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`UNITED STATES DISTRICT COURT
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`SOUTHERN DISTRICT OF CALIFORNIA
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`NUVASIVE, INC.,
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`v.
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`ALPHATEC HOLDINGS, INC.,
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`Plaintiff,
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` Case No.: 3:18-CV-347-CAB-MDD
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`ORDER DENYING MOTION FOR
`PRELIMINARY INJUNCTION
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`
`Defendant.
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`[Doc. No. 37]
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`On February 13, 2018, Plaintiff NuVasive, Inc., filed a complaint alleging patent
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`infringement against Defendants Alphatec Holdings, Inc., and Alphatec Spine, Inc.,
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`(jointly “Alphatec”). [Doc. No. 1.] The complaint asserts infringement of six patents: U.S.
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`Patent No. 7,819,801; U.S. Patent No. 8,335,780; U.S. Patent No. 8,439,832; U.S. Patent
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`No. 9,833,227; U.S. Patent No. 8,735,270; and U.S. Patent No. 8,361,156.1 The ‘801, ’780,
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`‘832, ‘227 and ‘270 patents are directed toward systems and methods for accessing a
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`targeted disc space through a lateral, trans-psoas path (“the Access Platform patents”). The
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`‘156 patent describes a spinal implant that is introduced into the disc space of a patient’s
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`spine from a lateral approach (“the Implant patent”). [Doc. No. 38, at 8-9.]2
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`On April 5, 2018, NuVasive filed a motion for preliminary injunction. [Doc. No. 37;
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`Doc. No. 38 (sealed version).] NuVasive seeks to enjoin sales and use of the accused
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`
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`1 The complaint also asserted infringement of two design patents, but the Court granted Alphatec’s motion
`to dismiss those claims with prejudice. [Doc. No. 45.]
`2 Document numbers and page references are to those assigned by CM/ECF for the docket entry.
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`Case 3:18-cv-00347-CAB-MDD Document 94 Filed 07/10/18 PageID.11889 Page 2 of 19
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`Battalion™ Lateral System, which includes the Squadron™ Lateral Retractor, and the
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`Battalion™ Lateral Spacer, during the pendency of the litigation. The parties filed a joint
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`request on April 12, 2018, to extend the briefing schedule to allow for discovery. [Doc.
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`No. 39.] Alphatec filed its opposition on May 17, 2018. [Doc. No. 49, Doc. No. 53 (sealed
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`version).] NuVasive filed a reply on June 14, 2018. [Doc. No. 77, Doc. No. 79 (sealed
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`version).] A hearing on the motion was held on June 21, 2018. [Doc. No. 87.] For the
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`reasons set forth on the record at the hearing and as discussed below, the motion is
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`DENIED.
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`I.
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`Background
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`NuVasive is a medical device company with over $1 billion in annual revenues. In
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`2003, NuVasive launched a minimally-invasive, lateral access surgical procedure for spinal
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`surgery, known as XLIF. The patented procedures and tools utilized in XLIF surgery,
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`including the MaXcess® retractor and CoRoent® XLIF implants, allow for a lateral
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`approach to a patient’s targeted spinal disc space through the psoas muscle and for the
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`delivery of a large, oversized implant for spinal fusion. [Doc. No. 38, at 6-7.] For over a
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`decade, NuVasive has developed, patented and marketed the XLIF procedure and
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`components. This product line now accounts for conservatively $250-300 million of
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`NuVasive’s annual revenue. [Id., at 8.]
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`In approximately July 2014, Alphatec began developing a competing lateral access
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`surgical procedure that became known as its Battalion Lateral System. On April 5, 2016,
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`Alphatec submitted the accused components and procedure for FDA approval, which it
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`received on September 8, 2016. On February 14, 2017, Alphatec made its first sale and
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`public surgical use of the accused components. [Doc. No. 79-4, at 7.] In April 2017,
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`Alphatec launched a limited release of the Battalion Lateral System. Alphatec made a full
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`launch in October 2017. [Doc. No. 1, ¶ 43.] NuVasive now seeks to enjoin Alphatec from
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`making, using, selling, offering to sell, or importing into the United States the components
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`of Alphatec’s Battalion Lateral System, specifically the Squadron Lateral Retractor,
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`Dilators, K-Wire, Intradiscal Shim and Shim Inserter Tool, 4th Blade and Light
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`Cable/Light Source Connector; and Alphatec’s Battalion Lateral Spacer.
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`II. Legal Standard
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`The grant or denial of a preliminary injunction under 35 U.S.C. § 283 is within the
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`sound discretion of the district court. Amazon.com, Inc. v. Barnesandnoble.com, Inc., 239
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`F.3d 1343, 1350 (Fed. Cir. 2001). “A preliminary injunction is an extraordinary remedy
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`never awarded as a matter of right.” Winter v. Natural Resources Defense Council, 555
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`U.S. 7, 24 (2008). “A plaintiff seeking a preliminary injunction must establish that [it] is
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`likely to succeed on the merits, that [it] is likely to suffer irreparable harm in the absence
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`of preliminary relief, that the balance of equities tips in [its] favor, and that an injunction
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`is in the public interest.” Id. at 20. The district court must weigh and measure each factor
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`against the other factors and against the form and magnitude of the relief requested. “[A]
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`movant cannot be granted a preliminary injunction unless it establishes both of the first two
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`factors, i.e. likelihood of success on the merits and irreparable harm.” Amazon.com, 239
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`F.3d at 1350.
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`III. Likelihood Of Success On The Merits
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`To demonstrate a likelihood of success on the merits, the movant must show that it
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`will likely prove infringement of one or more claims of the asserted patents and that at least
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`one of the same allegedly infringed claims will also likely withstand the validity challenges
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`presented by the accused infringer. See Amazon.com, 239 F.3d at 1350-51 (holding that if
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`the non-movant raises a substantial question concerning either infringement or validity that
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`the patentee cannot prove “lacks substantial merit,” the preliminary injunction should not
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`issue). Thus, in considering NuVasive’s motion, the Court must assess infringement claims
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`made by NuVasive as well as any invalidity arguments made by Alphatec.
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`A.
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`Infringement
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`The burden lies with the patentee to establish that the accused product infringes by
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`a preponderance of the evidence. An infringement analysis involves two steps. First, the
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`claim scope must be determined. Second, the properly construed claim is compared with
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`the accused devices to determine whether all the claim limitations are present either
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`literally or by a substantial equivalent. Amazon.com, 239 F.3d at 1351.
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`NuVasive asserts the Access Platform patents against Alphatec’s Battalion Lateral
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`System and the Implant patent against the Battalion Lateral Spacer. A demonstration of
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`the likelihood of a finding of infringement as to an asserted independent claim of any of
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`the following patents could support NuVasive’s request to enjoin the sale of the Battalion
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`Lateral System: the ‘801 Patent (System Claim 1); the ‘780 Patent (System Claim 21); the
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`‘832 Patent (System Claim 1 or Method Claim 12); and the ‘227 Patent (Method Claims 1
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`or 16).3 In response to the Court’s request that NuVasive select the claim it considers best
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`demonstrates its burden on infringement and validity [Doc. No. 86], NuVasive elected to
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`proceed at argument on Claim 1 of the’832 patent and Claim 1 of the ‘156 patent.
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`Claim 1 of the ‘832 Patent
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`The ‘832 Patent is for a Surgical Access System and Related Methods. [Doc No. 1-
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`8, at 2-34.] It is directed at a system for establishing an operative corridor to the spine
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`through the psoas muscle. Claim 1 claims:
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`1. A system for forming an operating corridor to a lumbar spine, comprising:
`a distraction assembly to create a tissue distraction corridor in a lateral, trans-
`psoas path to a lumbar spine, wherein said distraction assembly includes an
`elongate inner element and a plurality of dilators, the plurality of dilators being
`configured to sequentially advance along the lateral, trans-psoas path to the
`lumber spine, the elongate inner element being positionable in a lumen of an
`initial dilator of the plurality of dilators, wherein at least one instrument from the
`group consisting of said elongate inner element and said dilators includes a
`stimulation electrode that outputs electrical stimulation for nerve monitoring
`when the at least one instrument is positioned in the psoas muscle;
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`3 The asserted claims of ‘270 Patent allegedly cover the accused Alphatec Intradiscal Shim device. [Doc.
`No. 1-12, at 32, Col. 14:30-61.] A finding of a likelihood of infringement of the asserted claims would not
`support the request to enjoin sales or use of the whole Battalion Lateral System or the Squadron Retractor,
`just that component.
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`a three-bladed retractor tool slidable over an exterior of an outermost sequential
`dilator of the dilator system toward the targeted spinal disc along the lateral,
`trans-psoas path, the three-bladed retractor assembly including:
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`a blade-holder assembly, and
`a posterior-most retractor blade, a cephalad-most retractor blade, and a
`caudal-most retractor blade that extend from the blade-holder assembly,
`wherein the posterior-most, cephalad-most, and caudal-most retractor blades
`are slideably advanced over the exterior of the outermost sequential dilator
`while in a first position, wherein the blade-holder assembly is adjustable to
`move the posterior-most, cephalad-most, and caudal-most retractor blades to
`a second position in which the cephalad-most and caudal-most retractor
`blades are spaced apart from the posterior-most retractor blade to define an
`operative corridor,
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`wherein three-bladed retractor tool is configured to define the operative corridor
`along the lateral, trans-psoas path to the lumber spine in which a space extending
`to the targeted spinal disc between the posterior-most, cephalad-most, and
`caudal-most refractor blades is dimensioned so as to pass an implant through the
`operative corridor along the lateral, trans-psoas path to the lumbar spine.
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`[Doc. No. 1-8, at 31-32, Col. 14:31- Col. 15:3.]
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` NuVasive alleges that the limitations of Claim 1 of the ‘832 patent read on
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`Alphatec’s Battalion Lateral System. See Declaration of Jim A. Youseff, M.D., ¶¶ 171-
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`191, and Appendix C. [Doc. No. 37-45, at 70-74; Doc. No. 37-71, at 2-21.] Referencing
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`the Alphatec Battalion Lateral Lumbar Spacer System Thoracolumbar Surgical Technique
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`Guide and devices disclosed therein, [Doc. No. 1-38, at 2-30], NuVasive demonstrated that
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`the Battalion Lateral System: (1) forms an operative corridor to the patient’s lumbar spine
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`through the psoas muscle; (2) uses an initial dilator with neuromonitoring to traverse the
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`psoas to the disc space; (3) introduces a K-wire (elongate inner element) through the initial
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`dilator into the disc space; (4) introduces a secondary sequential dilator over the initial
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`dilator [Id., at 7-9]; and (5) introduces a retractor, called the Squadron Retractor, over the
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`second dilator and moves it flush to the disc space [Id., at 11.] The Squadron Retractor is
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`a tool with a blade-holder assembly and three blades, center, right and left. [Id., at 15, 17,
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`30.] The right and left blades can be moved cranially and caudally to open access to the
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`disc space to introduce the implant. [Id., at 16-17, 21, 25.]
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` In response, Alphatec contends that NuVasive cannot demonstrate that the accused
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`system infringes Claim 1 of the ‘832 patent because the Battalion Lateral System does not
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`meet the limitation of “a distraction assembly” that includes an elongate inner element and
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`plurality of dilators. [Doc. No. 53, at 13.] Alphatec’s expert, Dr. Barton Sachs, opines that
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`“assembly” in this claim should be construed as pre-assembled components that allow the
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`parts to be introduced simultaneously. See Declaration of Barton L. Sachs, M.D., ¶¶ 122-
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`125. [Doc. No. 49-5, at 45-46.] Dr. Sachs points out that in connection with the
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`reexamination of the ‘801 patent, NuVasive’s expert Dr. Youssef distinguished prior art by
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`defining the “handle assembly” of that invention as pre-assembled components that
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`introduce the parts of the assembly simultaneously. [Doc. No. 49-5, ¶ 124.]
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`The Court is not persuaded, at least for the purposes of the instant motion, that the
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`limitation of a distraction assembly in the ‘832 patent must be construed as a “pre-
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`assembled” set of components for simultaneous introduction. The distraction assembly is
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`a collection of components, including the elongate inner element and a plurality of dilators.
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`The claim language states that the plurality of dilators included in the assembly are
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`sequentially advanced along the trans-psoas path, indicating they are introduced in
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`sequence not simultaneously. [Doc. No. 1-8, Col. 14:35-38.] Neither the claim language
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`nor the specification support a construction that this assembly of components is
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`preassembled to be introduced into the patient simultaneously.
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` Alphatec asserted no other challenge to NuVasive’s infringement analysis of Claim
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`1 of the ‘832 patent. Thus, for purposes of this motion, the Court finds that NuVasive has
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`demonstrated a likelihood of success with regard to its allegation that the Battalion Lateral
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`System and Squadron Retractor infringe Claim 1 of the ‘832 Patent.
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`Claim 1 of the ‘156 Patent
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`According to the abstract, the ‘156 Patent is a “system and method for spinal fusion
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`comprising a spinal fusion implant of non-bone construction releasably coupled to an
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`insertion instrument dimensioned to introduce the spinal fusion implant into any of a
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`variety of spinal target sites. [Doc. No. 1-14, at 2.] Claim 1 claims:
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`1. A spinal fusion implant of non-bone construction positionable within an
`interbody space between a first vertebra and a second vertebra, said implant
`comprising:
`an upper surface including anti-migration elements to contact said first vertebra
`when said implant is positioned within the interbody space, a lower surface
`including anti-migration elements to contact said second vertebra when said
`implant is positioned within the interbody space, a distal wall, a proximal wall, a
`first sidewall, and a second sidewall generally opposite from the first side wall,
`wherein said distal wall, proximal wall, first sidewall and second sidewall
`comprise a radiolucent material;
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`wherein said implant has a longitudinal length extending from a proximal end of
`said proximal wall to a distal end of said distal wall, said implant has a maximum
`lateral width extending from said first sidewall to said second sidewall along a
`medial plane that is generally perpendicular to said longitudinal length, and said
`longitudinal length is greater than said maximum lateral width;
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`at least a first fusion aperture extending through said upper surface and lower
`surface and configured to permit bond growth between the first vertebra and the
`second vertebra when said implant is positioned within the interbody space, said
`first fusion aperture having: a longitudinal aperture length extending generally
`parallel to the longitudinal length of said implant, and a lateral aperture width
`extending between said first sidewall and said second sidewall, wherein the
`longitudinal aperture length is greater than the lateral aperture width; and
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`at least first and second radiopaque markers oriented generally parallel to a height
`of the implant, wherein said first radiopaque marker extends into said first
`sidewall at a position proximate to said medial plane, and said second radiopaque
`marker extends into said second sidewall at a position proximate to said medial
`plane.
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`[Doc. No. 1-14, at 30, Col. 12:32-67.]
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`
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`NuVasive alleges that the limitations of claim 1 read on the Battalion Lateral Spacer.
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`[Doc. No. 38, at 16-17]. See Youseff Declaration ¶¶ 317-334, and Appendix F. [Doc. No.
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`37-45, at 103-108; Doc. No. 37-74, at 2-24.] The Battalion Lateral Spacer is a spinal fusion
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`implant made of non-bone material with anti-migration ridges on both sides of the implant.
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`[Doc. No. 1-39, at 2.] It is manufactured from a radiolucent material, poly-ether-ether–
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`ketone (“PEEK”). [Doc. No. 1-38, at 29.] It has a distal wall generally opposite a proximal
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`wall and a first sidewall generally opposite a second sidewall. The longitudinal length from
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`proximal wall to the distal wall is greater than the maximum lateral width from the first
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`sidewall to the second sidewall. [Doc No. 1-39, at 2.] It has a first fusion aperture extending
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`through the upper and lower surface, having a longitudinal length extending generally
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`parallel to the longitudinal length of the implant and a width extending between the first
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`and second sidewall, the length of the aperture being greater than the width. [Id.] The
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`Battalion Lateral Spacer has radiopaque markers extending into the first and second
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`sidewalls at a position proximate to the medial plane (i.e., near the middle of the implant).
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`[Doc. No. 37-47, at 8.]
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` Alphatec did not challenge Dr. Youseff’s infringement analysis of Claim 1 of the
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`‘156 patent in its opposition brief. [Doc. No. 53, at 15.] Consequently, for purposes of
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`this motion, the Court finds that NuVasive has demonstrated a likelihood of success with
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`regard to its allegation the Battalion Lateral Spacer infringes this claim.
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`B.
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` Validity
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` Having established a likelihood of success on the merits with regard to infringement
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`of Claim 1 of the ‘832 patent and Claim 1 of the ‘156 patent, NuVasive must also
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`demonstrate that those claims are likely to withstand the validity challenges presented by
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`Alphatec. Amazon.com, 239 F.3d at 1350-51. In the context of a motion for preliminary
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`injunction, the patentee must present a clear case supporting the validity of the patent in
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`suit. Id. at 1359 (“for example by showing that the patent in suit had successfully withstood
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`previous validity challenges in other proceedings”).
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` In resisting a preliminary injunction, “one need not make out a case of actual
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`invalidity. Vulnerability is the issue at the preliminary injunction stage, while validity is
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`the issue at trial.” Id. “Validity challenges during preliminary injunction proceedings can
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`be successful, that is, they may raise substantial questions of invalidity, on evidence that
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`would not suffice to support a judgment at trial.” Id. at 1358.
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`‘832 Patent
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`The ‘832 patent is a continuation of U.S. Patent 7,691,057. [Doc.No.1-8, at 1.] The
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`‘057 Patent was the subject of an inter partes reexamination (“IPR”), and in its Final
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`Decision on Appeal, the Patent Trial and Appeal Board (“PTAB”) found method claims
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`17-22 and 24-27 unpatentable over certain prior art. [Doc. No. 49-5, at 121, ¶ 423; Doc.
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`No. 49-63, at 7.] While an appeal of the PTAB’s final decision was pending before the
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`Federal Circuit, NuVasive and the third party that brought the IPR reached a settlement.
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`As a result, the PTAB’s determination of invalidity was neither affirmed nor reversed.
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`Alphatec’s expert, Dr. Sachs, submitted an analysis demonstrating the similarities
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`between claim 1 of the ‘832 patent and the claims of the ‘057 patent that were found to be
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`obvious (claims 17, 18 and 27) by the PTAB. [Doc. No. 49-5, at 122-24, ¶ 427.] In light
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`of the PTAB finding of obviousness of the method claims of the ‘057 and those claims’
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`similarity to claim 1 of the ‘832 patent, a continuation of the ‘057 patent, Alphatec has
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`raised substantial question of invalidity as to claim 1 of the ‘832 patent.
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`NuVasive offers no specific response to the challenge to the validity of the ‘832
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`patent. [Doc. No. 79, at 13-14.] NuVasive’s general arguments that all Alphatec’s
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`invalidity arguments are based on hindsight and do not discuss the objective indicia of non-
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`obviousness4 are insufficient to present a clear case supporting validity, as is NuVasive’s
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`burden here. Consequently, for purposes of this motion, the Court finds that NuVasive
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`has not demonstrated a likelihood of success with regard to Alphatec’s challenge to the
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`validity of claim 1 of the ‘832 patent.
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`4 NuVasive relies upon Plantronics, Inc. v. Aliph, Inc. 724 F.3d 1343 (Fed. Cir. 2013), to support its
`assertion that for Alphatec’s validity challenge to be sufficient it required a discussion of indicia of non-
`obviousness. However a preliminary injunction was not at issue in Plantronics and the case offers no
`support for NuVasive’s contention that such an analysis by the party contesting validity is required to
`oppose a motion for preliminary injunction.
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`3:18-CV-347-CAB-MDD
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`

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`Case 3:18-cv-00347-CAB-MDD Document 94 Filed 07/10/18 PageID.11897 Page 10 of 19
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`‘156 Patent
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`With regard to the ‘156 patent, Alphatec has raised a substantial question as to the
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`validity of claim 1. The ‘156 patent was the subject of an IPR proceeding and in its Final
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`Written Decision, the PTAB concluded claim 1, among others, was unpatentable, finding
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`it obvious in light of certain prior art references. The Federal Circuit vacated the decision
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`and remanded because the PTAB failed to articulate the motivation to combine the prior
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`art references to place the radiopaque markers on the medial plane (i.e., near the middle of
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`the insert). In re NuVasive, Inc, 842 F.3d 1376, 1384-85 (Fed. Cir. 2016). [Also Doc. No.
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`49-5, at 168, ¶¶ 625-629; Doc No. 49-69.] On remand the PTAB was directed to make
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`additional findings and explanations regarding the motivation to combine. In re NuVasive,
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`Inc, 842 F.3d at 1385. The parties to the IPR settled before the PTAB reached a
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`determination on remand leaving the matter unresolved. [Doc. No. 49-5 at 168, ¶629.]
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`Thus, the challenge raised by Alphatec to the validity of claim 1 of the’156 patent remains
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`a substantial question.
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`With its opposition, Alphatec included an analysis by Dr. Sacks of the obviousness
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`of claim 1 of the ‘156 patent, including his explanation of the motivation for one of skill in
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`the art to combine the references. [Doc. No. 49-5, at 159-165, 168, ¶¶ 578-597, 625-629.]
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`In response NuVasive must present a clear case supporting the validity of the patent in suit.
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`Amazon.com, 239 F.3d at 1359. It does not.
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`NuVasive offers no specific response to the challenge to the validity of the ‘156
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`patent. [Doc. No. 79, at 13-14.] To oppose a preliminary injunction Alphatec does not
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`need to make out a case of actual invalidity, only vulnerability. Id. NuVasive’s contention
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`that “Alphatec has not demonstrated likelihood that they will prove invalidity by clear and
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`convincing evidence,” improperly shifts the burden to Alphatec in the context of this
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`motion. For purposes of this motion, the Court finds that NuVasive has not demonstrated
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`a likelihood of success with regard to Alphatec’s challenge to the validity of claim 1 of the
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`‘156 patent.
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`3:18-CV-347-CAB-MDD
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`

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`Case 3:18-cv-00347-CAB-MDD Document 94 Filed 07/10/18 PageID.11898 Page 11 of 19
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`Assignor Estoppel
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`NuVasive’s foremost contention regarding Alphatec’s challenges to the validity of
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`the Access Platform patents, including the ‘832 patent, is that Alphatec should be barred
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`by the doctrine of assignor estoppel from contesting validity.5 Assignor estoppel is an
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`equitable remedy that prohibits an assignor of a patent, or one in privity with an assignor,
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`from attacking the validity of that patent when he is sued for infringement by the assignee.
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`MAG Aerospace Indus. v. B/E Aerospace, 816 F.3d 1374, 1379-80 (Fed. Cir. 2016). As an
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`equitable doctrine, the application of assignor estoppel is within the sound discretion of the
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`trial court. Checkpoint Sys., Inc. v. All-Tag Sec. S.A., 412 F.3d 1331, 1337 (Fed. Cir. 2005).
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`NuVasive contends Alphatec is in privity with Patrick Miles, an inventor of the
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`Access Platform patents. Whether Alphatec is in privity and should be bound by the
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`doctrine of assignor estoppel depends on the equities dictated by the relationship between
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`the inventor and the company in light of the act of infringement. Shamrock Tech., Inc. v.
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`Med. Sterilization, Inc., 903 F.2d 789, 793-94 (Fed. Cir. 1990).
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`To determine whether a finding of privity is appropriate, the Court considers a
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`number of factors identified in Shamrock Technologies: (1) the assignor’s leadership role
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`at the employer; (2) the assignor’s ownership stake in the defendant company; (3) whether
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`the defendant company changed course from manufacturing non-infringing goods to
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`infringing activity after the inventor was hired; (4) the assignor’s role in the infringing
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`activities; (5) whether the inventor was hired to start the infringing operations; (6) whether
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`the decision to manufacture the infringing products was made partly by the inventor; (7)
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`whether the defendant company began manufacturing the accused product shortly after
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`hiring the assignor; and (8) whether the inventor was in charge of the infringing operation.
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`MAG Aerospace Indus., 816 F.3d at 1380.
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`5 The doctrine of assignor estoppel does not apply to the ‘156 patent.
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`3:18-CV-347-CAB-MDD
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`Case 3:18-cv-00347-CAB-MDD Document 94 Filed 07/10/18 PageID.11899 Page 12 of 19
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`Mr. Miles has 25 years of industry experience, and was a “central figure” in
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`NuVasive’s history. [Doc No. 1-43, at 2.] Just prior to joining Alphatec, he was
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`NuVasive’s Vice Chairman responsible for strategic plans for the future of spine surgery
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`and supporting technical development. [Doc. No. 1-3, at 7.] A named inventor on all the
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`asserted Access Patents, Mr. Miles assigned all his right, title and interest in those patents
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`to NuVasive.
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`On October 2, 2017, Mr. Miles joined Alphatec as Executive Chairman and on
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`March 8, 2018, he assumed the role of Chief Executive Officer. [Doc No. 1-43 at 2.] It is
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`undisputed that Mr. Miles holds a leadership role at Alphatec and was recruited to further
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`define and implement Alphatec’s strategic initiatives, expand relationships with surgeon
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`customers and lead new technology development. [Id.] His leadership position supports a
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`finding of privity, but it is not dispositive. See e.g., HWB, Inc. v. Braner, Inc., 869 F.Supp.
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`579, 581-82 (N.D. Ill. 1994) (“the relevant knowledge and assistance of which the
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`defendant company avails itself is knowledge and assistance associated with the
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`manufacture of the infringing product”).
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`Alphatec had embarked on the development and marketing of the accused systems
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`and devices long before Mr. Miles joined the company. Mr. Miles was not brought on
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`board to initiate the allegedly infringing activity, but rather for his expertise to promote and
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`increase Alphatec’s share in the spine surgery market. [Doc. No. 38, at 19.] On or about
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`December 27, 2017, Mr. Miles closed on the purchase of Alphatec common stock directly
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`and through his company, MOM, LLC, resulting in his ownership of approximately 11.6%
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`of Alphatec’s common stock. [Doc Nos. 1-3 at 6; 1-42 at 6, 8; 1-43 at 3.] Mr. Miles’
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`investment reflects his commitment to Alphatec’s initiative to compete in the spinal
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`surgery market, but does not demonstrate effective control over Alphatec’s operations. The
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`timing of his investment and his percentage of interest does not demonstrate that he
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`financially enabled the alleged development of the accused system as suggested by
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`NuVasive. See Mentor Graphics Corp. v. Quickturn Design Sys., 150 F.3d 1374, 1379
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`3:18-CV-347-CAB-MDD
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`Case 3:18-cv-00347-CAB-MDD Document 94 Filed 07/10/18 PageID.11900 Page 13 of 19
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`(Fed. Cir. 1998) (Meta, the assignor, sold all its stock Mentor, the party found in privity,
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`to obtain the capital so Meta could manufacture the accused devices.)
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`The remaining factors in a privity analysis focus on the role that assignor had at the
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`defendant company in the decision to engage in the manufacture of the accused device.
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`MAG Aerospace Indus., 816 F.3d at 1380 (change course to infringing activity after
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`inventor was hired; role in the infringing activities; hired to start infringing operations;
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`decision to manufacture infringing products made in part by inventor; began manufacturing
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`shortly after hiring inventor; and inventor in charge of the infringing operation). Mr. Miles
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`was not affiliated with Alphatec when these decisions were made.
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`Alphatec began research and development of the Battalion Lateral System in 2014.
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`[Doc. No. 1, at ¶ 58; Doc. No. 1-30, at 3.] In 2016, Alphatec sought and received FDA
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`clearance for the accused system. [Doc. No. 37-9, at 6.] The Alphatec Surgical Guide
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`[Doc No. 1-38, at 2-30] that provided the basis for many of NuVasive’s infringement
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`contentions, was published January 5, 2017. [Id., at 30.] On February 14, 2017, Alphatec
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`made its first sale and public surgical use of the accused components. [Doc. No. 79-4, at
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`7.] In April of 2017, Alphatec launched a limited release of the Battalion Lateral System.
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`Alphatec made a full launch in October of 2017. [Doc. No. 1, ¶ 43.] Mr. Miles joined
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`Alphatec on October 2, 2017. By the time he became an officer at Alphatec, the company
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`was already deeply committed to, manufacturing and promoting the accused system.
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`Based on the evidence presently before the Court, the Court finds that Mr. Miles’
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`role at Alphatec is to promote the sale and any future development of the accused system.
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`Alphatec however had embarked on its competing technology, and it was fully developed
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`well before it sought any of Mr. Miles’ expertise. Mr. Miles’ status at Alphatec, and the
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`expertise he brings in sales and marketing, does not compel a finding of assignor estoppel
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`based on privity. Accordingly, for purposes of the motion for preliminary injunction,
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`NuVasive has not demonstrated a likelihood of success with regard to its position that the
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`doctrine of assignor estoppel bars Alphatec from asserting invalidity defense