Case 3:12-cv-02738-CAB-MDD Document 297 Filed 05/09/16 PageID.23144 Page 1 of 26
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`THE UNITED STATES DISTRICT COURT
`FOR THE SOUTHERN DISTRICT OF CALIFORNIA
`
`HONORABLE CATHY ANN BENCIVENGO
`UNITED STATES DISTRICT JUDGE PRESIDING
`_______________________________________________________
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`WARSAW ORTHOPEDIC, INC.;
`)
`MEDTRONIC SOFAMOR DANEK, USA
`)
`INC.; MEDTRONIC PUERTO RICO
`OPERATIONS CO.; AND OSTEOTECH, )
`INC.,
`
`PLAINTIFFS,
`
`VS.
`NUVASIVE, INC.,
`
`NO. 12-CV-2738-CAB
`NO. 08-CV-1512-CAB
`
`MARCH 29, 2016
`
`TELEPHONIC STATUS CONFERENCE
`(REDACTED VERSION)
`
`))
`
`)
`)
`)
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`)
`)
`DEFENDANT.
`_______________________________________________________
`
`FOR THE PLAINTIFFS:
`
`LUKE L. DAUCHOT
`KIRKLAND & ELLIS, LLP
`333 SOUTH HOPE STREET
`LOS ANGELES, CA
`90071
`
`FOR THE DEFENDANT:
`
`PAUL D. TRIPODI, II
`NATALIE J. MORGAN
`WENDY L. DEVINE
`WILSON SONSINI GOODRICH & ROSATI
`PROFESSIONAL CORPORATION
`633 WEST FIFTH STREET, SUITE 1550
`LOS ANGELES, CA
`90071-2027
`
`THE COURT REPORTER:
`
`GAYLE WAKEFIELD, RPR, CRR
`
`1
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`
`THE UNITED STATES DISTRICT COURT
`FOR THE SOUTHERN DISTRICT OF CALIFORNIA
`
`HONORABLE CATHY ANN BENCIVENGO
`UNITED STATES DISTRICT JUDGE PRESIDING
`_______________________________________________________
`
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`WARSAW ORTHOPEDIC, INC.;
`)
`MEDTRONIC SOFAMOR DANEK, USA
`)
`INC.; MEDTRONIC PUERTO RICO
`OPERATIONS CO.; AND OSTEOTECH, )
`INC.,
`
`PLAINTIFFS,
`
`VS.
`NUVASIVE, INC.,
`
`NO. 12-CV-2738-CAB
`NO. 08-CV-1512-CAB
`
`MARCH 29, 2016
`
`TELEPHONIC STATUS CONFERENCE
`(REDACTED VERSION)
`
`))
`
`)
`)
`)
`)
`)
`)
`DEFENDANT.
`_______________________________________________________
`
`FOR THE PLAINTIFFS:
`
`LUKE L. DAUCHOT
`KIRKLAND & ELLIS, LLP
`333 SOUTH HOPE STREET
`LOS ANGELES, CA
`90071
`
`FOR THE DEFENDANT:
`
`PAUL D. TRIPODI, II
`NATALIE J. MORGAN
`WENDY L. DEVINE
`WILSON SONSINI GOODRICH & ROSATI
`PROFESSIONAL CORPORATION
`633 WEST FIFTH STREET, SUITE 1550
`LOS ANGELES, CA
`90071-2027
`
`THE COURT REPORTER:
`
`GAYLE WAKEFIELD, RPR, CRR
`
`1
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`Case 3:12-cv-02738-CAB-MDD Document 297 Filed 05/09/16 PageID.23145 Page 2 of 26
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`MARCH 29, 2016
`
`MORNING SESSION
`
`LADIES AND GENTLEMEN, WE ARE ON THE RECORD
`THE CLERK:
`AT THIS TIME.
`CALLING MATTERS 1 AND 2 ON OUR CALENDAR; MATTER
`NUMBER, 12-CV-2738-CAB-MDD, WARSAW ORTHOPEDIC, INCORPORATED, ET
`AL VS. NUVASIVE, INCORPORATED, AND THEN MATTER NUMBER 2,
`08-CV-1512-CAB-MDD, MEDTRONIC SOFAMOR DANEK USA, INCORPORATED,
`ET AL VS. NUVASIVE, INCORPORATED.
`THESE MATTERS ARE BOTH ON CALENDAR FOR TELEPHONIC
`STATUS CONFERENCE, AND ALL PARTIES ARE APPEARING
`TELEPHONICALLY.
`IF WE COULD HAVE COUNSEL FOR PLAINTIFF WARSAW
`PLEASE STATE THEIR APPEARANCES.
`MR. DAUCHOT:
`GOOD MORNING, YOUR HONOR, LUKE DAUCHOT,
`ON BEHALF OF THE PLAINTIFFS.
`THE CLERK:
`COUNSEL FOR DEFENDANT NUVASIVE, PLEASE.
`MR. TRIPODI:
`GOOD MORNING, YOUR HONOR, PAUL TRIPODI OF
`WILSON SONSINI ON BEHALF OF NUVASIVE.
`ALSO ON THE LINE TODAY
`IS REPRESENTATIVE JAMES GARRETT, AS WELL AS OTHER WILSON
`LAWYERS INVOLVED IN THE CASE, NATALIE MORGAN AND WENDY DEVINE.
`
`THANK YOU.
`ALL RIGHT.
`THE COURT:
`WE WERE HAVING SOME TECHNICAL
`I'M SORRY FOR THE DELAY.
`PROBLEMS HERE WITH OUR EQUIPMENT, BUT I THINK WE'RE ALL ONBOARD
`NOW.
`
`I
`I NOTICED THIS STATUS CONFERENCE IN BOTH CASES.
`WANTED TO ADDRESS THE STATUS FIRST IN THE '12 CASE AS TO THE
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`Case 3:12-cv-02738-CAB-MDD Document 297 Filed 05/09/16 PageID.23146 Page 3 of 26
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`SCOPE OF POTENTIAL RESOLUTION AND WHAT IT WAS GOING TO MEAN,
`JUST FOR MY OWN SORT OF SCHEDULING AND KNOWLEDGE.
`
`THERE ARE A NUMBER OF PATENTS IN THIS CASE THAT ARE
`STILL IN IPR IN ONE FORM OR ANOTHER, AND -- WELL, ACTUALLY, I
`GUESS THEY'RE OUT OF IPR.
`THEY'RE ALL ON APPEAL TO THE FEDERAL
`CIRCUIT.
`
`ALL RIGHT.
`THE COURT:
`MR. TRIPODI, ARE YOU -- DO YOU WANT TO ADD ANYTHING TO
`
`THAT?
`
`I APPRECIATE THE CARE THAT MR. DAUCHOT
`MR. TRIPODI:
`HAS TAKEN IN CHARACTERIZING THIS.
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`Case 3:12-cv-02738-CAB-MDD Document 297 Filed 05/09/16 PageID.23147 Page 4 of 26
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`I THINK HIS CHARACTERIZATIONS ARE ACCURATE IN THAT RESPECT.
`
`YES, YOUR HONOR.
`MR. TRIPODI:
`THAT'S CORRECT, YOUR HONOR.
`MR. DAUCHOT:
`OKAY.
`AS A MORE PRACTICAL MATTER, BECAUSE
`THE COURT:
`THERE'S NOTHING IN THAT CASE, WE'VE CONTINUED YOUR DATES IN THE
`'12 CASE REGARDING THE MOTION FOR RECONSIDERATION AND THEN THE
`STATUS REPORT ON THE PATENTS THAT ARE IN -- THAT ARE SUBJECT TO
`THE REVIEW FROM THE PATENT OFFICE.
`THE '08 CASE OBVIOUSLY THE BALL IS IN MY COURT ON THE
`DAUBERT MOTIONS, AND I WAS PREPARED TO EITHER SET A HEARING
`DATE OR ISSUE AN ORDER, AND I WAS SORT OF ON THE THROES OF
`WHETHER I WAS GOING TO ACTUALLY HAVE YOU COME IN OR JUST ISSUE
`AN ORDER.
`ON THE DAUBERT MOTIONS,
`
`AS WELL AS YOU MAY HAVE
`
`NOTICED THAT THE '973 PATENT IS IN FINAL REJECTION FROM THE
`PATENT OFFICE, AND SO I'M NOT QUITE SURE,
`WHAT YOUR POSITIONS ARE REGARDING THE ACTUAL
`VALIDITY AT THIS POINT OF THE ASSERTED CLAIMS OF THE '973
`PATENT, AND WHETHER OR NOT ANY FURTHER SCHEDULING IN THE '08
`CASE ON EXPERT ISSUES SHOULD BE SET ASIDE BECAUSE IT SEEMS THAT
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`Case 3:12-cv-02738-CAB-MDD Document 297 Filed 05/09/16 PageID.23148 Page 5 of 26
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`AT THIS POINT I'M NOT QUITE SURE -- SINCE THE PATENT IS
`EXPIRED, THE CLAIMS CAN'T BE AMENDED, BUT SOME CLAIMS, IF NOT
`
`THE
`
`ALL CLAIMS, MIGHT BE REJECTED/AFFIRMED, WHATEVER, AT THE
`FEDERAL CIRCUIT LEVEL WHICH MIGHT CHANGE THE ANALYSIS OF THE
`EXPERTS, AND SO I'M JUST A LITTLE UNCERTAIN WHERE YOU WANT TO
`GO ON THAT CASE AND WHETHER I SHOULD STAY THAT ONE AS WELL AT
`THIS POINT.
`THIS IS LUKE DAUCHOT, YOUR HONOR.
`MR. DAUCHOT:
`CASE IS IN A PECULIAR POSTURE.
`THE COURT:
`YES.
`AND WHAT WE HAVE, IN EFFECT --
`MR. DAUCHOT:
`RIGHT.
`LET ME BEGIN WITH THE PTO STATUS.
`WHAT WE HAVE IS A FINAL
`REJECTION THAT IS GOING TO BE MADE SUBJECT TO FURTHER DISCOURSE
`WITH THE EXAMINER THROUGH A FILING THAT'S GOING TO BE SUBMITTED
`I THINK IN MAY.
`AT THAT POINT, DEPENDING ON WHAT THE EXAMINER
`DOES, WE'RE -- THE REEXAMINATION'S GOING TO CUT IN OUR FAVOR OR
`THERE IS GOING TO BE AN APPEAL -- AN ADMINISTRATIVE APPEAL TO
`THE PTAB.
`IF THE -- I MEAN, ACCORDING TO THE STATISTICS, THE PTAB
`
`WILL DECIDE THE ISSUE ANYWHERE FROM ONE TO TWO YEARS FROM THE
`DATE OF THE FILING OF THE APPEAL TO THE PTAB, WHICH WOULD TAKE
`PLACE I THINK IN JULY.
`AFTER THE PTAB RESOLVES THE ISSUE, SO
`THEN WE'RE TALKING, YOU KNOW, EITHER JULY OF 2018 OR JULY OF
`2019, AND MAYBE SOMEWHERE -- LIKELY SOMEWHERE IN BETWEEN, GIVEN
`THE STATISTICS, THERE'S BEEN AN APPEAL TO THE FEDERAL CIRCUIT
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`Case 3:12-cv-02738-CAB-MDD Document 297 Filed 05/09/16 PageID.23149 Page 6 of 26
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`WHICH WOULD TAKE, YOU KNOW, ANYWHERE FROM A YEAR TO A YEAR
`AND-A-HALF.
`SO WE'RE LOOKING AT ANOTHER FOUR YEARS ON THE
`
`AND UNTIL ALL THE APPEALS ARE EXHAUSTED,
`ADMINISTRATIVE TRACK.
`THE CLAIMS ARE DEEMED VALID AS A MATTER OF LAW.
`NOW, WHAT HAPPENS TO THIS CASE?
`I MEAN, THE WAY IT
`WORKS, AND THIS HAS BEEN THE SUBJECT OF A FAIR AMOUNT OF
`DEBATE, YOUR HONOR, AND I DON'T KNOW IF YOU'RE FAMILIAR WITH
`IT, BUT FRESENIUS BAXTER, AN EN BANC DECISION FROM THE FEDERAL
`CIRCUIT, WHICH INVOLVED SOMETHING LIKE THIS, AND IN A TIGHTLY
`SPLIT OPINION THE COURT DECIDED THAT WHERE ON REMAND -- IF YOU
`HAVE A CASE THAT'S BEEN PARTIALLY RESOLVED, LIKE OURS, AND
`THERE ARE DIFFERENCES, AND I DON'T MEAN TO SUGGEST THAT THE
`CASES ARE IDENTICAL, BUT CERTAINLY THE OVERALL POINT IS THE
`CASE GETS REMANDED, AND THEN THERE'S A REEXAMINATION INSTITUTED
`FOLLOWING THE REMAND.
`WHAT YOU BASICALLY HAVE IS A RACE TO
`FINAL JUDGMENT.
`AND WHAT I MEAN BY A "RACE TO FINAL JUDGMENT"
`IS THAT THE COURT PROCEEDING MOVES FORWARD ON ONE TRACK, THE
`ADMINISTRATIVE PROCEEDING MOVES FORWARD ON ANOTHER TRACK, AND
`WHICHEVER CASE REACHES FINAL JUDGMENT AT THE FEDERAL CIRCUIT
`
`LEVEL FIRST, WINS.
`AND SO IT'S A RATHER -- SO THERE ARE A COUPLE OF THINGS
`AT WORK HERE; ONE, WE KNOW THAT THE REEXAMINATION THAT WAS
`FILED ON BEHALF OF NUVASIVE WAS FILED BY ITS THEN COUNSEL FISH
`& RICHARDSON, WAS BASICALLY A STRATEGIC, TACTICAL MOVE TO END
`RUN, IF YOU WILL, THE LIABILITY FINDING THAT WAS UPHELD ON
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`Case 3:12-cv-02738-CAB-MDD Document 297 Filed 05/09/16 PageID.23150 Page 7 of 26
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`APPEAL, THE LIABILITY FINDING BEING BOTH THAT THE '973 IS NOT
`INVALID AND THAT THE PATENT WAS INFRINGED.
`
`NOW, THE ISSUE -- SO WHAT'S DIFFERENT FROM THIS CASE IS
`TYPICALLY THESE CASES, YOUR HONOR, WHICH YOU OFTEN SEE NOW, IS
`IPR'S ARE FILED RIGHT AT THE ONSET OF THE LITIGATION, AND WHAT
`A DISTRICT COURT CAN DO WITHIN ITS DISCRETION IS STAY, AND WHAT
`YOU TYPICALLY THEN HAVE IS JUDICIAL EFFICIENCY THAT'S CITED,
`POINT BEING THAT THE IPR MAY ULTIMATELY MOOT THE WHOLE THING,
`AND THEN THESE IPR'S MOVE FAIRLY QUICKLY, RIGHT?
`I MEAN,
`YOU'RE TALKING ABOUT A YEAR OR SO, AND NO WAY, NO HOW IS THAT
`GOING TO GET RESOLVED BEHIND THE FEDERAL COURT PROCEEDING.
`BUT THIS IS DIFFERENT BECAUSE IF THE COURT PROCEEDS
`ACCORDING TO THE MANDATE FROM THE FEDERAL CIRCUIT, WHICH IS TO
`BASICALLY -- WHICH IS TO RETRY THE DAMAGES CASE, AND THAT
`PROCEEDS FAIRLY QUICKLY ON THE MANDATE ISSUE, ALMOST A YEAR
`AGO, AND WHAT WE NOW HAVE IS EVERYTHING DONE AND READY FOR
`TRIAL.
`IF THAT CASE PROCEEDS, THEN WE HAVE A -- AND WE HAVE A
`TRIAL FOLLOWED BY AN APPEAL, WHAT YOU REALLY HAVE IS THE
`ADMINISTRATIVE PROCEEDING IS GOING TO GET MOOTED.
`SO JUDICIAL
`
`EFFICIENCY --
`WHY WOULD THE ADMINISTRATIVE PROCEEDING --
`THE COURT:
`I MEAN, WE'RE NOT BACK HERE TO TRY VALIDITY.
`THE PATENT IS
`VALID.
`IT'S BEEN AFFIRMED BY THE FEDERAL CIRCUIT, BASED ON
`WHAT WAS CHALLENGED IN THE DISTRICT COURT HERE THAT THE PATENT
`WAS VALID.
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`Case 3:12-cv-02738-CAB-MDD Document 297 Filed 05/09/16 PageID.23151 Page 8 of 26
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`MY CONCERN IS THAT
`YOU'RE BACK HERE FOR DAMAGES.
`THERE'S A CLAIM CONSTRUCTION THAT'S INCORPORATED IN THIS FINAL
`
`REJECTION THAT MAY AFFECT THE DETERMINATION AS TO WHETHER THERE
`ARE NON-INFRINGING ALTERNATIVES THAT WOULD HAVE BEEN AVAILABLE
`BECAUSE IT IS SORT OF REDEFINING WHAT TRANSLATERAL REQUIRES AND
`WHETHER OR NOT AN INFRINGING -- OR A NON-INFRINGING IMPLANT
`NEEDS TO BE -- HOW IT CAN BE IMPLANTED, AND SO WHAT MIGHT HAVE
`BEEN ALTERNATIVELY AVAILABLE THAT WOULD BE NON-INFRINGING AND
`ON THE MARKET.
`AND SO THAT'S -- I'M NOT CONCERNED HERE SO MUCH ABOUT
`THE VALIDITY AS WHETHER OR NOT THIS SUBSEQUENT PROCEEDING
`IMPACTS THE DETERMINATIONS THAT EXPERTS HAVE MADE HERE ABOUT
`THE SCOPE OF WHAT SORT OF ALTERNATIVES, IN THEIR GEORGIA
`PACIFIC ANALYSIS, MIGHT HAVE BEEN AVAILABLE.
`THERE'S THAT ISSUE, BUT EVEN IF THE COURT PROCEEDED IN
`THIS CASE AND GAVE AN AWARD OF DAMAGES, WOULD IT NOT BE IN THE
`REALM OF REASON FOR THE DEFENDANTS TO ASK TO HAVE THAT STAYED
`PENDING THE OUTCOME OF THE DETERMINATION AS TO WHETHER THIS
`PATENT'S EVEN VALID BEFORE THEY HAVE TO PAY THOSE DAMAGES?
`
`NO, BECAUSE THE ANSWER IS THE PATENT IS
`MR. DAUCHOT:
`VALID, AND THE PATENT REMAINS VALID.
`AND FROM AN
`ADMINISTRATIVE -- I MEAN, THAT'S THE ISSUE THAT'S RAISED BY
`THIS FRESENIUS DECISION, RIGHT?
`I MEAN, THE PATENT IS STILL
`VALID, AND THE PATENT WILL STILL BE VALID UNTIL THEY ARE
`CANCELED BY THE PATENT OFFICE, AND A CANCELLATION WILL NOT TAKE
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`Case 3:12-cv-02738-CAB-MDD Document 297 Filed 05/09/16 PageID.23152 Page 9 of 26
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`MEANTIME, WHAT WE'VE HAD
`PLACE UNTIL FOUR YEARS DOWN THE ROAD.
`IN THIS CASE IS A CLAIM CONSTRUCTION, IS A FINDING OF
`
`INFRINGEMENT, IS A FINDING OF NO INVALIDITY, AND WHAT WE -- AND
`THAT PROCEEDS.
`I MEAN, THOSE HAVE ALL BEEN FINALLY ADJUDICATED
`FOR PURPOSES OF THIS CASE.
`IT'S FINALLY ADJUDICATED.
`THE
`FEDERAL CIRCUIT HAS DECIDED IT, AND THERE ARE NO MORE APPEALS.
`SO WHAT YOU REALLY HAVE IS -- IT'S BEEN THE SUBJECT OF
`A LOT OF COMMENTARY, A STRANGE SITUATION WHERE YOU HAVE THE
`SEPARATE ADMINISTRATIVE PROCEEDING MOVING FORWARD, BUT INSOFAR
`AS THIS PROCEEDING IS CONCERNED, ALL THESE ISSUES HAVE BEEN
`RESOLVED, AND ALL WE HAVE IS A DAMAGES TRIAL TO BE TRIED BASED
`ACCORDING TO THE FEDERAL CIRCUIT MANDATE, AND ACCORDING TO THE
`CLAIM CONSTRUCTION AS IT APPLIED IN THIS CASE.
`THIS HAS ALL
`BEEN ADJUDICATED.
`IT'S OVER.
`NOW, IF THE ADMINISTRATIVE -- AND THIS IS THE TWIST, I
`MEAN, WHAT WE HAVE THEN IS THIS CASE PROCEEDS, THE CASE GETS
`TRIED, AND IT GOES UP TO THE FEDERAL CIRCUIT.
`THE FEDERAL
`CIRCUIT WILL DECIDE THE DAMAGES ISSUE BASED ON THIS RECORD, THE
`RECORD IN THIS CASE.
`IT WILL NOT LOOK TO AND SEE WHAT'S GOING
`
`THAT'S JUST A DIFFERENT
`
`ON OVER ON THE ADMINISTRATIVE SIDE.
`PROCEEDING.
`AND SO WHAT WE REALLY HAVE IS IF NUVASIVE ASKS FOR A
`STAY, WHAT YOU REALLY HAVE IS BASICALLY A REQUEST TO FAVOR THE
`ADMINISTRATIVE PROCEEDING OVER THIS ONE, AND SO THAT, YOU KNOW,
`YOU CAN LET THE ADMINISTRATIVE PROCEEDING GO TO FINAL JUDGMENT
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`Case 3:12-cv-02738-CAB-MDD Document 297 Filed 05/09/16 PageID.23153 Page 10 of 26
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`AT THE FEDERAL CIRCUIT LEVEL, BUT THAT'S FAVORING ONE
`PROCEEDING OVER THE OTHER, WHICH WE THINK IS INCONSISTENT WITH
`
`I WAS
`
`NUVASIVE HASN'T ASKED FOR A STAY.
`
`THE MANDATE.
`THE COURT:
`RAISING THE ISSUE.
`BUT MR. TRIPODI, DO YOU HAVE SOME THOUGHTS ON THIS?
`MR. TRIPODI:
`I DO, YOUR HONOR.
`LET ME FIRST START BY
`SAYING THAT THIS IS TRUE ABOUT THE VALIDITY IS ONE OF THE MAJOR
`IMPEDIMENTS TO A RESOLUTION OF THIS CASE.
`'973 THROUGHOUT THE
`FIRST TRIAL, AND NOW ON REMAND, HAS A VERY HIGH DAMAGES CLAIM
`ASSOCIATED WITH IT, AND IT DOES SEEM ODD THAT WE WOULD HAVE A
`TRIAL ON A PATENT THAT WE NOW KNOW -- NOT JUST SPECULATING,
`THAT WE NOW KNOW THAT AN EXAMINER AT THE PATENT AND TRADEMARK
`OFFICE HAS DETERMINED THAT THE ASSERTED CLAIMS ARE, IN FACT,
`INVALID.
`
`WHILE I APPRECIATE THE LITIGATION -- THE RELATED
`LITIGATION STRATEGY OF TRYING TO PUSH THIS PROCEEDING FORWARD
`SO THAT MEDTRONIC -- WARSAW CAN COLLECT DAMAGES ON WHAT IS NOW
`HIGHLY LIKELY TO BE AN ADJUDICATED INVALID PATENT AT THE PATENT
`
`OFFICE, THAT SEEMS LIKE A WASTE OF THE COURT'S RESOURCES, IT
`SEEMS LIKE A WASTE OF THE PARTIES' RESOURCES, AND IT IS
`CERTAINLY A MAJOR IMPEDIMENT TO THE PARTIES REACHING A
`SETTLEMENT IN THE CASE.
`THERE WAS SOME UNCERTAINTY UNTIL THE FRESENIUS DECISION
`ON HOW THIS ALL PLAYS OUT, BUT IT IS NOW ABSOLUTELY CLEAR THAT
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`Case 3:12-cv-02738-CAB-MDD Document 297 Filed 05/09/16 PageID.23154 Page 11 of 26
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`THE FEDERAL CIRCUIT WILL, IN FACT, RESPECT THE DECISION OF THE
`PATENT OFFICE AND THAT IS, IN EFFECT, INTERVENING AUTHORITY
`
`WHICH THE FEDERAL CIRCUIT WILL USE TO EXTINGUISH ANY CLAIM IN
`THIS CASE.
`YOUR HONOR, THAT'S INCORRECT --
`MR. DAUCHOT:
`LET HIM FINISH BECAUSE -- I'M SORRY, I
`THE COURT:
`THINK WHERE WE'RE HEADED HERE IS THAT IF -- RIGHT NOW I HAVE NO
`REASON NOT TO PROCEED OTHER THAN RECOGNIZING THERE ARE THESE
`PARALLEL PROCEEDINGS GOING ON, BUT IF THE DEFENDANTS ARE GOING
`TO MOVE FOR A STAY, THEN THEY SHOULD DO THAT PROMPTLY AND FULLY
`BRIEF WHETHER OR NOT THAT'S THE APPROPRIATE REMEDY HERE AT THIS
`TIME.
`
`WHILE I UNDERSTAND THE VALUE TO WARSAW, BECAUSE THIS IS
`PAST INFRINGEMENT AND IT'S AT LEAST ALLEGED TO BE A SUBSTANTIAL
`AMOUNT OF MONEY, THIS PATENT HAS EXPIRED, SO I'M A LITTLE LESS
`CONCERNED IN TERMS OF ONGOING INFRINGEMENT BECAUSE THERE ISN'T
`ANY, BUT YOU'VE BEEN WAITING A LONG TIME TO GET YOUR DAMAGES IN
`THIS CASE AND WE NEED TO RESOLVE THAT ISSUE, BUT I'M NOT REALLY
`SURE THAT GIVEN THAT THERE'S NOW THIS SEPARATE FINDING THAT THE
`
`PATENT IS INVALID, AND WHILE I UNDERSTAND THAT'S STILL IN THE
`PROCESS, THAT AWARDING DAMAGES IN A CASE ON A PRIOR RECORD,
`WHEN THERE'S AN ONGOING RECORD OF OTHER FINDINGS ON OTHER ART,
`IS IRRELEVANT TO DETERMINING WHETHER OR NOT THEY SHOULD BE
`FORCED TO PAY.
`MR. DAUCHOT:
`
`WELL, THE ANSWER, YOUR HONOR, ON THE ART
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`Case 3:12-cv-02738-CAB-MDD Document 297 Filed 05/09/16 PageID.23155 Page 12 of 26
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`ISSUE, THE ART THAT'S BEFORE -- THE ART THAT'S NOW BEEN
`RESURRECTED THROUGH THE REEXAMINATION PROCEEDING IS THE
`
`IDENTICAL ART THAT WAS RAISED IN THE DISTRICT COURT
`PROCEEDINGS.
`THE REFERENCE -- A KEY REFERENCE TO WHICH THE
`EXAMINER POINTED IS THE SAME REFERENCE THAT THE JURY HEARD
`ABOUT FOR TWO WEEKS IN JUDGE ANELLO'S COURTROOM, AND FOR THAT
`MATTER THE REFERENCE THAT THE EXAMINER LOOKED AT IS THE
`IDENTICAL REFERENCE THAT JUDGE ANELLO DEALT WITH IN A SEPARATE
`INEQUITABLE CONDUCT BENCH TRIAL WHERE HE CONCLUDED PRECISELY
`THE OPPOSITE THAT THE EXAMINER DID.
`THE POINT BEING IS THAT THE FEDERAL CIRCUIT DEALT WITH
`ALL OF THOSE ISSUES AND -- WELL, INEQUITABLE CONDUCT WAS NEVER
`APPEALED, BUT THE FEDERAL CIRCUIT CERTAINLY DEALT WITH THE
`CLAIM CONSTRUCTION ISSUES.
`I MEAN, THE BRANNIGAN REFERENCE,
`THE SAME ISSUE THAT'S NOW BEFORE THE EXAMINER, WAS THE
`IDENTICAL REFERENCE THAT THE FEDERAL CIRCUIT CONSTRUED.
`NUVASIVE MADE THE SAME ARGUMENTS FOR THE FEDERAL CIRCUIT THAT
`IT'S MAKING BEFORE THE EXAMINER.
`WHERE I'M GOING WITH THIS IS, WHERE I TAKE STRONG ISSUE
`
`WITH WHAT MR. TRIPODI SAID, IS THAT THE FEDERAL CIRCUIT WOULD
`BE COMPELLED TO LOOK AT THE ADMINISTRATIVE RECORD BEFORE -- I
`DON'T KNOW IF MR. TRIPODI ACTUALLY MEANT TO SAY IT, BUT THE WAY
`I UNDERSTOOD IT WAS IS THAT IF YOUR CASE, YOUR HONOR, GOES UP
`ON APPEAL, THE FEDERAL CIRCUIT IS GOING TO SIT THERE AND LOOK
`AT WHAT HAPPENED ON THE ADMINISTRATIVE SIDE, AND THE ANSWER IS
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`Case 3:12-cv-02738-CAB-MDD Document 297 Filed 05/09/16 PageID.23156 Page 13 of 26
`
`WHAT THE FEDERAL CIRCUIT DOES IS DECIDE THIS CASE, AND THE
`NO.
`MANDATE IN THIS CASE IS THE MANDATE IN THIS CASE, WHICH IS TRY
`
`THE DAMAGES CASE PURSUANT TO THE CLAIM CONSTRUCTION THAT WE
`HAVE IN THIS CASE.
`NOW, IF FOR SOME REASON WE HAVE -- BASICALLY, YOUR
`HONOR, PURE AND SIMPLE, IT BOILS DOWN TO A RACE TO FINAL
`JUDGMENT.
`NOW, IT MAY SEEM COUNTERINTUITIVE TO EVERYBODY ON
`THE PHONE HERE, THAT WAIT A SECOND, IF THE PATENT OFFICE IS IN
`THE PROCESS OF INVALIDATING THIS THING, HOW COULD THERE BE A
`RACE, AND HOW COULD DAMAGES BE FAIR?
`WELL, THE ANSWER IS TWO POINTS; FROM AN EQUITABLE
`STANDPOINT, NUVASIVE DIDN'T HAVE TO WAIT UNTIL THE FEDERAL
`CIRCUIT WAITED ON LIABILITY TO TRY TO END RUN IT THROUGH A
`REEXAMINATION PROCEEDING, AND BY "END RUN" I DON'T MEAN
`ANYTHING NEFARIOUS, THE LAW AS IT STANDS GIVES IT A CHANCE TO
`DO THAT, BUT IT COMES WITH A RISK, AND THE RISK IS THAT YOU'RE
`NOT GOING TO GET THE FINAL JUDGMENT BEFORE THE UNDERLYING CASE
`THAT'S BEING RETRIED ON THE MANDATE.
`AND THAT'S A RISK THAT NUVASIVE TOOK BY CHOOSING TO
`
`WAIT TO FILE THE REEXAMINATION PETITION UNTIL AFTER THE FEDERAL
`CIRCUIT HAD ITS SAY ON LIABILITY, SO THAT'S A RISK THAT
`NUVASIVE TOOK.
`BUT THE FACT OF THE MATTER IS THAT FOR PURPOSES OF THIS
`CASE, YOU KNOW, THE VALIDITY OF THE PATENT WAS TRIED.
`IT WAS
`ADJUDICATED.
`THE JURY WEIGHED IN.
`NUVASIVE APPEALED AND SAID
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`Case 3:12-cv-02738-CAB-MDD Document 297 Filed 05/09/16 PageID.23157 Page 14 of 26
`
`THAT THE JURY VERDICT COULD NOT STAND GIVEN THE SAME PRIOR ART
`REFERENCE THAT THEY'VE NOW RESURRECTED THROUGH THIS PROCEEDING,
`
`AND SO,
`AFTER THE FEDERAL CIRCUIT DECIDED THE LIABILITY ISSUE.
`FROM OUR PERSPECTIVE, WE MOVE FORWARD, AND THE FEDERAL CIRCUIT
`IS GOING TO DECIDE THE DAMAGES ISSUE BASED ON THE RECORD IN
`THIS CASE.
`THAT ADMINISTRATIVE PROCEEDING IS AN UNRELATED
`ANCILLARY PROCEEDING.
`NOW, WHAT -- MR. TRIPODI IS RIGHT ABOUT FRESENIUS, THE
`TWIST IN FRESENIUS WAS IF THE REEXAMINATION -- AND BY THE WAY
`IN FRESENIUS I THINK THE REEXAMINATION REQUEST HAD BEEN FILED
`BEFORE THE MANDATE ISSUE, SO THAT THERE THE RACE, IF YOU WILL,
`TOOK PLACE -- YOU KNOW, THE REEXAMINATION HAD A HEAD START, IF
`YOU WILL, COMPARED TO WHAT WE HAVE IN THIS SITUATION, BUT IN
`FRESENIUS THE REEXAMINATION HAD BEEN FILED.
`IT'S MOVING ON A
`SEPARATE TRACK.
`IN FRESENIUS THE FEDERAL CIRCUIT UPHELD -- THERE WAS A
`FEDERAL CIRCUIT DECISION WHERE IT UPHELD THE VALIDITY, AND THEN
`WHAT YOU HAVE IS THE REEXAMINATION COMES TO ROOST BEFORE THERE
`IS A FINAL JUDGMENT ON DAMAGES, AND THE QUESTION IS WHICH WINS?
`
`AND THE FEDERAL CIRCUIT IN FRESENIUS SAID, WELL, IN THAT CASE
`IF YOU'VE GOT THE PATENT OFFICE COMING IN AND INVALIDATING THE
`PATENT, WITH THAT INVALIDATION RULING BEING AFFIRMED BY THE
`FEDERAL CIRCUIT BEFORE YOU HAD THE DAMAGES ISSUE BEING RESOLVED
`IN THE SEPARATE CASE, THEN THERE'S NOTHING TO TRY BECAUSE
`THERE'S NO VALID PATENT, BUT THAT'S NOT WHAT WE HAVE HERE.
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`Case 3:12-cv-02738-CAB-MDD Document 297 Filed 05/09/16 PageID.23158 Page 15 of 26
`
`THE COURT:
`MR. DAUCHOT:
`
`OKAY.
`AGAIN, I UNDERSCORE THAT FROM A JUDICIAL
`
`RESOURCES PERSPECTIVE, YOUR HONOR, THE NOTION THAT PUTTING THIS
`CASE -- THAT STAYING THIS CASE IS GOING TO SAVE JUDICIAL
`RESOURCES IS SIMPLY NOT THE CASE BECAUSE IF THIS CASE PROCEEDS
`WE HAVE A DAMAGES AWARD, IT GETS APPEALED PURSUANT TO THE
`MANDATE IN THIS CASE AND THE CLAIM CONSTRUCTION IN THIS CASE --
`THE CLAIM CONSTRUCTION IS OVER AND DONE WITH -- THAT DAMAGES
`AWARD WILL STAND.
`THAT FINAL JUDGMENT WILL STAND, AND WHAT
`HAPPENS IS IT WILL MOOT THE ADMINISTRATIVE PROCEEDING.
`MR. TRIPODI:
`IF I MAY, YOUR HONOR?
`THE COURT:
`YES, GO AHEAD, SIR.
`MR. TRIPODI:
`FIRST OF ALL, LET ME JUST -- THERE ARE
`LOTS OF ISSUES THAT WE COULD BE TALKING ABOUT IN THIS CONTEXT,
`AND PERHAPS THOSE ARE BEST EMBRACED IN THE CONTEXT OF A MOTION
`TO STAY, BUT NUMBER ONE, I WOULD POINT OUT THAT THE REJECTIONS
`THAT ARE PENDING ARE NOT IDENTICAL TO THE INVALIDITY CASE THAT
`WAS TRIED IN PHASE 1, SO THERE ARE DISTINCTIONS, AND SO I DON'T
`THINK THAT STATEMENT IS ACCURATE FROM OPPOSING COUNSEL.
`
`IN TERMS OF CONSERVING JUDICIAL RESOURCES, I DON'T
`QUITE UNDERSTAND THE ARGUMENT IN THE SENSE THAT WHAT MEDTRONIC
`AND WARSAW ARE URGING IS THAT THE COURT TRY A DAMAGES CASE,
`WITH -- FULLY INFORMED THAT THE PATENT OFFICE HAS NOW FOUND THE
`PATENT TO BE INVALID, AND THAT IF THAT DAMAGE AWARD IS TO STAND
`IT'S SIMPLY BECAUSE OF A RACE TO THE FEDERAL CIRCUIT.
`WHEN
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`Case 3:12-cv-02738-CAB-MDD Document 297 Filed 05/09/16 PageID.23159 Page 16 of 26
`
`CONGRESS ENACTED THE REEXAMINATION STATUTE, THIS WAS EXACTLY
`THE KIND OF THING THAT THEY WERE HOPING TO PREVENT IS FOR
`
`PARTIES TO INVEST ALL THESE RESOURCES, CERTAINLY IN A CASE WITH
`A HISTORY LIKE THIS ONE WHERE PATENTS HAVE BEEN STAYED PENDING
`PTO PROCEDURES.
`IT MAKES NO SENSE TO ME FOR US TO CONTINUE TO
`INVEST TIME, EFFORT AND MONEY IN A PATENT THAT WE HAVE A
`REASONABLE EXPECTATION NOW WILL CONCLUDE THE CASE.
`I WOULD POINT OUT, ALTHOUGH THERE'S BEEN A LOT OF
`FINGER POINTING AT NUVASIVE HERE, WE WOULDN'T BE BACK IN YOUR
`COURTROOM ON THE '973 WERE IT NOT FOR THE FACT THAT WARSAW WAS
`OVERREACHING IN THE ORIGINAL TRIAL AND PROPERLY SOUGHT LOST
`PROFITS.
`
`IF, IN FACT, THEY HAD HAD A VIABLE DAMAGES CASE, THAT
`WOULD HAVE BEEN AFFIRMED AT THE INITIAL APPEAL AND THERE WOULD
`BE NOTHING LEFT TO FIGHT ABOUT.
`WE ARE BACK HERE BECAUSE OF
`THAT ERROR, AND I THINK THE ONLY -- TO COMPOUND THAT ERROR BY
`TRYING A CASE THAT COULD TURN OUT TO BE COMPLETELY MOOT,
`THERE'S PLENTY OF OTHER STUFF TO FIGHT ABOUT.
`THE COURT:
`ALL RIGHT.
`WELL, RIGHT NOW THIS CASE IS ON
`
`I HAVE NO
`I WANT TO GET IT RESOLVED.
`IT'S OLD.
`MY DOCKET.
`MOTION FROM THE DEFENDANTS TO STAY IT.
`THERE MAY BE LEGITIMATE
`ARGUMENTS THAT NEED TO BE FULLY BRIEFED AND OPPOSED.
`I WAS -- MY TENTATIVE ON THE DAUBERT, BECAUSE -- AND
`PART OF THIS IS BECAUSE I DIDN'T TRY THE UNDERLYING CASE, SO
`I'M HAVING TO REACH CERTAIN ASSUMPTIONS ABOUT THE STRUCTURE OF
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`Case 3:12-cv-02738-CAB-MDD Document 297 Filed 05/09/16 PageID.23160 Page 17 of 26
`
`HOW THESE PRODUCTS ARE SOLD BASED ON THE BRIEFING, AND MY
`FORMER REVIEW OF THE TRANSCRIPTS FROM THE DAMAGES EXPERTS IN
`
`THE FIRST CASE AS TO HOW THESE PRODUCTS ARE PACKAGED AND SOLD,
`WITHOUT HAVING ACTUALLY HEARD ANY OF THE TESTIMONY, THAT IT
`APPEARS TO ME THAT WARSAW'S DAMAGE EXPERT HAS A THEORY
`REGARDING THE WAY THE IMPLANTS ARE SOLD, THAT IF THERE'S
`FOUNDATION FOR IT, THERE'S NOTHING ILLEGITIMATE ABOUT HIM
`MAKING THE FULL PRICE OF THE IMPLANT BE THE ROYALTY BASE IN THE
`CASE.
`
`THE CONTRARY POSITION THAT NUVASIVE HAS IS THAT THE
`IMPLANTS ARE NOT SOLD AS AN INDIVIDUAL UNIT BUT ARE ENCOMPASSED
`IN BASICALLY A LICENSE TO PRACTICE THIS WHOLE LATERAL
`TRANSPLANT TECHNOLOGY, THAT GIVES YOU ACCESS TO A WHOLE BUNCH
`OF OTHER INVENTIVE CONTRIBUTION THAT'S INCORPORATED IN THE COST
`OF THE IMPLANT, AND THEREFORE THERE SHOULD BE SOME
`APPORTIONMENT FOR WHAT YOU'RE GETTING IN VALUE BEYOND JUST THE
`IMPLANT ITSELF IN THAT PRICE.
`THERE'S CERTAINLY EVIDENCE TO SUGGEST THAT THAT IS THE
`PROPER FOUNDATIONAL BASIS FOR THE BASE, AND SO AT THIS POINT I
`
`CAN'T -- TENTATIVELY I CAN'T SAY THAT WARSAW'S EXPERT'S OPINION
`SHOULD BE EXCLUDED UNTIL HE LAYS A PROPER FOUNDATION FOR IT AT
`TRIAL, AND SO MY POSITION WOULD BE TO DENY THE DAUBERT MOTIONS
`SUBJECT TO STRIKING THEIR TESTIMONY AFTER IT'S RECEIVED, IF
`THEY DON'T HAVE A PROPER FOUNDATION FOR THE ROYALTY BASE, AND
`THAT'S THE MOST SERIOUS CONSIDERATION BECAUSE I DO THINK THE
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`Case 3:12-cv-02738-CAB-MDD Document 297 Filed 05/09/16 PageID.23161 Page 18 of 26
`
`LAW HAS STRONGLY INDICATED THAT YOU CAN'T JUST REDUCE THE RATE
`IF YOU HAVE THE WRONG BASE TO START WITH TO SOMEHOW JUSTIFY THE
`
`YOU HAVE TO START FROM THE RIGHT APPORTIONED BASE AS
`NUMBER.
`TO WHAT THE VALUE OF THE PATENT IS IT BRINGS TO THE PRODUCT,
`AND THEN LOOK AT THE APPROPRIATE RATE.
`AND SO THAT WAS MY PRIMARY CONCERN, AND AGAIN I'M NOT
`SURE I HAVE ENOUGH BACKGROUND IN THE ACTUAL KNOWLEDGE OF HOW
`THESE PRODUCTS ARE MARKETED AND SOLD, BEYOND WHAT WAS SAID IN
`THE REPORTS AND IN THE MOTION PAPERS, TO BE ABLE TO DRAW THAT
`CONCLUSION NOW TO THE POINT WHERE I WOULD EXCLUDE SOMEONE'S
`TESTIMONY IN ITS ENTIRETY.
`I DO THINK IT COULD BE SUBJECT TO
`BEING STRUCK IF, IN FACT, THE REALITY IS THAT THESE PRODUCTS --
`THAT THE PRICE OF THE -- THE IMPLANTS ARE NEVER SOLD
`INDIVIDUALLY AND THE PRICE OF THE IMPLANTS INCORPORATES THE USE
`OF A WHOLE BUNCH MORE TECHNOLOGY THAT WAS NOT TAKEN INTO
`CONSIDERATION.
`THE OTHER ISSUE IS WHETHER OR NOT THEY'RE BACK-DOORING
`THE LOST PROFITS CLAIM, AND AGAIN I THINK THAT THAT -- THAT'S
`WHAT I WOULD HAVE WANTED TO HAVE A HEARING ON, AND SO I'M
`
`INCLINED AT THIS POINT TO SCHEDULE A HEARING TO ADDRESS THAT
`ISSUE A LITTLE MORE FULLY WITH THE PARTIES BEFORE I MAKE A
`FINAL DECISION ON WHETHER CERTAIN ASPECTS OF THE GEORGIA
`PACIFIC ANALYSIS SHOULD BE EXCLUDED, AND I WANTED TO SET A DATE
`FOR THAT, ABSENT SOME DECISION BY THE PARTIES, WHICH THERE
`DOESN'T APPEAR TO BE ANY JOINT DECISION THAT SOMEHOW THIS
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`Case 3:12-cv-02738-CAB-MDD Document 297 Filed 05/09/16 PageID.23162 Page 19 of 26
`
`SHOULD BE SET ASIDE.
`SO I'M LOOKING AT POTENTIALLY -- I WAS GOING TO HAVE A
`
`I
`
`DATE ISSUED TO YOU ALL OF APRIL 27TH TO HAVE A HEARING TO
`CONCLUDE THE DAUBERT ANALYSIS AND THEN SET A TRIAL DATE.
`STILL THINK I WANT TO GO FORWARD WITH THAT AT THIS POINT,
`ABSENT SOME MOTION FROM THE DEFENDANTS TO CONSIDER STAYING THE
`CASE AND GIVING ME THE PROPER AUTHORITY AS TO WHY THAT WOULD
`MAKE SENSE.
`IF YOU LOOKED AT THIS
`I UNDERSTAND WARSAW'S POSITION.
`AS IF THIS PATENT IS BEING ALLEGED AGAINST A THIRD PARTY AND
`THAT PARTY HAD GOTTEN SOME DECISION THAT THE PATENT WAS INVALID
`AND IT WAS ON APPEAL, IT WOULDN'T BE FINAL AGAINST THIS PARTY
`UNTIL IT WAS AFFIRMED BY THE FEDERAL CIRCUIT, AND SO WHY WOULD
`THIS CASE BE SET ASIDE AND NOT CONCLUDED TO ITS ULTIMATE
`CONCLUSION AS TO WHAT THE DAMAGES AWARD SHOULD BE BECAUSE
`THERE'S A PARALLEL PROCEEDING, EVEN THOUGH IT'S THE SAME
`PARTIES, BUT IT'S IN A DIFFERENT VENUE, WITH DIFFERENT RULES,
`AND DIFFERENT STANDARDS.
`I'M JUST SORT OF THINKING OUT LOUD
`NOW.
`
`BUT ANYWAY, I WANT TO LOOK AT THE 27TH AS A DATE FOR
`THIS HEARING.
`ARE THE PARTIES AVAILABLE TO COME IN ON
`APRIL 27TH AT 10:00 TO ADDRESS THE DAUBERT MOTIONS THAT ARE
`STILL PENDING IN THE '08 CASE?
`MR. DAUCHOT:
`YES, YOUR HONOR, ON BEHALF OF THE
`PLAINTIFF.
`
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`Case 3:12-cv-02738-CAB-MDD Document 297 Filed 05/09/16 PageID.23163 Page 20 of 26
`
`WE ARE INDEED AVAILABLE, YOUR HONOR.
`MR. TRIPODI:
`I MAY, I WOULD LIKE TO ADD ONE POINT TO THE DISCUSSION AND
`
`IF
`
`PERHAPS GET YOUR THOUGHTS ON HOW BEST TO PROCEED.
`THE COURT:
`GO AHEAD.
`MR. TRIPODI:
`SO FIRST OF ALL, I BELIEVE THAT WE WILL
`INDEED BE BRINGING A STAY MOTION, AND SO THE FIRST QUESTION
`WOULD BE WHETHER OR NOT YOU WOULD LIKE TO HAVE A SEPARATE
`HEARING ON THAT OR WHETHER YOU WOULD LIKE THAT TO BE HEARD
`SIMULTANEOUSLY WITH THE DAUBERT MOTION.
`I DON'T THINK
`APRIL 27TH WOULD NECESSARILY BE VIABLE.
`THE COURT:
`YEAH, I DON'T THINK YOU WOULD HAVE ENOUGH
`TIME TO BRIEF IT AND HAVE IT UNDER CONSIDERATION BY THEN.
`MR. TRIPODI:
`WE'RE HAPPY TO COME IN FOR THE DAUBERT
`HEARING, AND THEN HAVE THE STAY MOTION HEARD LATER.
`THE COURT:
`WHY DON'T WE GO AHEAD AND LEAVE THE DAUBERT
`ON CALENDAR.
`YOU CAN GO AHEAD AND GET A MOTION SUBMISSION DATE
`FOR YOUR -- FOR A STAY MOTION.
`JUST CALL MY CLERK FOR THAT,
`AND WE'LL SET THAT OUT BASED ON WHEN YOU'RE READY TO FILE.
`MR. TRIPODI:
`OKAY.
`AND I WOULD LIKE TO RAISE ANOTHER
`
`ISSUE, WHICH IS OF SIGNIFICANT IMPORTANCE TO THE CASE AND ONE
`THAT WE HAVE BEEN ENGAGED IN ONGOING DISCUSSIONS WITH COUNSEL
`FOR WARSAW.
`AFTER THE COURT MADE ITS RULING IN THE
`HYPOTHETICAL NEGOTIATION HEARING, AS YOU'LL RECALL THE ISSUE
`THERE WAS WHETHER OR NOT MICHELSON WAS THE PROPER PARTY.
`THE COURT:
`RIGHT.
`
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`Case 3:12-cv-02738-CAB-MDD Document 297 Filed 05/09/16 PageID.23164 Page 21 of 26
`
`AT THE HYPOTHETICAL NEGOTIATION THE
`MR. TRIPODI:
`ARGUMENT WAS MADE BY MEDTRONIC THAT THE '973, AND IN LIGHT OF
`
`THE COURT'S RULING SUCCESSFULLY MADE BY I SHOULD SAY WARSAW,
`THAT THE
`
`ON THAT BASIS, THE COURT
`RULED AGAINST US ON OUR VIEW THAT MICHELSON SHOULD HAVE BEEN A
`HYPOTHETICAL NEGOTIATION.
`THE PROBLEM THAT IS PRESENTED THOUGH AS A RESULT OF THE
`POSITIONS THAT WARSAW TOOK AT THE HEARING, IS THAT
`
`SO WHAT WE HAVE, AND AN ISSUE THAT WE BELIEVE MOOTS THE
`ENTIRE CASE, IS THE FACT THAT WARSAW HAS NO STANDING IN THIS
`
`IT IS NOT THE LEGAL OWNER OF THE '973 PATENT, NOR IS IT
`CASE.
`THE OWNER OF AN IMPORTANT RIGHT IN THE PATENT, INCLUDING THE
`RIGHT TO SUE AND RECOVER DAMAGES, THOSE ARE ALL POSSESSED BY AN
`ENTITY KNOWN AS MEDTRONIC SOFAMOR DANEK.
`SO IN THE INTERESTS OF JUDICIAL EFFICIENCY, AND IN
`LIGHT OF THE IMPORTANCE OF THE ISSUE, WE THINK THAT THIS ISSUE
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`Case 3:12-cv-02738-CAB-MDD Document 297 Filed 05/09/16 PageID.23165 Page 22 of 26
`
`SHOULD BE DECIDED BEFORE THE COURT DETERMINES HOW WE'LL PROCEED
`IN THE CASE.
`
`YOUR HONOR, THE POINT THAT MR. TRIPODI
`MR. DAUCHOT:
`MADE, I MEAN, THE AGREEMENTS, THE 1993 TO 1994 AGREEMENT, THIS
`IS ALL KNOWN -- WAS ALL KNOWN TO NUVASIVE FOR YEARS.
`THE FACT
`THAT
`
`IS NO SECRET
`IT HASN'T BEEN A SECRET, AND IT'S NOTHING NEW.
`TO NUVASIVE.
`SO WHAT WE HAVE HERE IS, FROM OUR PERSPECTIVE, YET ANOTHER
`EFFORT TO RAISE SOMETHING THAT -- YOU KNOW, TO DELAY THIS
`THING.
`
`MR. DAUCHOT, I UNDERSTAND THAT, BUT IF IT'S
`THE COURT:
`A MATTER OF SUBJECT MATTER JURISDICTION, IF WE DON'T HAVE THE
`PROPER PARTY AS THE OWNER OF THE PATENT, THEN THEY CAN RAISE
`THAT AT ANY TIME AND YOU NEVER WAIVE THAT, SO I DON'T --
`MR. DAUCHOT:
`UNDERSTOOD.
`AND IT SEEMS
`THE COURT:
`EVEN THOUGH IT'S LATE.
`SOMEWHAT PIECEMEAL BECAUSE REALLY HOW MANY TIMES ARE WE GOING
`TO REVISIT WHO'S THE PROPER OWNERS OF THESE PATENTS, I WILL NOT
`
`STOP THEM FROM FILING A MOTION TO ADDRESS SUBJECT MATTER
`JURISDICTION.
`I MEAN, THEY COULD DO THAT AND RAISE THAT AT THE
`APPELLATE LEVEL.
`IT WOULD BE INSANE TO HOLD A TRIAL ONLY TO
`HAVE THE FEDERAL CIRCUIT GO, "WELL, THAT WAS INTERESTING, BUT
`YOU DIDN'T HAVE THE RIGHT PARTIES THERE."
`SO IF YOU WANT TO FILE THAT MOTION, I DON'T KNOW WHAT
`
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`
`Case 3:12-cv-02738-CAB-MDD Document 297 Filed 05/09/16 PageID.23166 Page 23 of 26
`
`YOU'VE BEEN WAITING FOR, BUT YOU BETTER FILE IT RIGHT AWAY
`BECAUSE THAT WOULD TAKE PRECEDENT TO ANY OTHER DISCUSSION THAT
`
`THE COURT WOULD HAVE REGARDING ANYTHING ELSE GOING FORWARD IN
`THE TRIAL.
`IF YOU CAN ESTABLISH THAT THE PLAINTIFF HERE IS NOT
`THE OWNER OF THE PATENT, THEN THEY DON'T HAVE ANY AUTHORITY TO
`ASSERT THIS CASE, AND OBVIOUSLY THAT WILL MOOT THE WHOLE THING.
`SO ALL I CAN SAY IS THAT SHOULD BE AT THE FRONT OF THE
`LIST OF THINGS NUVASIVE SHOULD BE LOOKING TO FILE WITH THE
`COURT.
`WHEN AND IF IT'S FILED, I WILL CONSIDER VACATING ANY
`OTHER DATES, BUT IN THE MEANTIME, YOU'VE BEEN WAITING ON ME,
`AND I'VE BEEN DEALING WITH A LOT OF OTHER STUFF, BUT THIS CASE
`IS AT THE TOP OF MY LIST, AND I WOULD LIKE TO GET THIS DAUBERT
`MOTION RESOLVED SO THAT WE CAN SET A TRIAL DATE.
`AND SO I'M GOING TO LEAVE THE 27TH ON CALENDAR RIGHT
`NOW TO HAVE A HEARING ON THE EXPERT REPORTS, AND THEN IF ANY
`MOTIONS COME IN THAT LOOK LIKE THEY SHOULD TAKE PRIORITY OVER
`THAT BETWEEN NOW AND THEN, WE'LL CONSIDER VACATING THAT DATE
`AND SETTING A NEW SCHEDULE.
`IN THE MEANTIME, YOU GUYS NEED TO
`DECIDE WH
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