Case 3:18-cv-00347-CAB-MDD Document 296-1 Filed 11/25/20 PageID.26682 Page 1 of 21
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`WILSON SONSINI GOODRICH & ROSATI
`PAUL D. TRIPODI II (SBN 162380)
`ptripodi@wsgr.com
`WENDY L. DEVINE (SBN 246337)
`wdevine@wsgr.com
`NATALIE J. MORGAN (SBN 211143)
`nmorgan@wsgr.com
`633 West Fifth Street, Suite 1550
`Los Angeles, CA 90071
`Telephone: 323-210-2900
`Fax: 866-974-7329
`
`Hilgers Graben PLLC
`MICHAEL T. HILGERS (Pro Hac Vice)
`mhilgers@hilgersgraben.com
`575 Fallbrook Blvd, Suite 202
`Lincoln, NE 68521
`Telephone: 402-218-2106
`Fax: 402-413-1880
`
`Attorneys for Plaintiff NuVasive, Inc.
`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF CALIFORNIA
`SAN DIEGO DIVISION
`NUVASIVE, INC., a Delaware
`)
`Case No. 18-cv-00347-CAB-MDD
`corporation,
`)
`MEMORANDUM OF POINTS AND
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`AUTHORITIES IN SUPPORT OF
` Plaintiff,
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`NUVASIVE, INC.’S MOTION TO
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`STRIKE ALPHATEC’S
`v.
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`INVALIDITY CONTENTIONS
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`PER CHAMBERS RULES, NO ORAL
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`ARGUMENT UNLESS SEPARATELY
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`ORDERED BY THE COURT
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`)
`Judge: Hon. Cathy Ann Bencivengo
`)
`Magistrate Judge: Mitchell D. Dembin
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`
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`ALPHATEC HOLDINGS, INC., a
`Delaware corporation, and ALPHATEC
`SPINE, INC., a California corporation,
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` Defendants.
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`NUVASIVE’S MOTION TO STRIKE
`ALPHATEC’S INVALIDITY
`CONTENTIONS
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`TABLE OF CONTENTS
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`PAGE(S)
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`I.
`II.
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`INTRODUCTION ........................................................................................... 1
`FACTUAL BACKGROUND ......................................................................... 6
`A.
`Invalidity Contentions ........................................................................... 6
`B. NuVasive’s Provisional Patent Application (March 29, 2004) ............ 7
`C. Webpages from NuVasive.com showing CoRoent Implants ............... 9
`D. Alphatec’s IPR Proceedings and Related Stays of this Action ........... 10
`E.
`Alphatec’s Post-Stay Invalidity Contentions ...................................... 11
`F. Meet and Confer Regarding Alphatec’s Invalidity Contentions ........ 12
`III. LEGAL STANDARDS AND ARGUMENT ............................................... 13
`A.
`Statutory Estoppel under 35 U.S.C. § 315(e) Is Very Broad .............. 13
`B. Alphatec Is Estopped From Presenting Its § 102(b) Arguments ........ 15
`IV. CONCLUSION ............................................................................................. 16
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`TABLE OF AUTHORITIES
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`PAGE(S)
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`Cases
`Biscotti Inc. v. Microsoft Corp.,
`No. 2:13-CV-01015-JRG-RSP, 2017 U.S. Dist. LEXIS 144164
`(E.D. Tex. May 11, 2017) ............................................................................... 14, 15
`Cal. Inst. of Tech. v. Broadcom Ltd.,
`No. 16-cv-3714 GW, Docket No. 1432, 2019 U.S. Dist. LEXIS
`141103 (C.D. Cal. Aug. 9, 2019) ......................................................................... 14
`Clearlamp, LLC v. LKQ Corp.,
`No. 12 C 2533, 2016 U.S. Dist. LEXIS 186028, 2016 WL 4734389
`(N.D. Ill. Mar. 18, 2016) ...................................................................................... 14
`GoPro, Inc. v. Contour IP Holding LLC,
`908 F.3d 690 (Fed. Cir. 2018) .............................................................................. 15
`Gree, Inc. v. Supercell Oy,
`C.A. No. 2:19-cv-00071-JRG-RSP, WL 4999689 (E.D. Tex. July 9,
`2020) ..................................................................................................................... 15
`Medtronic, Inc. v. NuVasive Inc.,
`IPR2014-00073, Paper 48 .................................................................................. 8, 9
`Oil-Dri Corp. of Am. v. Nestlé Purina Petcare Co.,
`No. 15 C 1067, 2019 U.S. Dist. LEXIS 28279 (N.D. Ill. Feb. 22,
`2019) ..................................................................................................................... 14
`SAP America, Inc. v. Pi-Net International, Inc.,
`IPR2014-00414, Paper 11 ...................................................................................... 8
`Vaporstream, Inc. v. Snap Inc.,
`C.A. No. 2:17-cv-00220-MLH, 2020 WL 136591 .............................................. 14
`Wasica Fin. GmbH v. Schrader Int’l Inc.,
`432 F. Supp. 3d 448 (D. Del. 2020) ............................................................... 13, 15
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`TABLE OF AUTHORITIES
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`PAGE(S)
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`Statutes
`35 U.S.C. § 102 ................................................................................................... passim
`35 U.S.C. § 102(a) ..................................................................................................... 15
`35 U.S.C. § 102(b) .............................................................................................. passim
`35 U.S.C. § 311(b) ................................................................................................. 8, 13
`35 U.S.C. § 315(e) .............................................................................................. passim
`Other Authorities
`Local Patent Rule 3.3(a) ........................................................................................ 4, 12
`Local Patent Rule 3.3(c) ........................................................................................ 4, 12
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`I.
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`INTRODUCTION
`Nearly two years ago on January 16, 2019, Alphatec successfully sought a
`stay of proceedings regarding NuVasive’s U.S. Patent Nos. 8,361,156 (“the ’156
`patent”) and 8,187,334 (“the ’334 patent”) (collectively, the “implant patents”) in
`view of Alphatec’s then pending inter partes review (“IPR”) petitions seeking to
`invalidate those patents.1 In arguing for a stay, Alphatec made clear that that the
`division of labor between the Court and the PTAB would promote efficiency by
`allowing the PTAB to address whether the asserted claims were “valid and
`enforceable.”
`Most notably, should the PTAB institute IPR, no matter what the
`outcome of the proceedings, a stay would promote the efficient use of
`this Court’s and the parties’ resources by allowing the PTAB to
`assess whether the asserted claims of the ’156 and ’334 patents are
`valid and enforceable.
`Doc. No. 142-1 at 12 (emphasis added). Alphatec also argued that a stay would
`simplify the issues in this case “given the high likelihood that the PTAB both
`institutes IPR and invalidates the asserted claims of the ’156 and ’334 patents.” Id.
`(emphasis in original). And, finally, Alphatec assured the Court that, “even if the
`asserted claims are upheld, the issues for trial will still be streamlined because
`statutory estoppel would bind Alphatec in this action.” Id. at n.1.
`In light of Alphatec’s representations in its Motion for Stay, NuVasive did not
`oppose Alphatec’s motion, and the Court entered a stay of the implant patents on
`February 6, 2019. Doc. No. 156 at 2 ¶ 5. Although the IPR Petitions were instituted
`in July of 2019, Alphatec’s efforts to invalidate the asserted claims of the ’156 and
`’334 patents were largely unsuccessful. Doc. No. 288 at 2-3 and 288-1, -2, -3 Exs.
`
`1 The ’156 and ’334 patents are based on the same application and have the same
`specification. A provisional patent application was filed on March 29, 2004; and a
`non-provisional application was filed on March 29, 2005. ’156 Patent at 1; ’334
`Patent at 1. The ’156 patent was part of the original complaint filed in this action.
`Doc. No. 1 (“2/13/18 Compl.”) The ’334 patent was added in the First Amended
`Complaint filed in September of 2018. Doc. No. 110 (“FAC”).
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`A-C. Accordingly, on July 30, 2020, the Court vacated the Stay and added the
`implant patents back into the case for a short, focused discovery period, and a
`consolidated trial with the access patents. Doc. Nos. 290, 293. Thereafter, fact
`discovery closed on November 6, 2020.
`In accordance with the Court’s Scheduling Order (Doc. No. 293), Alphatec
`served its Updated Preliminary Invalidity Contentions (“PICs”) on October 15,
`2020. Despite Alphatec’s representations to the Court that it would rely on the
`PTAB to “assess” all of the validity and enforceability issues, Alphatec’s Amended
`PICs continued to maintain a collection of invalidity defenses could and should have
`been put forth during the IPR proceeding.2 Doc. No. 142-1 at 12. Specifically,
`Alphatec’s apparent argument is that the ’156 and ’334 patents should now be found
`invalid due to an on-sale bar. In making this on-sale bar argument, Alphatec has
`admitted that it was aware of “publicly available materials” (i.e., printed
`publications) relating to sales and/or public use of NuVasive devices that could be
`used in a “prior art” attack with respect to both the ’334 and ’156 patents “under
`one or more sections of 35 U.S.C. § 102” – the very type of prior art invalidity
`attacks that are permissible in inter partes review.
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`2 In its Supplemental PICs, Alphatec also asserted that the implants of Brantigan
`and Frey were in public use prior to the “alleged invention” of the ’156 patent. Ex. F
`(12/07/2018 PIC) at 17-18; and Ex. C (10/15/2020 PIC) at 9. Alphatec also
`asserted, but has subsequently withdrawn its contention that the term “an interbody
`space” and “generally parallel” in the ’156 patent are indefinite. Ex. F (12/07/18
`PIC) at 280-281; Ex. D (11/12/20 FIC) and Exs. A&B. Meanwhile, Alphatec’s
`Supplemental PICs continued to allege that certain claim terms in the implant
`patents are indefinite – specifically, the terms “medial plane,” and “central region” –
`despite the fact that Alphatec and the PTAB engaged in extensive discussion of
`these terms and parties’ reached agreement regarding construction of “medial plane”
`during claim construction and the PTAB construed the term “proximate said medial
`plane” in the ’156 IPR. Id. at 12-16. Alphatec has refused to withdraw these
`defenses. Ex. D (11/12/2020 FIC) at 13-14.
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`Further, in order to even assert the on-sale defense, Alphatec must first prove
`that the implant patents are not entitled to the priority (i.e., filing) date of the
`original provisional application. Ex. C3 This is yet another issue that could and
`should have been resolved during the IPR. If that “priority” attack is unsuccessful,
`then Alphatec’s entire 102(b) defense fails, because none of the alleged activities
`took place more than one year prior to the March 29, 2004 filing date of the
`provisional.
`Alphatec has essentially admitted that this exact issue could and should have
`been resolved during the IPR. Specifically, prior to filing the IPR and in support of
`their contention of an on-sale bar defense, Alphatec stated that they were in
`possession of “publicly available materials” that evidenced NuVasive’s purported
`sales and/or public uses of NuVasive devices. While Alphatec has yet to identify
`which “publicly available materials” to which they referred, they expressly stated
`that these materials could be used in a “prior art” attack with respect to both the ’334
`and ’156 patents “under one or more sections of 35 U.S.C. § 102”. Alphatec
`successfully fought to resolve all validity issues relating to the implant patents to be
`resolved by the PTAB via IPR. Alphatec then elected not to put forth the above-
`threatened validity attack during the IPR—they should now be estopped from
`reviving and litigating these arguments in a new forum.
`Furthermore, a quick search on the “Wayback Machine” conducted by
`NuVasive counsel quickly identified a webpage showing a family of “CoRoent”
`devices on “nuvasive.com” in or around February 8, 2004. This webpage is a
`“printed publication” from the exact time period (prior to March 29, 2014 but not
`before March 29, 2013) at issue in Alphatec’s new on-sale bar argument. In fact,
`Alphatec has now incorporated an image of this webpage into their Final Invalidity
`
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`3 “Ex. _” refers to the exhibits to the Declaration of Christina Dashe (“Dashe
`Decl.”), filed concurrently herewith.
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`Contentions in support of their current argument. Alphatec could therefore have
`made the same argument before the PTAB that they are now trying to litigate.
`Again, Alphatec fought to have the PTAB as their forum to decide validity issues
`relating to the implant patents. They should therefore be estopped from reviving
`arguments that could and should have already been resolved.
`Shortly after receiving Alphatec’s PICs, NuVasive objected to all of the
`improperly resurrected invalidity contentions, including Alphatec’s renewed prior
`art attack under 102(b). The parties met and conferred and were able to reach
`agreement that Alphatec would drop at least some of its defenses in light of the IPR
`proceedings. See Dashe Decl. ¶ 11; Ex. H. Nevertheless, in its Final Invalidity
`Contentions (“FICs”) approximately two weeks ago (November 12, 2020), Alphatec
`continued to maintain certain prior art defenses relating to NuVasive devices. See
`Ex. D. And, Alphatec supplemented its invalidity contentions the following week,
`on Tuesday, November 17, 2020, by providing the charts and (some, but not all)
`additional information required under Local Patent Rules 3.3(a) and 3.3(c). Ex. E.
`Later in the same week, on Friday, November 20, 2020, Alphatec served its expert
`report on invalidity, including 157 pages discussing its Section 102(b) on-sale
`bar/public use defense, entitlement to priority date, and indefiniteness contentions,
`and also relying again on the publicly available “Wayback Machine” webpage – a
`printed publication that was available for use in the now concluded IPRs. Dashe
`Decl. ¶ 4. As discussed in detail herein, Alphatec’s pre-stay defenses are barred by
`statutory estoppel in light of “prior art” invalidity attacks that Alphatec identified
`in its pre-stay invalidity contentions and therefore “could have raised” in IPR, but
`did not. Accordingly, NuVasive brings this motion to strike these invalidity
`defenses pursuant to 35 U.S.C. § 315(e).
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`Alphatec’s Prior Art Invalidity Arguments Are Barred Because They Could
`Have (And Should Have) Been Raised in IPR
`On December 7, 2018 (just a month prior to its Motion to Stay), Alphatec
`served Amended Invalidity Contentions regarding the ’156 patent. Ex. F (the
`“12/07/2018 PICs”). Alphatec argued in its Amended Invalidity Contentions that
`the asserted claims of the ’156 patent were invalid in light of an alleged “on-sale
`bar” based on sales of NuVasive’s CoRoent XL implants. Id. at 13-17. In
`connection with its pre-stay invalidity assertions, Alphatec explicitly stated that (1)
`“publically available materials”4; (2) relating to “devices…sold by [] NuVasive,
`Inc.”; (3) were known to Alphatec; and (4) “may also qualify as prior art under
`one or more sections of 35 U.S.C. § 102.” Id. at 13 (emphasis added).
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`Id. (highlighting added).
`Alphatec repeated the same assertions about “publicly available materials”
`relating to NuVasive devices in its Amended Invalidity Contentions with respect to
`the ’334 patent, served January 16, 2019. Ex. G (1/16/2019 PIC) at 17-18.
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`4 Alphatec’s PICs and FICs state “publically” which NuVasive believes to be a
`typographical error, and thus NuVasive corrects this error in the relevant quotations
`herein.
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`Thus, in its pre-stay contentions, Alphatec admitted that it was aware of
`“publicly available materials” (i.e., printed publications) relating to sales and/or
`public use of NuVasive devices that could be used in a “prior art” attack with
`respect to both the ’334 and ’156 patents “under one or more sections of 35 U.S.C.
`§ 102” – the very type of prior art invalidity attacks that are permissible in inter
`partes review. Nevertheless, Alphatec completely failed to present any such
`arguments to the PTAB and is now attempting to resurrect these prior art defenses
`under Section 102(b). As explained in detail herein, since Alphatec “reasonably
`could have raised” these arguments in IPR, it is estopped under 35 U.S.C. § 315(e)
`from pursuing its belated attack.
`II.
`FACTUAL BACKGROUND
`In 2018, NuVasive sued Alphatec for infringing nine of its patents covering
`NuVasive’s XLIF system and methods for spinal fusion surgery. Two of the
`asserted patents – the ’156 and ’334 patents – relate to NuVasive’s implants. The
`remaining seven asserted patents relate to NuVasive’s access system.
`A.
`Invalidity Contentions
`During the course of this action, Alphatec has served the following
`Preliminary and Final Invalidity Contentions relating to the ’156 and ’334 implant
`patents, as follows:
` August 28, 2018,
`Defendants’ Preliminary
`Invalidity Contentions and
`Appendix F
` October 30, 2018,
`Defendants’ Preliminary
`Invalidity Contentions and
`Appendix C
` December 7, 2018,
`Defendants’ Amended
`Invalidity Contentions and
`Appendix F (’156 patent);
`and Exhibit 6 (’156 patent)
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` October 15, 2020,
`Defendants’ Updated
`Preliminary Invalidity
`Contentions and Exs. A&B
` November 12, 2020,
`Defendants’ Final Invalidity
`Contentions and Exs. A&B
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` November 17, 2020,
`Defendants’ Supplemental
`Final Invalidity Contentions
`and Appendices A&B
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` January 16, 2019,
`Defendants’ Supplemental
`Amended Invalidity
`Contentions (’334 patent)
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`At the time of the stay in February of 2019, Alphatec had already served its pre-stay
`Invalidity Contentions dated December 7, 2018, relating to the’156 patent and its
`January 16, 2019, contentions relating to the ’334 patent. In each of those
`contentions, Alphatec asserted that the claims of the ’156 and ’334 patents were
`invalid in light of an “on-sale bar” based on sales of NuVasive’s CoRoent XL
`implants. Ex. F (12/07/2018) PIC at 13-17; Ex. G (1/16/2019 PIC) at 17-18. As
`noted in the Section I infra, in advancing arguments that various devices were sold
`and thus creating an “on-sale bar” under Section 102(b), Alphatec also stated that
`“[e]ach of these instruments (and publicly available materials describing them)
`may also qualify as prior art under one or more sections of 35 U.S.C. § 102.” Ex.
`F (12/07/2018 PIC) at 13 (emphasis added); and Ex. G (1/16/2019 PIC) at 15.
`B. NuVasive’s Provisional Patent Application (March 29, 2004)
`The “Provisional” Patent Application that ultimately led to the ’156 and ’334
`patents was filed on March 29, 2004. Thus, the relevant 102(b) “on-sale bar” date
`is March 29, 2003 – one year prior to the filing date of the provisional application.
`Importantly, Alphatec has not asserted that any activity relevant to its on-sale bar
`defense occurred prior to March 29, 2003.
`Figures 2 and 3 of the ’156 and ’334 patents are reproduced below, as they
`appeared in identical form in the Provisional Applications:
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`Figs. 2 and 3 of NuVasive’s Provisional Application,
`filed March 29, 2004 (Ex. A)
`The Provisional Application included a total of 17 Figures and a 28-page detailed
`description of spinal fusion implants and related methods. NUVA_ATEC0020805-
`853 at NUVA_ATEC0020836-37. The formal “non-provisional” application for the
`’156 and ’334 patents was filed on March 29, 2005. NUVA_ATEC0020854-22144.
`In order to prevail on its 102(b) defense, Alphatec must successfully
`challenge NuVasive’s claim of priority to its Provisional Application. As noted
`above, Alphatec stated that it was aware of “publicly available materials”
`concerning NuVasive’s devices prior to the Stay in this action. See Ex. C
`(10/15/2020 PIC) at 10. Thus, Alphatec could have presented a prior art invalidity
`challenge in IPR using these public documents and, in the process, required the
`PTAB to resolve issues relating to priority.
`It should be noted that priority date challenges are routinely made and
`resolved by the PTAB in IPR proceedings. By statute, IPR petitions may only
`include challenges “on a ground that could be raised under Sections 102 or 103 and
`only on the basis of prior art consisting of patents or printed publications.” See 35
`U.S.C. § 311(b). But, an IPR petitioner can use a priority determination to avail
`itself of intervening art. See, e.g., SAP America, Inc. v. Pi-Net International, Inc.,
`IPR2014-00414, Paper 11 at 13 (explaining that challenge to priority may be
`brought in an IPR); Medtronic, Inc. v. NuVasive Inc., IPR2014-00073, Paper 48 at
`
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`8-12 (explaining that the priority challenge failed and thus the reference is not prior
`art).
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`C. Webpages from NuVasive.com showing CoRoent Implants
`It is unknown what “publicly available materials” relating to NuVasive
`implant “devices” were known to Alphatec at the time it served its pre-stay
`Invalidity Contentions. But, a quick search on the “Wayback Machine” conducted
`by NuVasive counsel quickly identified a webpage showing a family of “CoRoent”
`devices on “nuvasive.com” in or around February 8, 2004. (As noted above,
`NuVasive filed its provisional application for the implant patent approximately a
`month after the date of this screen capture, on March 29, 2004.) See Dashe. Decl. ¶
`4.
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`Wayback Machine Screen Capture
`of “nuvasive.com” from February 8, 2004
`(NUVA_ATEC0342156) (Ex. B)
`
`NuVasive’s counsel made Alphatec’s counsel aware of this webpage during the
`meet and confer process regarding this motion. Ex. H. Rather than accepting that it
`could have (and should have) presented these types of publications for consideration
`in IPR, Alphatec instead added this webpage to its invalidity contentions two days
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`before expert reports were due. Ex. E (11/17/2020 Suppl. FIC and Appendices
`A&B).
`D. Alphatec’s IPR Proceedings and Related Stays of this Action
`In December 2018 and January 2019, Alphatec filed a series of three IPR
`petitions seeking inter partes review seeking to invalidate all asserted claims of both
`the ’156 and ’334 patents5
`At that time, Alphatec reasonably could have, but failed to, present (1) a
`§ 102 printed publication challenge based on the “publicly available materials”
`regarding NuVasive’s implants that Alphatec referenced to in its pre-IPR invalidity
`contentions; and (2) a challenge to NuVasive’s claim of priority to its March 29,
`2004 provisional application for the implant patents.
`On January 16, 2019, Alphatec moved for a stay in light of its IPRs. Doc. No.
`142-1. Alphatec stressed that the “impact of those proceedings will be significant”
`and would “have fundamental implications for this lawsuit.” Id. at 6. Specifically,
`Alphatec represented that:
` “no matter what the outcome of the proceedings, a stay would
`promote the efficient use of this Court’s and the parties’ resources”
`since “the number of issues before the court is reduced because either
`the accused infringer is estopped from raising certain invalidity
`arguments . . . or claims of infringement for the invalidated
`[arguments] are removed from the action.” Id. at 11-12 (emphasis
`added).
`
`
`5 On December 13, 2018, Alphatec filed a petition challenging the validity of
`claims 1–3, 5, 9–10, 12–21, 23–24, and 27 of the ’156 patent (IPR2019-00362).
`Doc. No. 136-1, Ex. A (IPR2019-00362 petition). On December 21, 2018, Alphatec
`filed a petition challenging the validity of claims 1, 6–9 and 18 of the ’334 patent
`(IPR2019-00361). Doc. No. 136-1, Ex. B (IPR2019-00361 petition). On January
`10, 2019, Alphatec filed a petition challenging the validity of claim 16 of the ’334
`patent (IPR2019-00546). Doc. No. 142-3, Ex. A (IPR2019-00546 petition).
`
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` “Most notably, should the PTAB institute IPR, no matter what the
`outcome of the proceedings, a stay would promote the efficient use of
`this Court’s and the parties’ resources by allowing the PTAB to assess
`whether the asserted claims of the ’156 and ’334 patents are valid
`and enforceable.” Id. at 12 (emphasis added).
` Alphatec also argued that a stay would simplify the issues in this case
`“given the high likelihood that the PTAB both institutes IPR and
`invalidates the asserted claims of the ’156 and ’334 patents.” Id. at 12
`(emphasis in original).
`With the benefit of Alphatec’s representations and assurances in its motion, the
`Court granted a stay of the entire action on February 6, 2019, pending a decision on
`institution of Alphatec’s IIPR challenges. Doc. No. 156 at 2.
`On July 9, 2019, the PTAB granted institution of all three of Alphatec’s IPR
`petitions. Doc. No. 174 at 3-4. A year later on July 8, 2020, the PTAB issued its
`Final Written Decisions for each of the implant patent IPRs, rejecting Alphatec’s
`prior art defenses and upholding the validity of currently asserted implant patent
`claims. Doc. No. 288 at 2-3. The Court subsequently lifted the stay on July 30,
`2020, and the parties and the Court finalized a discovery plan and case schedule for
`the post-IPR implant patent proceedings, including deadlines for Alphatec to file
`Preliminary and Final Invalidity Contentions for the implant patents. Doc. Nos.
`290, 292, 293. As a part of these renewed proceedings, Alphatec again confirmed
`its understanding regarding the estoppel that would attach following its IPRs. Doc.
`No. 292 at 11. In the parties’ submission, Alphatec alluded, without explanation, to
`a 102(b) defense that it intended to pursue in the renewed proceedings. Id. at 15.
`E. Alphatec’s Post-Stay Invalidity Contentions
`Alphatec’s subsequent Updated Preliminary Invalidity Contentions for the
`implant patents were served on October 15, 2020. Ex. C (10/15/2020 PIC). In its
`initial post-stay contentions, Alphatec deviated significantly from its prior
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`statements regarding estoppel and issue simplification. Instead, Alphatec raised a
`multitude of issues that either were or should have been decided during the IPR.
`Specifically, Alphatec argued that the implant patents are not entitled to claim
`priority to the March 29, 2004 provisional application, and are therefore invalid
`pursuant to § 102(b) in view of NuVasive’s public use or sale of the implants before
`March 2004. Ex. C (10/15/2020 PIC) at 9-11. Yet, as discussed herein, Alphatec
`already had a full opportunity to raise the substance of these issues in IPR and failed
`to do so.
`F. Meet and Confer Regarding Alphatec’s Invalidity Contentions
`After receiving Alphatec’s PICs on October 15, 2020, NuVasive promptly
`reached out to Alphatec to object to the inclusion of these issues in its invalidity
`contentions. Ex. H. After being unable to reach an agreement, NuVasive proposed
`that the parties agree to an expedited joint submission to the Court to resolve this
`dispute and, in the process, potentially avoid any unnecessary expense in addressing
`Alphatec’s claims during discovery. Id. The parties met and conferred shortly
`thereafter – on November 11, 2020 – to discuss NuVasive’s concerns. Dashe. Decl.
`¶ 11; Ex. H. While Alphatec agreed to drop certain arguments raised in its PICs,
`Alphatec refused to drop its on-sale bar or agree to an expedited briefing schedule.
`Id. In serving its Final Invalidity Contentions (“FICs”) on November 12, 2020,
`Alphatec reasserted these arguments. Ex. D (11/12/2020 FIC) at 13-14. And
`thereafter, in response to NuVasive’s concerns that Alphatec had failed to comply
`with the specific requirements of Local Patent Rules 3.3(a) and 3.3(c), 6 Alphatec
`doubled down on its position by including Wayback Machine webpage in its
`belatedly-served supplement to its Final Invalidity Contentions on November 17,
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`6 LPR 3.3(a) governs detailed disclosures that are required when advancing
`invalidity arguments under Section 102(b) and LPR 3.3(c) sets forth requirements
`for charting of invalidity arguments.
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`2020 –just days before the filing of this Motion. Ex. I; Ex. H; Ex. E (11/17/2020
`Suppl. FIC and Appendices A&B) at 2.
`III. LEGAL STANDARDS AND ARGUMENT
`A.
`Statutory Estoppel under 35 U.S.C. § 315(e) Is Very Broad
`Statutory estoppel is set forth in 35 U.S.C. § 315(e)(2), which states that:
`The petitioner in an inter partes review of a claim in a
`patent under this chapter that resu