Case 3:18-cv-00347-CAB-MDD Document 296-9 Filed 11/25/20 PageID.26852 Page 1 of 29
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`EXHIBIT G
`TO DASHE DECLARATION
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`

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`NIMALKA R. WICKRAMASEKERA (SBN: 268518)
`nwickramasekera@winston.com
`STEPHEN R. SMEREK (SBN: 208343)
`ssmerek@winston.com
`JASON C. HAMILTON (SBN: 267968)
`jhamilton@winston.com
`SHILPA A. COORG (SBN: 278034)
`scoorg@winston.com
`WINSTON & STRAWN LLP
`333 S. Grand Avenue
`Los Angeles, CA 90071-1543
`Telephone: (213) 615-1700
`Facsimile:
`(213) 615-1750
`
`Attorneys for Defendants
`ALPHATEC HOLDINGS, INC. and
`ALPHATEC SPINE, INC.
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`UNITED STATES DISTRICT COURT
`
`SOUTHERN DISTRICT OF CALIFORNIA
`
`SAN DIEGO DIVISION
`
`
`Plaintiff,
`
`NUVASIVE, INC., a Delaware
`corporation,
`
`
`v.
`
`ALPHATEC HOLDINGS, INC., a
`Delaware corporation and ALPHATEC
`SPINE, INC., a California corporation,
`
`Defendants.
`
`
`
`
`
`Case No. 3:18-CV-00347-CAB-MDD
`
`[Assigned to Courtroom 4C – Honorable
`Cathy Ann Bencivengo]
`
`DEFENDANTS’ AMENDED
`INVALIDITY CONTENTIONS FOR
`U.S. PATENT NOS. 9,924,859;
`9,974,531; AND 8,187,334
`
`
`
`Complaint Filed: February 13, 2018
`Amended Complaint Filed: September 13,
`2018
`
`Jury Trial Demanded
`
`DEFENDANT ALPHATEC HOLDINGS, INC.’S AMENDED INVALIDITY CONTENTIONS
`FOR U.S. PATENT NOS. 9,924,859; 9,974,531; AND 8,187,334
`
`
`Case No. 3:18-CV-00347-CAB-MDD
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`EXHIBIT G
`PAGE 142
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`

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`DEFENDANTS’ AMENDED INVALIDITY CONTENTIONS FOR U.S.
`PATENT NOS. 9,924,859; 9,974,531; AND 8,187,334
`In accordance with the applicable rules of this Court, Defendants Alphatec
`
`Holdings, Inc. and Alphatec Spine, Inc. (collectively, “Alphatec”) hereby provide the
`following Amended Invalidity Contentions for the following patents asserted by
`Plaintiff NuVasive, Inc. (“NuVasive”) in its Disclosure of Asserted Claims and
`Infringement Contentions served on November 9, 2018 (“Infringement Contentions”)
`and its Amended Complaint (Doc. No. 110):
`• Claims 1-26 and 28-36 of U.S. Patent No. 9,924,859 (the “’859 patent”);
`• Claims 1-39 of U.S. Patent No. 9,974,531 (the “’531 patent”); and
`• Claims 6-9, 16, and 18 of U.S. Patent No. 8,187,334 (the “’334 patent”)
`(collectively, the “asserted claims” of the “Asserted Patents”).
`Defendants’ Amended Invalidity Contentions for Asserted Patents specifically address
`
`the above-listed patents and claims. Defendants contend that each of the asserted claims
`is invalid as demonstrated herein. Defendants expressly reserve the right to disclose
`invalidity contentions with respect to other claims of these patents and/or other patents,
`and to respond to or rebut NuVasive’s arguments for claims asserted or arguments made
`following its Infringement Contentions.
`I.
`GENERAL STATEMENT AND RESERVATION OF RIGHTS
`These invalidity contentions are preliminary, and based upon information
`available to Defendants at an early state of litigation, prior to claim construction,
`completion of fact discovery, or expert discovery, in light of the volume of asserted
`claims, including asserted claims with very long chains of dependency, and in light of
`the fact that NuVasive has not meaningfully responded to Alphatec’s interrogatory
`concerning NuVasive’s positions regarding validity. Therefore, Defendants reserve the
`right to amend or supplement these Amended Invalidity Contentions or any charts
`appended hereto, including pursuant to the Court’s Case Management Order (Doc. Nos.
`101and 109) and should NuVasive provide any positions regarding validity in response
`-2-
`DEFENDANT ALPHATEC HOLDINGS, INC.’S AMENDED INVALIDITY CONTENTIONS
`FOR U.S. PATENT NOS. 9,924,859; 9,974,531; AND 8,187,334
`
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`EXHIBIT G
`PAGE 143
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`to Alphatec’s interrogatories. Further, additional prior art not included in these
`Amended Invalidity Contentions and/or facts, documents, and things, whether known
`or unknown to Defendants, may become relevant to Defendants’ defenses.
`Accordingly, Defendants reserve their right to revise, supplement, or amend these
`Amended Invalidity Contentions as additional grounds or evidence of invalidity are
`identified in this case, in response to any of Plaintiff’s arguments, following the Court’s
`issuance of a Markman ruling, and/or to address any additional patents or claims that
`are asserted hereafter. Defendants also reserve their right to identify references that
`would disclose, practice, or render obvious any limitation(s) Plaintiff alleges are
`missing from the prior art references cited or referred to in these Amended Invalidity
`Contentions.
`Defendants’ disclosures with respect to each prior art reference identified herein
`should not be considered exhaustive. This approach does not preclude Defendants from
`
`relying on any non-cited portion of the identified prior art references. Because the prior
`art to Plaintiff’s patents is so prolific as to its disclosure of minimally invasive tools and
`implants to perform lateral spinal fusion surgery, failure to describe any prior art
`reference as disclosing any particular limitation is not an admission that such reference
`does not disclose such limitation. Additionally, disclosure of a particular prior art
`reference that refers, relies upon, or discusses other material is also a disclosure of the
`other material.
`Defendants take no position here regarding the appropriate construction of any
`claim term, if any. Statements purporting to describe claim limitations or apply prior
`art to claim limitations are not to be taken as admissions that such terms are definite or
`comply with 35 U.S.C. §§ 101 and 112. Defendants maintain that Plaintiff’s
`Infringement Contentions are insufficient to show infringement of any asserted claim
`under any claim construction. These Amended Invalidity Contentions shall not be
`treated as an admission that any of Defendants’ accused products infringe the asserted
`claims or as an admission to the scope of any of the asserted claims.
`-3-
`DEFENDANT ALPHATEC HOLDINGS, INC.’S AMENDED INVALIDITY CONTENTIONS
`FOR U.S. PATENT NOS. 9,924,859; 9,974,531; AND 8,187,334
`
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`EXHIBIT G
`PAGE 144
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`Defendants object to the disclosure of information and/or documents that are
`protected by the attorney-client privilege, attorney work-product doctrine, or any other
`applicable privilege or immunity. Defendants reserve the right to object to the
`admissibility of these Amended Invalidity Contentions or the information contained
`herein.
`II.
`IDENTIFICATION OF PRIOR ART
`A.
`Priority Date
`1.
`Priority Date of the ’859 Patent
`In its Infringement Contentions, Plaintiff contends that the ’859 patent is entitled
`to a priority date at least as early as August 23, 2010, which is the filing date of U.S.
`Provisional Application No. 61/376,163. Plaintiff bears the burden of proving, on a
`claim-by-claim basis, that the provisional application provides written description
`support for each and every limitation of the asserted claims. Plaintiff has not met this
`
`burden. Plaintiff is not entitled to a priority date of August 23, 2010, at least because
`the Provisional Application fails to disclose or provide support for the following, as
`claimed by the ’859 patent: “first blade connector,” “second blade connector,” “third
`blade connector,” “a crosslink,” “a first holding…and a second holding element,” as
`recited in claim 1, as well as “first rotatable actuator,” “second rotatable actuator,” as
`recited in claim 11, as well as “third rotatable actuator,” as recited in claim 9, and
`“tooth,” as recited in claims 15 and 32. Defendants reserve their right to challenge the
`priority date claimed by Plaintiff for the ’859 patent.
`2.
`Priority Date of the ’531 Patent
`In its Infringement Contentions, Plaintiff contends that the ’531 patent is entitled
`to a priority date at least as early as September 25, 2003, which is the filing date of U.S.
`Provisional Application No. 60/506,136. Plaintiff bears the burden of proving, on a
`claim-by-claim basis, that the provisional application provides written description
`support for each and every limitation of the asserted claims. Plaintiff has not met this
`burden. Plaintiff is not entitled to a priority date of September 25, 2003, at least because
`-4-
`DEFENDANT ALPHATEC HOLDINGS, INC.’S AMENDED INVALIDITY CONTENTIONS
`FOR U.S. PATENT NOS. 9,924,859; 9,974,531; AND 8,187,334
`
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`EXHIBIT G
`PAGE 145
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`the Provisional Application fails to disclose or provide support for the following, as
`claimed by the ’531 patent: “adjacent to one another,” “blade holder,” “first connector,”
`“second connector,” “third connector,” “rotatable actuator,” “first arm extender,” and
`“second arm extender,” as recited in claim 1, as well as “abut one another,” as recited
`in claims 8 and 33, “wherein the first, second, and third retractor blades define a
`distraction corridor between them that is circular in cross-sectional shape when in the
`closed position,” as recited in claim 9, as well as “wherein the first, second, and third
`retractor blades define a distraction corridor that is non-circular in cross-sectional shape
`when opened” as recited in claim 10, as well as “wherein the third blade extends from
`a proximal end having a mounting structure for connecting to the third connector to a
`distal end spaced longitudinally from the proximal end,” as recited in claim 16, as well
`as “wherein the third blade includes an exterior face and an interior face, the interior
`face including a track extending longitudinally along at least a portion of the interior
`
`face of the third blade for receiving a connectable element,” as recited in claim 17, as
`well as “wherein the interior face further includes a plurality of horizontally oriented
`grooves spaced longitudinally along at least a portion of the interior face,” as recited in
`claim 18, as well as “wherein the track comprises a first longitudinally extending
`receptacle adjacent a first edge of the third blade and a second longitudinally extending
`receptacle adjacent a second edge of the third blade,” as recited in claim 19, as well as
`“wherein the plurality of horizontally oriented grooves lie between the first
`longitudinally extending receptacle and
`the second
`longitudinally extending
`receptacle,” as recited in claim 20, as well as “wherein the first retractor blade extends
`from a proximal end having a mounting structure for connecting to the first connector
`to a distal end spaced longitudinally from the proximal end, the interior face including
`a track extending longitudinally along at least a portion of the interior face of the third
`blade,” as recited in claim 21, as well as “wherein the track along the interior face of
`the first blade comprises a first longitudinally extending receptacle adjacent a first edge
`of the first blade and a second longitudinally extending receptacle adjacent a second
`-5-
`DEFENDANT ALPHATEC HOLDINGS, INC.’S AMENDED INVALIDITY CONTENTIONS
`FOR U.S. PATENT NOS. 9,924,859; 9,974,531; AND 8,187,334
`
`
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`EXHIBIT G
`PAGE 146
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`edge of the first blade,” as recited in claim 22, as well as “wherein the second retractor
`blade extends from a proximal end having a mounting structure for connecting to the
`second connector to a distal end spaced longitudinally from the proximal end, the
`interior face including a track extending longitudinally along at least a portion of the
`interior face of the second blade,” as recited in claim 23, as well as “wherein the track
`along the interior face of the second blade comprises a first longitudinally extending
`receptacle adjacent a first edge of the second blade and a second longitudinally
`extending receptacle adjacent a second edge of the second blade,” as recited in claim
`24, as well as “wherein the tooth is situated on a flexible tab,” as recited in claim 30, as
`well as “wherein the distal extension has a maximum lateral width that is less than a
`minimum lateral width of the proximal portion and a tapered distal end,” as recited in
`claim 31, as well as “wherein when the first, second, and third retractor blades are
`adjacent to one another in the closed position the first, second, and third retractor blades
`
`abut one another and define a distraction corridor between them that is circular in cross-
`sectional shape, and wherein the first, second, and third retractor blades define a
`distraction corridor that is non-circular in cross-sectional shape when opened,” as
`recited in claim 33, as well as “wherein the first retractor blade extends from a proximal
`end having a mounting structure for connecting to the first connector to a distal end
`spaced longitudinally from the proximal end, the interior face including a track
`extending longitudinally along at least a portion of the interior face of the third blade,
`the track comprising a first longitudinally extending receptacle adjacent a first edge of
`the first blade and a second longitudinally extending receptacle adjacent a second edge
`of the first blade,” as recited in claim 35, and “wherein the second retractor blade
`extends from a proximal end having a mounting structure for connecting to the second
`connector to a distal end spaced longitudinally from the proximal end, the interior face
`including a track extending longitudinally along at least a portion of the interior face of
`the second blade, wherein the track along the interior face of the second blade comprises
`a first longitudinally extending receptacle adjacent a first edge of the second blade and
`-6-
`DEFENDANT ALPHATEC HOLDINGS, INC.’S AMENDED INVALIDITY CONTENTIONS
`FOR U.S. PATENT NOS. 9,924,859; 9,974,531; AND 8,187,334
`
`
`Case No. 3:18-CV-00347-CAB-MDD
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`EXHIBIT G
`PAGE 147
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`a second longitudinally extending receptacle adjacent a second edge of the second
`blade,” as recited in claim 36. Defendants reserve their right to challenge the priority
`date claimed by Plaintiff for the ’531 patent.
`3.
`Priority Date of the ’334 Patent
`In its Infringement Contentions, Plaintiff contends that the ’334 patent is entitled
`to a priority date at least as early as March 29, 2004, which is the filing date of U.S.
`Provisional Application No. 60/557,536. Plaintiff bears the burden of proving, on a
`claim-by-claim basis, that the provisional application provides written description
`support for each and every limitation of the asserted claims. Plaintiff has not met this
`burden. Plaintiff is not entitled to a priority date of March 29, 2004, at least because
`the Provisional Application fails to disclose or provide support for the following, as
`claimed by the ’334 patent: “wherein said implant has a longitudinal length greater than
`40 mm extending from a proximal end of said proximal wall to a distal end of said distal
`
`wall,” “wherein said longitudinal length is at least two and half times greater than said
`maximum lateral width,” and “at least three radiopaque markers; wherein a first of the
`at least three radiopaque markers is at least partially positioned in said distal wall, a
`second of said at least three radiopaque markers is at least partially positioned in said
`proximal wall, and a third of said at least three radiopaque markers is at least partially
`positioned in said central region” as recited in claim 1, as well as “further comprising a
`fourth radiopaque marker situated within said implant, said fourth radiopaque marker
`positioned in said central region at a position spaced apart from said third radiopaque
`marker,” as recited in claim 16, and “wherein said maximum lateral width of said
`implant is approximately 18 mm,” as recited in claim 18. Defendants reserve their right
`to challenge the priority date claimed by Plaintiff for the ’334 patent.
`B.
`Identification of Prior Art
`The asserted claims are anticipated or rendered obvious by the prior art identified
`herein. Specifically, Defendants may rely on any or all of the prior art references
`disclosed in the below non-exhaustive list, either alone or in combination, under 35
`-7-
`DEFENDANT ALPHATEC HOLDINGS, INC.’S AMENDED INVALIDITY CONTENTIONS
`FOR U.S. PATENT NOS. 9,924,859; 9,974,531; AND 8,187,334
`
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`EXHIBIT G
`PAGE 148
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`U.S.C. §§ 102(a), (b), (e), (f), or (g) and/or 35 U.S.C. § 103, or to show the state of the
`art at the relevant time:
`• The Lateral Percutaneous Approach To Discectomy, W.A. Friedman et al.
`(“Friedman”), published 1988; and further described
`in: Percutaneous
`Discectomy: An Alternative to Chemonucleolysis?, W. A. Friedman, published
`1983; Percutaneous Discectomy: An Anatomical Study, S.L. Kanter, et al.,
`published 1985; and U.S. Patent No. 4,545,374 (“Jacobson”), issued October 8,
`1985
`• U.S. Patent No. 6,945,933 (“Branch”), issued September 20, 2005
`• German Patent Application No. 100 48 790.4 (“Cistac”), published April 25,
`2002
`• U.S. Patent No. 7,261,688 (“Smith”), issued August 28, 2007
`• U.S. Patent No. 5,681,265 (“Maeda”), issued October 28, 1997
`• U.S. Patent No. 5,928,139 (“Koros”), issued July 27, 1999
`• U.S. Patent No. 5,772,661 (“Michelson ’661”), issued June 30, 1998
`• U.S. Patent No. 6,368,351 (“Glenn”), issued April 9, 2002
`
`• U.S. Patent No. 5,171,279 (“Mathews ’279”), issued December 15, 1992
`• U.S. Patent No. 6,206,826 (“Mathews ’826”), issued March 27, 2001
`• U.S. Patent Application Publication No. 2002/0022847 (“Ray”), published
`February 21, 2002
`• U.S. Patent No. 6,500,180 (“Foley”), issued December 31, 2002
`• U.S. Patent No. 6,360,750 (“Gerber”), issued March 26, 2002
`• European Spine Journal, The Use Of A Retractor System (Synframe) For Open,
`Minimal Invasive Reconstruction Of The Anterior Column Of The Thoracic And
`Lumbar Spine, Thomas Kossmann et al. (“Kossmann”), published September 5,
`2001
`• U.S. Patent No. 5,313,962 (“Obenchain”), issued May 24, 1994
`• WO 01/37728 (“Kelleher”), published May 31, 2001
`• WO 03/005887 (“Blewett”), published January 23, 2003
`• Spine, Persistently Electrified Pedicle Stimulation Instruments in Spinal
`Instrumentation, Robert Rose et al. (“Rose”), published February 1, 1997
`• U.S. Patent No. 5,931,777 (“Sava”), issued August 3, 1999
`• U.S. Patent Application Publication No. 2008/0114209 (“Cohen”), published
`May 15, 2008
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`-8-
`DEFENDANT ALPHATEC HOLDINGS, INC.’S AMENDED INVALIDITY CONTENTIONS
`FOR U.S. PATENT NOS. 9,924,859; 9,974,531; AND 8,187,334
`
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`Case No. 3:18-CV-00347-CAB-MDD
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`EXHIBIT G
`PAGE 149
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`• U.S. Patent No. 6,051,007 (“Hogendijk”), issued April 18, 2000
`• U.S. Patent No. 5,137,521 (“Wilkins”), issued August 11, 1992
`• European Patent No. 1033013 (“Kittelmann”), issued September 10, 2003
`• U.S. Patent No. 6,398,766 (“Branch ’766”), issued June 4, 2002
`• U.S. Patent No. 5,273,519 (“Koros ’519”), issued December 28, 1993
`• U.S. Patent No. 5,893,831 (“Koros ’831”), issued April 13, 1999
`• U.S. Patent No. 5,407,293 (“Crainich”), issued April 18, 1995
`• U.S. Patent No. 6,142,994 (“Swanson”), issued November 7, 2000
`• U.S. Patent No. 5,343,869 (“Pross”), issued September 6, 1994
`• U.S. Patent No. 6,656,133 (“Voegele”), issued December 2, 2003
`• U.S. Patent No. 5,564,951 (“Attal”), issued October 15, 1996
`• U.S. Patent No. 4,286,172 (“Millonzi”), issued August 25, 1981
`• U.S. Patent No. 4,463,402 (“Cottrell”), issued July 31, 1984
`
`• U.S. Patent Application Publication No. 2004/0186356 (“O’Malley”), published
`September 23, 2004
`• U.S. Patent No. 4,993,862 (“Pelta”), issued February 19, 1991
`• U.S. Patent No. 7,491,168 (“Raymond”), issued February 17, 2009
`• U.S. Patent Application Publication No. 2008/0221394 (“Melkent”), published
`September 11, 2008
`• U.S. Patent No. 1,800,349 (“Hurason”), issued April 14, 1931
`• U.S. Patent No. 4,582,445 (“Warshawsky”), issued April 15, 1986
`• U.S. Patent Application Publication No. 2008/0188718 (“Spitler”), published
`August 7, 2008
`• U.S. Patent Application Publication No. 2004/0179891 (“Watkins”), published
`September 16, 2004
`• U.S. Patent No. 6,296,609 (“Brau”), issued October 2, 2001
`• U.S. Patent No. 6,254,303 (“Falat”), issued July 3, 2001
`• U.S. Patent No. 6,196,969 (“Bester”), issued March 6, 2001
`• EP 0951868 (“Büttner-Janz”), issued October 27, 1999
`• U.S. Patent No. 6,074,343 (“Nathanson”), issued June 13, 2000
`-9-
`DEFENDANT ALPHATEC HOLDINGS, INC.’S AMENDED INVALIDITY CONTENTIONS
`FOR U.S. PATENT NOS. 9,924,859; 9,974,531; AND 8,187,334
`
`
`Case No. 3:18-CV-00347-CAB-MDD
`
`EXHIBIT G
`PAGE 150
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`• U.S. Patent No. 5,728,046 (“Mayer”), issued March 17, 1998
`• U.S. Patent No. 6,689,398 (“Obenchain ’398”), issued March 22, 2005
`• Leu et al., Percutaneous Fusion of the Lumbar Spine, Spine Vol. 6, No. 3, pp.
`593-604 (September 1992) (“Leu”), published September 1992
`• U.S. Patent No. 7,074,226 (“Roehm”), issued July 11, 2006
`• U.S. Patent No. 5,792,044 (“Foley ’044”), issued August 11, 1998
`• U.S. Patent No. 5,284,153 (“Raymond ’153”), issued February 8, 1994; U.S.
`Patent No. 5,284,154 (“Raymond ’154”), issued February 8, 1994 (collectively,
`“Raymond ’153/154”)
`• U.S. Patent No. 5,474,558 (“Neubardt”), issued December 12, 1995
`• WO 00/66217 (“Epstein”), issued November 9, 2000
`• U.S. Patent No. 6,892,087 (“Osypka”), issued May 10, 2005
`• U.S. Patent No. 6,626,905 (“Schmiel”), issued September 30, 2003
`• U.S. Patent No. 6,174,311 (“Branch ’311”), issued January 16, 2001
`• U.S. Patent No. 6,042,582 (“Ray ’582”), issued March 28, 2000
`
`• U.S. Patent No. 6,159,214 (“Michelson ’214”), issued December 12, 2000
`• U.S. Patent No. 5,797,909 (“Michelson ’909”), issued August 25, 1998
`• U.S. Patent No. 6,139,493 (“Koros ’493”), issued October 31, 2000
`• U.S. Patent Publication No. 2003/0149341 (“Clifton”), published August 7, 2003
`• U.S. Patent No. 6,083,154 (“Liu”), issued July 4, 2000
`• U.S. Patent No. 6,929,606 (“Ritland”), issued August 16, 2005
`• U.S. Patent No. 5,458,599 (“Adobbati”), issued October 17, 1995
`• U.S. Patent No. 5,147,316 (“Castillenti”), issued September 5, 1992
`• U.S. Patent No. 6,059,790 (“Sand”), issued May 9, 2000
`• U.S. Patent No. 6,152,871 (“Foley ’871”), issued November 28, 2000
`• U.S. Patent No. 5,507,076 (“Anscher”), issued April 16, 1996
`• U.S. Patent No. 5,836,053 (“Davignon”), issued November 17, 1998
`• U.S. Patent. No. 6,279,203 (“Hundley”), issued August 28, 2001
`• U.S. Patent No. 4,644,613 (“Kedzierski”), issued February 24, 1987
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`-10-
`DEFENDANT ALPHATEC HOLDINGS, INC.’S AMENDED INVALIDITY CONTENTIONS
`FOR U.S. PATENT NOS. 9,924,859; 9,974,531; AND 8,187,334
`
`
`Case No. 3:18-CV-00347-CAB-MDD
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`EXHIBIT G
`PAGE 151
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`• U.S. Patent No. 5,035,232 (“Lutze”), issued July 30, 1991
`• U.S. Patent No. 4,872,734 (“Rechberg”), issued October 10, 1989
`• U.S. Patent No. 5,491,915 (“Robinson”), issued February 20, 1996
`• U.S. Patent No. 5,397,046 (“Savage”), issued March 14, 1995
`• U.S. Patent No. 6,080,105 (“Spears”), issued June 27, 2000
`• U.S. Patent No. 3,811,455 (“Thur”), issued May 21, 1974
`• U.S. Patent No. 5,803,904 (“Mehdizadeh ’904”), issued September 8, 1998
`• U.S. Patent No. 6,030,390 (“Mehdizadeh ’390”), issued September 8, 1998
`• U.S. Application Publication No. 2005/0137461 (“Marchek”), published June
`23, 2005
`• U.S. Patent No. 2,532,162 (“Gross”), issued November 28, 1950
`• U.S. Patent No. 3,384,078 (“Gauthier”) issued May 21, 1968
`• U.S. Patent No. 8,353,826 (“Weiman”) issued January 15, 2013
`• U.S. Patent No. 7,749,269 (“Peterman”) issued July 6, 2010
`
`• U.S. Application Publication No. 2008/0021284 (“Hestad”), published January
`24, 2008
`• U.S. Patent No. 8,882,661 (“Hutton”), issued November 11, 2014
`• U.S. Patent No. 7,481,766 (“Lee”), issued January 27, 2009
`• WO 00/27291 (“Onimus”), published May 18, 2000
`• U.S. Patent No. 8,636,655 (“Childs”), issued January 28, 2014
`• U.S. Patent No. 3,509,873 (“Karlin”), issued May 5, 1970
`• U.S. Patent No. 7,806,932 (“Webb”), issued October 5, 2010
`• U.S. Patent No. 8,360,971 (“Farley”), issued January 29, 2013
`• U.S. Patent No. 4,989,587 (“Farley ’587”), issued February 5, 1991
`• U.S. Patent No. 8,142,355 (“Blian”), issued March 27, 2012
`• U.S. Patent No. 2,670,731 (“Zoll”), issued March 2, 1954
`• U.S. Application Publication No. 2009/0036746 (“Blackwell”), published
`February 5, 2009
`• U.S. Patent No. 8,062,217 (“Boucher”), issued November 22, 2011
`
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`-11-
`DEFENDANT ALPHATEC HOLDINGS, INC.’S AMENDED INVALIDITY CONTENTIONS
`FOR U.S. PATENT NOS. 9,924,859; 9,974,531; AND 8,187,334
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`
`Case No. 3:18-CV-00347-CAB-MDD
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`EXHIBIT G
`PAGE 152
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`• U.S. Application Publication No. 2003/0086749 (“Oliver”), published May 8,
`2003
`• U.S. Patent No. 4,930,932 (“LeVahn”), issued June 5, 1990
`• U.S. Application Publication No. 2013/0068711 (“Sebastian”), published March
`21, 2013
`• U.S. Patent No. 7,857,271 (“Lees”), issued December 28, 2010
`• U.S. Application Publication No. 2006/0030850 (“Keegan”), published February
`9, 2006
`• U.S. Patent No. 6,834,837 (“Schilt”), issued December 28, 2004
`• U.S. Patent No. 7,166,073 (“Ritland ’073”), issued January 23, 2007
`• U.S. Patent No. 6,506,151 (“Estes”), issued January 14, 2003
`• U.S. Patent No. 6,602,190 (“Dobrovolny”), issued August 5, 2003
`• Synthes Spine, Vertebral Spacer – PR (“SVS-PR”), published 2002
`• Medtronic Sofamor Danek, Telamon – VERTE-STACK™ PEEK Vertebral
`Body Spacer (“Telamon Brochure”), published 2003; Medtronic Sofamor Danek,
`Telamon® Posterior Impacted Fusion Devices surgical guide (“Telamon
`
`Guide”), published 2003 (collectively, “Telamon”)
`• U.S. Patent Application Publication No. 2002/016550 (“Frey”), published
`November 7, 2002
`• Boomerang™ Verte-Stack™ PEEK Vertebral Body Spacer, launched in 2003
`• U.S. Patent No. 5,860,973 (“Michelson ’973”), issued January 19, 1999
`• U.S. Patent No. 5,484,437 (“Michelson ’437”), issued January 16, 1996
`• U.S. Application Publication No. 2003/0028249 (“Baccelli”), published
`February 6, 2003
`• U.S. Patent No. 5,192,327 (“Brantigan”), issued March 9, 1993
`• U.S. Patent No. 5,396,364 (“Kozak”), issued March 14, 1995
`• Berry et al., A Morphometric Study of Human Lumbar and Selected Thoracic
`Vertebrae, 12 Spine, 4, pp. 362-367 (1987) (“Berry”)
` • See S.H. Zhou et al., Geometrical Dimensions of the Lower Lumbar Vertebrae
`– Analysis of Date from Digitised CT Images, 9 Eur. Spine J. 242, 244 (2000)
`• XLIF System, sold by NuVasive, launched in October 2003
`• MaXcess I Retractor, sold by NuVasive, launched in October 2003
`• MaXcess II Retractor, sold by NuVasive, launched in 2005
`-12-
`DEFENDANT ALPHATEC HOLDINGS, INC.’S AMENDED INVALIDITY CONTENTIONS
`FOR U.S. PATENT NOS. 9,924,859; 9,974,531; AND 8,187,334
`
`
`Case No. 3:18-CV-00347-CAB-MDD
`
`EXHIBIT G
`PAGE 153
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`• MaXcess III Retractor, sold by NuVasive, launched on September 12, 2006
`• MaXcess III Solid Retractor, sold by NuVasive, launched on November 13, 2008
`• MaXcess IV Retractor, sold by NuVasive, available at least as of October 3, 2013
`• Doc. No. 110-5 (Ex. E (NuVasive XLIF Surgical Technique (2007)) to Amended
`Complaint)
`• CoRoent XL implants, sold by NuVasive, launched in October 2004
`• PMA No. P950002, Supplement S0002 (attached hereto as Exhibit 1)
`• Warsaw Orthopedic, Inc. v. NuVasive, Inc., 3:08-cv-1512 MMA (MDD), Doc.
`No. 407-1 (NuVasive, Inc’s Memorandum of Points and Authorities in Support
`of Its Renewed Motion for Judgment as a Matter of Law or a New Trial), filed
`Oct. 27, 2011 (attached hereto at Exhibit 2)
`• Warsaw Orthopedic, Inc. v. NuVasive, Inc., 3:08-cv-1512 MMA (MDD), Doc.
`No. 407-3 (DTX-5118) (attached hereto at Exhibit 3)
`• Warsaw Orthopedic, Inc. v. NuVasive, Inc., 3:08-cv-1512 MMA (MDD), Doc.
`No. 407-5 (DTX-5134-R) (attached hereo at Exhibit 4)
`• Warsaw Orthopedic, Inc. v. NuVasive, Inc., 3:08-cv-1512 MMA (MDD), Doc.
`No. 407-4 (DTX-5131) (attached hereto at Exhibit 5)
`
`• Warsaw Orthopedic, Inc. v. NuVasive, Inc., 3:08-cv-1512 MMA (MDD), Doc.
`No. 407-6 (DTX-5150-R) (attached hereto at Exhibit 6)
`• Warsaw Orthopedic, Inc. v. NuVasive, Inc., 3:08-cv-1512 MMA (MDD), Doc.
`No. 407-14 (DTX-5995) (attached hereto at Exhibit 7)
`• Warsaw Orthopedic, Inc. v. NuVasive, Inc., 3:08-cv-1512 MMA (MDD), Doc.
`No. 407-15 (JX-1) (attached hereto at Exhibit 8)
`• Warsaw Orthopedic, Inc. v. NuVasive, Inc., 3:08-cv-1512 MMA (MDD), Doc.
`No. 407-10 (DTX-5881) (attached hereto at Exhibit 9)
`
`Defendants incorporate herein the Declaration of Dr. Sachs in Support of
`Defendants’ Opposition to Plaintiff’s Motion for Preliminary Injunction (Doc. No. 49-
`5) and the exhibits thereto (Doc. Nos. 49-6 - 49-71), at least with respect to the
`discussion of the above prior art references. Defendants also reserve their right to
`incorporate herein the arguments and prior art identified with respect to the asserted
`and/or related patents in prior district court litigation, including any appeals, as well as
`any post-grant proceedings before the PTAB and/or the U.S. Patent and Trademark
`Office, including but not limited to those discussed below. Such post-grant proceedings
`-13-
`DEFENDANT ALPHATEC HOLDINGS, INC.’S AMENDED INVALIDITY CONTENTIONS
`FOR U.S. PATENT NOS. 9,924,859; 9,974,531; AND 8,187,334
`
`
`Case No. 3:18-CV-00347-CAB-MDD
`
`EXHIBIT G
`PAGE 154
`
`

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