Case 3:18-cv-00347-CAB-MDD Document 304-5 Filed 01/26/21 PageID.28005 Page 1 of 84
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`EXHIBIT 2
`(PART 2)
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`TO THE DECLARATION OF
`BRIAN J. NISBET IN SUPPORT OF
`DEFENDANTS’ MOTION FOR
`SUMMARY JUDGMENT
`
`
`
`

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`Case 3:18-cv-00347-CAB-MDD Document 304-5 Filed 01/26/21 PageID.28006 Page 2 of 84
`
`~~TANh~#
`
`~.~
`
`UNITED STATES PATENT AND TR,\DEMARK OFFICE
`
`Ul\TfED STATES DEPA RTMK\l'f OF COMMERCE
`United States Patent and Trademark Office
`Addrnss <=()11M[SSl(l:--'ER FOR PATENTS
`
`APPLICATION NUMBER
`13/441,092
`
`FILING OR 37l(C) DATE
`04/06/2012
`
`26191
`FISH & RICHARDSON P.C. (TC)
`PO BOX 1022
`MINNEAPOLIS, MN 55440-1022
`
`FIRST NAMED APPLICANT
`Matthew Curran
`
`ATTY. DOCKET NO.ITITLE
`13958-0099003
`CONFIRMATION NO.1088
`FORMALITIES LETTER
`
`1111111111111111111111 ll]~!l]!U~l!~Hlll! ~Ii~] 11111111111111111111111
`
`Date Mailed: 04/27/2012
`
`NOTICE TO FILE CORRECTED APPLICATION PAPERS
`
`Filing Date Granted
`
`An application number and filing date have been accorded to this application. The application is informal since
`it does not comply with the regulations for the reason(s) indicated below. Applicant is given TWO MONTHS
`from the date of this Notice within which to correct the informalities indicated below. Extensions of time may be
`obtained by filing a petition accompanied by the extension fee under the provisions of 37 CFR 1.136(a).
`
`The required item(s) identified below must be timely submitted to avoid abandonment:
`
`• Replacement drawings in compliance with 37 CFR 1.84 and 37 CFR 1.121 (d) are required. The drawings
`submitted are not acceptable because:
`• The drawings submitted to the Office are not electronically reproducible because portions of figures 1, 7,
`10, 15, 16 are missing and/or blurry.
`
`Applicant is cautioned that correction of the above items may cause the specification and drawings page count to
`exceed 100 pages. If the specification and drawings exceed 100 pages, applicant will need to submit the required
`application size fee.
`
`page 1 of 2
`
`NUVA_ATEC0022878
`
`EXHIBIT 2 - PAGE 143
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`

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`Case 3:18-cv-00347-CAB-MDD Document 304-5 Filed 01/26/21 PageID.28007 Page 3 of 84
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`Replies should be mailed to:
`
`Mail Stop Missing Parts
`Commissioner for Patents
`P.O. Box 1450
`Alexandria VA 22313-1450
`
`Registered users of EFS-Web may alternatively submit their reply to this notice via EFS-Web.
`https ://sportal. uspto .gov/authenticate/ AuthenticateUserlocal EP F. htm I
`
`For more information about EFS-Web please call the USPTO Electronic Business Center at 1-866-217-9197 or
`visit our website at http://www.uspto.gov/ebc.
`
`If you are not using EFS-Web to submit your reply, you must include a copy of this notice.
`
`/eggolla/
`
`Office of Data Management, Application Assistance Unit (571) 272-4000, or (571) 272-4200, or 1-888-786-0101
`
`page 2 of 2
`
`NUVA_ATEC0022879
`
`EXHIBIT 2 - PAGE 144
`
`

`

`Case 3:18-cv-00347-CAB-MDD Document 304-5 Filed 01/26/21 PageID.28008 Page 4 of 84
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`~~TANh~#
`
`~.~
`
`UNITED STATES PATENT AND TR,\DEMARK OFFICE
`
`Ul\TfED STATES DEPA RTMK\l'f OF COMMERCE
`United States Patent and Trademark Office
`Addm;s <=OJl1MIS:.s1.0:--JER FOR PATENTS
`
`APPLICATION NUMBER
`13/441,092
`
`FILING OR 37l(C) DATE
`04/06/2012
`
`26191
`FISH & RICHARDSON P.C. (TC)
`PO BOX 1022
`MINNEAPOLIS, MN 55440-1022
`
`FIRST NAMED APPLICANT
`Matthew Curran
`
`ATTY. DOCKET NO.ITITLE
`13958-0099003
`CONFIRMATION NO.1088
`POA ACCEPTANCE LETTER
`
`11111111111111111 lllll ll]~!l]!U~l!~Hl!I! iii~] 111111111111111 IIII IIII
`
`Date Mailed: 04/27/2012
`
`NOTICE OF ACCEPTANCE OF POWER OF ATTORNEY
`
`This is in response to the Power of Attorney filed 04/06/2012.
`
`The Power of Attorney in this application is accepted. Correspondence in this application will be mailed to the
`above address as provided by 37 CFR 1.33.
`
`/hkquach/
`
`Office of Data Management, Application Assistance Unit (571) 272-4000, or (571) 272-4200, or 1-888-786-0101
`
`page 1 of 1
`
`NUVA_ATEC0022880
`
`EXHIBIT 2 - PAGE 145
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`

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`Case 3:18-cv-00347-CAB-MDD Document 304-5 Filed 01/26/21 PageID.28009 Page 5 of 84
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`PATENT APPLICATION FEE DETERMINATION RECORD
`Substitute for Form PTO-875
`
`Application or Docket Number
`13/441,092
`
`APPLICATION AS FILED - PART I
`(Column 1)
`(Column 2)
`
`SMALL ENTITY
`
`OR
`
`SMALL ENTITY
`
`OTHER THAN
`
`FOR
`
`BASIC FEE
`(37 CFR 1.16(a), (b), or (c))
`SEARCH FEE
`(37 CFR 1.16(k), (i), or (m))
`EXAMINATION FEE
`(37 CFR 1.16(0), (p), or (q))
`TOTAL CLAIMS
`(37 CFR 1.16(i))
`INDEPENDENT CLAIMS
`(37CFR 1.16(h))
`
`APPLICATION SIZE
`FEE
`(37 CFR 1.16(s))
`
`NUMBER FILED
`N/A
`N/A
`N/A
`
`NUMBER EXTRA
`N/A
`N/A
`N/A
`
`RATE($)
`N/A
`N/A
`N/A
`
`FEE($)
`
`46
`
`2
`
`minus 20=
`
`minus 3 =
`
`26
`
`11 U1e specification and drawings exceed 100
`sheets of paper, the application size fee due is
`$31 0 ($155 for small entity) for each additional
`50 sheets or fraction thereof. See 35 U.S.C.
`41 (a)(1 )(G) and 37 CFR 1.16(s).
`
`RATE($)
`N/A
`N/A
`N/A
`
`OR
`
`X
`
`X
`
`60
`
`250
`
`=
`
`=
`
`MULTIPLE DEPENDENT CLAIM PRESENT (37 CFR 1.16(j))
`
`* If the difference in column 1 is less than zero, enter "0" in column 2.
`
`TOTAL
`
`TOTAL
`
`APPLICATION AS AMENDED - PART II
`
`FEE($)
`
`380
`
`620
`
`250
`
`1560
`
`0.00
`
`0.00
`
`0.00
`
`2810
`
`(Column 2)
`HIGHEST
`NUMBER
`PREVIOUSLY
`PAID FOR
`
`(Column 3)
`
`PRESENT
`EXTRA
`
`SMALL ENTITY
`
`OR
`
`OTHER THAN
`SMALL ENTITY
`
`RATE($)
`
`ADDITIONAL
`FEE($)
`
`RATE($)
`
`ADDITIONAL
`FEE($)
`
`(Column 1)
`CLAIMS
`REMAINING
`AFTER
`AMENDMENT
`
`<(
`I-
`z
`w
`Total
`~ (37 CFR 1.16(il)
`0
`z
`Independent
`w
`(37CFR 1.16(h))
`~ Application Size Fee (37 CFR 1.16(s))
`<(
`
`..
`...
`
`Minus
`
`Minus
`
`=
`
`=
`
`FIRST PRESENTATION OF MULTIPLE DEPENDENT CLAIM (37 CFR 1.16(j))
`
`(Column I)
`CLAIMS
`REMAINING
`AFTER
`AMENDMENT
`
`[I)
`I-
`z
`w
`Total
`~ (37 CFR 1.16(i))
`0
`z
`Independent
`w
`(37 CFR 1.16(h))
`~ Application Size Fee (37 CFR 1.16(s))
`<(
`
`(Column 2)
`HIGHEST
`NUMBER
`PREVIOUSLY
`PAID FOR
`
`..
`...
`
`(Column 3)
`
`PRESENT
`EXTRA
`
`=
`
`=
`
`Minus
`
`Minus
`
`FIRST PRESENTATION OF MULTIPLE DEPENDENT CLAIM (37 CFR 1.16(j))
`
`X
`
`X
`
`X
`
`X
`
`=
`
`=
`
`=
`
`=
`
`TOTAL
`ADD'L FEE
`
`RATE($)
`
`TOTAL
`ADD'L FEE
`* If the entry in column 1 is less than the entry in column 2, write "0" in column 3.
`** If the "Highest Number Previously Paid For" IN THIS SPACE is less than 20, enter "20".
`*** If the "Highest Number Previously Paid For" IN THIS SPACE is less than 3, enter "3".
`The "Highest Number Previously Paid For" (Total or Independent) is the highest lound in the appropriate box in column 1
`
`OR
`
`OR
`
`X
`
`X
`
`OR
`
`OR
`
`TOTAL
`ADD'L FEE
`
`ADDITIONAL
`FEE($)
`
`RATE($)
`
`=
`
`=
`
`=
`
`=
`
`ADDITIONAL
`FEE($)
`
`OR
`
`OR
`
`X
`
`X
`
`OR
`
`OR
`
`TOTAL
`ADD'L FEE
`
`NUVA_ATEC0022881
`
`EXHIBIT 2 - PAGE 146
`
`

`

`Case 3:18-cv-00347-CAB-MDD Document 304-5 Filed 01/26/21 PageID.28010 Page 6 of 84
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`~~TANh~#
`
`~.~
`
`UNITED STATES PATENT AND TR,\DEMARK OFFICE
`
`Ul\TfED STATES DEPA RTMK\IT OF COMMERCE
`United States Patent and Trademark Office
`Addrnss <=()11M[SSl(l:--'ER FOR PATENTS
`
`APPLICATION
`NUMBF-1{
`13/441,092
`
`FILING or
`371(c)DATE
`04/06/2012
`
`GRPART
`UNJT
`3733
`
`FIL FEE REC'D
`2810
`
`26191
`FISH & RICHARDSON P.C. (TC)
`PO BOX 1022
`MINNEAPOLIS, MN 55440-1022
`
`ATTY.DOCKET.NO
`13958-0099003
`
`TOT CLAIMS IND CLAIMS
`46
`2
`CONFIRMATION NO.1088
`FILING RECEIPT
`
`1111111111111111111111 ll]~!l]!~l!~l!~Hlll! ~I!~] 111111111111111 IIII IIII
`
`Date Mailed: 04/27/2012
`
`Receipt is acknowledged of this non-provisional patent application. The application will be taken up for examination
`in due course . Applicant will be notified as to the results of the examination. Any correspondence concerning the
`application must include the following identification information: the U.S. APPLICATION NUMBER, FILING DATE,
`NAME OF APPLICANT, and TITLE OF INVENTION. Fees transmitted by check or draft are subject to collection.
`Please verify the accuracy of the data presented on this receipt. If an error is noted on this Filing Receipt, please
`submit a written request for a Filing Receipt Correction. Please provide a copy of this Filing Receipt with the
`changes noted thereon. If you received a "Notice to File Missing Parts" for this application, please submit
`any corrections to this Filing Receipt with your reply to the Notice. When the USPTO processes the reply
`to the Notice, the USPTO will generate another Filing Receipt incorporating the requested corrections
`
`Applicant( s)
`
`Matthew Curran, Carlsbad, CA;
`Mark Peterson, Medford, CA;
`Assignment For Published Patent Application
`NuVasive, Inc., San Diego, CA
`Power of Attorney: The patent practitioners associated with Customer Number 26191
`
`Domestic Priority data as claimed by applicant
`This application is a CON of 13/440,062 04/05/2012
`which is a CON of 13/079,645 04/04/2011
`which is a CON of 11/093,409 03/29/2005 PAT 7918891
`which claims benefit of 60/557,536 03/29/2004
`
`Foreign Applications (You may be eligible to benefit from the Patent Prosecution Highway program at the
`USPTO. Please see http://www.uspto.gov for more information.)
`
`If Required, Foreign Filing License Granted: 04/19/2012
`
`The country code and number of your priority application, to be used for filing abroad under the Paris Convention,
`is US 13/441,092
`
`Projected Publication Date: To Be Determined - pending completion of Corrected Papers
`
`Non-Publication Request: No
`
`Early Publication Request: No
`
`page 1 of 3
`
`NUVA_ATEC0022882
`
`EXHIBIT 2 - PAGE 147
`
`

`

`Case 3:18-cv-00347-CAB-MDD Document 304-5 Filed 01/26/21 PageID.28011 Page 7 of 84
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`Title
`
`Systems and Methods for Spinal Fusion
`
`Preliminary Class
`
`623
`
`PROTECTING YOUR INVENTION OUTSIDE THE UNITED STATES
`
`Since the rights granted by a U.S. patent extend only throughout the territory of the United States and have no
`effect in a foreign country, an inventor who wishes patent protection in another country must apply for a patent
`in a specific country or in regional patent offices. Applicants may wish to consider the filing of an international
`application under the Patent Cooperation Treaty (PCT). An international (PCT) application generally has the same
`effect as a regular national patent application in each PCT-member country. The PCT process simplifies the filing
`of patent applications on the same invention in member countries, but does not result in a grant of "an international
`patent" and does not eliminate the need of applicants to file additional documents and fees in countries where patent
`protection is desired.
`
`Almost every country has its own patent law, and a person desiring a patent in a particular country must make an
`application for patent in that country in accordance with its particular laws. Since the laws of many countries differ
`in various respects from the patent law of the United States, applicants are advised to seek guidance from specific
`foreign countries to ensure that patent rights are not lost prematurely.
`
`Applicants also are advised that in the case of inventions made in the United States, the Director of the US PTO must
`issue a license before applicants can apply for a patent in a foreign country. The filing of a U.S. patent application
`serves as a request for a foreign filing license. The application's filing receipt contains further information and
`guidance as to the status of applicant's license for foreign filing.
`
`Applicants may wish to consult the USPTO booklet, "General Information Concerning Patents" (specifically, the
`section entitled "Treaties and Foreign Patents") for more information on timeframes and deadlines for filing foreign
`patent applications. The guide is available either by contacting the USPTO Contact Center at 800-786-9199, or it
`can be viewed on the USPTO website at http://www.uspto.gov/web/offices/pac/doc/general/index.html.
`
`For information on preventing theft of your intellectual property (patents, trademarks and copyrights), you may wish
`to consult the U.S. Government website, http://www.stopfakes.gov. Part of a Department of Commerce initiative,
`this website includes self-help "toolkits" giving innovators guidance on how to protect intellectual property in specific
`countries such as China, Korea and Mexico. For questions regarding patent enforcement issues, applicants may
`call the U.S. Government hotline at 1-866-999-HAL T (1-866-999-4158) .
`
`LICENSE FOR FOREIGN FILING UNDER
`
`Title 35, United States Code, Section 184
`
`Title 37, Code of Federal Regulations, 5.11 & 5.15
`
`GRANTED
`
`The applicant has been granted a license under 35 U.S.C. 184, if the phrase "IF REQUIRED, FOREIGN FILING
`LICENSE GRANTED" followed by a date appears on this form. Such licenses are issued in all applications where
`the conditions for issuance of a license have been met, regardless of whether or not a license may be required as
`page 2 of 3
`
`NUVA_ATEC0022883
`
`EXHIBIT 2 - PAGE 148
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`

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`Case 3:18-cv-00347-CAB-MDD Document 304-5 Filed 01/26/21 PageID.28012 Page 8 of 84
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`set forth in 37 CFR 5.15. The scope and limitations of this license are set forth in 37 CFR 5.15(a) unless an earlier
`license has been issued under 37 CFR 5.15(b). The license is subject to revocation upon written notification. The
`date indicated is the effective date of the license, unless an earlier license of similar scope has been granted under
`37 CFR 5.13 or 5.14.
`
`This license is to be retained by the licensee and may be used at any time on or after the effective date thereof unless
`it is revoked. This license is automatically transferred to any related applications(s) filed under 37 CFR 1.53(d). This
`license is not retroactive.
`
`The grant of a license does not in any way lessen the responsibility of a licensee for the security of the subject matter
`as imposed by any Government contract or the provisions of existing laws relating to espionage and the national
`security or the export of technical data. Licensees should apprise themselves of current regulations especially with
`respect to certain countries, of other agencies, particularly the Office of Defense Trade Controls, Department of
`State (with respect to Arms, Munitions and Implements of War (22 CFR 121-128)); the Bureau of Industry and
`Security, Department of Commerce (15 CFR parts 730-774); the Office of Foreign AssetsControl, Department of
`Treasury (31 CFR Parts 500+) and the Department of Energy.
`
`NOT GRANTED
`
`No license under 35 U.S.C. 184 has been granted at this time, if the phrase "IF REQUIRED, FOREIGN FILING
`LICENSE GRANTED" DOES NOT appear on this form. Applicant may still petition for a license under 37 CFR 5.12,
`if a license is desired before the expiration of 6 months from the filing date of the application. If 6 months has lapsed
`from the filing date of this application and the licensee has not received any indication of a secrecy order under 35
`U.S.C. 181, the licensee may foreign file the application pursuantto 37 CFR 5.15(b).
`
`Select USA
`
`The United States represents the largest, most dynamic marketplace in the world and is an unparalleled location
`for business investment, innovation and commercialization of new technologies. The USA offers tremendous
`resources and advantages for those who invest and manufacture goods here. Through SelectUSA, our nation
`works to encourage, facilitate, and accelerate business investment. To learn more about why the USA is the best
`country in the world to develop technology, manufacture products, and grow your business, visit SelectUSA.gov.
`
`page 3 of 3
`
`NUVA_ATEC0022884
`
`EXHIBIT 2 - PAGE 149
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`

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`Case 3:18-cv-00347-CAB-MDD Document 304-5 Filed 01/26/21 PageID.28013 Page 9 of 84
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`Attorney Docket No.: 13958-0099003 i 104US4
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Applicant
`Serial No.
`Filed
`Title
`
`Unknown
`Art Unit
`Matthew Curran et al.
`Examiner Unknown
`13/441,092
`Conf. No.
`1088
`April 6, 2012
`SYSTEMS AND METHODS FOR SPINAL FUSION
`
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`RESPONSE TO NOTICE TO FILE CORRECTED APPLICATION PAPERS
`
`Responsive to the Notice to File Corrected Application Papers mailed April 27, 2012,
`
`applicant as a large entity submits herewith the following:
`
`[2]
`
`Substitute drawings (5 Sheets) in compliance with 37 CFR § 1.84. No new matter
`
`has been added.
`
`It is understood that this perfects the application and no additional papers or filing fees
`
`are required.
`
`Please apply any necessary charges or credits to Deposit Account 06-1050, referencing
`
`the above attorney docket number.
`
`Respectfully submitted,
`
`/Michael T . Hawkins/
`Michael T. Hawkins
`Reg. No. 57,867
`
`Date: May 2, 2012
`
`Customer Number 26191
`Fish & Richardson P.C.
`Telephone: (612) 335-5070
`Facsimile: (877) 769-7945
`
`60768330.doc
`
`CERTIFICATE OF (A) MAILING BY FIRST CLASS MAIL OR (B) TRANSMISSION
`I hereby certify under 37 CFR §l.8(a) that this correspondence is either (A) addressed as set out in
`37 CFR §1.l(a) and being deposited with the United States Postal Service as first class mail with
`sufficient postage, or (B) being transmitted by facsimile in accordance with 37 CFR § l.6(d) or via
`the Office electronic filing system in accordance with 37 CFR § l.6(a)(4), on the date indicated
`below.
`Mav 2, 2012
`Date of Deposit or Transmission
`/Theresa Russek/
`Signature
`Theresa Russek
`Typed or Printed Name of Person Signing Certificate
`
`NUVA_ATEC0022885
`
`EXHIBIT 2 - PAGE 150
`
`

`

`Case 3:18-cv-00347-CAB-MDD Document 304-5 Filed 01/26/21 PageID.28014 Page 10 of
`Page 1 of20
`84
`Appl. No.: 13441,092
`Replacement Sheet
`
`20
`✓-
`
`FIG.1
`
`NUV A_A TEC0022886
`
`EXHIBIT 2 - PAGE 151
`
`

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`Case 3:18-cv-00347-CAB-MDD Document 304-5 Filed 01/26/21 PageID.28015 Page 11 of
`Page 7 of2 0
`84
`Appl. No.: 13/441 ,092
`Replacement Sheet
`
`FIG. 7
`
`NUVA_ATEC0022887
`
`EXHIBIT 2 - PAGE 152
`
`

`

`Page 10 of20
`Case 3:18-cv-00347-CAB-MDD Document 304-5 Filed 01/26/21 PageID.28016 Page 12 of
`Appl. No.: 13/441 ,092
`84
`Replacement Sheet
`
`FIG. 10
`
`NUVA_ATEC0022888
`
`EXHIBIT 2 - PAGE 153
`
`

`

`Page 15 of20
`Case 3:18-cv-00347-CAB-MDD Document 304-5 Filed 01/26/21 PageID.28017 Page 13 of
`Appl. No.: 13/441,092
`84
`Replacement Sheet
`
`FIG. 15
`
`NUVA_A TEC0022889
`
`EXHIBIT 2 - PAGE 154
`
`

`

`Case 3:18-cv-00347-CAB-MDD Document 304-5 Filed 01/26/21 PageID.28018 Page 14 of
`Page 16 of20
`84
`Appl. No.: 13/441,092
`Replacement Sheet
`
`,.....;
`
`NUVA_ATEC0022890
`
`EXHIBIT 2 - PAGE 155
`
`

`

`Case 3:18-cv-00347-CAB-MDD Document 304-5 Filed 01/26/21 PageID.28019 Page 15 of
`84
`Electronic Acknowledgement Receipt
`
`EFS ID:
`
`Application Number:
`
`12688544
`
`13441092
`
`International Application Number:
`
`Confirmation Number:
`
`1088
`
`Title of Invention:
`
`Systems and Methods for Spina l Fusion
`
`First Named Inventor/Applicant Name:
`
`Matthew Curran
`
`Customer Number:
`
`26191
`
`Filer:
`
`Michael T. Hawkins/Theresa Russek
`
`Filer Authorized By:
`
`Michael T. Hawkins
`
`Attorney Docket Number:
`
`13958-0099003
`
`Receipt Date:
`
`Filing Date:
`
`Time Stamp:
`
`02-MAY-2012
`
`06-APR-2012
`
`16:59:44
`
`Application Type:
`
`Utility under 35 USC 111 (a)
`
`Payment information:
`
`Submitted with Payment
`
`I no
`
`File Listing:
`
`Document
`Number
`
`Document Description
`
`File Name
`
`File Size(Bytes)/
`Message Digest
`
`Multi
`Part /.zip
`
`Pages
`(if appl.)
`
`1
`
`Applicant Response to Pre-Exam
`Formalities Notice
`
`response.pdf
`
`no
`
`1
`
`53428
`
`1 fc2f57 cl 753552ca3b5292220dfcc6fbfb9e
`65e
`
`Warnings:
`
`Information:
`
`NUVA_ATEC0022891
`
`EXHIBIT 2 - PAGE 156
`
`

`

`2
`
`no
`
`5
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`Case 3:18-cv-00347-CAB-MDD Document 304-5 Filed 01/26/21 PageID.28020 Page 16 of
`84
`80445
`Drawings-only black and white line
`figures.pdf
`drawings
`
`0ce4baef4ee4 50d 9 3689adfd ce4f948185 34
`ee9b
`
`Warnings:
`
`Information:
`
`Total Files Size (in bytes)
`
`133873
`
`This Acknowledgement Receipt evidences receipt on the noted date by the USPTO of the indicated documents,
`characterized by the applicant, and including page counts, where applicable. It serves as evidence of receipt similar to a
`Post Card, as described in MPEP 503.
`
`New A1mlications Under 35 U.S.C. 111
`If a new application is being filed and the application includes the necessary components for a filing date (see 37 CFR
`1.53(b)-(d) and MPEP 506), a Filing Receipt (37 CFR 1.54) will be issued in due course and the date shown on this
`Acknowledgement Receipt will establish the filing date of the application.
`
`National Stage of an International A1mlication under 35 U.S.C. 371
`If a timely submission to enter the national stage of an international application is compliant with the conditions of 35
`U.S.C. 371 and other applicable requirements a Form PCT/DO/EO/903 indicating acceptance of the application as a
`national stage submission under 35 U.S.C. 371 will be issued in addition to the Filing Receipt, in due course.
`
`New International A~~lication Filed with the USPTO as a Receiving Office
`If a new international application is being filed and the international application includes the necessary components for
`an international filing date (see PCT Article 11 and MPEP 181 O), a Notification of the International Application Number
`and of the International Filing Date (Form PCT/RO/1 OS) will be issued in due course, subject to prescriptions concerning
`national security, and the date shown on this Acknowledgement Receipt will establish the international filing date of
`the application.
`
`NUVA_ATEC0022892
`
`EXHIBIT 2 - PAGE 157
`
`

`

`Case 3:18-cv-00347-CAB-MDD Document 304-5 Filed 01/26/21 PageID.28021 Page 17 of
`84
`PATENT APPLICATION FEE DETERMINATION RECORD
`Substitute for Form PTO-875
`
`Application or Docket Number
`13/441,092
`
`APPLICATION AS FILED - PART I
`(Column 1)
`(Column 2)
`
`SMALL ENTITY
`
`OR
`
`SMALL ENTITY
`
`OTHER THAN
`
`FOR
`
`BASIC FEE
`(37 CFR 1.16(a), (b), or (c))
`SEARCH FEE
`(37 CFR 1.16(k), (i), or (m))
`EXAMINATION FEE
`(37 CFR 1.16(0), (p), or (q))
`TOTAL CLAIMS
`(37 CFR 1.16(i))
`INDEPENDENT CLAIMS
`(37CFR 1.16(h))
`
`APPLICATION SIZE
`FEE
`(37 CFR 1.16(s))
`
`NUMBER FILED
`N/A
`N/A
`N/A
`
`NUMBER EXTRA
`N/A
`N/A
`N/A
`
`RATE($)
`N/A
`N/A
`N/A
`
`FEE($)
`
`46
`
`2
`
`minus 20=
`
`minus 3 =
`
`26
`
`11 U1e specification and drawings exceed 100
`sheets of paper, the application size fee due is
`$31 0 ($155 for small entity) for each additional
`50 sheets or fraction thereof. See 35 U.S.C.
`41 (a)(1 )(G) and 37 CFR 1.16(s).
`
`RATE($)
`N/A
`N/A
`N/A
`
`OR
`
`X
`
`X
`
`60
`
`250
`
`=
`
`=
`
`MULTIPLE DEPENDENT CLAIM PRESENT (37 CFR 1.16(j))
`
`* If the difference in column 1 is less than zero, enter "0" in column 2.
`
`TOTAL
`
`TOTAL
`
`APPLICATION AS AMENDED - PART II
`
`FEE($)
`
`380
`
`620
`
`250
`
`1560
`
`0.00
`
`0.00
`
`0.00
`
`2810
`
`(Column 2)
`HIGHEST
`NUMBER
`PREVIOUSLY
`PAID FOR
`
`(Column 3)
`
`PRESENT
`EXTRA
`
`SMALL ENTITY
`
`OR
`
`OTHER THAN
`SMALL ENTITY
`
`RATE($)
`
`ADDITIONAL
`FEE($)
`
`RATE($)
`
`ADDITIONAL
`FEE($)
`
`(Column 1)
`CLAIMS
`REMAINING
`AFTER
`AMENDMENT
`
`<(
`I-
`z
`w
`Total
`~ (37 CFR 1.16(il)
`0
`z
`Independent
`w
`(37CFR 1.16(h))
`~ Application Size Fee (37 CFR 1.16(s))
`<(
`
`..
`...
`
`Minus
`
`Minus
`
`=
`
`=
`
`FIRST PRESENTATION OF MULTIPLE DEPENDENT CLAIM (37 CFR 1.16(j))
`
`(Column I)
`CLAIMS
`REMAINING
`AFTER
`AMENDMENT
`
`[I)
`I-
`z
`w
`Total
`~ (37 CFR 1.16(i))
`0
`z
`Independent
`w
`(37 CFR 1.16(h))
`~ Application Size Fee (37 CFR 1.16(s))
`<(
`
`(Column 2)
`HIGHEST
`NUMBER
`PREVIOUSLY
`PAID FOR
`
`..
`...
`
`(Column 3)
`
`PRESENT
`EXTRA
`
`=
`
`=
`
`Minus
`
`Minus
`
`FIRST PRESENTATION OF MULTIPLE DEPENDENT CLAIM (37 CFR 1.16(j))
`
`X
`
`X
`
`X
`
`X
`
`=
`
`=
`
`=
`
`=
`
`TOTAL
`ADD'L FEE
`
`RATE($)
`
`TOTAL
`ADD'L FEE
`* If the entry in column 1 is less than the entry in column 2, write "0" in column 3.
`** If the "Highest Number Previously Paid For" IN THIS SPACE is less than 20, enter "20".
`*** If the "Highest Number Previously Paid For" IN THIS SPACE is less than 3, enter "3".
`The "Highest Number Previously Paid For" (Total or Independent) is the highest lound in the appropriate box in column 1
`
`OR
`
`OR
`
`X
`
`X
`
`OR
`
`OR
`
`TOTAL
`ADD'L FEE
`
`ADDITIONAL
`FEE($)
`
`RATE($)
`
`=
`
`=
`
`=
`
`=
`
`ADDITIONAL
`FEE($)
`
`OR
`
`OR
`
`X
`
`X
`
`OR
`
`OR
`
`TOTAL
`ADD'L FEE
`
`NUVA_ATEC0022893
`
`EXHIBIT 2 - PAGE 158
`
`

`

`Case 3:18-cv-00347-CAB-MDD Document 304-5 Filed 01/26/21 PageID.28022 Page 18 of
`84
`
`~~TANh~#
`
`~.~
`
`UNITED STATES PATENT AND TR,\DEMARK OFFICE
`
`APPLICATION
`NUMBF-1{
`13/441,092
`
`FILING or
`371(c)DATE
`04/06/2012
`
`GRPART
`UNJT
`3733
`
`FIL FEE REC'D
`2810
`
`26191
`FISH & RICHARDSON P.C. (TC)
`PO BOX 1022
`MINNEAPOLIS, MN 55440-1022
`
`Ul\TfED STATES DEPA RTMK\IT OF COMMERCE
`United States Patent and Trademark Office
`Addrnss <=()11M[SSl(l:--'ER FOR PATENTS
`
`TOT CLAIMS IND CLAIMS
`ATTY.DOCKET.NO
`46
`13958-0099003/104US4
`2
`CONFIRMATION NO.1088
`UPDATED FILING RECEIPT
`
`1111111111111111111111 ll]~!l]!~l!~l!~H~~H~!III 111111111111111 IIII IIII
`
`Date Mailed: 05/10/2012
`
`Receipt is acknowledged of this non-provisional patent application. The application will be taken up for examination
`in due course . Applicant will be notified as to the results of the examination. Any correspondence concerning the
`application must include the following identification information: the U.S. APPLICATION NUMBER, FILING DATE,
`NAME OF APPLICANT, and TITLE OF INVENTION. Fees transmitted by check or draft are subject to collection.
`Please verify the accuracy of the data presented on this receipt. If an error is noted on this Filing Receipt, please
`submit a written request for a Filing Receipt Correction. Please provide a copy of this Filing Receipt with the
`changes noted thereon. If you received a "Notice to File Missing Parts" for this application, please submit
`any corrections to this Filing Receipt with your reply to the Notice. When the USPTO processes the reply
`to the Notice, the USPTO will generate another Filing Receipt incorporating the requested corrections
`
`Applicant( s)
`
`Matthew Curran, Carlsbad, CA;
`Mark Peterson, Medford, CA;
`Assignment For Published Patent Application
`NuVasive, Inc., San Diego, CA
`Power of Attorney: The patent practitioners associated with Customer Number 26191
`
`Domestic Priority data as claimed by applicant
`This application is a CON of 13/440,062 04/05/2012
`which is a CON of 13/079,645 04/04/2011 PAT 8187334
`which is a CON of 11/093,409 03/29/2005 PAT 7918891
`which claims benefit of 60/557,536 03/29/2004
`
`Foreign Applications (You may be eligible to benefit from the Patent Prosecution Highway program at the
`USPTO. Please see http://www.uspto.gov for more information.)
`
`If Required, Foreign Filing License Granted: 04/19/2012
`
`The country code and number of your priority application, to be used for filing abroad under the Paris Convention,
`is US 13/441,092
`
`Projected Publication Date: 08/16/2012
`
`Non-Publication Request: No
`
`Early Publication Request: No
`
`page 1 of 3
`
`NUVA_ATEC0022894
`
`EXHIBIT 2 - PAGE 159
`
`

`

`Case 3:18-cv-00347-CAB-MDD Document 304-5 Filed 01/26/21 PageID.28023 Page 19 of
`84
`
`Title
`
`Systems and Methods for Spinal Fusion
`
`Preliminary Class
`
`623
`
`PROTECTING YOUR INVENTION OUTSIDE THE UNITED STATES
`
`Since the rights granted by a U.S. patent extend only throughout the territory of the United States and have no
`effect in a foreign country, an inventor who wishes patent protection in another country must apply for a patent
`in a specific country or in regional patent offices. Applicants may wish to consider the filing of an international
`application under the Patent Cooperation Treaty (PCT). An international (PCT) application generally has the same
`effect as a regular national patent application in each PCT-member country. The PCT process simplifies the filing
`of patent applications on the same invention in member countries, but does not result in a grant of "an international
`patent" and does not eliminate the need of applicants to file additional documents and fees in countries where patent
`protection is desired.
`
`Almost every country has its own patent law, and a person desiring a patent in a particular country must make an
`application for patent in that country in accordance with its particular laws. Since the laws of many countries differ
`in various respects from the patent law of the United States, applicants are advised to seek guidance from specific
`foreign countries to ensure that patent rights are not lost prematurely.
`
`Applicants also are advised that in the case of inventions made in the United States, the Director of the US PTO must
`issue a license before applicants can apply for a patent in a foreign country. The filing of a U.S. patent application
`serves as a request for a foreign filing license. The application's filing receipt contains further information and
`guidance as to the status of applicant's license for foreign filing.
`
`Applicants may wish to consult the USPTO booklet, "General Information Concerning Patents" (specifically, the
`section entitled "Treaties and Foreign Patents") for more information on timeframes and deadlines for filing foreign
`patent applications. The guide is available either by contacting the USPTO Contact Center at 800-786-9199, or it
`can be viewed on the USPTO website at http://www.uspto.gov/web/offices/pac/doc/general/index.html.
`
`For information on preventing theft of your intellectual property (patents, trademarks and copyrights), you may wish
`to consult the U.S. Government website, http://www.stopfakes.gov. Part of a Department of Commerce initiative,
`this website includes self-help "toolkits" giving innovators guidance on how to protect intellectual property in specific
`countries such as China, Korea and Mexico. For questions regarding patent enforcement issues, applicants may
`call the U.S. Government hotline at 1-866-999-HAL T (1-866-999-4158) .
`
`LICENSE FOR FOREIGN FILING UNDER
`
`Title 35, United States Code, Section 184
`
`Title 37, Code of Federal Regulations, 5.11 & 5.15
`
`GRANTED
`
`The applicant has been granted a license under 35 U.S.C. 184, if the phrase "IF REQUIRED, FOREIGN FILING
`LICENSE GRANTED" followed by a date appears on this form. Such licenses are issued in all applications where
`the conditions for issuance of a license have been met, regardless of whether or not a license may be required as
`page 2 of 3
`
`NUVA_ATEC0022895
`
`EXHIBIT 2 - PAGE 160
`
`

`

`Case 3:18-cv-00347-CAB-MDD Document 304-5 Filed 01/26/21 PageID.28024 Page 20 of
`84
`
`set forth in 37 CFR 5.15. The scope and limitations of this license are set forth in 37 CFR 5.15(a) unless an earlier
`license has been issued under 37 CFR 5.15(b). The license is subject to revocation upon written notification. The
`date indicated is the effective date of the license, unless an earlier license of similar scope has been granted under
`37 CFR 5.13 or 5.14.
`
`This license is to be retained by the licensee and may be used at any time on or after the effective date thereof unless
`it is revoked. This license is automatically transferred to any related applications(s) filed under 37 CFR 1.53(d). This
`license is not retroactive.
`
`The grant of a license does not in any way lessen the responsibility of a licensee for the security of the subject matter
`as imposed by any Government contract or the provisions of existing laws relating to espionage and the national
`security or the export of technical data. Licensees should apprise themselves of current regulations especially with
`respect to certain countries, of other agencies, particularly the Office of Defense Trade Controls, Department of
`State (with respect to Arms, Munitions and Implements of War (22 CFR 121-128)); the Bureau of Industry and
`Security, Department of Commerce (15 CFR parts 730-774); the Office of Foreign AssetsControl, Department of
`Treasury (31 CFR Parts 500+) and the Department of Energy.
`
`NOT GRANTED
`
`No license under 35 U.S.C. 184 has been granted at this time, if the phrase "IF REQUIRED, FOREIGN FILING
`LICENSE GRANTED" DOES NOT appear on this form. Applicant may still petition for a license under 37 CFR 5.12,
`if a license is desired before the expiration of 6 months from the filing date of the application. If 6 months has lapsed
`from the filing date of this application and the licensee has not received any indication of a secrecy order under 35
`U.S.C. 181, the licensee may foreign file the application pursuantto 37 CFR 5.15(b).
`
`Select USA
`
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`for business investment, innovation and commercialization of new technologies. The USA offers tremendous
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