauren Burrow
`Brian Hill
`christopher.douglas@alston.com
`mike.connor@alston.com
`lauren.burrow@alston.com
`brian.hill@alston.com
`
`
`
`
`
`
`
`cu
`
`7
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
