Case 3:12-cv-02738-CAB-MDD Document 282 Filed 04/12/16 PageID.23033 Page 1 of 6
`
`Luke L. Dauchot (SBN 229829)
`luke.dauchot@kirkland.com
`Nimalka R. Wickramasekera (SBN 268518)
`nimalka.wickramasekera@kirkland.com
`Sharre Lotfollahi (SBN 258913)
`sharre.lotfollahi@kirkland.com
`Kirkland & Ellis LLP
`333 South Hope Street
`Los Angeles, California 90071
`Telephone: (213) 680-8400
`Facsimile: (213) 680-8500
`
`Attorneys for Plaintiff/Counterclaim
`Defendant/Counterclaimant
`WARSAW ORTHOPEDIC, INC.;
`MEDTRONIC SOFAMOR DANEK USA,
`INC.; MEDTRONIC PUERTO RICO
`OPERATIONS CO.; OSTEOTECH, INC.;
`MEDTRONIC, INC.; MEDTRONIC
`SOFAMOR DANEK DEGGENDORF,
`GMBH; MEDTRONIC LOGISTICS, LLC,
`MEDTRONIC XOMED, INC., AND
`SPINALGRAFT TECHNOLOGIES, LLC
`
`Paul D. Tripodi II (SBN 162380)
`Email: tripodi@wsgr.com
`Grace J. Pak (SBN 277705)
`Email: gpak@wsgr.com
`Wilson Sonsini Goodrich & Rosati
`633 West Fifth Street, Suite 1550
`Los Angeles, CA 90071-2027
`Telephone: (323) 210-2900
`Facsimile: (866) 974-7329
`
`Natalie J. Morgan (SBN 211143)
`Email: nmorgan@wsgr.com
`Wendy L. Devine (SBN 246337)
`Email: wdevine@wsgr.com
`Wilson Sonsini Goodrich & Rosati
`12235 El Camino Real, Suite 200
`San Diego CA 92130
`Telephone: 858.350.2300
`
`Robert R. Cleary, JR. (SBN 282113)
`Email: rcleary@wsgr.com
`Sara L. Rose (SBN 300945)
`Email: srose@wsgr.com
`Wilson Sonsini Goodrich & Rosati
`650 Page Mill Road
`Palo Alto, CA 94304
`Telephone: (650) 493-9300
`Facsimile: (650) 493-6811
`
`Attorneys for Defendant/
`Counterclaimant NUVASIVE, INC.
`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF CALIFORNIA
`CASE NO. 3:12-CV-02738 CAB (MDD)
`
`JOINT STATEMENT REGARDING
`STATUS OF PATENTS IN
`LITIGATION
`
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`))))))))))))))))
`
`WARSAW ORTHOPEDIC, INC.;
`MEDTRONIC SOFAMOR DANEK
`U.S.A., INC.; MEDTRONIC PUERTO
`RICO OPERATIONS CO.; and
`OSTEOTECH, INC.,
`Plaintiffs,
`
`vs.
`NUVASIVE, INC.,
`Defendant.
`AND RELATED COUNTERCLAIMS.
`
`
`
`JOINT STATUS REPORT
`
`CASE NO: 3:12-CV-02738 CAB (MDD)
`
`
`
`
`

`

`Case 3:12-cv-02738-CAB-MDD Document 282 Filed 04/12/16 PageID.23034 Page 2 of 6
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`Pursuant to the Court’s March 1 and March 24, 2016 Orders, the Parties submit
`
`this Joint Status Report as to the Patent and Trademark Office proceedings for U.S.
`Patent Nos. 8,251,997; 8,000,782; 8,005,535; 8,016,767; 8,192,356; 8,187,334; and
`8,361,156. (See Dkts. 272, 277.)
`1. Warsaw U.S. Patent No. 8,251,997 (“Method for inserting an
`artificial implant between two adjacent vertebrae along a coronal
`plane”)
`As the Parties previously informed the Court, for Warsaw’s ’997 patent, both
`NuVasive and Warsaw have appealed the PTAB’s final written decisions finding
`some claims patentable and other claims unpatentable. Those appeals were
`consolidated into one case. Appeal briefing concluded on February 12, 2016. The
`case is now awaiting an oral argument date from the Federal Circuit.
`2. NuVasive U. S. Patent No. 8,000,782 (“System and methods for
`performing surgical procedures and assessments”)
`As the Parties previously informed the Court, for NuVasive’s ’782 patent, the
`PTAB issued its Final Written Decision finding all asserted claims unpatentable.
`NuVasive has appealed and its opening briefing was filed in December 2015.
`Medtronic, Inc.’s responsive brief is due April 27, 2016. The Parties expect briefing
`to conclude in the late spring or early summer of 2016, with oral argument before the
`Federal Circuit to follow shortly thereafter. The appeal on the ’782 patent is a
`companion to appeals on the ’535, ’767, and ’356 patents as described herein and all
`are proceeding on the same schedule.
`3. NuVasive U.S. Patent No. 8,005,535 (“System and methods for
`performing surgical procedures and assessments”)
`As the Parties previously informed the Court, for NuVasive’s ’535 patent, the
`PTAB issued its Final Written Decision finding all asserted claims unpatentable.
`NuVasive has appealed and its opening briefing was filed in December 2015.
`Medtronic, Inc.’s responsive brief is due April 27, 2016. The Parties expect briefing
`
`JOINT STATUS REPORT
`
`1
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`CASE NO: 3:12-CV-02738 CAB (MDD)
`
`

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`Case 3:12-cv-02738-CAB-MDD Document 282 Filed 04/12/16 PageID.23035 Page 3 of 6
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`to conclude in the late spring or early summer of 2016, with oral argument before the
`Federal Circuit to follow shortly thereafter. The appeal on the ’535 patent is a
`companion to appeals on the ’782, ’767, and ’356 patents as described herein and all
`are proceeding on the same schedule.
`4. NuVasive U.S. Patent No. 8,016,767 (“Surgical access system and
`related methods”)
`As the Parties previously informed the Court, for NuVasive’s ’767 patent, the
`PTAB issued its Final Written Decision finding all asserted claims unpatentable.
`NuVasive has appealed and its opening appeal briefing was filed in December 2015.
`Medtronic, Inc.’s responsive brief is due April 27, 2016. The Parties expect briefing
`to conclude in the late spring or early summer of 2016, with oral argument before the
`Federal Circuit to follow shortly thereafter. The appeal on the ’767 patent is a
`companion to appeals on the ’782, ’535, and ’356 patents as described herein and all
`are proceeding on the same schedule.
`5. NuVasive U.S. Patent No. 8,192,356 (“Surgical access system and
`related methods”)
`As the Parties previously informed the Court, for NuVasive’s ’356 patent, the
`PTAB issued its Final Written Decision finding claims 21-22, 24, 30, and 33-37
`unpatentable.1 IPR was not instituted as to claim 25 (currently non-asserted)2 and
`claim 26 (currently asserted). NuVasive has appealed the Final Written Decision and
`its opening appeal briefing was filed in December 2015. Medtronic, Inc.’s responsive
`brief is due April 27, 2016. The Parties expect briefing to conclude in the late spring
`or early summer of 2016, with oral argument before the Federal Circuit to follow
`shortly thereafter. The appeal on the ’356 patent is a companion to appeals on the
`’782, ’535, and ’767 patents as described herein and all are proceeding on the same
`
`The asserted claims from the ’356 patent are 21, 26, 34, 35, and 37.
`1
`Claim 25 was originally asserted but dropped to reduce the number of claims
`2
`pursuant to court order.
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`JOINT STATUS REPORT
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`2
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`CASE NO: 3:12-CV-02738 CAB (MDD)
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`

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`schedule.
`The Parties agree that continued stay of the ’356 patent is appropriate, at least
`until resolution of the current appeal pertaining to the ’356 patent.3
`6. NuVasive U.S. Patent No. 8,187,334 (“System and methods for spinal
`fusion”)
`As the Parties previously informed the Court, for NuVasive’s ’334 patent, the
`PTAB issued its Final Written Decision finding all currently asserted claims
`unpatentable.4 The Parties also previously informed the Court that NuVasive
`appealed and Medtronic, Inc. cross-appealed. In those appeals, briefing is in progress
`and is likely to conclude in the late spring or early summer of 2016. The appeals on
`the ’334 patent are companion to the appeal on the ’156 patent as described herein and
`will be argued together.
`7. NuVasive U.S. Patent No. 8,361,156 (“Systems and methods for
`spinal fusion”)
`As the Parties previously informed the Court, for NuVasive’s ’156 patent, the
`PTAB issued is Final Written Decision finding all asserted claims unpatentable. The
`Parties also previously informed the Court that NuVasive appealed. Appeal briefing
`has concluded and the Parties are currently awaiting an oral argument date from the
`Federal Circuit.
`8. Plaintiffs’ Statement Regarding U.S. Patent No. 5,676,146.
`In the Court’s March 1, 2016 Order, it stated that the ’146 patent is dismissed
`
`from this litigation as a result of the Court’s order of summary judgment of non-
`infringement. (Dkt. 272 at 2.) However, Plaintiffs believe dismissal at this time is
`
`In reaching this agreement regarding a continued stay of the ’356 patent,
`3
`NuVasive notes that it has relied upon Warsaw’s representations that a continued stay
`of the ’997 patent is similarly appropriate.
`The PTAB confirmed patentability of claim 18 of the ’334 patent. The asserted
`4
`claims from the ’334 patent are 1, 16, 22, 24 and 28. Claim 18 was originally asserted
`but dropped to reduce the number of claims pursuant to court order.
`
`JOINT STATUS REPORT
`
`3
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`CASE NO: 3:12-CV-02738 CAB (MDD)
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`

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`premature in light of their pending motion for clarification and reconsideration of that
`summary judgment order. (See Dkt. 273.)
`
`DATED: April 12, 2016
`
`Respectfully submitted,
`KIRKLAND & ELLIS LLP
`
`
`
` /s/ Sharre Lotfollahi
`Luke L. Dauchot
`Nimalka R. Wickramasekera
`Sharre Lotfollahi
`
`Attorneys for Plaintiffs/Counterclaim
`Defendants, WARSAW ORTHOPEDIC, INC.;
`MEDTRONIC SOFAMOR DANEK U.S.A.,
`INC.; MEDTRONIC PUERTO RICO
`OPERATIONS CO.; OSTEOTECH, INC.;
`MEDTRONIC, INC.; and MEDTRONIC
`SOFAMOR DANEK DEGGENDORF,
`GMBH; MEDTRONIC LOGISTICS, LLC;
`MEDTRONIC XOMED, INC.; AND
`SPINALGRAFT TECHNOLOGIES, LLC
`
`WILSON SONSINI GOODRICH & ROSATI
`
`/s/ Paul D. Tripodi II
`
`Paul D. Tripodi II
`
`Attorneys for Defendant and Counterclaimant
`NuVasive, Inc.
`
`
`
`
`
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`JOINT STATUS REPORT
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`4
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`CASE NO: 3:12-CV-02738 CAB (MDD)
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`CERTIFICATE OF SERVICE
`
`I am employed in the County of Los Angeles; I am over the age of eighteen
`years and not a party to the within entitled action; my business address is 333 South
`Hope Street, Los Angeles, California 90071.
`On April 12, 2016, true and correct copies of the foregoing document were
`served to all counsel of record who are deemed to have consented to electronic service
`via the Court’s CM/ECF system per Civil Local Rule 5.4. Any other counsel of record
`will be served by electronic mail, facsimile, U.S. Mail and/or overnight delivery.
`
`FEDERAL: I declare under penalty of perjury under the laws of the
`United States of America that the foregoing is true and correct.
`Executed on April 12, 2016, in Los Angeles, California.
`
` /s/ Sharre Lotfollahi
` Sharre Lotfollahi
`
`CERTIFICATE OF SERVICE
`
`CASE NO: 3:12-CV-02738 CAB (MDD)
`
`
`
`