Conmed Corporation and Linvatec Corporationv.Bonutti Skeletal Innovations LLC

Patent Trial and Appeal Board

Mar 14, 2014

9872033 (P.T.A.B. Mar. 14, 2014)

Trial@uspto.gov Paper 22
571-272-7822 Entered: March 14, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

CONMED CORPORATION and LINVATEC CORPORATION
Petitioner

v.

BONUTTI SKELETAL INNOVATIONS LLC
Patent Owner
____________

Case IPR2013-00624
Patent 6,500,195 B2
____________

Before MICHAEL R. ZECHER, BENJAMIN D. M. WOOD, and
MITCHELL G. WEATHERLY, Administrative Patent Judges.

ZECHER, Administrative Patent Judge.

DECISION
Patent Owner’s Request for Rehearing
37 C.F.R. § 42.71
Case IPR2013-00624
Patent 6,500,195 B2
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I. INTRODUCTION
Bonutti Skeletal Innovations LLC (“Patent Owner”) requests
rehearing (Paper 19, “Reh’g Req.”) of the Board’s decision to grant ConMed
Corporation and Linvatec Corporation’s (collectively “Petitioner”) renewed
motion to correct the filing date accorded to the petition (“Pet.”). Paper 18,
“Dec.” In that decision, the Board determined that Petitioner satisfied the
statutory and regulatory requirements for filing a complete petition on
September 25, 2013, but for clicking the “Submit” button in the Patent
Review Processing System (“PRPS”). Dec. 7. However, based on the
specific circumstances of this case, the Board concluded that Petitioner’s
inadvertent delay in clicking the “Submit” button until October 2, 2013, was
a clerical error. Id. As a result, the Board accorded the petition a filing date
of September 25, 2013. Id. at 8.
In its request for rehearing, Patent Owner presents the following
arguments: (1) Petitioner’s renewed motion and supporting evidence do not
demonstrate that Petitioner made a clerical error under 37 C.F.R.
§ 42.104(c); (2) the Board abused its discretion by substituting its own facts
for Petitioner’s testimony in finding a clerical error; (3) failing to “Submit” a
petition is not a clerical error that is correctable under 37 C.F.R. § 42.104(c);
and (4) the statutory requirements for filing a petition under 35 U.S.C.
§§ 312(a) and 315(b) cannot be waived. Reh’g Req. 2-12. For the reasons
set forth below, Patent Owner’s request for rehearing is granted to the extent
we modify our prior decision by exercising our discretion under 37 C.F.R.
§ 42.5(b) to waive a parameter for electronic filing, but is DENIED in all
other respects.
Case IPR2013-00624
Patent 6,500,195 B2
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II. ANALYSIS
When rehearing an interlocutory decision, the Board reviews the
decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of
discretion may be indicated if a decision is based on an erroneous
interpretation of law, if a factual finding is not supported by substantial
evidence, or if the decision represents an unreasonable judgment in weighing
relevant factors. Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir.
2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re
Gartside, 203 F.3d 1305, 1315-16 (Fed. Cir. 2000). A party requesting
rehearing must identify specifically all matters the party believes the Board
misapprehended or overlooked, and the place where each matter was
addressed previously in a motion, an opposition, or a reply. 37 C.F.R.
§ 42.71(d). Given the similarities that exist between the issues that Patent
Owner raises in its request for rehearing, we group the issues into two
subsets and address them in turn.
With respect to the first and second issues set forth above, Patent
Owner indicates that Petitioner’s motion and supporting declaration of Ms.
Melanie Hayes (Ex. 1016) fail to establish that a clerical error was made
when filing the petition and, therefore, Petitioner is not entitled to relief
under 37 C.F.R. § 42.104(c). Reh’g Req. 2. We carefully considered Ms.
Hayes’s testimony and accorded it little weight as it relates to her
recollection of events on September 25, 2013, and October 2, 2013. First, as
Petitioner and Ms. Hayes both have acknowledged, Ms. Hayes’s previous
recollection of her interaction with PRPS on October 2, 2013, (Ex. 1010)
was incorrect. See Paper 14, 3; Dec. 8. Second, her recollection of clicking
the “Submit” button in PRPS on September 25, 2013, (Ex. 1016 ¶ 5) is
Case IPR2013-00624
Patent 6,500,195 B2
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inconsistent with other evidence of record. Contrary to Ms. Hayes’s
testimony, Petitioner received a petition filing receipt from PRPS on October
2, 2013, (Ex. 1021) indicating that Petitioner clicked the “Submit” button on
that date. See Dec. 5-7. Given the inconsistencies or errors in the first and
second declarations of Ms. Hayes, we gave little weight to her testimony
when determining the nature of the actions that Petitioner took in connection
with the petition on September 25, 2013, and October 2, 2013.
After balancing Ms. Hayes’s testimony against the petition filing
receipt dated October 2, 2013, we maintain that the weight of evidence
supports our finding that Petitioner clicked the “Submit” button in PRPS on
October 2, 2013.
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Patent Owner does not persuade us that the testimony of
Ms. Hayes outweighs the documentary evidence indicating that Petitioner
clicked the “Submit” button on that date.
To the extent that Patent Owner argues that Petitioner is not entitled to
relief under 37 C.F.R. § 42.104(c) because it did not admit to making a
clerical error, we disagree. As the Board has stated, this rule “is remedial in
nature and is therefore entitled to a liberal interpretation.” ABB, Inc. v. ROY-
G-BIV Corp., IPR2013-00063, Paper 21 at 7 (Jan. 16, 2013). When, as here,
the record supports a finding that a clerical error occurred, the Board may
grant appropriate relief under 37 C.F.R. § 42.104(c) whether the party
making the error admits to it or not. As explained below, we also grant
relief under 37 C.F.R. § 42.5(b) by exercising our discretion, based on the

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It should be beyond dispute that Petitioner’s delay in clicking the
“Submit” button was inadvertent, as there is ample evidence in the record to
demonstrate that Petitioner intended to complete the electronic filing process
on September 25, 2013, and that it believed it had done so successfully.
Case IPR2013-00624
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specific circumstances of this case, to waive the regulatory requirement that
electronic filing is completed only upon clicking the “Submit” button in
PRPS.
With respect to the third and fourth issues set forth above, we
maintain our initial position that the petition satisfied the requirements for a
complete petition under 35 U.S.C. § 312(a) on September 25, 2013. As we
indicated in our decision (Dec. 6-7), PRPS indicates that the petition was
uploaded on September 25, 2013. PRPS Case Viewer (IPR2013-00624);
see, e.g., Ex. 1018. The petition identifies the following: (1) all real parties
in interest (Pet. 4); (2) each claim challenged (id. at 3-5); (3) the grounds on
which the challenge to each claim is based (id. at 15-28); and (4) the
evidence that supports those challenges—namely Exhibits 1001-1009
(Paper 2). PRPS received payment from Petitioner on September 25, 2013,
(Ex. 1017) which is confirmed by Petitioner’s American Express Statement
(Ex. 1019). Finally, there is no dispute that Petitioner served Patent Owner
with copies of the petition and exhibits on September 25, 2013, by
“EXPRESS MAIL.” Pet. (last page).
Notably, Patent Owner contends that a petition is not filed
electronically, as required under 37 C.F.R. § 42.6(b)(1), unless the “Submit”
button in PRPS is clicked. Reh’g Req. 6-7. We agree with Patent Owner in
that regard; however, we may exercise our discretion to waive or suspend a
requirement set forth in parts 1, 41, and 42 of the Code of Federal
Regulations under 37 C.F.R. § 42.5(b). Based on the specific circumstances
of this case, we exercise our discretion under 37 C.F.R. § 42.5(b) to waive or
suspend a parameter for electronic filing established by the Board and
published on the website of the Office. Namely, we waive the parameter
Case IPR2013-00624
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that indicates a petitioner must click the “Submit” button in PRPS to file
documents properly. See Dec. 5-7. As a consequence, and because the
petition satisfied the requirements for a complete petition under 35 U.S.C.
§ 312(a) on September 25, 2013, we consider the petition to have been filed
effectively as of that date.

III. CONCLUSION
For the foregoing reasons, the Board did not abuse its discretion when
concluding that the petition should be accorded a filing date of September
25, 2013. Nonetheless, we clarify that our basis for doing so rests, at least in
part, upon exercising our discretion under 37 C.F.R. § 42.5(b) to waive or
suspend a parameter for electronic filing under 37 C.F.R. § 42.6(b)(1).
Accordingly, Patent Owner’s request for rehearing is granted to the extent
we modify our prior decision to invoke 37 C.F.R. § 42.5(b), but is DENIED
in all other respects.
Case IPR2013-00624
Patent 6,500,195 B2
7
For PETITIONER:
Matthew J. Moore
Michael B. Eisenberg
Latham & Watkins LLP
matthew.moore@lw.com
michael.eisenberg@lw.com

For PATENT OWNER:
Cary Kappel
William Gehris
Davidson, Davidson, & Kappel, LLC
ckappel@ddkpatent.com
wgehris@ddkpatent.com