Case 1:21-cv-01445-JPM Document 46 Filed 05/31/22 Page 1 of 24 PageID #: 1687
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`GLOBUS MEDICAL, INC.,
`
`v.
`
`LIFE SPINE, INC.,
`
`Plaintiff,
`
`Defendant.
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`C.A. No. 21-1445 (JPM)
`
`JURY TRIAL DEMANDED
`
`DEFENDANT LIFE SPINE, INC.’S OPENING BRIEF IN SUPPORT
`OF ITS RENEWED MOTION TO DISMISS THE SECOND AMENDED COMPLAINT
`
`OF COUNSEL:
`
`Brianne M. Straka
`Dave A. Nelson
`QUINN EMANUEL URQUHART & SULLIVAN, LLP
`191 North Wacker Drive, Suite 2700
`Chicago, IL 60606
`(312) 705-7400
`
`May 31, 2022
`
`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
`
`

`

`Case 1:21-cv-01445-JPM Document 46 Filed 05/31/22 Page 2 of 24 PageID #: 1688
`
`TABLE OF CONTENTS
`
`Page
`
`I.
`
`II.
`
`III.
`
`IV.
`
`NATURE AND STAGE OF PROCEEDINGS ...................................................................1
`
`SUMMARY OF ARGUMENT ...........................................................................................2
`
`STATEMENT OF FACTS ..................................................................................................3
`
`LEGAL STANDARD ..........................................................................................................4
`
`A.
`
`B.
`
`C.
`
`Motions to Dismiss Under Rule 12(b)(6) ................................................................4
`
`Induced Infringement ...............................................................................................4
`
`Enhanced Damages Under Section 284 ...................................................................5
`
`V.
`
`ARGUMENT .......................................................................................................................6
`
`A.
`
`Plaintiff Fails to Adequately Plead Knowledge of the Asserted Patents .................6
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`Notice Under 35 U.S.C. § 287(a) .................................................................7
`
`Citation to Related Patent Applications .......................................................9
`
`510(k) Submission to the FDA ..................................................................11
`
`Patents in the Spinal Fusion Space ............................................................12
`
`Willful Blindness .......................................................................................13
`
`B.
`
`C.
`
`Plaintiff Fails to Adequately Plead Pre-Suit Specific Intent to Induce
`Infringement ...........................................................................................................14
`
`Plaintiff Fails to Plead That Life Spine Knew (Or Should Have Known)
`That Its Pre-Suit Conduct Amounted to Infringement of the Asserted
`Patents ....................................................................................................................17
`
`VI.
`
`CONCLUSION ..................................................................................................................18
`
`i
`
`

`

`Case 1:21-cv-01445-JPM Document 46 Filed 05/31/22 Page 3 of 24 PageID #: 1689
`
`TABLE OF AUTHORITIES
`
`Cases
`
`Page(s)
`
`Aperture Net LLC v. Cambium Networks, Inc.,
`2022 WL 605740 (D. Del. Feb 1, 2022) .................................................................................. 14
`Ashcroft v. Iqbal,
` 556 U.S. 662 (2009) ......................................................................................................... 4, 6, 14
`Bayer HealthCare LLC v. Baxalta Inc.,
` 989 F.3d 964 (Fed. Cir. 2021).................................................................................................. 18
`Bell Atlantic Corp. v. Twombly,
` 550 U.S. 544 (2007) ............................................................................................................. 4, 14
`Bonutti Skeletal Innovations LLC v. Conformis, Inc.,
` 2013 WL 6040377 (D. Del. Nov. 14, 2013) .............................................................................. 7
`Boston Sci. Corp. v. Nevro Corp.,
` 415 F. Supp. 3d 482 (D. Del. Nov. 25, 2019) ................................................................ 6, 15, 18
`Callwave Comm’ns LLC v. AT&T Mobility LLC,
` 2014 WL 5363741 (D. Del. Jan. 28, 2014) ................................................................................ 7
`Commil USA, LLC v. Cisco Sys., Inc.,
`575 U.S. 632 (2015) ............................................................................................................... 4, 5
`Deckers Outdoor Corp. v. J.C. Penney Co.,
` 45 F. Supp. 3d 1181 (C.D. Cal. 2014) ....................................................................................... 9
`Deere & Co. v. AGCO Corp.,
` 2019 WL 668492 (D. Del. Feb. 19, 2019) ................................................................................. 5
`Dodots Licensing Sols. LLC v. Lenovo Holding Co.,
` 2018 WL 6629709 (D. Del. Dec. 19, 2018)....................................................................... 16, 17
`Dynamic Data Techs., LLC v. Amlogic Holdings Ltd.,
` 2020 WL 4365809 (D. Del. July 30, 2020) ......................................................... 5, 7, 14, 17, 18
`Finjan, Inc. v. Cisco Sys. Inc.,
` 2017 WL 2462423 (N.D. Cal. June 7, 2017) ............................................................................. 9
`Fujitsu Ltd. v. Netgear Inc.,
` 620 F.3d 1321 (Fed. Cir. 2010)................................................................................................ 16
`Global-Tech Appliances, Inc. v. SEB S.A.,
`563 U.S. 754 (2011) ............................................................................................................... 4, 5
`Halo Elecs., Inc. v. Pulse Elecs., Inc.,
`579 U.S. 93 (2016) ..................................................................................................................... 5
`Helios Streaming, LLC v. Vudu, Inc.,
` 2020 WL 2332045 (D. Del. May 11, 2020) ....................................................................... 10, 13
`
`ii
`
`

`

`Case 1:21-cv-01445-JPM Document 46 Filed 05/31/22 Page 4 of 24 PageID #: 1690
`
`Helios Streaming, Llc, & Ideahub v. Vudu, Inc.,
` 2021 WL 254069 (D. Del. Jan. 26, 2021) .................................................................................. 9
`Lifetime Indus., Inc. v. Trim-Lok, Inc.,
` 869 F.3d 1372 (Fed. Cir. 2017).................................................................................................. 5
`Lippert Components Mfg., Inc. v. MOR/ryde, Inc.,
` 2018 WL 345767 (N.D. Ind. Jan. 10, 2018) ........................................................................ 8, 12
`Mallinckrodt, Inc. v. E-Z-Em Inc.,
` 670 F. Supp. 2d 349 (D. Del. 2009) ....................................................................................... 7, 8
`Malvern Panalytical Ltd. v. Instruments-Waters LLC,
` 2021 WL 3856145 (D. Del. Aug. 27, 2021) ........................................................................ 6, 17
`MONEC Holding AG v. Motorola Mobility Inc.,
` 897 F. Supp. 2d 225 (D. Del. Aug. 3, 2012) .................................................. 6, 9, 13, 14, 15, 17
`NETGEAR Inc. v. Ruckus Wireless Inc.,
` 2013 WL 1124036 (D. Del. Mar. 14, 2013) .............................................................................. 7
`NexStep, Inc. v. Comcast Cable Comm’ns., LLC,
` 2019 WL 5626647 (D. Del. Oct. 31, 2019) ............................................................................. 10
`Rehrig Pac. Co. v. Polymer Logistics (Isr.), Ltd.,
` 2019 WL 8161141 (C.D. Cal. Aug. 30, 2019) ................................................................. 8, 9, 11
`Robocast, Inc. v. Microsoft Corp.,
` 21 F. Supp. 3d 320 (D. Del. 2014) ........................................................................................... 10
`Spherix Inc. v. Juniper Networks, Inc.,
` 2015 WL 1517508 (D. Del. Mar. 31, 2015) ............................................................................ 11
`State Indus., Inc. v. A.O. Smith Corp.,
` 751 F.2d 1226 (Fed. Cir. 1985)................................................................................................ 10
`Välinge Innovation AB v. Halstead New England Corp.,
` 2018 WL 2411218 (D. Del. May 29, 2018) ................................................................. 4, 5, 6, 17
`VLSI Tech., LLC v. Intel Corp.,
` 2019 WL 1349468 (D. Del. Mar. 26, 2019) .................................................................... 6, 7, 14
`VLSI Tech., LLC v. Intel Corp.,
` 2019 WL 1349468 (D. Del. March 26, 2019).......................................................................... 18
`Xpoint Techs., Inc. v. Microsoft Corp.,
` 730 F. Supp. 2d 349 (D. Del. 2010) ........................................................................................... 7
`Zapfraud, Inc. v. Barracuda Networks,
` 528 F. Supp. 3d 247 (D. Del. 2021) ....................................................................................... 5, 7
`Statutory Authorities
`
`35 U.S.C. § 271(b) ............................................................................................................ 4, 5, 7, 16
`35 U.S.C. § 284 ................................................................................................................... 1, 3, 5, 7
`
`iii
`
`

`

`Case 1:21-cv-01445-JPM Document 46 Filed 05/31/22 Page 5 of 24 PageID #: 1691
`
`35 U.S.C. § 287(a) ...................................................................................................................... 7, 8
`Rules and Regulations
`
`Fed. R. Civ. P. 12(b)(6)............................................................................................................... 1, 4
`
`iv
`
`

`

`Case 1:21-cv-01445-JPM Document 46 Filed 05/31/22 Page 6 of 24 PageID #: 1692
`
`I.
`
`NATURE AND STAGE OF PROCEEDINGS
`
`On October 13, 2021, Plaintiff Globus Medical, Inc. (“Plaintiff” or “Globus”) filed a patent
`
`infringement Complaint against Defendant Life Spine, Inc. (“Defendant” or “Life Spine”) alleging
`
`direct and indirect infringement of seven patents.1 D.I. 1. Life Spine moved to dismiss Plaintiff’s
`
`claims for induced and willful infringement for failure to state a claim upon which relief may be
`
`granted. D.I. 9. On December 16, 2021, the Court ordered that “[s]hould plaintiff elect to amend
`
`the complaint,” Life Spine must respond by February 9, 2022. D.I. 14. On January 10, 2022,
`
`Plaintiff filed an Amended Complaint, asserting the same seven patents and revising its allegations
`
`supporting its claims for willful and induced infringement. D.I. 15. On February 9, 2022, Life
`
`Spine filed its Renewed Motion to Dismiss. D.I. 18.
`
`On May 10, 2022 Plaintiff filed its Second Amended Complaint, in which it modified its
`
`background information on the expandable spinal implant field, added minor changes to some of
`
`its previous allegations, and asserted a new patent—the ’128 Patent. D.I. 42. Pursuant to Fed. R.
`
`Civ. P. 12(b)(6) and the Court’s December 16, January 24 and May 6 Orders, Life Spine hereby
`
`renews its motion to dismiss Plaintiff’s claims for: (1) induced infringement of the Asserted
`
`Patents, and (2) enhanced damages for willful infringement of the Asserted Patents pursuant to 35
`
`U.S.C. § 284, for failure to state a claim upon which relief may be granted. This is Life Spine’s
`
`opening brief in support of its motion.
`
`1 Plaintiff alleges that Defendant infringes U.S. Patent Nos. 8,845,731 (the “’731 Patent”),
`8,845,732 (the “’732 Patent”), 9,402,739 (the “’739 Patent”), 9,956,087 (the “’087 Patent”),
`10,137,001 (the “’001 Patent”), 10,925,752 (the “’752 Patent”), 10,973,649 (the “’649 Patent”)
`and now, 11,065,128 (the “’128 Patent”) (collectively, the “Asserted Patents”).
`
`1
`
`

`

`Case 1:21-cv-01445-JPM Document 46 Filed 05/31/22 Page 7 of 24 PageID #: 1693
`
`II.
`
`SUMMARY OF ARGUMENT
`
`Although Plaintiff’s Second Amended Complaint purports to add allegations in support of
`
`its claims, those allegations do not move the needle: Plaintiff still fails to satisfy the standards for
`
`pleading induced infringement and willfulness-based enhanced damages. With respect to both
`
`claims, Plaintiff alleges that Life Spine had the requisite knowledge of the Asserted Patents by
`
`way of constructive notice of its patents, knowledge of patent applications related to two of the
`
`Asserted Patents, knowledge of Plaintiff’s products, and a general awareness of patents in the
`
`spinal fusion space. Alternatively, Plaintiff alleges that Life Spine was willfully blind to the
`
`Asserted Patents. None of these allegations support a plausible inference that Life Spine had actual
`
`pre-suit knowledge of the Asserted Patents, as required by the law for both induced and willful
`
`infringement.
`
`Plaintiff’s induced infringement claims fail for the additional reason that the Second
`
`Amended Complaint alleges nothing more than “Life Spine’s encouragement of surgeons to use
`
`the Accused Products and Accused Methods.” D.I. 42 at ¶¶ 71-84. Plaintiff does not even recite
`
`the relevant legal standard, let alone allege facts to support any inference that Life Spine
`
`“encourages” these surgeons with the specific intent to induce infringement of the Asserted Patents
`
`and with the knowledge that the surgeons’ conduct constituted infringement. Similarly, Plaintiff’s
`
`claims for willfulness-based enhanced damages fail for the additional reason that Plaintiff alleges
`
`no facts to support an inference that Life Spine knew or should have known that its conduct
`
`amounted to infringement of the Asserted Patents. Such threadbare allegations cannot plausibly
`
`support a conclusion that Life Spine induces infringement of the Asserted Patents or that Life
`
`Spine’s conduct constitutes willful infringement of the Asserted Patents.
`
`2
`
`

`

`Case 1:21-cv-01445-JPM Document 46 Filed 05/31/22 Page 8 of 24 PageID #: 1694
`
`III.
`
`STATEMENT OF FACTS
`
`Plaintiff’s Second Amended Complaint alleges that Life Spine infringes the ’731 Patent,
`
`’732 Patent, ’739 Patent, ’087 Patent, ’752 Patent, and ’649 Patent by making, using, offering to
`
`sell, selling, and/or importing the PROLIFT, PROLIFT Lateral, PROLIFT Lateral Fixated, and
`
`PROLIFT Lateral Helo implants (collectively referred to in the Second Amended Complaint as
`
`the “Prolift Accused Products”), directly and/or indirectly, on its own and/or through its agents.
`
`D.I. 42 at ¶¶ 39, 86, 96, 107, 118, 129, 139. The Second Amended Complaint also alleges that
`
`Life Spine infringes the ’128 patent by making, using, offering to sell, selling, and/or importing
`
`the Dyna-Link Titanium (referred to in the Second Amended Complaint as the “Dyna-Link
`
`Accused Product”) directly and/or indirectly, on its own and/or through its agents. D.I. 42 at ¶ 159-
`
`60. The Second Amended Complaint also alleges that Life Spine indirectly infringes the ’001
`
`Patent because it induces surgeons to use the “Accused Methods” (defined in the Second Amended
`
`Complaint as the installation of “[e]xpandable implants like the Accused Products” by “surgical
`
`methods . . . that involve the creation of an access path to the intervertebral space, the insertion of
`
`the implant, the expansion of the implant, and the introduction of bone graft material”). Id. at
`
`¶¶ 46, 75. The Second Amended Complaint further alleges that Life Spine’s infringement of all
`
`of the Asserted Patents has been willful. Id. at ¶¶ 92, 103, 114, 125, 134, 145, 155, 165.
`
`Both the ’731 Patent and the ’732 Patent issued on September 30, 2014, the ’739 Patent
`
`issued on August 2, 2016, the ’087 Patent issued on May 1, 2018, the ’001 Patent issued on
`
`November 27, 2018, the ’752 Patent issued on February 23, 2021, the ’649 Patent issued on April
`
`13, 2021, and the ’128 patent issued on July 20, 2021. Id. at ¶¶ 23-30.
`
`3
`
`

`

`Case 1:21-cv-01445-JPM Document 46 Filed 05/31/22 Page 9 of 24 PageID #: 1695
`
`IV.
`
`LEGAL STANDARD
`
`A.
`
`Motions to Dismiss Under Rule 12(b)(6)
`
`A complaint will survive a motion to dismiss under Federal Rule of Civil Procedure
`
`12(b)(6) if it “contain[s] sufficient factual matter . . . to ‘state a claim to relief that is plausible on
`
`its face.’” Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) (quoting Bell Atlantic Corp. v. Twombly,
`
`550 U.S. 544, 570 (2007)). Although the Court is to accept the allegations in the complaint as true
`
`and construe them in the light most favorable to Plaintiff, “the tenet that a court must accept as
`
`true all of the allegations contained in a complaint is inapplicable to legal conclusions [because]
`
`[t]hreadbare recitals of the elements of a cause of action, supported by mere conclusory statements,
`
`do not suffice.” Iqbal, 556 U.S. at 678. The Court may therefore begin “by identifying pleadings
`
`that, because they are no more than conclusions, are not entitled to the assumption of truth.” Id.
`
`at 679. The Court then determines whether the factual allegations in the complaint “plausibly give
`
`rise to an entitlement to relief.” Id. This requires “more than labels and conclusions, and a
`
`formulaic recitation of the elements of a cause of action will not do.” Välinge Innovation AB v.
`
`Halstead New England Corp., 2018 WL 2411218, at *2 (D. Del. May 29, 2018), adopted by 2018
`
`WL 11013901 (D. Del. Nov. 6, 2018). If the plaintiff does not “nudge [its] claims across the line
`
`from conceivable to plausible, [its] complaint must be dismissed.” Twombly, 550 U.S. at 570.
`
`B.
`
`Induced Infringement
`
`35 U.S.C. § 271(b) provides that “[w]hoever actively induces infringement of a patent shall
`
`be liable as an infringer.” The Supreme Court has explained that induced infringement liability
`
`“can only attach if the defendant knew of the patent and knew as well that ‘the induced acts
`
`constitute patent infringement.’” Commil USA, LLC v. Cisco Sys., Inc., 575 U.S. 632, 640 (2015)
`
`(quoting Global-Tech Appliances, Inc. v. SEB S.A., 563 U.S. 754, 766 (2011)).
`
`4
`
`

`

`Case 1:21-cv-01445-JPM Document 46 Filed 05/31/22 Page 10 of 24 PageID #: 1696
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`To plead a claim for induced infringement, a plaintiff must plausibly allege facts sufficient
`
`to demonstrate that the defendant’s conduct occurred after the defendant (1) knew of the existence
`
`of the asserted patent, and (2) knew that a third party’s acts constituted infringement of the patent.
`
`See 35 U.S.C. § 271(b); Dynamic Data Techs., LLC v. Amlogic Holdings Ltd., 2020 WL 4365809
`
`at *2 (D. Del. July 30, 2020) (quoting Lifetime Indus., Inc. v. Trim-Lok, Inc., 869 F.3d 1372, 1379
`
`(Fed. Cir. 2017)) (“For an allegation of induced infringement to survive a motion to dismiss, a
`
`complaint must plead facts plausibly showing that the accused infringer specifically intended
`
`another party to infringe the patent and knew that the other party’s acts constituted infringement.”);
`
`Zapfraud, Inc. v. Barracuda Networks, 528 F. Supp. 3d 247, 249 (D. Del. 2021) (citing Commil,
`
`575 U.S. at 638-39; Global-Tech, 563 U.S. at 766).
`
`C.
`
`Enhanced Damages Under Section 284
`
`Section 284 of the Patent Act “gives district courts the discretion to award enhanced
`
`damages against those guilty of patent infringement.” Halo Elecs., Inc. v. Pulse Elecs., Inc., 579
`
`U.S. 93, 107 (2016). Although there is no “rigid formula” for determining if enhanced damages
`
`are warranted (id. at 1927), “in the vast majority of patent cases filed today, claims for enhanced
`
`damages are sought based on allegations of willful misconduct—so much so that, even though the
`
`words ‘willful’ and ‘willfulness’ do not appear in § 284, plaintiffs and courts more often than not
`
`describe claims for enhanced damages brought under § 284 as ‘willful infringement claims[.]’”
`
`Deere & Co. v. AGCO Corp., 2019 WL 668492, at *3 (D. Del. Feb. 19, 2019).
`
`“[I]n order to sufficiently plead willful infringement, a plaintiff must allege facts plausibly
`
`showing that as of the time of the alleged infringement, the accused infringer: (1) knew of the
`
`patent-in-suit; (2) after acquiring that knowledge, it infringed the patent; and (3) in doing so, it
`
`knew, or should have known, that its conduct amounted to infringement of the patent.” Välinge,
`
`5
`
`

`

`Case 1:21-cv-01445-JPM Document 46 Filed 05/31/22 Page 11 of 24 PageID #: 1697
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`2018 WL 2411218 at *13; see VLSI Tech., LLC v. Intel Corp., 2019 WL 1349468, at *1 (D. Del.
`
`Mar. 26, 2019).
`
`V.
`
`ARGUMENT
`
`The Second Amended Complaint’s allegations of both induced infringement and
`
`willfulness-based enhanced damages are insufficient as a matter of law. As to both claims,
`
`Plaintiff has not alleged facts plausibly showing that Life Spine had the requisite actual knowledge
`
`of the Asserted Patents at the time of the alleged infringement. See Commil, 575 U.S. at 63-42;
`
`Välinge, 2018 WL 2411218, at *13. As to induced infringement only (and not willful
`
`infringement), Plaintiff alternatively asserts that Life Spine was “willfully blind” to the disclosures
`
`of the Asserted Patents and their infringement by third parties. However, Plaintiff also fails to
`
`allege facts plausibly showing Life Spine’s willful blindness. Malvern Panalytical Ltd. v.
`
`Instruments-Waters LLC, 2021 WL 3856145, at *4 (D. Del. Aug. 27, 2021); VLSI, 2019 WL
`
`1349468, at *2; MONEC Holding AG v. Motorola Mobility Inc., 897 F. Supp. 2d 225, 234 (D. Del.
`
`Aug. 3, 2012). Plaintiff’s failure to sufficiently plead knowledge of the Asserted Patents alone
`
`dooms its induced and willful infringement claims. Moreover, as to induced infringement,
`
`Plaintiff also fails to allege facts plausibly showing that Life Spine had the specific intent to induce
`
`infringement. As to willful infringement, Plaintiff fails to allege facts plausibly showing that Life
`
`Spine knew or should have known that its conduct amounted to infringement of the Asserted
`
`Patents.
`
`A.
`
`Plaintiff Fails to Adequately Plead Knowledge of the Asserted Patents
`
`Plaintiff’s allegations with respect to Life Spine’s pre-suit knowledge of the Asserted
`
`Patents fail to “plausibly give rise to an entitlement to relief.” Iqbal, 556 U.S. at 678. Thus,
`
`Plaintiff’s claims for both induced infringement and willful infringement of all Asserted Patents
`
`based on Life Spine’s pre-suit conduct should be dismissed. Boston Sci. Corp. v. Nevro Corp.,
`
`6
`
`

`

`Case 1:21-cv-01445-JPM Document 46 Filed 05/31/22 Page 12 of 24 PageID #: 1698
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`415 F. Supp. 3d 482, 494 (D. Del. Nov. 25, 2019) (explaining that willful infringement “should
`
`not require a lesser showing of culpability for enhanced damages under § 284 than for induced
`
`infringement under § 271(b).”).
`
`Further, courts in this district have previously held that “the complaint itself cannot be the
`
`source of the knowledge required to sustain claims of induced infringement and willfulness-based
`
`enhanced damages.” Zapfraud, Inc., 528 F. Supp. 3d at 250.2 Thus, Plaintiff’s induced
`
`infringement claims and enhanced damages claims for willful infringement should be dismissed
`
`for all Asserted Patents as to post-suit conduct as well. See id. at 252.
`
`It is unclear which of Plaintiff’s kitchen sink allegations it intends to apply to which
`
`Asserted Patent. Life Spine therefore addresses each of its allegations to the extent they
`
`specifically apply to each Asserted Patent.
`
`1.
`
`Notice Under 35 U.S.C. § 287(a)
`
`Plaintiff alleges that Life Spine was “on notice” of the Asserted Patents since “Globus
`
`manufactured and sold” either its RISE®, RISE-L®, ELSA®, or COALITION MIS® products
`
`were “marked in accordance with” 35 U.S.C. § 287(a).3 See D.I. 42 at ¶¶ 90, 101, 112, 123, 132,
`
`2 In addition to Zapfraud, the overwhelming authority in this District indicates that the Complaint
`itself cannot serve as the source of knowledge for willful infringement claims. See Dynamic Data
`Techs. WL 4192613, at *3; VLSI Tech. LLC., 2019 WL 1349468, at *2; Callwave Comm’ns LLC
`v. AT&T Mobility LLC, 2014 WL 5363741, at *1 (D. Del. Jan. 28, 2014); Bonutti Skeletal
`Innovations LLC v. Conformis, Inc., 2013 WL 6040377, at *2 n.5 (D. Del. Nov. 14, 2013);
`NETGEAR Inc. v. Ruckus Wireless Inc., 2013 WL 1124036, at *1 (D. Del. Mar. 14, 2013); Xpoint
`Techs., Inc. v. Microsoft Corp., 730 F. Supp. 2d 349, 357 (D. Del. 2010); Mallinckrodt, Inc. v. E-
`Z-Em Inc., 670 F. Supp. 2d 349, 354 n.1 (D. Del. 2009).
`3 Specifically, Globus alleges that Life Spine was “on notice” of: the ’731 Patent and the ’732
`Patent “since at least November 2015, when Globus manufactured and sold the RISE® implant
`marked in accordance with that provision;” the ’739 Patent “since at least December 2018, when
`Globus manufactured and sold the RISE-L® implant;” the ’087 Patent “since at least November
`2018, when Globus manufactured and sold the ELSA® implant marked in accordance with that
`provision;” the ’001 Patent “since at least November 2018, when Globus manufactured and sold
`
`7
`
`

`

`Case 1:21-cv-01445-JPM Document 46 Filed 05/31/22 Page 13 of 24 PageID #: 1699
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`143, 153, 163. Plaintiff also asserts that Life Spine’s alleged infringement was willful because it
`
`“had notice of” the Asserted Patents. D.I. 42 at ¶¶ 92, 103, 114, 125, 134, 145, 155, 165. Plaintiff,
`
`however, appears to conflate the marking requirements under § 287(a) and the knowledge
`
`requirement necessary for a claim of indirect infringement. The law states that constructive
`
`“notice” by marking does not establish that Life Spine had actual knowledge of any of the Asserted
`
`Patents, as required for both induced and willful infringement.4 See Lippert Components Mfg.,
`
`Inc. v. MOR/ryde, Inc., 2018 WL 345767, at *2 (N.D. Ind. Jan. 10, 2018) (“[W]hile marking may
`
`satisfy the notice requirement for damages, alleging marking doesn’t allow the court to infer a
`
`defendant’s knowledge of the patent-in-suit.”).
`
`In Rehrig Pac. Co. v. Polymer Logistics (Isr.), Ltd., the court rejected plaintiff’s argument
`
`that defendants were aware of the asserted patents when plaintiff marked its product with one of
`
`the patents. 2019 WL 8161141, at *4 (C.D. Cal. Aug. 30, 2019). The court noted that plaintiff
`
`did “not explain whether Defendants had access to its products [or] whether it was marked at the
`
`time Defendants had such access . . . .” Id. Here, Plaintiff also does not allege when Life Spine’s
`
`access to the RISE®, RISE-L®, ELSA®, or COALITION MIS® product (if any) occurred, nor
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`does Plaintiff allege whether the product was marked at the time of any alleged access. Thus,
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`Plaintiff has not pleaded facts sufficient to plausibly allege that Life Spine had the requisite actual
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`the RISE® implant marked in accordance with that provision;” the ’752 Patent and the ’649 Patent
`“since at least July 2021, when Globus manufactured and sold the RISE® implant marked in
`accordance with that provision;” and the ’128 Patent “since at least November 12, 2021, when
`Globus manufactured and sold the COALITION MIS® implant marked in accordance with that
`provision. D.I. 42 at ¶¶ 90, 101, 112, 123, 132, 143, 153, 163. With respect to the ’128 Patent,
`Plaintiff pleads in the alternative that Life Spine has been on notice “since at least March 25, 2022,
`when [in connection with this litigation] counsel for Life Spine was informed that Dyna-Link with
`barb fixation might infringe the ’128 Patent,” Id. 42 at ¶ 163.
`4 Plaintiff does not allege that Life Spine ever had access to a marked RISE®, RISE-L®, ELSA®
`or COALITION MIS® implant.
`
`8
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`

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`Case 1:21-cv-01445-JPM Document 46 Filed 05/31/22 Page 14 of 24 PageID #: 1700
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`knowledge of any of the Asserted Patents prior to the filing of the Complaint. See id.; see also
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`Helios Streaming, LLC, & Ideahub v. Vudu, Inc., 2021 WL 254069, at *2 (D. Del. Jan. 26, 2021)
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`(adopted by 2021 WL 1138024 (D. Del. March 25, 2021)) (“Actual knowledge or willful blindness
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`may satisfy the knowledge requirement.”) (citation omitted); Deckers Outdoor Corp. v. J.C.
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`Penney Co., 45 F. Supp. 3d 1181, 1188 (C.D. Cal. 2014) (“Actual knowledge—not constructive
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`knowledge—is the criterion.”); MONEC, 897 F. Supp. 2d at 236 (failure to sufficiently plead
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`actual knowledge of the asserted patents was fatal to both induced infringement and willful
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`infringement claims).
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`2.
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`Citation to Related Patent Applications
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`Plaintiff also alleges that Life Spine was aware of the Asserted Patents because Life Spine,
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`during prosecution of some of Life Spine’s own patents, cited to a handful of Globus’s patents or
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`published patent applications that ultimately lead to issued patents in “Globus’s patent portfolio.”
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`D.I. 42 at ¶¶ 57-64. See Finjan, Inc. v. Cisco Sys. Inc., 2017 WL 2462423, at *5 (N.D. Cal. June
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`7, 2017) (“[T]he FAC never ties this general knowledge of [plaintiff’s] patent portfolio to the
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`Asserted Patents, nor makes any factual allegations that [defendant] specifically learned of the
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`Asserted Patents. Knowledge of a patent portfolio generally is not the same thing as knowledge
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`of a specific patent.”). To be clear, throughout its multiple pages of alleged facts, Plaintiff does
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`not point to a single instance when Life Spine cited to any of the Asserted Patents as issued. And
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`the vast majority of published patent applications and issued patents that Plaintiff mentions are not
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`asserted in this case. These bare bones allegations are insufficient to establish knowledge of the
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`Asserted Patents for two primary reasons.
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`First, Plaintiff’s allegations are insufficient as a matter of law to establish that Life Spine
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`had knowledge of any of the Asserted Patents. It is well settled in this District that knowledge of
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`a patent application does not establish knowledge of a patent that later issues from that application.
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`9
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`

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`Case 1:21-cv-01445-JPM Document 46 Filed 05/31/22 Page 15 of 24 PageID #: 1701
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`See, e.g., Helios Streaming, LLC v. Vudu, Inc., 2020 WL 2332045, at *3 (D. Del. May 11, 2020)
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`(adopted by 2020 WL 3167641 (D. Del. June 15, 2020)) (“A patent application does not provide
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`notice of the resulting patent for indirect . . . infringement.”) (citation omitted); see also State
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`Indus., Inc. v. A.O. Smith Corp., 751 F.2d 1226, 1236 (Fed. Cir. 1985) (“To willfully infringe a
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`patent, the patent must exist and one must have knowledge of it. … Filing an application is no
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`guarantee any patent will issue ... [and] the scope of claims in patents that do issue ... is something
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`totally unforeseeable.”). Thus, regardless of whether Life Spine was actually aware of the
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`application that ultimately led to any of the Asserted Patents (which Plaintiff does not plausibly
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`allege), such knowledge is insufficient to establish knowledge of the patent itself.
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`Second, Plaintiff’s allegations are factually insufficient to infer Life Spine had actual
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`knowledge of any of the Asserted Patents. Plaintiff alleges no facts to infer that Life Spine learned
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`that any of the referenced patent applications ever led to issued patents that are asserted in this
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`case. See NexStep, Inc. v. Comcast Cable Comm’ns., LLC, 2019 WL 5626647, at *3 (D. Del. Oct.
`
`31, 2019) (adopted by 2019 WL 11663798 (D. Del. Nov. 15, 2019) (“To willfully infringe a patent,
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`the patent must exist and one must have knowledge of it. . . . . Filing an application is no guarantee
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`any patent will issue and a very substantial percentage of applications never result in patents.”)
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`(citation omitted).
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`While Plaintiff alleges that Life Spine cited patent applications that ultimately led to the
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`’732 and ’739 patents asserted in this case (see D.I. 42 at ¶¶ 58, 64), Plaintiff alleges no facts to
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`show that Life Spine had any awareness that any of those applications were connected to the as
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`issued ’732 or ’739 Patents. Knowledge of an application does not equate to knowledge of a
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`patent. See Robocast, Inc. v. Microsoft Corp., 21 F. Supp. 3d 320, 335 (D. Del. 2014) (“There
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`appears to be no controlling case law for the proposition that [defendant] was obligated to have
`
`10
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`Case 1:21-cv-01445-JPM Document 46 Filed 05/31/22 Page 16 of 24 PageID #: 1702
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`undertaken an affirmative investigation to determine if [plaintiff’s] application had matured into a
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`patent. . . . It seems contrary [to existing case law] to . . . require a defendant to undertake a search
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`to see if a patent existed in the first place.”). Furthermore, courts in this District have found that
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`“[t]he fact that the [asserted] patent was referenced during prosecution of two of defendant’s over
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`1,700 pat