Case 3:18-cv-00347-CAB-MDD Document 300-21 Filed 01/08/21 PageID.27181 Page 1 of 6
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`EXHIBIT 20
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`EXHIBIT 20 - Page 254
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`Case 3:18-cv-00347-CAB-MDD Document 300-21 Filed 01/08/21 PageID.27182 Page 2 of 6
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`From:
`Sent:
`To:
`Cc:
`Subject:
`
`Counsel,
`
`Dashe, Christina <cdashe@wsgr.com>
`Friday, November 6, 2020 3:15 PM
`Hockman, Cori S.; Tripodi II, Paul; WSGR - NUVA/ATEC; NuVa-HG
`Nisbet, Brian; Wickramasekera, Nimalka; Alphatec Service
`Re: NUVA/ATECIP - ATEC Invalidity Positions
`
`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
` 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:
`embodying implants on its website no later than February 2004:
`
`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, Thus, Alphatec reasonably could have relied on this publication in its IPRs, and it should be estopped.
`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.
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`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>
`Date: Sunday, November 1, 2020 at 3:48 PM
`To: "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
`
`[External]
`Paul,
`
`
`Thank you for providing your reasoning regarding NuVasive’s estoppel position. Alphatec disagrees 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. Thus, Alphatec is not
`estopped from bringing its on-sale bar and public use arguments regarding NuVasive’s implants.
`
`a. While we note that you now admit that your product was used publicly before March 2004, the
`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
`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
`and/or public use argument is not a printed publication.
`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.
`
`
`2. 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
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`“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. 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
`
`
`
`
`Begin forwarded message:
`
`From: "Tripodi II, Paul" <ptripodi@wsgr.com>
`Date: October 26, 2020 at 6:18:17 PM CDT
`To: "Nisbet, Brian" <BNisbet@winston.com>
`Cc: "Wickramasekera, Nimalka" <NWickramasekera@winston.com>, WSGR - NUVA/ATEC
`<nuva/atec@wsgr.com>, NuVa-HG <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.
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`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.
`
`a. 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).
`
`b. Months before Alphatec filed its IPR, Alphatec knew and had notice that NuVasive’s
`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
`embodying products were disclosed/used before March 29, 2004.
`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-
` Thus, given that there are multiple pre-
`March 29, 2004 “printed publications” depicting NuVasive’s embodying products,
`March 29, 2004 “printed publications” depicting NuVasive’s embodying products,
`Alphatec “reasonably should have raised” these publications in its IPR.
`Alphatec “reasonably should have raised” these publications in its IPR.
`
`2. 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
`
`
`
`
`
`
`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
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