Case 3:12-cv-02738-CAB-MDD Document 82 Filed 07/24/13 PageID.2854 Page 1 of 5
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`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF CALIFORNIA
`WARSAW ORTHOPEDIC, INC.;
`CASE NO. 12-cv-2738-CAB (MDD)
`MEDTRONIC SOFAMOR DANEK
`USA, INC.; MEDTRONIC PUERTO
`ORDER GRANTING MOTION TO
`RICO OPERATIONS COMPANY;
`AMEND
`and OSTEOTECH, Inc.,
`[Doc. No. 67]
`
`Plaintiffs,
`
`vs.
`NUVASIVE, INC.,
`
`Defendant.
`
`Before the Court is the plaintiffs’ motion to amend and supplement the first
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`amended complaint to add U.S. Patent No. 8,444,696 (“the ‘696 patent”) to the
`infringement allegations against defendant NuVasive Inc. [Doc. No. 67.] NuVasive
`opposes. [Doc. No. 73.] Warsaw filed a reply. [Doc. No. 789.] The Court took the
`matter under submission on July 12, 2013, finding it suitable for determination without
`oral argument in accordance with Civil Local Rule 7.1(d)(1). The motion is
`GRANTED under the conditions set forth below.
`
`Plaintiff Warsaw Orthopedic, Inc., is the assignee of the patent at issue. Plaintiffs Medtronic
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`Sofamor Danek, U.S.A., Inc., and Medtronic Puerto Rico Operations Co., allege exclusive license
`rights to the patent at issue. These plaintiffs are hereinafter jointly referred to as “Warsaw.”
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`Case 3:12-cv-02738-CAB-MDD Document 82 Filed 07/24/13 PageID.2855 Page 2 of 5
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`The parties to this litigation are engaged in serial patent disputes regarding their
`competing technologies related to spinal surgery devices and methods. The current
`litigation follows a prior infringement suit in this District in which the parties
`collectively asserted 12 patents. Further, NuVasive predicts this will likely not be the
`last suit between these competitors, as “both parties have more patents they could
`potentially assert against one another, and both parties continue to obtain new patents
`all the time.” [Doc No. 73 at 12.]
`The instant case began in the Northern District of Indiana, on August 17, 2012,
`when Warsaw filed a complaint alleging NuVasive infringed U.S. Patents Nos.
`8,021,430 (“the ‘430 patent”) and 5,676,146 (“the ‘146 patent’). [Doc. No. 1.] On
`August 28, 2012, U.S. Patent No. 8,251,997 (“the ’997 patent”) issued and Warsaw
`amended that same day to add the new patent to this action. [Doc. Nos. 17, 18.] On
`September 4, 2012, NuVasive filed a motion to transfer the case to this District [Doc.
`No, 22], which was granted on November 8, 2012. [Doc. No. 32.]
`NuVasive answered the Amended Complaint on November 30, 2012. It did not
`at that time assert any of its own patents in counterclaim. [Doc. No. 43.] Subsequently
`NuVasive was given leave to amend its counterclaim, and on March 7, 2013, NuVasive
`filed an amended counterclaim adding eight patents to this litigation: U.S. Patents Nos.
`8,000,782; 8,005,535; 8,016,767; 8,192,356; 8,187,334; 8,361,156; and Design Patents
`Nos. 652,922 and 666,294 (collectively “the NuVasive patents”). [Doc. No. 55.]
`NuVasive also filed a request to stay the litigation of Warsaw’s ‘430 patent and ‘997
`patent, on the basis they were both in review proceedings before the PTO. [Doc. No.
`58.]
`
`Warsaw did not oppose a stay of the ‘430 patent, as it elected to amend the
`claims in reexamination and, Warsaw acknowledged, the claims currently do not read
`on NuVasive’s accused products. [Doc. No. 67-1, at 5-6.] As for the ‘997 patent, the
`Court temporarily vacated the scheduling order dates related to the production and
`service of invalidity contentions and preliminary claim construction proposals as to that
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`Case 3:12-cv-02738-CAB-MDD Document 82 Filed 07/24/13 PageID.2856 Page 3 of 5
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`particular patent. [Doc. No. 69.] The parties were instructed to contact the Court after
`the Patent Office issued its decision, expected approximately September 25, 2013, as
`to whether the PTO would grant inter partes review of the patent for the Court’s further
`consideration of the request to stay litigation of the ‘997 patent.
`The parties are presently proceeding in this litigation with Warsaw’s allegations
`against NuVasive for infringement of the ‘146 patent, and NuVasive’s allegations
`against Warsaw for infringement of the eight NuVasive patents. Should the Patent
`Office decline to grant NuVasive’s request for inter partes review of the ‘997 patent,
`the Court will provide a schedule to promptly incorporate it into this litigation. If
`review is granted, in whole or in significant part, litigation of the ‘997 patent may be
`stayed while of the other patents proceed.
`Shortly before argument on the motion to stay, on May 23, 2013, Warsaw filed
`its motion for leave to file its Second Amended and Supplemental Complaint to add the
`‘696 patent to this litigation. [Doc. No. 67.] The ‘696 patent issued on May 21, 2013.
`It is a continuation of the ‘430 patent. Warsaw seeks to “effectively replace” the stayed
`‘430 patent with the ‘696 patent in this litigation. [Doc No. 78, at 4.]
`The factors for the Court to consider in deciding a motion for leave to amend
`include undue delay, bad faith, prejudice to the opposing party, and futility of
`amendment. Foman v. Davis, 371 U.S, 178, 182 (1962). Absent of showing of
`prejudice to the opposing party, or a strong showing of the remaining factors, there is
`a presumption in favor of granting leave to amend. Eminence Capital, LLC v. Aspeon,
`Inc., 316 F.3d 1048, 1052 (9 Cir. 2003). Although NuVasive contends that the
`th
`addition of this patent will cause delay in the litigation, the matter is still in its early
`stages of proceedings and Warsaw has proactively taken steps to minimize any delay
`which might be caused by the inclusion of this patent, including voluntarily serving
`infringement contentions for this patent. [Doc No. 67-1, at 8.]
`The Court finds no undue delay or bad faith in Warsaw’s request to add the ‘696
`patent to this litigation. Warsaw moved to amend within days of the patent’s issuance.
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`Case 3:12-cv-02738-CAB-MDD Document 82 Filed 07/24/13 PageID.2857 Page 4 of 5
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`Despite NuVasive’s argument that the ‘696 patent was strategically prosecuted to
`disadvantage NuVasive, the Court determines in the context of the motion for leave to
`amend that Warsaw has not acted in bad faith. NuVasive appears to be very familiar
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`with the patent, which shares the same specification as the ‘430 patent, and its
`prosecution history. The Court is not persuaded its inclusion would prejudice
`NuVasive.
`NuVasive contends that adding the ‘696 patent to this litigation would be futile
`because it may ultimately be invalidated. NuVasive filed a request for inter partes
`review of the ‘696 patent and argues that the fate of the ‘696 patent review is likely to
`follow that of the ‘430 patent, ”narrowing it to the point of irrelevancy” in this
`litigation. [Doc. No. 73, at 8.] NuVasive argues that Warsaw should not be allowed to
`litigate the ‘696 patent until the PTO review is completed. A decision from the PTO
`as to whether it will grant inter partes review is anticipated at the end of December,
`2013. [Doc. 73, at 6.] Warsaw counters that review is unlikely and it should not be
`delayed in asserting this patent based on the NuVasive’s speculation that the ‘696
`patent is more vulnerable to invalidity challenges because it is related to the ‘430
`patent. [Doc. No. 78, at 11.]
`NuVasive has not demonstrated futility of amendment. Although NuVasive
`predicts the demise of this patent in inter partes review, Warsaw predicts such a review
`will not even be granted. The threshold question of whether this patent will be
`reviewed by the PTO will not be decided for five months. The patent issued with the
`presumption of validity. The Court does not find Warsaw’s request to amend to add
`the ‘696 patent to this litigation to be futile.
`Warsaw’s motion to amend is GRANTED and Warsaw’s proposed second
`amended complaint [Doc. No. 67-3] is deemed filed as of the date of this order. The
`patent will be incorporated into the litigation with the following scheduling deadlines:
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`Nothing in this decision should be construed as an opinion as to whether or not NuVasive has
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`a defense of prosecution laches.
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`Case 3:12-cv-02738-CAB-MDD Document 82 Filed 07/24/13 PageID.2858 Page 5 of 5
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`1) NuVasive will file its responsive pleading to the second amended complaint
`no later than August 13, 2013.
`2) Warsaw’s preliminary infringement contentions, required by Patent L.R. 3.1,
`are deemed served based on the representations of Warsaw made in connection
`with the filing of this motion.
`3) NuVasive is hereby ordered to serve preliminary invalidity contentions and
`accompanying documents, required by Patent L.R. 3.3 and 3.4, no later than
`September 23, 2013.
`4) The parties will exchange preliminary claim constructions for the ‘696 patent
`by October 7, 2013, and responsive claim constructions by October 21, 2013.
`5) A joint claim construction chart addressing the ‘696 patent terms will be
`submitted to the Court no later than November 4, 2013.
`6) Opening claim construction briefs will be filed no later than November 18,
`2013, and responsive claim construction briefs will be filed no later than
`December, 8, 2013.
`
`The Court will determine a date for a claim construction hearing on the ‘696
`patent, after a determination is issued by the PTO on NuVasive’s request for inter
`partes review. If review is granted, the Court will consider whether a stay should be
`granted.
`IT IS SO ORDERED.
`
`DATED: July 24, 2013
`
`CATHY ANN BENCIVENGO
`United States District Judge
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