Case 3:18-cv-00347-CAB-MDD Document 296-10 Filed 11/25/20 PageID.26881 Page 1 of
`10
`
`EXHIBIT H
`TO DASHE DECLARATION
`
`

`

`Case 3:18-cv-00347-CAB-MDD Document 296-10 Filed 11/25/20 PageID.26882 Page 2 of
`10
`
`From: "Dashe, Christina" <cdashe@wsgr.com>
`Date: Wednesday, November 11, 2020 at 9:24 AM
`To: "Nisbet, Brian" <BNisbet@winston.com>, "Hockman, Cori S." <CHockman@winston.com>,
`"Tripodi II, Paul" <ptripodi@wsgr.com>, WSGR - NUVA/ATEC <nuva/atec@wsgr.com>, NuVa-
`HG <NuVa-HG@hilgersgraben.com>
`Cc: "Wickramasekera, Nimalka" <NWickramasekera@winston.com>, Alphatec Service
`<AlphatecService@winston.com>
`Subject: Re: NUVA/ATECIP - ATEC Invalidity Positions
`
`That works.
`
`From: "Nisbet, Brian" <BNisbet@winston.com>
`Date: Wednesday, November 11, 2020 at 9:24 AM
`To: "Dashe, Christina" <cdashe@wsgr.com>, "Hockman, Cori S." <CHockman@winston.com>,
`"Tripodi II, Paul" <ptripodi@wsgr.com>, WSGR - NUVA/ATEC <nuva/atec@wsgr.com>, NuVa-
`HG <NuVa-HG@hilgersgraben.com>
`Cc: "Wickramasekera, Nimalka" <NWickramasekera@winston.com>, Alphatec Service
`<AlphatecService@winston.com>
`Subject: RE: NUVA/ATECIP - ATEC Invalidity Positions
`
`[External]
`How about 2 then?
`
`From: Dashe, Christina <cdashe@wsgr.com>
`Sent: Wednesday, November 11, 2020 11:21 AM
`To: Nisbet, Brian <BNisbet@winston.com>; Hockman, Cori S. <CHockman@winston.com>; Tripodi II,
`Paul <ptripodi@wsgr.com>; WSGR - NUVA/ATEC <nuva/atec@wsgr.com>; NuVa-HG <NuVa-
`HG@hilgersgraben.com>
`Cc: Wickramasekera, Nimalka <NWickramasekera@winston.com>; Alphatec Service
`<AlphatecService@winston.com>
`Subject: Re: NUVA/ATECIP - ATEC Invalidity Positions
`
`1-2 pm Pacific is literally the only time today that does not work for me. I am generally free before
`or after.
`
`
`EXHIBIT H
`PAGE 170
`
`

`

`Case 3:18-cv-00347-CAB-MDD Document 296-10 Filed 11/25/20 PageID.26883 Page 3 of
`10
`
`From: "Nisbet, Brian" <BNisbet@winston.com>
`Date: Wednesday, November 11, 2020 at 9:15 AM
`To: "Dashe, Christina" <cdashe@wsgr.com>, "Hockman, Cori S." <CHockman@winston.com>,
`"Tripodi II, Paul" <ptripodi@wsgr.com>, WSGR - NUVA/ATEC <nuva/atec@wsgr.com>, NuVa-
`HG <NuVa-HG@hilgersgraben.com>
`Cc: "Wickramasekera, Nimalka" <NWickramasekera@winston.com>, Alphatec Service
`<AlphatecService@winston.com>
`Subject: RE: NUVA/ATECIP - ATEC Invalidity Positions
`
`[External]
`Christina,
`
`Thanks for that clarification. How about 1 PM pacific?
`
`Brian
`
`From: Dashe, Christina <cdashe@wsgr.com>
`Sent: Tuesday, November 10, 2020 5:35 PM
`To: Nisbet, Brian <BNisbet@winston.com>; Hockman, Cori S. <CHockman@winston.com>; Tripodi II,
`Paul <ptripodi@wsgr.com>; WSGR - NUVA/ATEC <nuva/atec@wsgr.com>; NuVa-HG <NuVa-
`HG@hilgersgraben.com>
`Cc: Wickramasekera, Nimalka <NWickramasekera@winston.com>; Alphatec Service
`<AlphatecService@winston.com>
`Subject: Re: NUVA/ATECIP - ATEC Invalidity Positions
`
`Brian -
`
`We are not seeking ex parte emergency relief, which is why we agreed to a meet and confer under
`Judge Bencivengo’s chambers rules. We would like to discuss a shortened briefing schedule for any
`motion given the upcoming expert reports.
`
`Please provide your availability for a meet and confer tomorrow.
`
`Thanks,
`
`Christina
`
`From: "Nisbet, Brian" <BNisbet@winston.com>
`Date: Tuesday, November 10, 2020 at 2:42 PM
`To: "Dashe, Christina" <cdashe@wsgr.com>, "Hockman, Cori S." <CHockman@winston.com>,
`"Tripodi II, Paul" <ptripodi@wsgr.com>, WSGR - NUVA/ATEC <nuva/atec@wsgr.com>, NuVa-
`HG <NuVa-HG@hilgersgraben.com>
`Cc: "Wickramasekera, Nimalka" <NWickramasekera@winston.com>, Alphatec Service
`
`EXHIBIT H
`PAGE 171
`
`

`

`Case 3:18-cv-00347-CAB-MDD Document 296-10 Filed 11/25/20 PageID.26884 Page 4 of
`10
`
`<AlphatecService@winston.com>
`Subject: RE: NUVA/ATECIP - ATEC Invalidity Positions
`
`[External]
`Christina,
`
`There appears to be some confusion over whether NuVasive intends to file its motion seeking
`emergency relief ex-parte. As noted in our original response, NuVasive is required to bring this
`request through a normal and proper Motion to Strike Alphatec’s Preliminary Invalidity Contentions
`and Alphatec should be provided a full opportunity to respond. But based on your email Friday, and
`other communications with Paul, it is unclear to us whether NuVasive intends to file this as an ex-
`parte motion seeking emergency relief. If that is the case, please provide the basis for that
`emergency relief, which we believe is inappropriate given how long this issue has been known to
`NuVasive and the fact that NuVasive now appears to be relying on dates of first sale of the
`embodying products that directly contradict its own discovery responses on this issue. In addition,
`please provide the legal authorities supporting your substantive positions other than the statute
`provided below. If NuVasive is not filing an ex-parte motion, we are still happy to meet and confer
`to discuss the substantive issues.
`
`Our authority supporting the assertion that an ex-parte motion is not appropriate include at least
`the following: Langer v. McHale, No. 13CV2721-CAB-NLS, 2014 WL 4922351, at *2 (S.D. Cal. Aug. 20,
`2014) (J. Bencivengo) (“Ex parte applications are a form of emergency relief that will only be granted
`upon an adequate showing of good cause or irreparable injury to the party seeking relief.” K. Clark v.
`Time Warner Cable, 2007 WL 1334965 at *1(C.D. Cal. May 3, 2007) (citing Mission Power Eng'g Co. v.
`Continental Cas. Co., 883 F. Supp. 488, 492 (C.D.Cal.1995)). The moving party must be “without
`fault” in creating the need for ex parte relief or establish that the “crisis [necessitating the ex parte
`application] occurred as a result of excusable neglect.” Id. An ex parte application seeks to bypass
`the regular noticed motion procedure; consequently, the party requesting ex parte relief must
`establish a basis for giving the application preference. See id. United States District Court Southern
`District of California Civil Local Rule 7.1(e) outlines the procedures for filing regular motions. Kashani
`v. Adams, 2009 WL 1068862 at *2 (S.D. Cal. Apr. 21, 2009) (citing S.D. Cal. Civ. R. 7.1(e)). Ex parte
`proceedings are reserved for emergency circumstances. Id.”)
`
`Thanks,
`
`Brian
`
`
`From: Dashe, Christina <cdashe@wsgr.com>
`Sent: Tuesday, November 10, 2020 3:19 PM
`To: Hockman, Cori S. <CHockman@winston.com>; Tripodi II, Paul <ptripodi@wsgr.com>; WSGR -
`NUVA/ATEC <nuva/atec@wsgr.com>; NuVa-HG <NuVa-HG@hilgersgraben.com>
`Cc: Nisbet, Brian <BNisbet@winston.com>; Wickramasekera, Nimalka
`<NWickramasekera@winston.com>; Alphatec Service <AlphatecService@winston.com>
`Subject: Re: NUVA/ATECIP - ATEC Invalidity Positions
`
`EXHIBIT H
`PAGE 172
`
`

`

`Case 3:18-cv-00347-CAB-MDD Document 296-10 Filed 11/25/20 PageID.26885 Page 5 of
`10
`
`
`Counsel -
`
`We disagree that we have not provided the legal basis for our arguments that Alphatec is estopped.
`However, we are willing to meet and confer to discuss pursuant to Judge Bencivengo's Procedure IV.
`
`Please provide your availability tomorrow (11/11) for a meet and confer.
`
`Regards,
`
`Christina
`
`On 11/7/20, 5:05 AM, "Hockman, Cori S." <CHockman@winston.com> wrote:
`
`[External]
`
`Christina,
`
`We will not drop our on-sale bar/public use defense or indefiniteness invalidity arguments. Please
`provide the legal basis for your arguments that Alphatec is estopped. Once that is provided, we can
`be available to meet and confer on these issues and before you file anything with the Court, per
`Judge Bencivengo’s Procedure IV.
`
`Thanks,
`Cori
`
`Cori S. Hockman
`
`Associate Attorney
`
`Winston & Strawn LLP
`
`D: +1 713-651-2746
`
`winston.com<http://www.winston.com>
`
`[Winston & Strawn LLP]
`From: Dashe, Christina <cdashe@wsgr.com>
`Sent: Friday, November 6, 2020 3:15 PM
`To: Hockman, Cori S. <CHockman@winston.com>; Tripodi II, Paul <ptripodi@wsgr.com>; WSGR -
`NUVA/ATEC <nuva/atec@wsgr.com>; NuVa-HG <NuVa-HG@hilgersgraben.com>
`Cc: Nisbet, Brian <BNisbet@winston.com>; Wickramasekera, Nimalka
`
`EXHIBIT H
`PAGE 173
`
`

`

`Case 3:18-cv-00347-CAB-MDD Document 296-10 Filed 11/25/20 PageID.26886 Page 6 of
`10
`
`<NWickramasekera@winston.com>; Alphatec Service <AlphatecService@winston.com>
`Subject: Re: NUVA/ATECIP - ATEC Invalidity Positions
`
`Counsel,
`
`We disagree that Alphatec is not estopped from raising its on-sale bar arguments with respect to
`NuVasive’s alleged prior sales/use. In particular, a simple search of the Wayback Machine shows that
`NuVasive’s publicly disclosed its embodying implants on its website no later than February 2004:
`
`[cid:image003.png@01D6B451.ED4F5BC0]
`
`https://web.archive.org/web/20040208224016/http://nuvasive.com/<https://web.archive.org/web/
`20040208224016/http:/nuvasive.com/>
`
`Thus, Alphatec reasonably could have relied on this publication in its IPRs, and it should be estopped.
`See MPEP § 2128, II.E.; 35 U.S.C. § 315(e)(2).
`
`We further disagree that Alphatec can somehow now assert that the implant patent claim terms are
`indefinite given the fulsome discussion and agreement of the terms’ meanings during the IPRs.
`
`Finally, NuVasive understands from your email below that Alphatec will not assert invalidity in view
`of the Brantigan and Frey devices.
`
`Accordingly, given the fast-approaching deadlines for the parties’ validity-related expert reports,
`please promptly confirm that Alphatec will agree to drop its on-sale bar/public use and
`indefiniteness invalidity arguments. Otherwise, NuVasive intends to seek relief from the Court.
`
`Regards,
`
`Christina
`
`From: "Hockman, Cori S." <CHockman@winston.com<mailto:CHockman@winston.com>>
`Date: Sunday, November 1, 2020 at 3:48 PM
`To: "Tripodi II, Paul" <ptripodi@wsgr.com<mailto:ptripodi@wsgr.com>>, WSGR - NUVA/ATEC
`<nuva/atec@wsgr.com<mailto:nuva/atec@wsgr.com>>, NuVa-HG <NuVa-
`HG@hilgersgraben.com<mailto:NuVa-HG@hilgersgraben.com>>
`Cc: "Nisbet, Brian" <BNisbet@winston.com<mailto:BNisbet@winston.com>>, "Wickramasekera,
`Nimalka" <NWickramasekera@winston.com<mailto:NWickramasekera@winston.com>>, Alphatec
`Service <AlphatecService@winston.com<mailto:AlphatecService@winston.com>>
`Subject: RE: NUVA/ATECIP - ATEC Invalidity Positions
`
`[External]
`Paul,
`
`Thank you for providing your reasoning regarding NuVasive’s estoppel position. Alphatec disagrees
`
`EXHIBIT H
`PAGE 174
`
`

`

`Case 3:18-cv-00347-CAB-MDD Document 296-10 Filed 11/25/20 PageID.26887 Page 7 of
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`
`with NuVasive’s arguments and characterizations provided and addresses each in turn below.
`Alphatec also disagrees with NuVasive’s approach because it bypasses the Court’s stated procedures
`for parties seeking such relief. Instead, NuVasive should file its request through a Motion to Strike
`Alphatec’s Preliminary Invalidity Contentions and Alphatec should be provided a full opportunity to
`respond. Accordingly, Alphatec will not agree to bypass the Court’s procedures or submit a joint
`request for status conference to address this issue.
`
`1. As an initial matter, Alphatec is not estopped from raising arguments under 35 U.S.C. § 315
`because Alphatec could not have raised on-sale bar or public use arguments related to NuVasive’s
`prior sales before the P.T.A.B. during its IPR. See 35 U.S.C. § 311(b); The Sedona Conference,
`Commentary on Patent Litigation Best Practices: Parallel USPTO Proceedings 35 (Oct. 2016)
`(Bencivengo, J., judicial advisor) (“[A]ny grounds based on §§ 101 and 112 or any grounds based on
`public use, prior sale, or prior invention under §§ 102 and 103 remain intact for assertion in
`concurrent or subsequent district court litigation or USITC proceedings.”) available at
`https://www.lw.com/thoughtLeadership/commentary-on-patent-litigation-best-
`practices<https://www.lw.com/thoughtLeadership/commentary-on-patent-litigation-best-
`practices>. Thus, Alphatec is not estopped from bringing its on-sale bar and public use arguments
`regarding NuVasive’s implants.
`
`* While we note that you now admit that your product was used publicly before March 2004, the
`document on which NuVasive relies to argue that Alphatec is foreclosed from bringing its on-sale bar
`and/or public use argument is not a printed publication. It is well settled by the Federal Circuit that
`to be a printed publication, a document must be publicly accessible. See In re Klopfenstein, 380 F.3d
`1345, 1348 (Fed. Cir. 2004). That is not the case here with the document NuVasive cites
`(NUVA_ATEC0115139) that it also designated Highly Confidential – Outside Attorney’s Eyes Only,
`which is a list of post-launch surgeon trainings performed for the MaXcess XLIF-90. As Alphatec was
`limited in its IPR to patents and printed publications (35 U.S.C. § 311(b)), it could not have raised or
`relied on NUVA_ATEC0115139 before the P.T.A.B.
`
`1. Regarding the indefiniteness argument, Alphatec was not required to raise its invalidity defense of
`indefiniteness at the claim construction stage, especially where claim construction does not resolve
`the dispute. Compare Patent L.R. 3.3 (requiring grounds of invalidity based on indefiniteness to be
`included in Invalidity Contentions) with Patent L.R. 4 (not requiring parties to raise or identify terms
`they contend are indefinite). In any case, Alphatec put NuVasive on notice in its preliminary claim
`construction charts and responsive charts that the term “a position proximate to said medial plane”
`from the ’156 patent and the terms “generally parallel,” “central region,” and “positioned in said
`central region” from the ’334 patent were indefinite. Moreover, Alphatec was precluded from
`raising indefiniteness arguments under § 112 in its IPR and cannot be estopped from doing so now.
`35 U.S.C. § 311(b). Neither the PTAB nor the parties came to any agreement with respect to the
`claim terms that Alphatec contends are indefinite. Instead, Alphatec stated in its petition that there
`“no express construction is needed to resolve the issues in this Petition.” Alphatec Holdings, Inc. v.
`
`EXHIBIT H
`PAGE 175
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`

`

`Case 3:18-cv-00347-CAB-MDD Document 296-10 Filed 11/25/20 PageID.26888 Page 8 of
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`NuVasive, Inc., IPR 2019-00361, Paper 2 at 26 (P.T.A.B. Dec. 21, 2018). The P.T.A.B. agreed. E.g.,
`Alphatec Holdings, Inc. v. NuVasive, Inc., IPR 2019-00361, Paper 59 at 19 (P.T.A.B. July 8, 2020)
`(“Accordingly, we do not need to provide express claim interpretations for any claim term.”). As
`stated, indefiniteness was not an issue Alphatec could raise in its Petition for Inter Partes Review;
`instead, it raised only obviousness challenges to the Implant Patents-in-Suit. These issues have not
`been addressed in either the litigation or before the PTAB during the IPR proceedings.
`
`As to Brantigan and Frey, in the interest of reducing the issues for trial, Alphatec will agree to not
`pursue 102(b) defenses based on these references at this time. Please note that this agreement is
`made without prejudice and pending the Federal Circuit’s resolution of the IPR appeals.
`Nevertheless, Alphatec is otherwise entitled to rely on these devices and references at trial because
`they are relevant to other issues in this case, for example, lost profits and non-infringing alternatives.
`In any case, estoppel does not apply to the Brantigan and Frey devices. See Star Envirotech, Inc. v.
`Redline Detection, LLC, No. SACV 12-01861 JGB, 2015 WL 4744394, at *4 (C.D. Cal. Jan. 29, 2015)
`(“However, the Leakmaster itself, if disassembled, could shed light on whether it practices this claim
`limitation.”); see also Contour IP Holding, LLC v. GoPro, Inc., No. 3:17-cv-04738-WHO, 2020 WL
`109063, at *5 (N.D. Cal. Jan. 9, 2020) (“It is clear that GoPro could not have raised systems or
`products as part of IPR, during which challenges are limited to patents or printed publications.”);
`Polaris Indus., Inc. v. Arctic Cat Inc, No. 15-4475, 2019 WL 3824255, at *3 (D. Minn. Aug. 15, 2019)
`(“Other courts, and this Court agrees, have held that products embodying patents or printed
`publications are not subject to § 315(e)(2) estoppel”).
`
`Thanks,
`Cori
`
`Cori S. Hockman
`
`Associate Attorney
`
`Winston & Strawn LLP
`
`D: +1 713-651-2746
`
`winston.com<http://www.winston.com>
`
`[Winston & Strawn LLP]
`
`Begin forwarded message:
`From: "Tripodi II, Paul" <ptripodi@wsgr.com<mailto:ptripodi@wsgr.com>>
`Date: October 26, 2020 at 6:18:17 PM CDT
`To: "Nisbet, Brian" <BNisbet@winston.com<mailto:BNisbet@winston.com>>
`Cc: "Wickramasekera, Nimalka"
`<NWickramasekera@winston.com<mailto:NWickramasekera@winston.com>>, WSGR - NUVA/ATEC
`<nuva/atec@wsgr.com<mailto:nuva/atec@wsgr.com>>, NuVa-HG <NuVa-
`
`EXHIBIT H
`PAGE 176
`
`

`

`Case 3:18-cv-00347-CAB-MDD Document 296-10 Filed 11/25/20 PageID.26889 Page 9 of
`10
`
`HG@hilgersgraben.com<mailto:NuVa-HG@hilgersgraben.com>>
`Subject: NUVA/ATECIP - ATEC Invalidity Positions
`Brian,
`
`As you requested, the following is a short summary of the estoppel issues raised by ATEC’s
`Preliminary Invalidity Contentions along with a short statement of the reasons that they are
`improper in light of the IPR proceedings.
`
`As you know, NuVasive would like to raise these estoppel issues in a Joint Request for a Status
`Conference, so that the parties can get input from the Court and potentially avoid any unnecessary
`expense in addressing these claims in discovery. Please let us know if Alphatec will work with us in
`exchanging short position statements in connection with the filing of the proposed request.
`
`1. Alphatec is estopped under 35 USC 315(e) from asserting its 102(b) arguments because Alphatec
`“raised or reasonably could have raised” them in its IPRs.
`
`* During IPR, Alphatec relied on the Brantigan and Frey devices as corroborating evidence of the
`disclosures of the Brantigan and Frey patents. Thus, Alphatec acknowledged that the relevant
`features of the Brantigan/Frey devices in its Invalidity Contentions were described in the patents it
`actually “raised” during IPR. See, e.g., Vaporstream, Inc. v. Snap Inc., 2020 WL 136591 at *23 (C.D.
`Cal. January 13, 2020).
`
`* Months before Alphatec filed its IPR, Alphatec knew and had notice that NuVasive’s embodying
`products were disclosed/used before March 29, 2004. See NuVasive’s October 22, 2018 response to
`Alphatec’s interrogatory requesting the “launches, and earliest disclosure, use, and sale of the
`inventions of the asserted claims of the patents-in-suit” (disclosing NUVA_ATEC01115139). Thus,
`given that there are multiple pre-March 29, 2004 “printed publications” depicting NuVasive’s
`embodying products, Alphatec “reasonably should have raised” these publications in its IPR.
`
`1. With respect to the indefiniteness arguments in Alphatec’s PICs, not only did Alphatec
`affirmatively choose not to bring these arguments during claim construction, the parties and the
`PTAB clearly came to an agreement regarding the meaning of each of these terms during IPR.
`Accordingly, these issues have been addressed in both the litigation and the IPR proceedings.
`Alphatec should not now be permitted to assert that these terms are somehow indefinite. Guardant
`Health, Inc. v. Found. Med., Inc., Civil Action No. 17-1616-LP S-CJB, 2019 U.S. Dist. LEXIS 190398, at
`*24 (D. Del. Nov. 1, 2019)
`
`Thanks,
`
`Paul
`
`EXHIBIT H
`PAGE 177
`
`

`

`Case 3:18-cv-00347-CAB-MDD Document 296-10 Filed 11/25/20 PageID.26890 Page 10 of
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`[WILSON SONSINI]<https://www.wsgr.com/>
`
`Paul D. Tripodi II | Member | Wilson Sonsini Goodrich & Rosati
`633 West Fifth St., Suite 1550 | Los Angeles, CA 90071 | direct: 323.210.2902 | mobile:
`213.344.9071 | ptripodi@wsgr.com<mailto:ptripodi@wsgr.com>
`
`[www]<https://www.wsgr.com/>
`
`[bio]<https://www.wsgr.com/en/people/paul-d-tripodi-ii.html>
`
`[li]<https://www.linkedin.com/in/paul-tripodi-68105015>
`
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`the sole use of the intended recipient. Any review, copying, or distribution of this email (or any
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`
`EXHIBIT H
`PAGE 178
`
`