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`WILSON SONSINI GOODRICH & ROSATI P.C.
`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,
`)
`NUVASIVE, INC.’S REPLY IN
`
`)
`SUPPORT OF MOTION TO
` Plaintiff,
`)
`STRIKE ALPHATEC’S
`
`)
`INVALIDITY CONTENTIONS
`v.
`)
`
`)
`
`
`)
`
`ALPHATEC HOLDINGS, INC., a
`)
`PER CHAMBERS RULES, NO
`Delaware corporation, and ALPHATEC
`)
`ORAL ARGUMENT UNLESS
`SPINE, INC., a California corporation,
`)
`SEPARATELY ORDER BY THE
`
`)
`COURT
` Defendants.
`)
`
`
`)
`
`)
`Judge: Hon. Cathy Ann Bencivengo
`)
`Courtroom -4C
`
`NUVASIVE’S REPLY IN SUPPORT OF
`MOTION TO STRIKE ALPHATEC’S
`INVALIDITY CONTENTIONS
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`TABLE OF CONTENTS
`
`PAGE(S)
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`
`
`I.
`II.
`
`INTRODUCTION ........................................................................................... 1
`TIMELINE RELATING TO ALPHATEC’S SECTION 102(B)
`CONTENTION ............................................................................................... 1
`III. ALPHATEC IS ESTOPPED FROM RELYING ON SALES OR
`PUBLIC USES OF NUVASIVE PRODUCTS PRIOR TO MARCH
`29, 2004 OR PRINTED MATERIALS DESCRIBING THEM ..................... 2
`A. A “Skilled Searcher” Reasonably Should Have Found the
`Wayback Exhibit ................................................................................... 3
`IPR Estoppel Bars Alphatec From Using NuVasive Devices or
`Printed Materials Describing Them to Support Its Invalidity
`Contentions in the District Court .......................................................... 7
`IPR Estoppel Similarly Bars Alphatec From Attempting to
`Litigate The Priority Date of the Implant Patents Now ........................ 9
`IV. CONCLUSION ............................................................................................. 10
`
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`B.
`
`C.
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`NUVASIVE’S REPLY IN SUPPORT OF
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`INVALIDITY CONTENTIONS
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`TABLE OF AUTHORITIES
`
`PAGE(S)
`
`CASES
`Biscotti Inc. v. Microsoft Corp., No. 213CV01015JRGRSP,
`2017 WL 2526231 (E.D. Tex. May 11, 2017) .......................................... 2, 7, 8
`Depomed, Inc. v. Purdue Pharma L.P., No. CV 13-571 (MLC),
`2016 WL 8677317 (D.N.J. Nov. 4, 2016) ......................................................... 8
`Dynamic Drinkware, LLC v. Nat’l Graphics, Inc.,
`800 F.3d 1375 (Fed. Cir. 2015) ....................................................................... 10
`GREE, Inc. v. Supercell Oy, No. 219CV00071JRGRSP,
`2020 WL 4999689 (E.D. Tex. July 9, 2020) ................................................. 3, 4
`Medline Indus., Inc. v. C.R. Bard, Inc., No. 17 C 7216,
`2020 WL 5512132 (N.D. Ill. Sept. 14, 2020) ................................................... 2
`Oil-Dri Corp. of Am. V. Nestle Purina Petcare Co., No. 15 C 1067,
`2019 WL 861394 (N.D. Ill. Feb. 22, 2019) ....................................................... 2
`Star Envirotech, Inc. v. Redline Detection, LLC, No.
`SACV1201861JGBDFMX,
`2015 WL 4744394 (C.D. Cal. Jan. 29, 2015) ............................................... 6, 7
`Vaporstream, Inc. v. Snap Inc., No. 217CV00220MLHKSX,
`2020 WL 136591 (C.D. Cal. Jan. 13, 2020) ................................................. 2, 8
`Wasica Finance GmbH v. Schrader Int’l,
`432 F. Supp. 3d 448 (D. Del. 2020) .......................................................... 2, 3, 8
`STATUTES
`35 U.S.C. § 102 .................................................................................................... 1, 3, 9
`35 U.S.C. § 102(b) ....................................................................................................... 1
`35 U.S.C. § 315(e)(2) .......................................................................................... 1, 2, 9
`RULES
`L.R. 3.2 ........................................................................................................................ 4
`
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`NUVASIVE’S REPLY IN SUPPORT OF
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`INVALIDITY CONTENTIONS
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`MISCELLANEOUS
`James L. Quarles III & Richard A. Crudo, [Way]Back to the Future:
`Using the Wayback Machine in Patent Litigation, Landslide,
`Jan./Feb. 2014 .................................................................................................... 3
`Holly Andersen, Note, A Website Owner’s Practical Guide to the
`Wayback Machine, 11 J. Telecomm. & High Tech. L. 251,
`251-52 (2013) .................................................................................................... 3
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`NUVASIVE’S REPLY IN SUPPORT OF
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`INVALIDITY CONTENTIONS
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`I.
`
`
`INTRODUCTION
`Since the beginning of the litigation Alphatec’s various invalidity
`contentions unequivocally alleged the existence of “publicly available materials”
`describing NuVasive implants that “may . . . qualify as prior art under one or more
`sections of 35 U.S.C. § 102.” Despite Alphatec’s stated intention to assert this
`defense (and that it knew of publicly available materials), it provides no evidence
`that it conducted a diligent search for these materials. And, despite its assurances
`that the inter partes review would streamline the litigation, Alphatec then failed to
`raise these materials in any form before the PTAB. Alphatec’s inexplicable
`decision not to raise this prior art argument before the PTAB has resulted in
`significant inefficiencies as the priority date and sufficiency of the references
`would have already been resolved. This Court should hold that Alphatec is
`estopped pursuant to 35 U.S.C. § 315(e)(2) from simply re-labeling these
`arguments as an on-sale bar argument.
`II. TIMELINE RELATING TO ALPHATEC’S SECTION 102(B)
`CONTENTION
`
`In these post-IPR proceedings, Alphatec asserts that activities taking place
`prior to March 29, 2004, should invalidate the implant patents because NuVasive is
`not entitled to its priority date of its provisional patent application. Importantly,
`Alphatec has not alleged that any pre-March 2003 activities took place. Without
`its priority date argument, Alphatec has no § 102(b) invalidity defense.
`Critical Date
`< ---------- 1 Year Grace Period ---------- >
`March 29, 2004
`March 29, 2005
`March 29, 2003
`
`Provisional Patent
`Formal Utility
`
`Filed
`Patent
`One year prior to
`Filed
`the filing date of the
`Provisional Patent
`Application
`
`
`
`February 8, 2004 Wayback Machine Image
`with Enlarged Image of Implant
`
`
`FIG. 2
`
`
`FIG. 2
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`NUVASIVE’S REPLY IN SUPPORT OF
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`INVALIDITY CONTENTIONS
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`As shown in the chart above, the Wayback Exhibit (Doc. No. 296-4 at 2)
`was captured during NuVasive’s one-year grace period—and the implant shown in
`that Wayback Exhibit matches up with the implant disclosed in the Provisional
`Patent Application filed March 29, 2004 (Doc. No. 296-3 at 33), and is similarly
`reproduced in the formal utility patent application filed on March 29, 2005. See
`Ex. J at NUVA_ATEC0020892.
`III. ALPHATEC IS ESTOPPED FROM RELYING ON SALES OR
`PUBLIC USES OF NUVASIVE PRODUCTS PRIOR TO MARCH 29,
`2004 OR PRINTED MATERIALS DESCRIBING THEM
`Statutory estoppel under 35 U.S.C. §315(e)(2) prohibits Alphatec from
`asserting invalidity on “any ground that the petitioner raised or reasonably could
`have raised during [its] inter partes review.” 35 U.S.C. §315(e)(2) (emphasis
`added). And as Alphatec’s own case explains, “‘ground,’ as that term is used in 35
`U.S.C. § 315(e)(2), [means] the specific piece of prior art or combination of prior
`art that a petitioner raised, or could have raised, to challenge the validity of a patent
`claim during an IPR.” Medline Indus., Inc. v. C.R. Bard, Inc., No. 17 C 7216, 2020
`WL 5512132, at *4 (N.D. Ill. Sept. 14, 2020). Undoubtedly, this can include
`“printed publications that relate to and describe a physical product.” E.g., Wasica,
`432 F. Supp. 3d at 453. Several courts have also found estoppel may also extend to
`the physical products where the printed publications disclose the claim elements of
`the products. See, e.g., id. at 455; Vaporstream, Inc. v. Snap Inc., No.
`217CV00220MLHKSX, 2020 WL 136591, at *23 (C.D. Cal. Jan. 13, 2020);
`Biscotti Inc. v. Microsoft Corp., No. 213CV01015JRGRSP, 2017 WL 2526231, at
`*8 (E.D. Tex. May 11, 2017); see also Oil-Dri Corp. of Am. V. Nestle Purina
`Petcare Co., No. 15 C 1067, 2019 WL 861394, at *10 (N.D. Ill. Feb. 22, 2019).
`To be sure, the parameters of statutory estoppel are unsettled, but given
`Alphatec’s specifically stated contention that “publicly available materials”
`concerning NuVasive’s CoRoent XL implants could be used in a prior art attack
`
`NUVASIVE’S REPLY IN SUPPORT OF
`MOTION TO STRIKE ALPHATEC’S
`INVALIDITY CONTENTIONS
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`under one or more sections of 35 U.S.C. § 102, and given its assurances that it
`would leverage the inter partes review to streamline the present litigation, the
`Court should hold that Alphatec is now precluded from belatedly raising arguments
`based on this same information in the instant litigation.
`A. A “Skilled Searcher” Reasonably Should Have Found the
`Wayback Exhibit
`
`
`
`At the crux of this dispute is whether the Wayback Exhibit is a reference that
`Alphatec knew about or that “reasonably could have been discovered by a skilled
`researcher conducting a diligent search.” Wasica Finance GmbH v. Schrader Int’l,
`432 F. Supp. 3d 448, 453 (D. Del. 2020). The answer is “yes.”
`The Wayback Machine is a well-established service provided by the non-
`profit entity, Internet Archive, which provides permanent access to archived
`webpages obtained through an automated web-crawler. See, e.g., James L. Quarles
`III & Richard A. Crudo, [Way]Back to the Future: Using the Wayback Machine in
`Patent Litigation, Landslide, Jan./Feb. 2014 (“Since 1996, WBM has archived
`more than 366 billion webpages and now contains almost two petabytes of data.”).
`A majority of jurisdictions have approved the use of its screen captures as
`admissible evidence. Holly Andersen, Note, A Website Owner's Practical Guide to
`the Wayback Machine, 11 J. Telecomm. & High Tech. L. 251, 251-52 (2013).
`As noted in NuVasive’s opening brief and supporting declaration, it is both
`quick and easy to locate screenshots like the Wayback Exhibit. See Doc. No. 296-2
`at 2-3. In response, Alphatec provides no description of any search that it
`undertook, nor has it explained why such a search excluded webpage archives. Cf.,
`e.g., GREE, Inc. v. Supercell Oy, No. 219CV00071JRGRSP, 2020 WL 4999689, at
`*6 (E.D. Tex. July 9, 2020) (“Often a party would be able to point to its diligent
`pre-petition prior art search as evidence of the difficulty in finding a particular
`
`NUVASIVE’S REPLY IN SUPPORT OF
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`reference that was not found.”), report and recommendation adopted, No.
`219CV00071JRGRSP, 2020 WL 4937111 (E.D. Tex. Aug. 24, 2020).
`Rather than describe any diligent search that it undertook to locate the
`“publicly available” information identified in its 2018 PICs, Alphatec complains it
`could not have done so because of NuVasive’s conduct during discovery. These
`complaints are unavailing.
`First, NuVasive did not violate Patent Local Rule 3.2 by “withholding” the
`Wayback Exhibit from discovery because the Wayback Exhibit was never in
`NuVasive’s possession, custody, or control—a prerequisite for production under
`Local Patent Rule 3.2. See Declaration of John English, at ¶¶ 2-4 (explaining that
`NuVasive has verified it does not maintain copies of its internet pages from this
`time period and does not have the Wayback Exhibit in its possession, custody, or
`control). Instead, as repeatedly described, NuVasive’s counsel located the exhibit
`through a third-party archive after learning the details of Alphatec’s post-IPR
`invalidity defense and promptly provided it to Alphatec.
`Second, Alphatec’s assertion that “because of NuVasive’s conduct, Alphatec
`had no reason to believe such printed marketing or advertising existed before
`October 2004,” Doc. No. 300 at 8, is similarly without merit. As an initial matter, it
`ignores its own obligation to conduct a diligent search for such third-party
`information. And, in any event Alphatec’s characterization of discovery is not
`accurate. As Alphatec is well aware, none of the individuals with first-hand
`knowledge of any potential marketing, sales, or offers for sale of NuVasive
`implants before the March 29, 2004 provisional patent application filing date are
`still with NuVasive.1
`
`
`1 In fact, several such individuals—including implant patent inventors Luiz
`Pimenta and Matthew Curran as well as access patent inventor Pat Miles—are now
`high-level employees at Alphatec.
`NUVASIVE’S REPLY IN SUPPORT OF
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`Consistent with its lack of personnel with knowledge, and based on its
`original investigation, NuVasive responded that it commercially launched CoRoent
`XL at NASS in October 2004. Doc. No. 300-15 at 5 (emphasis added). At the same
`time—prior to the IPR—NuVasive also produced and explicitly called Alphatec’s
`attention to various documents related to development and potential sales or uses
`of NuVasive’s implants prior to the October 2004 commercial launch. Ex. K
`(10/22/18 Supp. Resp. to Interrogs. 3, 11, 13) (explicitly identifying
`NUVA_ATEC00115139, NUVA_ATEC0016173, NUVA_ATEC0016212;
`NUVA_ATEC0016561, and NUVA_ATEC0016575 as potentially relevant to
`interrogatories regarding first use or sale of embodying implants); Doc. No. 300-16
`at 12-13 (11/2/18 Supp. Resp. to Interrog. 13) (similar). Critically, Alphatec now
`relies on several of these same documents produced in 2018 to support its on-sale
`bar invalidity argument. See, e.g., Doc. No. 300-14 at 13-14 (relying on
`NUVA_ATEC00115139, NUVA_ATEC0016173, NUVA_ATEC0016212;
`NUVA_ATEC0016561, and NUVA_ATEC0016575 to support invalidity
`contentions).2
`Similarly, Alphatec’s representations that it “had no reason to believe”
`marketing materials existed prior to October 2004 is directly contradicted by its
`own PICs. Alphatec’s 2018 PICs state that it was aware of “publicly available
`materials” describing NuVasive implants that could be used to invalidate the
`
`2 It was not until August 21, 2020, that Alphatec for the first-time sought
`discovery related to what it called a “cement restrictor.” Doc. No. 202 at 19. Prior
`to August 2020, NuVasive was not aware that the implants were initially referred
`to as “cement restrictors.” Upon receiving Alphatec’s request, NuVasive
`performed a diligent search, located, and produced numerous documents related to
`the “cement restrictor” a month later on September 18, 2020—the date the parties
`had agreed upon in the Joint Discovery Statement. Doc. No. 202 at 32. NuVasive
`supplemented its production and discovery responses, and specifically identified
`additional documents potentially relevant to the issue of first sale, offer, etc. of the
`NuVasive cement restrictors, and identified specific product codes shared by
`NuVasive’s “cement restrictor” devices and its later CoRoent XL implants. Ex. L
`(10/16/20 Fourth Supp. Resp. to Interrogs. 3 and 13).
`NUVASIVE’S REPLY IN SUPPORT OF
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`implant patents. See Doc. No. 296-8 at 14; Doc. No. 296-9 at 16 (emphasis added).
`Alphatec now claims that the materials referenced in its December 7, 2018 PICs
`concerning implants “cited only publicly available documents pertaining to non-
`NuVasive commercial prior art implants.” See Doc. No. 300 at 13 (emphasis in
`original). This is not correct. The PICs at issue specifically discuss invalidity of
`NuVasive’s CoRoent implants. See, e.g., Doc. No. 296-8 at 17-18; Doc. No. 296-9
`at 18. Nor do the PICs draw the distinction between “implants” and “instruments”
`as urged by Alphatec in its Opposition; to the contrary, the PICs specifically
`describe CoRoent XL implants as “instruments.” See Doc. No. 296-8 at 18
`(“Accordingly, the asserted claims of the ‘156 patent are subject to the on-sale bar
`based on the sales of the above instruments, which, according to NuVasive
`embody the asserted claims.”) (emphasis added); Doc. 296-9 at 18 (same for ‘334
`patent).
`In sum, and in light of the undisputed ease with which Ms. Dashe was able
`to find the Wayback Exhibit, see Doc 296-2, Alphatec did not assert the Wayback
`Exhibit in IPR only because Alphatec failed in its duty to conduct a reasonably
`diligent search. Therefore, the Court should conclude Alphatec reasonably should
`have uncovered this information and should have asserted it in the IPRs.3
`
`3 Instead of arguing that it could not reasonably have found and asserted the
`publicly available material concerning CoRoent XL implants such as the Wayback
`Exhibit, Alphatec argues the Wayback Exhibit is insufficient because it does not
`“disclose all relevant features of the physical product” in a way as to be “materially
`identical” to the physical implants. See Doc. 300 at 25. As shown in the images
`reproduced above, the Wayback Exhibit shows actual NuVasive implants –
`implants that a skilled researcher undoubtedly would have recognized immediately
`as being relevant to the asserted implant patents – and those images clearly display
`the claimed features of the asserted claims, including: anti-migration elements
`(ridges); a longitudinal length greater than its lateral width, and a lateral width
`greater than its height; radiopaque metal spikes in locations noted in the patent; and
`the size and location of apertures, among others. The Wayback Exhibit also
`describes a “[r]adiolucent design.” Compare Doc. No. 296-4 at 2, with Doc. No.
`110-38 at 30 (claim 1 of ’156 patent) and Doc. No. 110-48 at 30 (claim 1 of ’334
`patent). Thus, this is not a situation like that described in Star Envirotech, Inc. v.
`Redline Detection, LLC, No. SACV1201861JGBDFMX, 2015 WL 4744394, at *4
`(continued...)
`NUVASIVE’S REPLY IN SUPPORT OF
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`B.
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`IPR Estoppel Bars Alphatec From Using NuVasive Devices or
`Printed Materials Describing Them to Support Its Invalidity
`Contentions in the District Court
`As noted above, Alphatec reasonably could have asserted the Wayback
`Exhibit in the course of its IPRs. Had Alphatec done so, the PTAB necessarily
`would have resolved issues relating to the priority date applicable to NuVasive’s
`implant patents, thereby streamlining the district court litigation as Alphatec
`assured NuVasive and the Court that the IPRs would. Therefore, the Court should
`apply IPR estoppel to prohibit Alphatec from challenging the invalidity of the
`implant patents based on alleged sales or public uses of the very product clearly
`disclosed in the Wayback Exhibit.
`Alphatec is correct that on-sale bar and public-use invalidity challenges may
`not be raised before the PTAB in an IPR. Alphatec is wrong, however, in claiming
`that IPR estoppel should never apply to these defenses. As several courts have
`noted, IPR estoppel bars litigants like Alphatec from asserting device-based
`invalidity challenges if the same litigant asserted or could have asserted a validity
`challenge in a previous IPR based on printed publications directly related to or
`clearly describing the physical device. For example, in Biscotti, the court discussed
`the rationale for adopting a broad view of estoppel: courts’ growing concern with
`IPR petitioners “returning to the Court with invalidity challenges under §§ 102 and
`103 based on prior art that was originally included in invalidity contentions but not
`included in an IPR petition.” Biscotti, 2017 WL 2526231, *6. That is the precise
`situation here. Biscotti continued, if “the petitioner simply does not include a prior
`art reference in the petition that reasonably could have been included, the petitioner
`should be estopped from asserting that reference in a subsequent proceeding.” Id.
`The rationale for this outcome is “preventing a patent challenger’s second chance
`
`(C.D. Cal. Jan. 29, 2015), where key features are contained in an internal or closed
`location such that the product must be disassembled to gain visual access.
`NUVASIVE’S REPLY IN SUPPORT OF
`7
`18-cv-00347-CAB-MDD
`MOTION TO STRIKE ALPHATEC’S
`INVALIDITY CONTENTIONS
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`at invalidity when it chose the IPR route but decided not to include certain grounds
`in it is IPR petition(s).” Id. at *7.
`Alphatec argues in response that each of the cases NuVasive relies upon for
`the above proposition involved obviousness invalidity challenges. See Doc. 300 at
`23-24. This is neither dispositive nor persuasive, since the logic behind the
`decisions NuVasive relies on applies with equal force to other device-based
`invalidity challenges like the on-sale bar: litigants should not be allowed to “skirt
`estoppel,” Vaporstream, 2020 WL 136591, at *23, and get a second bite at the
`apple simply by raising (or unreasonably failing to raise) a publication-based
`invalidity challenge, only to later assert a practically identical invalidity challenge
`based on sales of the very same physical product amply described in the printed
`publication.4
`Application of estoppel here is especially fitting given Alphatec’s positions
`going into the IPR. As noted, at that time Alphatec had already asserted that it was
`aware of printed publications relating to NuVasive implants that could be used to
`invalidate the implant patents. In addition, Alphatec represented that staying the
`litigation would “promote 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. This is of course the very
`concern articulated by Biscotti. See 2017 WL 2526231 at *6-7. And Alphatec fully
`understood that it could be bound by statutory estoppel. Doc. No. 142-1 at n.1.
`
`
`
`4 None of the cases Alphatec cites for its position – that estoppel does not apply
`to on-sale bar arguments, even where challenger could have asserted closely
`related publication-based arguments in IPR – carries the day. The closest Alphatec
`comes is Depomed, Inc. v. Purdue Pharma L.P., No. CV 13-571 (MLC), 2016 WL
`8677317 (D.N.J. Nov. 4, 2016). But there, the District of New Jersey refused to
`apply IPR estoppel to Purdue’s on-sale bar challenge because the physical product
`forming the basis of the challenge, had not been “disclosed in any patents or
`printed publications.” Id. at *8. Thus, the logic of Wasica et al. did not apply.
`NUVASIVE’S REPLY IN SUPPORT OF
`8
`18-cv-00347-CAB-MDD
`MOTION TO STRIKE ALPHATEC’S
`INVALIDITY CONTENTIONS
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`
`

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`Case 3:18-cv-00347-CAB-MDD Document 301 Filed 01/15/21 PageID.27245 Page 13 of 15
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`C.
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`IPR Estoppel Similarly Bars Alphatec From Attempting to
`Litigate The Priority Date of the Implant Patents Now
`Even accepting Alphatec’s position that it should not be estopped from
`raising its on-sale or public-use arguments now because it was unable to do so
`during the IPR, the Court may still find Alphatec is estopped from asking it to
`resolve the priority date question. Alphatec does not dispute that the PTAB is
`empowered to rule on priority dates and does so regularly. Instead, Alphatec seeks
`to conflate this issue with its on-sale and public-use arguments. This argument
`ignores that on-sale and public-use challenges are not the only vehicle through
`which the PTAB can resolve priority dates. There is no reason Alphatec could not
`have raised the Wayback Exhibit as part of a printed-publication challenge (as
`Alphatec claimed it would in its PICs), placing the priority date question squarely
`before the PTAB.5
`Moreover, Alphatec’s circular explanation, that “the priority date challenge
`would never have been decided by the PTAB because it was not relevant to
`Alphatec’s IPR grounds,” Doc. 300 at 27, ignores that estoppel applies to “any
`ground that the petitioner raised or reasonably could have raised during that inter
`partes review.” 35 U.S.C. § 315(e)(2) (emphasis added). Given Alphatec’s
`statements in its PIC placing priority dates squarely in issue, and that “publicly
`available materials describing” CoRoent XL implants may “qualify as prior art
`under one or more sections of 35 U.S.C. § 102,” NuVasive’s right to claim priority
`
`
`5 Of course, if NuVasive is entitled to a priority date of March 29, 2004 based
`on filing date of the implant patents’ common provisional patent application, as
`NuVasive contends, Alphatec’s on-sale and public-use invalidity attacks are
`irrelevant since Alphatec has not pointed to any alleged sale or public use before
`March 29, 2003.
`NUVASIVE’S REPLY IN SUPPORT OF
`MOTION TO STRIKE ALPHATEC’S
`INVALIDITY CONTENTIONS
`
`18-cv-00347-CAB-MDD
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`to its provisional application is a separate ground Alphatec reasonably could have
`raised before the PTAB.6
`IV. CONCLUSION
`The Court should hold that Alphatec is estopped pursuant to 35 U.S.C.
`§315(e)(2) from relying on NuVasive physical products or the publicly available
`materials describing them to support any of its invalidity defenses before the
`District Court.
`
`
`
`Dated: January 15, 2021 WILSON SONSINI GOODRICH & ROSATI
`By: /s/ Paul Tripodi
`
`
`Paul D. Tripodi II (SBN162380)
`Wendy L. Devine (SBN 246337)
`Natalie J. Morgan (SBN 211143)
`
`HILGERS GRABEN PLLC
`Michael T. Hilgers, pro hac vice
`
`Attorneys for Plaintiff NuVasive, Inc.
`
`
`
`
`6 Alphatec points out that NuVasive bears the burden of production with regard
`to establishing the priority date. Doc. No. 300 at 10. But as the challenger,
`Alphatec bears the burden of persuasion to show the patents are invalid. See
`Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1380 (Fed. Cir.
`2015). Thus, if Alphatec is estopped from asserting a basis for invalidity,
`NuVasive’s burden shifting does not kick in.
`NUVASIVE’S REPLY IN SUPPORT OF
`MOTION TO STRIKE ALPHATEC’S
`INVALIDITY CONTENTIONS
`
`18-cv-00347-CAB-MDD
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`10
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`CERTIFICATE OF SERVICE
`The undersigned certifies that a true and correct copy of the foregoing
`document has been served on this date to all current and/or opposing counsel of
`record, if any to date, who are deemed to have consented to electronic service via
`the Court’s CM/ECF system per Civ.L.R. 5.4(d). Any other counsel of record will
`be served by electronic mail, facsimile and/or overnight delivery.
`I declare under penalty of perjury under the laws of the United States of
`America that the above is true and correct. Executed this 15th day of January 2021
`at San Diego, California.
`
`
`
`
`
`
`
`
`By: / s/ Arlene Apodaca
`ARLENE APODACA
`
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`CERTIFICATE OF SERVICE
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`18-cv-00347-CAB-MDD
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