Case 1:21-cv-01445-JPM Document 120 Filed 04/11/23 Page 1 of 22 PageID #: 2955
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`GLOBUS MEDICAL, INC.,
`
`v.
`
`LIFE SPINE, INC.,
`
`Plaintiff,
`
`Defendant.
`
`LIFE SPINE, INC.’S OPENING BRIEF IN SUPPORT OF ITS
`MOTION FOR A STAY PENDING COMPLETION OF INTER PARTES REVIEWS
`
`MORRIS, NICHOLS, ARSHT & TUNNELL LLP
`Jack B. Blumenfeld (#1014)
`Jennifer Ying (#5550)
`1201 North Market Street
`P.O. Box 1347
`Wilmington, DE 19899
`(302) 658-9200
`jblumenfeld@morrisnichols.com
`jying@morrisnichols.com
`
`Attorneys for Defendant
`
`OF COUNSEL:
`
`Brianne M. Straka
`Dave Nelson
`Rajat Khanna
`Jonathon Studer
`QUINN EMANUEL URQUHART & SULLIVAN, LLP
`191 North Wacker Drive, Suite 2700
`Chicago, IL 60606
`(312) 705-7400
`
`Isabel Peraza
`QUINN EMANUEL URQUHART & SULLIVAN, LLP
`1300 I Street NW
`Suite 900
`Washington, D.C. 20005
`(202) 538-8000
`
`Jake Blecher
`QUINN EMANUEL URQUHART & SULLIVAN, LLP
`51 Madison Avenue, 22nd Floor
`New York, NY 10010
`(212) 849-7000
`
`Original Filing Date: April 4, 2023
`Redacted Filing Date: April 11, 2023
`
`)
`)
`)
`) C.A. No. 21-1445 (JPM)
`)
`) REDACTED - PUBLIC VERSION
`)
`
`)
`
`

`

`Case 1:21-cv-01445-JPM Document 120 Filed 04/11/23 Page 2 of 22 PageID #: 2956
`
`TABLE CONTENTS
`
`I.
`
`II.
`
`III.
`
`IV.
`
`V.
`
`INTRODUCTION ...............................................................................................................1
`
`NATURE AND STAGE OF THE PROCEEDINGS ..........................................................2
`
`SUMMARY OF THE ARGUMENT ..................................................................................4
`
`LEGAL STANDARD ..........................................................................................................5
`
`ARGUMENT .......................................................................................................................6
`
`A.
`
`A Stay Would Simplify The Issues For Trial ..........................................................6
`
`1.
`
`2.
`
`The PTAB’s review will streamline which claims and prior art remain in
`the case and may eliminate all of the expandable implant claims from the
`case. ..............................................................................................................6
`
`The case will be simplified even if some claims survive. ..........................12
`
`B.
`
`C.
`
`The Status of the Case Favors A Stay ....................................................................12
`
`Globus Will Not Be Unduly Prejudiced Or Disadvantaged ..................................14
`
`1.
`
`2.
`
`3.
`
`4.
`
`Life Spine’s request for a stay is timely. ....................................................14
`
`The PTAB’s review is proceeding in a timely fashion. .............................14
`
`Life Spine timely filed eight petitions for IPR within a matter of months.
`....................................................................................................................15
`
`The relationship of the parties favors a stay. .............................................16
`
`VI.
`
`CONCLUSION ..................................................................................................................17
`
`i
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`

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`Case 1:21-cv-01445-JPM Document 120 Filed 04/11/23 Page 3 of 22 PageID #: 2957
`
`TABLE OF AUTHORITIES
`
`Cases ..................................................................................................................................... Page(s)
`
`Bechtel Corp. v. Loc. 215, Laborers’ Int’l Union of N. Am., AFL-CIO,
`544 F.2d 1207 (3d Cir. 1976).....................................................................................................5
`
`Bianco v. Globus Med., Inc.,
`2014 WL 5462388 (E.D. Tex. Oct. 27, 2014) ...........................................................................4
`
`Bio-Rad Labs. Inc. v. 10X Genomics, Inc.,
`2020 WL 2849989 (D. Del. June 2, 2020) ...............................................................................14
`
`Bonutti Skeletal Innovations, L.L.C. v. Zimmer Holdings, Inc.,
`2014 WL 1369721 (D. Del. Apr. 7, 2014) .........................................................................14, 15
`
`Brit. Telecomms. PLC v. IAC/InterActiveCorp,
`2019 WL 4740156 (D. Del. Sept. 27, 2019) ....................................................................6, 7, 12
`
`CallWave Commc’ns, LLC v. AT&T Mobility LLC,
`2015 WL 1284203 (D. Del. Mar. 18, 2015) ........................................................................5, 13
`
`Ethicon LLC v. Intuitive Surgical, Inc.,
`2019 WL 1276029 (D. Del. Mar. 20, 2019) ......................................................................13, 15
`
`Ever Win Int’l Corp. v. Radioshack Corp.,
`902 F. Supp. 2d 503 (D. Del. 2012) .........................................................................................16
`
`IOENGINE, LLC v. PayPal Holdings, Inc.,
`2019 WL 3943058 (D. Del. Aug. 21, 2019) ..............................................................5, 6, 13, 14
`
`Landis v. N. Am. Co.,
`299 U.S. 248 (1936) ...................................................................................................................5
`
`LG Elecs., Inc. v. Toshiba Samsung Storage Tech. Korea Corp.,
`2015 WL 8674901 (D. Del. Dec. 11, 2015).............................................................................16
`
`Monterey Rsch., LLC v. Nanya Tech. Corp.,
`2021 WL 6502552 (D. Del. June 25, 2021) ...........................................................12, 13, 14, 15
`
`PACT XPP Schweiz AG v. Intel Corp.,
`2020 WL 13119705 (D. Del. Nov. 5, 2020) ........................................................................4, 13
`
`Princeton Dig. Image Corp. v. Konami Dig. Entm’t Inc.,
`2014 WL 3819458 (D. Del. Jan. 15, 2014) ................................................................................6
`
`RetailMeNot, Inc. v. Honey Science LLC,
`2020 WL 373341 (D. Del. Jan. 23, 2020) ............................................................................5, 13
`
`ii
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`

`

`Case 1:21-cv-01445-JPM Document 120 Filed 04/11/23 Page 4 of 22 PageID #: 2958
`
`SAS Inst., Inc. v. Iancu,
`138 S. Ct. 1348 (2018) ...............................................................................................................6
`
`Speyside Med., LLC v. Medtronic Corevalve, LLC,
`C.A. No. 20-361-GBW-CJB, D.I. 155 (D. Del. Sept. 30, 2021) .............................................15
`
`TC Tech. LLC v. Sprint Corp.,
`2021 WL 4521045 (D. Del. Oct. 4, 2021) ...............................................................................13
`
`Wilson Wolf Mfg. Corp. v. Brammer Bio, LLC,
`2020 WL 13119694 (D. Del. Dec. 8, 2020)...............................................................................5
`
`Other Authorities
`
`Institution Dec., Paper No. 12, IPR2022-01434 (Mar. 24, 2023) ..................................................12
`
`iii
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`

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`Case 1:21-cv-01445-JPM Document 120 Filed 04/11/23 Page 5 of 22 PageID #: 2959
`
`I.
`
`INTRODUCTION
`
`In this patent infringement case, Globus continues to assert forty-four claims across seven
`
`patents.1 The patents relate to spinal implants, and all but one of the asserted patents are directed
`
`to expandable spinal implants. Globus claims that its alleged inventions address an unmet need
`
`for expandable implant devices for use in spinal surgeries, but Globus did not invent expandable
`
`spinal implants. Expandable spinal implants have been long known, and Globus’s patents do not
`
`disclose anything novel. Accordingly, Life Spine filed inter partes review (“IPR”) petitions on all
`
`seven patents in the original complaint.2 On March 24, 2023, the Patent Trial and Appeal Board
`
`(“PTAB”) instituted IPR on all of the claims of the first filed petition for the ’731 patent.
`
`Institution decisions on Life Spine’s other petitions are due in short order—the PTAB is expected
`
`to issue institution decisions for three additional patents this month and the last two by June 2023.3
`
`Life Spine moves to stay the case pending resolution of these IPR proceedings. A stay
`
`now is warranted for three primary reasons. First, given the significant overlap among the
`
`expandable implant patents and their claims, the PTAB is likely to institute IPR on Life Spine’s
`
`other petitions, which will likely result in the PTAB cancelling claims, thereby, significantly
`
`1 Based on Globus’s final infringement contentions served March 20, 2023, Globus asserts claims
`1-2, 7, and 9-14 of U.S. Patent 8,845,731 (the ’731 patent), claims 1, 7, 10, and 12 of U.S. Patent
`8,845,732 (the ’732 patent), claims 1-4 of U.S. Patent 10,137,001 (the ’001 patent), claims 1-2 and
`10-13 of U.S. Patent 10,973,649 (the ’649 patent), claims 1-7 and 9-12 of U.S. Patent 9,402,739
`(the ’739 patent), claims 11 and 16-18 of U.S. Patent 10,925,752 (the ’752 patent), and claims 1,
`7-10, and 16 of U.S. Patent 11,065,128 (the ’128 patent).
`
`2 In its second amended complaint, Globus added an eighth patent (the ’128 patent), which is
`directed to non-expandable spinal implant technology. Life Spine has not yet filed an IPR petition
`for that patent, however, the parties agree that the ’128 patent has little impact on the parties’
`ability to settle this case. See D.I. 86 at 2.
`
`3 Institution decisions for three patents are expected between April 22 and 29. Since Life Spine
`filed its IPRs, Globus has dropped the ’087 patent from the case. Thus, the outcome of the IPR
`challenging the claims of that patent will have no bearing on this case.
`
`1
`
`

`

`Case 1:21-cv-01445-JPM Document 120 Filed 04/11/23 Page 6 of 22 PageID #: 2960
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`streamlining the issues to be tried in this case. Second, at this early stage, a stay will conserve both
`
`the Court’s and the parties’ resources. Although the Court has held a Markman hearing and
`
`discovery is underway, the bulk of the work lies ahead—to date, no depositions have taken place,
`
`significant ESI discovery remains to be completed, the parties have not completed their exchange
`
`of final contentions, expert discovery is not set to begin until July, and trial is almost a year away.
`
`D.I. 103. The IPRs will streamline (and likely eliminate) much of the effort that the Court and the
`
`parties will expend on these activities. Third, Globus will not be unfairly prejudiced by a stay.
`
`Life Spine is, relatively speaking, a small company—absent a stay, Life Spine will be forced to
`
`defend against claims that, statistically, the PTAB is likely to cancel.4 On the other hand, a stay
`
`will not prejudice Globus, which has not sought preliminary injunctive relief and does not identify
`
`Life Spine as one of its competitors (though it has named eight others) in its SEC filings—in these
`
`circumstances, if any claims survive IPR, Globus can be compensated for any alleged infringement
`
`through monetary damages.
`
`II.
`
`NATURE AND STAGE OF THE PROCEEDINGS
`
`Globus filed its original complaint on October 13, 2021, asserting seven patents directed
`
`to expandable spinal implants—the ’731 patent, the ’732 patent, the ’001 patent, the ’649 patent,
`
`the ’739 patent, the ’752 patent, and the ’087 patent. D.I. 1. With its second amended complaint,
`
`filed in May 2022, Globus added the ’128 patent, which is directed to a non-expandable spinal
`
`implant. D.I. 42. On March 20, 2023, Globus served its final infringement contentions, in which
`
`it dropped the ’087 patent from the case.
`
`4 The PTAB invalidates most of the claims on which it institutes IPR. From October 1, 2021 to
`September 30, 2022, there were 10,045 instituted claims, but 2,710 did not reach a final written
`decision due to settlement and 311 were disclaimed. Of the remaining 7,024 claims, 5,371 (76.5%)
`were found unpatentable while 1,653 (23.5%) were found patentable. Ex. 2 at 14.
`
`2
`
`

`

`Case 1:21-cv-01445-JPM Document 120 Filed 04/11/23 Page 7 of 22 PageID #: 2961
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`Beginning in September 2022, Life Spine timely filed eight IPR petitions with respect to
`
`the original seven expandable implant patents. The PTAB has now instituted IPR of all claims of
`
`the ’731 patent, based on Life Spine demonstrating a “reasonable likelihood” that it will prevail
`
`with respect to the claims of the ’731 patent. Ex. 1 at 28 (claim 15), 44 (claims 2-9 and 11-14), 45
`
`(claims 1-9 and 15); 55 (Ground 4 as to claims 2-6 and 10-14 was unrebutted). The PTAB is
`
`expected to issue institution decisions for the ’001, ’732, and ’752 patents by the end of April, and
`
`the ’649 and ’739 patents in June. The chart below summarizes Life Spine’s IPR petitions related
`
`to the expandable spinal implant patents remaining in the case:
`IPR Number Challenged
`Patent
`IPR2022-01434 U.S. Patent
`8,845,731
`IPR2022-01435 U.S. Patent
`10,137,001
`IPR2022-01601 U.S. Patent
`10,925,752
`IPR2023-00041 U.S. Patent
`8,845,732
`
`IPR2022-01599
`IPR2022-01600 U.S. Patent
`10,973,649
`IPR2022-01603 U.S. Patent
`9,402,739
`
`Challenged
`Claims
`All asserted
`claims
`All asserted
`claims
`All asserted
`claims
`All asserted
`claims
`All asserted
`claims
`All asserted
`claims
`All asserted
`claims
`
`Institution
`Filing
`Decision
`Date
`3/24/2023
`9/20/2022
`9/26/2022 Expected by
`4/20/2023
`10/13/2022 Expected by
`4/20/2023
`10/14/2022 Expected by
`4/25/2023
`10/14/2022 Expected by
`4/27/2023
`10/14/2022 Expected by
`6/20/2023
`10/14/2022 Expected by
`6/21/2023
`
`Final Written
`Decision
`3/24/2024
`If instituted:
`4/22/2024
`If instituted:
`4/22/2024
`If instituted:
`4/25/2024
`If instituted:
`4/29/2024
`If instituted:
`6/20/2024
`If instituted:
`6/21/2024
`
`This litigation is still in the early stages with significant fact discovery to be completed.
`
`As of the date of this motion, the parties are still negotiating ESI search terms and neither party
`
`has produced any emails. In addition to ESI discovery, although they were requested many months
`
`ago, Globus is still searching for fundamental and highly relevant documents, including inventor
`
`notebooks, relevant royalty agreements (which the public record shows it relied on in other cases),
`
`and documents related to the invalidity of the asserted claims, including documents related to trade
`
`secret misappropriation litigation involving Globus’s expandable spinal implants and a Texas
`
`3
`
`

`

`Case 1:21-cv-01445-JPM Document 120 Filed 04/11/23 Page 8 of 22 PageID #: 2962
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`neurosurgeon (see Bianco v. Globus Med., Inc., 2014 WL 5462388 (E.D. Tex. Oct. 27, 2014)).
`
`Ex. 8. The parties have not yet completed their exchange of final contentions, and to date, no fact
`
`depositions have taken place, and expert discovery is not set to begin until July. D.I. 103 at 2.
`
`Under the current schedule fact discovery closes over two months from now—on June 13, 2022.
`
`Id. Trial is currently set for March 4, 2024, which is in the same time frame as when the PTAB is
`
`expected to begin issuing final written decisions regarding whether the asserted claims are
`
`patentable or should be cancelled. Id.
`
`III.
`
`SUMMARY OF THE ARGUMENT
`
`This case should be stayed because each of the pertinent factors favors a stay:
`
`(a)
`
`A stay will simplify the issues for trial. The PTAB has instituted IPR proceedings
`
`on the ’731 patent, finding there is a reasonable likelihood that Life Spine will prevail in showing
`
`the challenged claims are invalid. Ex. 1 at 28, 44-45, 55. The PTAB is likely to invalidate a
`
`majority of the challenged claims. See Ex. 2 at 14 (2022 PTAB Trial Statistics).5 Courts in this
`
`District have routinely held that the case will be simplified under similar facts because “[i]f the
`
`PTAB invalidates all, or even some, of the claims, it will eliminate them from the case, thereby
`
`making it simpler” and “its analysis might clarify or narrow issues to be litigated in this case.”
`
`PACT XPP Schweiz AG v. Intel Corp., 2020 WL 13119705, at *1 (D. Del. Nov. 5, 2020) (collecting
`
`cases).
`
`(b)
`
`The lion’s share of the work lies ahead. Fact discovery is far from over. No
`
`depositions have occurred, and the parties are still negotiating search terms for email discovery.
`
`Final contentions are not yet complete, and expert discovery is not set to begin until mid-July.
`
`5 From October 1, 2021 to September 30, 2022, there were 10,045 instituted claims, but 2,710 did
`not reach a final written decision due to settlement and 311 were disclaimed. Of the remaining
`7,024 claims, 5,371 (76.5%) were found unpatentable while 1,653 (23.5%) were found patentable.
`
`4
`
`

`

`Case 1:21-cv-01445-JPM Document 120 Filed 04/11/23 Page 9 of 22 PageID #: 2963
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`Courts in this district routinely find that the “status of litigation” factor favors a stay where, as
`
`here, the bulk of the work lies ahead—as well as in cases where the litigation was far more
`
`advanced. See, e.g., RetailMeNot, Inc. v. Honey Science LLC, 2020 WL 373341, at *6 (D. Del.
`
`Jan. 23, 2020) (status of litigation favored a stay where expert reports was still six weeks away);
`
`CallWave Commc’ns, LLC v. AT&T Mobility LLC, 2015 WL 1284203, at *1 (D. Del. Mar. 18,
`
`2015) (status of litigation favored stay where “few depositions have been taken and expert
`
`discovery has not yet begun”).
`
`(c)
`
`A stay will not unduly prejudice nor present a clear tactical disadvantage to
`
`Globus. A stay will not prejudice Globus, which did not move for a preliminary injunction against
`
`Life Spine, and any harm from Life Spine’s alleged infringement would be compensable by money
`
`damages. On the other hand, Life Spine is a small company with limited resources. Life Spine
`
`timely filed its IPR petitions, an effort which was made resource-intensive by Globus’s assertion
`
`of 98 claims across eight patents.6 If a stay is denied, however, Life Spine, the Court, and jury
`
`would be required to devote their limited resources to considering claims that the PTAB is likely
`
`to invalidate.
`
`IV.
`
`LEGAL STANDARD
`
`District courts have broad discretion to stay a proceeding. Bechtel Corp. v. Loc. 215,
`
`Laborers’ Int’l Union of N. Am., AFL-CIO, 544 F.2d 1207, 1215 (3d Cir. 1976) (citing Landis v.
`
`N. Am. Co., 299 U.S. 248, 254-55 (1936)). “[A]fter the PTAB has instituted review proceedings,
`
`the parallel district court litigation ordinarily should be stayed.” IOENGINE, LLC v. PayPal
`
`Holdings, Inc., 2019 WL 3943058, at *4 (D. Del. Aug. 21, 2019); Wilson Wolf Mfg. Corp. v.
`
`6 Globus did not narrow its infringement claims to 44 asserted claims across seven patents until
`March 20, 2023.
`
`5
`
`

`

`Case 1:21-cv-01445-JPM Document 120 Filed 04/11/23 Page 10 of 22 PageID #: 2964
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`Brammer Bio, LLC, 2020 WL 13119694, at *2 n.7 (D. Del. Dec. 8, 2020) (“[I]t has become fairly
`
`routine to stay cases after IPRs have been instituted.”).
`
`District courts typically consider three factors when deciding whether to grant a stay
`
`pending inter partes review of the asserted patents: “(1) whether granting the stay will simplify
`
`the issues for trial; (2) the status of the litigation, particularly whether discovery is complete and a
`
`trial date has been set; and (3) whether a stay would cause the non-movant to suffer undue
`
`prejudice from any delay, or allow the movant to gain a clear tactical advantage.” Princeton Dig.
`
`Image Corp. v. Konami Dig. Entm’t Inc., 2014 WL 3819458, at *2 (D. Del. Jan. 15, 2014).
`
`V.
`
`ARGUMENT
`
`A.
`
`A Stay Would Simplify The Issues For Trial
`
`The IPR process “was designed in large measure to simplify proceedings before the courts
`
`and to give the courts the benefit of the expert agency’s full and focused consideration of the effect
`
`of prior art on patents being asserted in litigation.” IOENGINE, 2019 WL 3943058, at *8. Thus,
`
`the simplification of litigation is “the most important factor bearing on whether to grant a stay”
`
`pending IPR. Id. The simplification factor includes whether a stay would reduce the burden of
`
`litigation on the parties and the Court. Brit. Telecomms. PLC v. IAC/InterActiveCorp, 2019 WL
`
`4740156, at *3 (D. Del. Sept. 27, 2019). A stay would simplify this litigation in a number of ways.
`
`1.
`
`The PTAB’s review will streamline which claims and prior art remain
`in the case and may eliminate all of the expandable implant claims
`from the case.
`
`Life Spine’s IPR petitions challenge every asserted claim of the expandable implant
`
`patents, and if instituted, each IPR “must address every claim the petitioner has challenged.” SAS
`
`Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1354 (2018). “[I]f the PTAB invalidates all of the claims
`
`before it, the case will unquestionably become simpler.” Brit. Telecomms., 2019 WL 4740156, at
`
`*8. In instituting IPR of the ’731 patent, the PTAB recognized that Life Spine has a “reasonable
`
`6
`
`

`

`Case 1:21-cv-01445-JPM Document 120 Filed 04/11/23 Page 11 of 22 PageID #: 2965
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`likelihood” of success in invalidating the asserted claims. Supra pp. 2-3. Although the PTAB has
`
`not ruled on the remaining IPR petitions, as explained below, the similarity of the challenged
`
`patents and prior art makes it likely that the PTAB will institute review on those petitions as well.
`
`Brit. Telecomms., 2019 WL 4740156, at *7 (“[D]istrict courts have frequently issued stays in cases
`
`in which IPR proceedings have been instituted on fewer than all the claims asserted in the related
`
`litigation.”) (collecting cases).
`
`(a)
`
`The ’732, ’001, and ’649 Patents
`
`The ’732, ’001, and ’649 patents are continuations or continuations-in-part of the ’731
`
`patent,7 for which the PTAB already instituted IPR. Mark Weiman is the sole inventor on the
`
`’731, ’732, and ’001 patents, and the first named inventor on the ’649 patent. Like the ’731 patent,
`
`these patents all share the same general specification, the same priority date (September 3, 2010),
`
`and claim expandable intervertebral implants with the following elements: (i) a first endplate; (ii)
`
`a second endplate; (iii) a central ramp; (iv) a driving ramp; and (v) an actuator, actuator assembly,
`
`or actuation member. See ’732 patent, cl. 1; ’001 patent, cl. 1; ’649 patent, cl. 1. In the ’731 patent
`
`IPR petition, Life Spine demonstrated, for example, that both U.S. Patent Application Publication
`
`No. US 2008/0140207 to Olmos et al. (“Olmos”) and Korean Reg. Utility Model No. KR20-
`
`0290058 to Chung (“Chung”) disclose these elements.
`
`7 The ’732 patent issued from U.S. Appl. No. 13/531,943, which is a continuation-in-part of the
`application which issued as the ’731 patent. The ’001 patent issued from U.S. Appl. No.
`14/466,468, which is a continuation of the application which issued as the ’732 patent. The ’649
`patent issued from U.S. Appl. No. 15/386,286, which through a chain of continuations and
`continuations-in-part, claims priority to the application which issued as the ’731 patent.
`
`7
`
`

`

`Case 1:21-cv-01445-JPM Document 120 Filed 04/11/23 Page 12 of 22 PageID #: 2966
`
`Olmos
`
`8
`
`Ex. 3 at 71, 73.
`
`

`

`Case 1:21-cv-01445-JPM Document 120 Filed 04/11/23 Page 13 of 22 PageID #: 2967
`
`Chung
`
`9
`
`

`

`Case 1:21-cv-01445-JPM Document 120 Filed 04/11/23 Page 14 of 22 PageID #: 2968
`
`Ex. 3 at 10, 13.
`
`Moreover, as a comparison of Claim 1 of the ’731 and ’732 patents below shows, these
`
`components are all present in both claims. Where the ’731 patent claims an implant device, the
`
`’732 patent claims the same device in a system, adding only a cannula and a dilator, which are
`
`medical instruments that have long been known and used in the field.
`
`’731 Patent Claim 1
`1. An intervertebral implant comprising:
`
`a first endplate, wherein the first endplate
`includes a first side portion, the first side
`portion including a first ramped portion;
`
`a second endplate, wherein the second
`endplate includes a second side portion, the
`second side portion including a second
`ramped portion;
`
`a central ramp disposed between the first
`endplate and the second endplate;
`
`a driving ramp disposed between the first
`endplate and the second endplate;
`
`an actuation member coupled to the driving
`ramp and the central ramp;
`
`wherein the central ramp is configured to
`move in a first direction and cause the first
`and second endplates to move outwardly and
`away from one another, and the central ramp
`is configured to move in a second direction
`and cause the first and second endplate to
`move inward and towards one another;
`
`wherein the central ramp comprises an
`expansion portion and an extension, the
`extension extending in a longitudinal axis
`from the expansion portion wherein the first
`endplate and the second endplate are coupled
`to the expansion portion of the central ramp,
`wherein the actuation member extends
`
`’732 Patent Claim 1
`1. A system for intervertebral fusion
`comprising:
`
`a dilator having a proximal end and a tapered
`distal end for penetrating soft tissue;
`
`a cannula having a proximal end and a distal
`end; and
`
`an intervertebral implant sized for insertion
`into an intervertebral space through the
`cannula, wherein the intervertebral implant
`comprises
`
`a first endplate, a second endplate, and a
`central ramp disposed between the first
`endplate and the second endplate, wherein
`the central ramp is configured to move in
`a first direction and cause the first and
`second endplates to move outwardly and
`away from one another, a driving ramp
`disposed between the first endplate and
`the second endplate at an opposite end of
`the intervertebral implant from the central
`ramp, wherein the driving ramp has a
`longitudinal through bore, wherein the
`driving ramp is configured to engage
`ramped surfaces of the first endplate and
`ramped surfaces of the second endplate;
`and
`
`an actuation member comprising a head
`portion and an actuation member
`extension that extends through an
`unthreaded opening in a longitudinal
`
`10
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`

`Case 1:21-cv-01445-JPM Document 120 Filed 04/11/23 Page 15 of 22 PageID #: 2969
`
`’731 Patent Claim 1
`through an unthreaded opening in the driving
`ramp and extends into a threaded opening in
`the extension of the central ramp;
`
`wherein when the actuation member is
`rotated the driving ramp is fixed with respect
`to the actuation member and the central ramp
`is moved in either the first direction or the
`second direction.
`
`’732 Patent Claim 1
`through bore of the driving ramp to be
`received within an opening in the central
`ramp extension, wherein rotational
`movement of the actuation member in the
`first direction pulls the central ramp
`towards the driving ramp;
`
`wherein when the actuation member is
`rotated, the driving ramp is fixed with
`respect to the actuation member and the
`central ramp is moved in either the first
`direction or a second direction.
`
`The petitions requesting IPRs of the ’732, ’001, ’649 patents rely on essentially the same
`
`prior art references as the petition for IPR of the ’731 patent. Specifically, the ’731 petition relies
`
`on Chung (’732, ’001), Olmos (’732, ’001, ’649), and Baynham (’732, ’001), which are also relied
`
`on in the other petitions as noted in the preceding parentheticals.
`
`(b)
`
`The ’752 Patent
`
`Like the ’731 family, the ’752 patent claims a priority date of September 3, 2010, lists
`
`Mark Weiman as the sole inventor, and claims expandable intervertebral implants (or “fusion
`
`devices”) with the following elements: (i) first endplate; (ii) second endplate; (iii) a central ramp;
`
`(iv) a driving ramp; and (v) an actuator. See ’752 patent, cl. 1. Additionally, the petition requesting
`
`IPR of the ’752 patent relies largely on the same prior art references over which the PTAB
`
`instituted IPR of the ’731 patent, i.e., Chung and Olmos.
`
`(c)
`
`The ’739 Patent
`
`Like the ’731 family, the ’739 patent lists Mark Weiman as the first inventor and claims
`
`expandable intervertebral implants (fusion devices) having first and second endplates and two
`
`ramps. See ’739 patent, cl. 1. Like the ’731 petition, the ’739 petition relies on the Olmos
`
`reference.
`
`11
`
`

`

`Case 1:21-cv-01445-JPM Document 120 Filed 04/11/23 Page 16 of 22 PageID #: 2970
`
`2.
`
`The case will be simplified even if some claims survive.
`
`Even if some claims survive or all of the IPRs are not instituted, a stay would give the
`
`Court and the parties the benefit of being able to consider the additional record created in the PTAB
`
`proceedings regarding claim construction and related issues. Brit. Telecomms., 2019 WL 4740156,
`
`at *8. The PTAB proceeding “may produce additional prosecution history that could assist the
`
`Court in addressing issues of . . . validity,” id., including the PTAB’s analysis of the scope of the
`
`claims. For example, already in the ’731 IPR institution decision, the PTAB has identified
`
`apparent disputes with respect to the scope of the claims related to the terms “expansion portions,”
`
`“extension,” and “complementary with one another.” See Institution Dec., Paper No. 12, IPR2022-
`
`01434 (Mar. 24, 2023) at 15-20. These issues will be further developed and clarified during the
`
`IPR proceedings, and this added prosecution history will inform the parties and the Court regarding
`
`the scope of the claims in relation to (1) questions of infringement; (2) the applicability of any
`
`non-estopped prior art; and (3) any alleged incremental benefit of the alleged inventions over the
`
`prior art, which is highly relevant to damages issues in the case. Brit. Telecomms., 2019 WL
`
`4740156, at *8.
`
`B.
`
`The Status of the Case Favors A Stay
`
`Stays are favored where, as here, “the most burdensome stages of the case—completing
`
`discovery, preparing expert reports, filing and responding to pretrial motions, preparing for trial,
`
`going through the trial process, and engaging in post-trial motions practice—all lie in the future.”
`
`Monterey Rsch., LLC v. Nanya Tech. Corp., 2021 WL 6502552, at *1 n.1 (D. Del. June 25, 2021).
`
`The parties have yet to complete their final contentions. No fact depositions have occurred in this
`
`case. The parties have not produced email and are still negotiating search terms for nearly 20
`
`custodians. There has been no expert discovery outside of Markman-related activities, and trial is
`
`nearly a year away.
`
`12
`
`

`

`Case 1:21-cv-01445-JPM Document 120 Filed 04/11/23 Page 17 of 22 PageID #: 2971
`
`Simply put, the lion’s share of the work lies ahead. Given nearly twenty custodians and
`
`several third parties with relevant information concerning prior art, Life Spine expects there to be
`
`more than a dozen fact depositions. Likewise, with seven patents and 44 claims remaining in the
`
`case, expert discovery concerning infringement and validity will be extensive. Staying the case at
`
`this stage “advances judicial efficiency and prevents the court and the parties from expending
`
`resources on claims that may be rendered invalid.” Monterey Rsch., 2021 WL 6502552, at *1; see
`
`also IOENGINE, 2019 WL 3943058, at *5 (status of litigation favors stay where “[n]o depositions
`
`have been taken, expert discovery has not begun, and the trials in the [cases] are approximately a
`
`year away”); CallWave, 2015 WL 1284203, at *1 (status of litigation favored stay where “few
`
`depositions have been taken and expert discovery has not yet begun”); RetailMeNot, 2020 WL
`
`373341, at *6 (status of litigation favored a stay where expert reports were six weeks away).
`
`Indeed, even at far more advanced stages, courts in this District routinely find that the
`
`“status of litigation” factor weighs in favor of a stay. See, e.g., Ethicon LLC v. Intuitive Surgical,
`
`Inc., 2019 WL 1276029, at *2-3 (D. Del. Mar. 20, 2019) (granting stay pending IPRs even though
`
`“fact discovery [was] complete, and expert discovery [was] nearly concluded” because the Court
`
`would “have the benefit of the PTAB’s consideration of certain invalidity defenses, and there will
`
`be estoppel effects, with respect to 14 of 15 asserted claims”); PACT XPP, 2020 WL 13119705,
`
`at *2 (status of litigation favored a stay at “the end of fact discovery” as the parties still “need[ed]
`
`to prepare expert reports, file and respond to pretrial motions, prepare for trial, and try the case”);
`
`TC Tech. LLC v. Sprint Corp., 2021 WL 4521045, at *7 (D. Del. Oct. 4, 2021) (granting stay “late
`
`in the pretrial period” when “the pretrial proceedings are largely complete” because preparation
`
`for trial, trial, and post-trial motion practice would be the most burdensome parts of the case).
`
`13
`
`

`

`Case 1:21-cv-01445-JPM Document 120 Filed 04/11/23 Page 18 of 22 PageID #: 2972
`
`Further, Life Spine has moved promptly—less than two weeks after the first IPR was
`
`instituted—so that the Court and the parties will