DePuy Synthes Prods., Inc. v. Medidea, L.L.C.

Trials@uspto.gov 	Paper No. 29
571-272-7822 	Filed: January 23, 2019
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________
DEPUY SYNTHES PRODUCTS, INC.,
Petitioner,
v.
MEDIDEA, L.L.C.,
Patent Owner.
____________
Case IPR2018-00315
Patent 6,558,426 B1
____________
Before FRANCES L. IPPOLITO, MICHAEL L. WOODS, and
RICHARD H. MARSCHALL, Administrative Patent Judges.
WOODS, Administrative Patent Judge.
ORDER
Denying Patent Owner’s Request for Live Testimony
37 C.F.R. § 42.5

IPR2018-00315
Patent 6,558,426 B1
2
A conference call was held between the parties and the Board on
January 23, 2019, to discuss Patent Owner’s request to allow Dr. Michael
Masini—the inventor of the subject patent in this proceeding—to address the
panel at oral hearing.1
Patent Owner’s request is denied.
Dr. Masini did not provide any declaration evidence in this
proceeding and he is not otherwise listed as a counsel of record.
Accordingly, any testimony that Dr. Masini provides at the oral hearing
would be new evidence and forbidden under our Trial Practice Guide.
Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14,
2012) (“No new evidence and arguments. A party may rely upon evidence
that has been previously submitted in the proceeding and may only present
arguments relied upon in the papers previously submitted. No new evidence
or arguments may be presented at the oral argument.”).
ORDER
For the reasons given, it is:
ORDERED that Patent Owner’s request that Dr. Michael Masini
testify at the oral argument is denied.
1 On January 17, 2019, Patent Owner e-mailed the Board requesting
permission for a conference call to discuss Dr. Michael Masini’s
participation at the oral hearing.

IPR2018-00315
Patent 6,558,426 B1
3
For PETITIONER:
Calvin Griffith
David Maiorana
Kenneth Luchesi
Matthew Johnson
JONES DAY
cpgriffith@jonesday.com
dmaiorana@jonesday.com
kluchesi@jonesday.com
mwjohnson@jonesday.com
For PATENT OWNER:
Todd Walters
Robert Mukai
Jonathan Bowser
Christopher Cherry
BUCHANAN INGERSOLL & ROONEY P.C.
Todd.walters@bipc.com
Robert.mukai@bipc.com
Jon.bowser@bipc.com
Christopher.cherry@bipc.com
David Lesht
LAW OFFICE OF EUGENE M. CUMMINGS, P.C.
dlesht@emcpc.com
Frederick Michaud
CAPSHAW DERIEUX, LLP
fmichaud@capshawlaw.com