Case 3:18-cv-00347-CAB-MDD Document 320 Filed 04/13/21 PageID.30514 Page 1 of 3
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`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF CALIFORNIA
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`Plaintiff,
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`NUVASIVE, INC., a Delaware
`corporation,
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`v.
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`ALPHATEC HOLDINGS, INC., a
`Delaware corporation and ALPHATEC
`SPINE, INC., a California corporation,
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`Defendants.
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`Case No. 3:18-CV-00347-CAB-MDD
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`ORDER DENYING MOTION
`TO STRIKE INVALIDITY
`CONTENTIONS
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`[Doc. No. 296]
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`Before the Court is plaintiff NuVasive Inc.’s motion to strike the invalidity
`contentions of defendants Alphatec Holdings, Inc. and Alphatec Spine, Inc. (jointly
`“Alphatec”). [Doc. No. 296.] NuVasive alleges Alphatec infringes U.S. Patent No.
`8,187,334 (“the ‘334 patent”) and its continuation U.S. Patent No. 8,361,156 (“the
`‘156 patent”), directed at spinal implants. At the onset of this litigation, Alphatec
`moved for a stay of the proceedings regarding these patents and submitted them to
`the Patent and Trademark Office (“PTO”) for inter partes review (“IPR”). The
`PTO’s final written decision found that Alphatec did not establish its invalidity
`challenges. [Doc. No. 288]
`The stay in the litigation was lifted and Alphatec served updated invalidity
`contentions in accordance with the Court’s scheduling order. In those contentions,
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`Case No. 3:18-CV-00347-CAB-MDD
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`Case 3:18-cv-00347-CAB-MDD Document 320 Filed 04/13/21 PageID.30515 Page 2 of 3
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`Alphatec challenges the validity of the ‘334 patent and ‘156 patent based on 35
`U.S.C. § 102(b), asserting the claimed invention was on sale in the United States
`more than a year before the patents’ earliest filing date.1 Alphatec also challenges
`the validity of these patents based on 35 U.S.C. § 112 assertions of indefiniteness.
`NuVasive moves to strike these invalidity contentions on the grounds that
`Alphatec is statutorily estopped from pursuing these invalidity challenges, as they
`could have been brought before the PTO in the IPR. See 35 U.S.C. § 315(e)
`(petitioner may not assert that the claim is invalid on any ground that the petitioner
`raised or reasonably could have raised during the inter partes review.)
`Regarding the section 102(b) contention, NuVasive argues that a NuVasive
`marketing document identified in Alphatec’s contentions [Doc. No. 296-4] as part
`of its evidence of on-sale bar was easily discoverable and therefore could have been
`included Alphatec’s petition for IPR challenging the validity of these patents.
`Therefore, NuVasive asserts that Alphatec should be estopped from raising this
`defense in this litigation.
`This assertion evoking an equitable right is tainted by NuVasive’s own
`conduct in this litigation. This District’s patent local rules required NuVasive to
`produce with its first preliminary infringement contentions any documents that
`evidence offers to sell or sale of the claimed invention prior to the application date
`for the patents in suit. Patent L.R. 3.2(a). This “easily discoverable” document from
`NuVasive’s own archival website [Doc. No. 296-1, at 13] allegedly evidencing sales
`of the invention more than a year before the patent filing date was not produced by
`NuVasive in this litigation until the close of fact discovery. NuVasive claims that it
`had no institutional knowledge of these earlier sales and therefore never performed
`the simple search that resulted in discovery of this document. But NuVasive argues
`a diligent search by Alphatec would have discovered it before Alphatec filed for IPR
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`1 The parties agree these patents are subject to pre-AIA provisions.
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`-2-
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`Case No. 3:18-CV-00347-CAB-MDD
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`Case 3:18-cv-00347-CAB-MDD Document 320 Filed 04/13/21 PageID.30516 Page 3 of 3
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`and therefore Alphatec should be barred now from raising an on-sale bar defense in
`this litigation. The Court is not persuaded that NuVasive is excused from the same
`level of diligent inquiry regarding first sales of its invention that it seeks to impose
`on Alphatec when NuVasive repeatedly verified that the first sales occurred after the
`filing date but now concedes that evidence of its earlier sales was easily
`discoverable.
`Regardless of whether Alphatec could have discovered NuVasive’s marketing
`materials that support its evidence of sales one year prior to the patents’ filing date,
`NuVasive’s argument fails. IPR is limited to section 102 anticipation and section
`103 obviousness challenges based prior art consisting of patents or printed
`publications. 35 U.S.C. § 311(b). Challenges based on the on-sale bar, patent-
`ineligible subject matter, or on grounds of indefiniteness are properly raised in the
`district court. See Synopsys, Inc. v. Mentor Graphics Corp., 814 F.3d 1309, 1316
`(Fed. Cir. 2016). The cases cited by NuVasive regarding printed publications
`disclosing prior art products or systems for purposes of anticipation or obviousness
`challenges that were or could have been offered in an IPR subsequently estopping
`those invalidity challenges when a party seeks to substitute the product in lieu of the
`publication at trial are not on point. NuVasive as provided no authority that Alphatec
`could have raised an on-sale bar challenge or an indefiniteness challenge to the
`patents in IPR.
`Statutory estoppel does not apply to either the on-sale bar or indefiniteness
`challenges asserted by Alphatec. The motion is DENIED.
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`It is SO ORDERED.
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`Dated: April 13, 2021
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`-3-
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