Case 3:18-cv-00347-CAB-MDD Document 322 Filed 04/22/21 PageID.30524 Page 1 of 6
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`NIMALKA R. WICKRAMASEKERA (SBN: 268518)
`nwickramasekera@winston.com
`DAVID P. DALKE (SBN: 218161)
`ddalke@winston.com
`LEV TSUKERMAN (SBN: 319184)
`ltsukerman@winston.com
`WILLIAM M. WARDLAW (SBN: 328555)
`wwardlaw@winston.com
`WINSTON & STRAWN LLP
`333 S. Grand Avenue
`Los Angeles, CA 90071-1543
`Telephone: (213) 615-1700
`Facsimile:
`(213) 615-1750
`
`GEORGE C. LOMBARDI (pro hac vice)
`glombardi@winston.com
`BRIAN J. NISBET (pro hac vice)
`bnisbet@winston.com
`SARANYA RAGHAVAN (pro hac vice)
`sraghavan@winston.com
`WINSTON & STRAWN LLP
`35 West Wacker Drive
`Chicago, IL 60601-9703
`Telephone: (312) 558-5600
`Facsimile: (312) 558-5700
`
`CORINNE STONE HOCKMAN (pro hac vice)
`chockman@winston.com
`WINSTON & STRAWN LLP
`800 Capitol Street, Suite 2400
`Houston, TX 77002-2529
`Telephone: (713) 651-2600
`Facsimile: (713) 651-2700
`
`Attorneys for Defendants
`ALPHATEC HOLDINGS, INC. AND ALPHATEC SPINE, INC.
`
`
`
`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF CALIFORNIA - SAN DIEGO DIVISION
`Case No. 18-CV-00347-CAB-MDD
`NUVASIVE, INC., a Delaware
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`corporation,
`DEFENDANTS’ MEMORANDUM ON
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`PRIORITY DATE DETERMINATION
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`v.
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`ALPHATEC HOLDINGS, INC., a
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`Delaware corporation and
`Judge: Hon. Cathy Ann Bencivengo
`ALPHATEC SPINE, INC., a
`Courtroom: 4C
`California corporation,
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`Defendants.
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`Plaintiff,
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` DEFENDANTS’ MEMORANDUM ON
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`PRIORITY DATE DETERMINATION
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`CASE NO. 18-CV-00347-CAB-MDD
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`At the April 8, 2021 status conference, the Court invited the parties to submit a
`bench memorandum on whether the priority date of the implant patents, U.S. Patent
`Nos. 8,187,334 and 8,361,156, is a factual matter for the jury to decide at trial, or
`whether it is a legal question that can be answered in advance by the Court (like claim
`construction). Status Conf. Tr., 7:17–8:14, Apr. 8, 2021. Alphatec submits that,
`according to Federal Circuit authority, factual disputes regarding priority are to be
`resolved by a jury at trial.
`“[A] patent application is entitled to the benefit of the filing date of an earlier
`filed application only if the disclosure of the earlier application provides support for the
`claims of the later application, as required by 35 U.S.C. § 112.” PowerOasis, Inc. v.
`T-Mobile USA, Inc., 522 F.3d 1299, 1306 (Fed. Cir. 2008); New Railhead Mfg., L.L.C.
`v. Vermeer Mfg. Co., 298 F.3d 1290, 1294 (Fed. Cir. 2002) (finding that to claim priority
`to a provisional application, “the specification of the provisional must contain a written
`description of the invention and the manner and process of making and using it, in such
`full, clear, concise, and exact terms, to enable an ordinarily skilled artisan to practice
`the invention claimed in the non-provisional application”). Compliance with the written
`description requirement in the context of a determination of priority is a question of fact
`properly resolved by the jury at trial. E.g., Cordis Corp. v. Bos. Sci. Corp., 561 F.3d
`1319, 1331–32 (Fed. Cir. 2009) (in assessing the jury’s determination of priority, the
`Court wrote “[t]he written description requirement of 35 U.S.C. § 112 ¶ 1 is a question
`of fact, and we review a jury’s findings of fact relating to the written description
`requirement for substantial evidence”); Viasat, Inc. v. Space Sys./Loral, Inc., No.
`312CV00260HWVG, 2014 WL 11865305, at *5 (S.D. Cal. Aug. 8, 2014) (finding that
`“[w]hether a description in an earlier filing teaches sufficient information to a person of
`ordinary skill in the art such that the priority date of the earlier filing should apply is a
`question of fact” and that “[a]fter hearing evidence from both parties’ experts, the jury
`determined that ViaSat could rely on the earlier filing date”).
`At least two district court cases have directly addressed this same issue and
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`DEFENDANTS’ MEMORANDUM ON
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`confirmed that determining the priority date is a question of fact for a jury. For example,
`in Rivera v. Remington Designs LLC, the court stated as follows:
`“At the hearing, Defendants continued to assert that the question of
`patent priority date is a matter of law that should be decided prior to
`trial. This argument is unpersuasive. See, e.g., Uniloc USA, Inc. v. Sega
`of Am., Inc., No. 2016-2000, 2017 WL 4772565, at *3 (Fed. Cir. Oct.
`23, 2017) (Patent Trial and Appeal Board acted as law and fact finder in
`conducting priority analysis and Federal Circuit concluded the Board’s
`determination was supported by substantial evidence); Ariad Pharm.,
`Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1355 (Fed. Cir. 2010) (where the
`parties disputed the priority date on the basis of lack of written
`description, ‘in a detailed and well-crafted special verdict form, the jury
`was asked to choose between the two possible dates.’); Tech. Licensing
`Corp. v. Videotek, Inc., 545 F.3d 1316, 1331–32 (Fed. Cir. 2008) (‘the
`prior application must ‘convey with reasonable clarity to those skilled
`in the art that, as of the filing date sought, [the inventor] was in
`possession of the invention.’ Compliance with the written description
`requirement is a question of fact, which, following a bench trial, we
`review for clear error.’ (internal citations omitted).); PowerOasis, Inc.
`v. T-Mobile USA, Inc., 522 F.3d 1299, 1307 (Fed. Cir. 2008) (analyzing
`written description in the context of priority applications and concluding
`‘[c]ompliance with the written description requirement is a question of
`fact but is amenable to summary judgment in cases where no reasonable
`fact finder could return a verdict for the non-moving party.’).”
`
`No. LACV1604676JAKSSX, 2018 WL 8693814, at *12 (C.D. Cal. Aug. 28, 2018).
`Similarly, in Riddell, Inc. v. Kranos Corp., after identifying a dispute of material
`fact as to the whether the provisional application disclosed the claimed features of the
`asserted patent, the court stated that “[s]hould the parties proceed to trial, the applicable
`priority date will be decided by the jury.” No. 16 C 4496, 2017 WL 2349714, at *5
`(N.D. Ill. May 30, 2017) (citing Leader Techs., Inc. v. Facebook, Inc., 678 F.3d 1300
`(Fed. Cir. 2012) (noting a jury had determined patent’s priority date which was not
`challenged on appeal), Martek Biosciences Corp. v. Nutrinova, Inc., 579 F.3d 1363
`(Fed. Cir. 2009) (reviewing a jury’s determination of a patent’s priority date), Cordis
`Corp. v. Boston Sci. Corp., 561 F.3d 1319, 1331–32 (Fed. Cir. 2009) (noting that the
`written description requirement is a question of fact for the jury), Synthes USA, LLC v.
`Spinal Kinetics, Inc., 734 F.3d 1332, 1341 (Fed. Cir. 2013) (reviewing a jury’s
`determination of invalidity for lack of adequate written description)).
`NuVasive, in its motion for summary judgment, recognized that the priority date
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`PRIORITY DATE DETERMINATION
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`determination is normally a question of fact to be resolved by the jury. Doc. No. 303-
`1 at 13 (quoting ScriptPro LLC v. Innovation Assocs., Inc., 833 F.3d 1336, 1340 (Fed.
`Cir. 2016)) (“Compliance with the written description requirement is a question of fact
`but is amenable to summary judgment in cases where no reasonable fact finder could
`return a verdict for the non-moving party.”). In that submission, NuVasive argued the
`Court could decide the issue because there are no factual disputes concerning whether
`the written description of the provisional application adequately supports the inventions
`of the implant patents and “no reasonable fact finder could return a verdict for
`[Alphatec.]” Id. at 13, 35–36. Alphatec opposed, pointing to numerous factual
`disputes, Doc. No. 306 at 24–32, as evidenced by the parties’ experts presenting
`conflicting opinions as to whether the provisional application adequately supports the
`invention of the implant patents. See Viasat, Inc. v. Space Sys./loral, Inc., No. 3:12-
`CV-00260-H(WVG), 2013 WL 12061802, at *3 (S.D. Cal. Oct. 29, 2013) (denying
`summary judgment on priority date “because the parties present conflicting expert
`testimony on issues of fact material to this motion”); Odyssey Wireless, Inc. v. Apple
`Inc., No. 15-CV-01735-H-RBB, 2016 WL 7634450, at *5–6 (S.D. Cal. Sept. 13, 2016)
`(denying summary judgment when competing expert opinions created factual dispute
`on whether provisional application disclosed claimed limitations).
`Because the facts regarding NuVasive’s entitlement to the priority date of the
`provisional application are hotly disputed between the parties, they should be resolved
`by a jury at trial. See In re Katz Interactive Call Processing Pat. Litig., No.
`07ML01816BRGKFFMX, 2008 WL 11333692, at *7 (C.D. Cal. Aug. 4, 2008) (“[T]his
`Court finds that there are factual issues for a jury to decide regarding the priority date
`of claim 57.”); Riddell, 2017 WL 2349714, at *5 (stating “[s]hould the parties proceed
`to trial, the applicable priority date will be decided by the jury” after concluding a
`genuine dispute of fact exists “regarding whether the asserted offset band claims were
`disclosed by the provisional application”); see also Rivera, 2018 WL 8693814, at *12
`(refusing to decide priority before trial as it was not a “matter of law”).
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`Dated: April 22, 2021
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`WINSTON & STRAWN LLP
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`
`
`By: /s/ Nimalka R. Wickramasekera
`NIMALKA R. WICKRAMASEKERA
`
`Attorneys for Defendants
`ALPHATEC HOLDINGS, INC. AND
`ALPHATEC SPINE, INC.
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`CERTIFICATE OF SERVICE
`I hereby certify that the foregoing document was filed with the Court’s CM/ECF
`system which will provide notice to all counsel deemed to have consented to electronic
`service. All other counsel of record not deemed to have consented to electronic service
`were served with a true and correct copy of the foregoing document by mail on this day.
`I declare under penalty of perjury under the Laws of the United States of America
`that the above is true and correct. Executed this 22nd day of April 2021 at Los Angeles,
`California.
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`Dated: April 22, 2021
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`WINSTON& STRAWN LLP
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`By: /s/ Nimalka R. Wickramasekera
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`NIMALKA R. WICKRAMASEKERA
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