Case 3:18-cv-00347-CAB-MDD Document 390-2 Filed 03/04/22 PageID.34742 Page 1 of 7
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`EXHIBIT A TO DECLARATION OF
`WENDY L. DEVINE IN SUPPORT OF BENCH BRIEF
`RE NEXUS AND XLIF
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`EXHIBIT A TO DECLARATION OF
`WENDY L. DEVINE IN SUPPORT OF BENCH BRIEF
`RE NEXUS AND XLIF
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`Case 3:18-cv-00347-CAB-MDD Document 390-2 Filed 03/04/22 PageID.34743 Page 2 of 7
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`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF CALIFORNIA
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`BEFORE HONORABLE CATHY ANN BENCIVENGO, JUDGE PRESIDING
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`NUVASIVE, INC., a Delaware )
`Corporation, )
` )
` Plaintiff, ) CASE NO. 18CV0347-CAB-MDD
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` vs. ) SAN DIEGO, CALIFORNIA
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`ALPHATEC HOLDINGS, INC., a ) MONDAY, FEBRUARY 28, 2022
`Delaware Corporation, and )
`ALPHATEC SPINE, INC., a )
`California corporation, )
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` Defendants. )
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`STENOGRAPHIC COURT REPORTER'S TRANSCRIPT OF PROCEEDINGS
`STATUS HEARING
`PAGES 1-56
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`P r o c e e d i n g s r e p o r t e d b y s t e n o g r a p h y , t r a n s c r i p t p r o d u c e d b y C A T
`s o f t w a r e
`____________________________________________________________
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`M a u r a l e e R a m i r e z , R P R , C S R N o . 1 1 6 7 4
` F e d e r a l O f f i c i a l S t e n o g r a p h i c C o u r t R e p o r t e r
`o r d e r t r a n s c r i p t @ g m a i l . c o m
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`Exhibit A, Page 3 of 8
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`Case 3:18-cv-00347-CAB-MDD Document 390-2 Filed 03/04/22 PageID.34744 Page 3 of 7
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`ATTORNEY WICKRAMASEKERA: I think we have copies of
`the slides to give you so that you can see. I'll have my
`colleague pass that up to you.
`THE COURT: You know you only have 20 hours to put
`your case on and that includes your opening statement. Okay.
`ATTORNEY WICKRAMASEKERA: Your Honor, this is an
`issue, I'm going direct your attention to one particular slide,
`it permeates throughout the opening. I'm going to point your
`attention to slide 28, and it should be "The Benefits of XLIF"
`slide if we have the same numbering.
`THE COURT: Yes.
`ATTORNEY WICKRAMASEKERA: Okay. There's also a few
`slides before that that show neuromonitoring and
`neuromonitoring system. NuVasive's neuromonitoring system is
`called Neurovision. And the benefits of XLIF that NuVasive is
`essentially presenting in its opening as if XLIF is the claimed
`invention so that for purposes of invalidity, we should be
`thinking about XLIF and skepticism of XLIF, and that's wrong
`under the law, and so we think that that's highly misleading to
`the jury and it's wrong.
`And I'll read, Your Honor, from -- so the key issue
`here, Your Honor, I don't think there is any dispute from the
`other side that Neurovision, the Neurovision system
`neuromonitoring system is not required in the claims. When
`Your Honor issued her summary judgment order against Alphatec
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`Exhibit A, Page 4 of 8
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`for the '832 patent, no neuromonitoring was accused. They
`never proved anything with respect to neuromonitoring. They've
`never accused any neuromonitoring. However, what they are
`trying to do in this case is make XLIF be the issue for
`invalidity. So they're pointing to skepticism of XLIF in their
`slides. They're presenting slide after slide after slide on
`the benefits that flow from the Neurovision component of XLIF.
`And I just want to read for Your Honor from Teva v Eli
`Lilly. This is a 2021 case from the Federal Circuit. And the
`Federal Circuit says that as to unclaimed features and whether
`those are relevant for secondary considerations, the Court said
`"we have never held that the existence -- the existence of one
`or more unclaimed features standing alone means nexus may not
`be present."
`Okay. The Court went on to say "however, if the
`unclaimed features amount to nothing more than additional
`insignificant features presuming nexus may nevertheless be
`appropriate."
`That's not the situation we have here. What we have
`here is what the Federal Circuit said is not okay for nexus.
`The Federal Circuit says "toward the other end of the spectrum,
`we have said that a patent claim is not coextensive with a
`product that includes a critical unclaimed feature that is
`claimed by a different patent and that materially impacts the
`product's functionality."
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`Exhibit A, Page 5 of 8
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`They have patents to Neurovision. Neurovision is
`required for XLIF. It is the very thing that they tell as
`being what resulted in the safety of the XLIF.
`This case is not about XLIF. This case about the
`claims of their asserted patents. The claims of their asserted
`patents are not the same as XLIF. And so we think it's
`misleading to the jury. We think there should be no dispute
`that the Neurovision and that XLIF is not the same as the
`claimed invention because we don't have it. They never accused
`us of having it. They didn't get a summary judgment order from
`Your Honor on the basis of proving that we had neuromonitoring
`and that we had their neuromonitoring. So that's the issue
`that we have.
`We think that commercial success, skepticism, all of
`that must be tied to what the Federal Circuit said is a product
`that is the invention must coextensive. If it has unclaimed
`features that are critical, it's not coextensive. That's the
`issue we have with this presentation. With that, I think if
`Your Honor has any question for me?
`THE COURT: Well, I understand fundamentally your
`argument, and we discussed this in the summary judgment that
`the neuromonitoring aspect of the claimed apparatus is that it
`does have the capability for neuromonitoring, but that it
`didn't have to incorporate neuromonitoring in the apparatus
`claim, just the ability to do that. That's all fine.
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`Exhibit A, Page 6 of 8
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`I'm looking at the slide that you've pointed my
`attention to, and I'm not quite sure the jump you're making is
`it because it's called "The Benefits of XLIF," or as it were
`instead the benefits of the claimed apparatus might be more
`appropriate because I don't see anything in this -- in bullet
`points that actually says anything about neuromonitoring.
`ATTORNEY WICKRAMASEKERA: So what they're going to
`present is that the safe and reproducible aspect of the XLIF
`was the result of neuromonitoring. Now if the slide didn't say
`"benefits of XLIF" and was benefits of the claimed inventions
`and they're going to prove that and it relates to the same
`components that they've accused us of infringing, that's a
`different story. But they have other slides that talk about
`skepticism of XLIF. Their commercial success is tied to
`skepticism of XLIF, and that's the issue. It can't be under
`the law because there is no dispute XLIF requires Neurovision.
`Neurovision is part of XLIF.
`And according to the Federal Circuit, and I can show
`Your Honor the language here on the Elmo if I can figure out
`how to... So here is the Court's language. "A patent claim is
`not coextensive with a product that includes a critical
`unclaimed feature that is claimed by a different patent and a
`materially impact the product's functionality."
`I don't think there can be any dispute that
`Neurovision materially impacts the product's functionality.
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`Exhibit A, Page 7 of 8
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`It's shown in their slides. If you look at slide 26, slide
`27 -- I'm sorry. Slide 24, 25, 26, they show the computer, the
`Neurovision computer. NuVasive has claimed that Neurovision is
`not just regular neuromonitoring. It's what enabled XLIF to
`succeed. And that's the problem, Your Honor. That's not
`coextensive with claims. If they're going to try to prove that
`we infringed because we have I computer like that, that would
`be different, but that's not what they're doing. So
`infringement of invalidity must be judged by the same
`standards.
`THE COURT: All right. Thank you.
`ATTORNEY FODEMAN: Judge, I can respond briefly to
`that? This is the first I'm hearing that this case is not
`about XLIF. If that's the problem, then that's a surprise to
`me. I will make clear to you, Judge, that we have no intention
`of saying that this case is about Neurovision or neuromonitor--
`Neurovision. That's not what we're doing. The fact of the
`matter is that all of the patents at issue in this case involve
`neuromonitoring. They call out electrodes and dilators,
`dilators that are used to find the nerves using electrodes. So
`that is part of the product, that is part of the what is at
`issue in the case, and one the aspects of the claimed
`invention.
`So this product is used to perform XLIF. That is what
`its purpose is. The idea that we can't talk about the benefits
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`Exhibit A, Page 8 of 8
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