Case 1:21-cv-01445-JPM Document 53 Filed 06/21/22 Page 1 of 17 PageID #: 1752
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`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`GLOBUS MEDICAL, INC.,
`
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`Plaintiff,
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`
`
`v.
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`LIFE SPINE, INC.,
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`
`Defendant.
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`
`
`C.A. No. 21-1445 (JPM)
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`DEFENDANT LIFE SPINE, INC.’S REPLY BRIEF IN SUPPORT
`OF ITS RENEWED MOTION TO DISMISS THE SECOND AMENDED COMPLAINT
`
`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 A. Nelson
`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
`
`June 21, 2022
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`

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`Case 1:21-cv-01445-JPM Document 53 Filed 06/21/22 Page 2 of 17 PageID #: 1753
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`I. 
`II. 
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`III. 
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`IV. 
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`V. 
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`TABLE OF CONTENTS
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`Page
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`SUMMARY OF ARGUMENT ...........................................................................................1 
`PLAINTIFF’S SPECULATIVE ASSERTIONS ARE INSUFFICIENT TO
`PLEAD ACTUAL KNOWLEDGE OF THE ASSERTED PATENTS ..............................1 
`PLAINTIFF HAS NOT PLED PRE-SUIT KNOWLEDGE OF INFRINGEMENT
`OR SPECIFIC INTENT TO INDUCE ................................................................................8 
`PLAINTIFF PLEADS NO FACTS TO SHOW THAT LIFE SPINE KNEW OR
`SHOULD HAVE KNOWN THAT IT WAS INFRINGING ............................................10 
`CONCLUSION ..................................................................................................................10 
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`i
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`Case 1:21-cv-01445-JPM Document 53 Filed 06/21/22 Page 3 of 17 PageID #: 1754
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`TABLE OF AUTHORITIES
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`Cases ..................................................................................................................................... Page(s)
`
`10x Genomics, Inc. v. Celsee, Inc.
`2019 WL 5595666 (D. Del. Oct. 30, 2019) ...............................................................................4
`
`Ashcroft v. Iqbal,
`556 U.S. 662 (2009) ...................................................................................................................1
`
`Bayer HealthCare LLC v. Baxalta Inc.,
`989 F.3d 964 (Fed. Cir. 2021)..................................................................................................10
`
`Bell Atlantic Corp. v. Twombly,
`550 U.S. 544 (2007) ...........................................................................................................1, 2, 6
`
`Boston Sci. Corp. v. Nevro Corp.,
` 415 F. Supp. 3d 482 (D. Del. Nov. 25, 2019) ...........................................................................9
`
`Commil USA, LLC v. Cisco Sys., Inc.,
`135 S. Ct. 1920 (2015) ...............................................................................................................8
`
`DermaFocus LLC v. Ulthera, Inc.,
`201 F. Supp. 3d 465 (D. Del. 2016) ...........................................................................................6
`
`Dodots Licensing Sols. LLC v. Lenovo Holding Co.,
`2018 WL 6629709 (D. Del. Dec. 19, 2018) ...............................................................................9
`
`Dynamic Data Techs., LLC v. Amlogic Holdings Ltd.,
`2020 WL 4365809 (D. Del. July 30, 2020) .............................................................................10
`
`Elm 3DS Innovations, LLC v. Samsung Elecs. Co.,
`2015 WL 5725768 (D. Del. Sept. 29, 2015) ..............................................................................6
`
`Evolved Wireless, LLC v. Samsung Elecs. Co.,
`2016 WL 1019667 (D. Del. Mar. 5, 2016) ............................................................................6, 7
`
`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) ...............................................................................8
`
`Imonex Servs. v. W.H. Munzprufer Dietmar Trenner GmbH,
`408 F.3d 1374 (Fed. Cir. 2005)..............................................................................................4, 6
`
`
`
`ii
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`

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`Case 1:21-cv-01445-JPM Document 53 Filed 06/21/22 Page 4 of 17 PageID #: 1755
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`
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`Lippert Components Mfg. v. MOR/ryde, Inc.,
`2018 WL 345767 (N.D. Ind. Jan. 10, 2018) ..............................................................................5
`
`Longitude Licensing v. Apple Inc.,
`2015 WL 1143071 (N.D. Cal. Mar. 13, 2015) .......................................................................4, 7
`
`Lytone Enter., Inc. v. Agrofresh Sols., Inc.,
`2021 WL 534868 (D. Del. Feb. 12, 2021) .................................................................................3
`
`Monec Holding AG v. Motorola Mobility, Inc.,
`897 F. Supp. 2d 225 (D. Del. 2012) ...............................................................................4, 7, 8, 9
`
`Nike Inc. v. Wal-Mart Stores, Inc.,
`138 F.3d 1437 (Fed. Cir. 1998)..............................................................................................4, 6
`
`Novozymes N. Am., Inc. v. Danisco US Inc.,
`2020 WL 12895027 (D. Del. Feb. 12, 2020) .........................................................................2, 3
`
`Pacing Tech, LLC. v. Garmin Int’l Inc.,
`2013 WL 444642 (S.D. Cal. Feb. 5, 2013) ................................................................................4
`
`PPG Indus. Ohio, Inc. v. Axalta Coating Sys., LLC,
`2022 WL 610740 (D. Del. Jan. 26, 2022), report and recommendation
`adopted 2022 WL 611260 (D. Del. Feb. 18, 2022) ...............................................................4, 6
`
`Princeton Digital Image Corp. v. Ubisoft Entm’t SA,
`2016 WL 6594076 (D. Del. Nov. 4, 2016) ........................................................................2, 6, 7
`
`Schuylkill Energy Resources, Inc. v. Pa. Power & Light Co.,
`113 F.3d 405 (3d Cir.1997)........................................................................................................3
`
`SIPCO, LLC v. Streetline, Inc.,
`2018 WL 762335 (D. Del. Feb. 7, 2018) .............................................................................9, 10
`
`Softview LLC v. Apple Inc.,
`2012 WL 3061027 (D. Del. July 26, 2012) ...............................................................................3
`
`Spherix Inc. v. Juniper Networks, Inc.,
`2015 WL 1517508 (D. Del. Mar. 31, 2015) ..............................................................................7
`
`State Indus., Inc. v. A.O. Smith Corp.,
`751 F.2d 1226 (Fed. Cir. 1985)..................................................................................................5
`
`Välinge Innovation AB v. Halstead New England Corp.,
`2017 WL 5196379 (D. Del. Nov. 9, 2017) ........................................................................2, 6, 7
`
`Välinge Innovation AB v. Halstead New England Corp.,
`2018 WL 2411218 (D. Del. May 29, 2018) .............................................................................10
`
`
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`iii
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`Case 1:21-cv-01445-JPM Document 53 Filed 06/21/22 Page 5 of 17 PageID #: 1756
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`VLSI Tech., LLC v. Intel Corp.,
`2019 WL 1349468 (D. Del. Mar. 26, 2019) ............................................................................10
`
`VLSI Tech. LLC v. Intel Corp.,
`2020 WL 3488584 (D. Del. June 26, 2020) ...............................................................................4
`
`Wilkerson v. New Media Tech. Charter School Inc.,
`522 F.3d 315 (3d Cir. 2008).......................................................................................................3
`
`ZapFraud, Inc. v. Barracuda Networks, Inc.,
`528 F. Supp. 3d 247 (D. Del. 2021) .......................................................................................1, 2
`
`Statutes
`
`35 U.S.C. § 271(b) .........................................................................................................................10
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`35 U.S.C. § 287(a) ...........................................................................................................................4
`
`Other Authorities
`
`North American Spine Association, 2017 Annual Report, WWW.SPINE.ORG,
`AnnualReport2017.pdf (spine.org) (last visited June 17, 2022). ............................................... 3
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`iv
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`Case 1:21-cv-01445-JPM Document 53 Filed 06/21/22 Page 6 of 17 PageID #: 1757
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`I.
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`SUMMARY OF ARGUMENT
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`In its Opposition (D.I. 51), Plaintiff Globus Medical, Inc. stretches both the facts and law to
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`argue that it is conceivable that Defendant Life Spine, Inc. knew of the Asserted Patents, but this is
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`not enough. None of Plaintiff’s allegations support a plausible inference that Life Spine had actual
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`pre-suit knowledge of the Asserted Patents. Plaintiff also fails to establish knowledge for each of the
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`patents as it must. Nor can post-suit knowledge sustain Plaintiff’s claims.1 Plaintiff asserts that its
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`alleged facts, which would be present in nearly every single patent suit between competitors, are
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`sufficient to plead both induced and willful infringement. But the logical leaps to possibility that
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`Plaintiff is asking the Court to make fall short of plausibility. See Ashcroft v. Iqbal, 556 U.S. 662,
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`678, (2009). Plaintiff’s induced and willful infringement claims should be dismissed.
`
`II.
`
`PLAINTIFF’S SPECULATIVE ASSERTIONS ARE INSUFFICIENT TO PLEAD
`ACTUAL KNOWLEDGE OF THE ASSERTED PATENTS
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`If a plaintiff does not “nudge [its] claims across the line from conceivable to plausible, [its]
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`complaint must be dismissed.” Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 570 (2007). Here,
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`Plaintiff argues that the Court should credit its tenuous allegations that Life Spine knew of the
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`Asserted Patents (allegations that essentially boil down to the fact that Plaintiff and Defendant are
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`competitors), simply because Plaintiff’s allegations are numerous. But the Court is not required to do
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`so, and quantity does not trump quality.
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`First, as it pertains to the ’128 patent, Plaintiff’s argument that drafts of the Second Amended
`
`Complaint (“SAC”) conferred the requisite knowledge is a red herring. In Zapfraud the court
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`considered whether the original complaint provided sufficient notice of the patent’s existence and
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`1 As explained in Life Spine’s renewed motion to dismiss, numerous judges in this district have held
`that the complaint alone cannot serve as the source of knowledge for induced or willful infringement
`claims, and thus Life Spine’s motion should be granted as to all post-suit conduct. See D.I. 46 at 7
`n.2 (listing cases). Life Spine respectfully submits that Zapfraud is instructive, as it gives far more
`depth to the issue of post-suit knowledge than any of the cases cited by Plaintiff. ZapFraud, Inc. v.
`Barracuda Networks, Inc., 528 F. Supp. 3d 247, 251-52 (D. Del. 2021).
`
`1
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`

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`Case 1:21-cv-01445-JPM Document 53 Filed 06/21/22 Page 7 of 17 PageID #: 1758
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`how the defendant and third parties infringed and whether that meant the plaintiff had therefore
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`stated cognizable claims for post-suit indirect infringement. Id. at 249. In deciding that it did not, the
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`court explained that the amended complaint “lacks factual allegations from which it can be inferred
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`that [defendant] knew of the existence of the [] patent (and thus also of the infringement of that
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`patent) before the filing of this suit.” Id. Here, drafts of the SAC were circulated after this lawsuit
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`was filed, for the purpose of determining whether Life Spine would oppose amending the complaint,
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`so it cannot be said that Life Spine had the requisite pre-suit knowledge of this patent. See id. at 252
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`(dismissing willfulness when knowledge was based “on the content of that complaint or a prior
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`version of the complaint filed in the same lawsuit” (emphasis added)).2
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`Second, the Court is not required to accept several individual tenuous allegations of
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`knowledge as sufficient in their totality. In Välinge Innovation AB v. Halstead New England Corp.,
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`the court granted defendant’s motion to dismiss when that plaintiff alleged that the defendant was a
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`competitor, that it was “well known in the [] industry that [plaintiff] has a substantial patent portfolio
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`covering [industry] products,” and that it licensed rights to other manufacturers. 2017 WL 5196379,
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`at *3 (D. Del. Nov. 9, 2017), report and recommendation adopted, 2018 WL 11013902 (D. Del. Jan.
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`10, 2018). The court found that “it is still too far of a leap to conclude, at least on the few facts
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`pleaded here, that it is plausible that [defendant] knew of every patent in [plaintiff’s] ‘substantial’ []
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`portfolio (including the asserted patents) and what it would take to infringe those patents.” Id.; see
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`also Princeton Digital Image Corp. v. Ubisoft Entm’t SA, 2016 WL 6594076, at *8 (D. Del. Nov. 4,
`
`2016) (pleading patent was “well-known in the relevant industry” is insufficient). Plaintiff cites
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`several inapposite cases, such as Novozymes N. Am., Inc. v. Danisco US Inc., 2020 WL 12895027, at
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`*2 (D. Del. Feb. 12, 2020), for the proposition that “[i]t is well established that factual allegations
`
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`2 This is Plaintiff’s only developed argument that Life Spine had knowledge of the ’128 patent. It
`does not even attempt to apply its remaining arguments to this newly asserted patent.
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`2
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`Case 1:21-cv-01445-JPM Document 53 Filed 06/21/22 Page 8 of 17 PageID #: 1759
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`supporting an inference of knowledge must be considered in their totality.” D.I. 51 at 5 (emphasis
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`added). Plaintiff overstates Novozymes. Indeed, the very next sentence explicitly says that “the Court
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`may consider the allegations as a whole.” Id (emphasis added). Regardless, Novozymes is easily
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`distinguished. There, defendants were aware of the asserted patent’s PCT application and
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`defendants’ representatives attended a presentation where plaintiff discussed the invention of the
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`asserted patent. Id. at *2-3. None of those facts are present here.3 And although Plaintiff alleges that
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`Life Spine attended the same conference as Plaintiff (D.I. 51 at 9), Plaintiff has not alleged that Life
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`Spine attended any presentations by Plaintiff or that the Asserted Patents were presented in any way
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`at that conference. D.I. 42 at ¶¶ 56, 65. Plaintiff argues that mere attendance at the NASS
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`conference, for example, makes it “plausible” that Life Spine had knowledge of the Asserted Patents,
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`but Plaintiff neglects to mention that NASS is a multi-day conference with hundreds of presentations
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`and thousands of attendees.4This is far too speculative an inference to ask the court to draw. See
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`Wilkerson v. New Media Tech. Charter School Inc., 522 F.3d 315, 321 (3d Cir. 2008) (“The
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`complaint must state enough facts to raise a reasonable expectation that discovery will reveal
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`evidence of [each] necessary element.”); Schuylkill Energy Resources, Inc. v. Pa. Power & Light
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`Co., 113 F.3d 405, 417 (3d Cir.1997) (explaining that this court need not accept “unsupported
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`conclusions and unwarranted inferences”). This Court can and should discount Plaintiff’s threadbare
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`allegations for their individual insufficiencies.
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`Plaintiff argues that Defendant had knowledge of the Asserted Patents because it “studied
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`3 The other cases cited are also distinguishable. Lytone Enter., Inc. v. Agrofresh Sols., Inc., 2021
`WL 534868, at *3-4 (D. Del. Feb. 12, 2021) (defendant directly cited Asserted Patent during
`prosecution of its own patent application and that plaintiff disclosed invention of asserted patent to
`defendant’s predecessor); Softview LLC v. Apple Inc., 2012 WL 3061027, at *5-6 (D. Del. July 26,
`2012) (defendant had relationship with inventor and learned of patent as an “exclusive seller”).
`4 See North American Spine Association, 2017 Annual Report, WWW.SPINE.ORG,
`AnnualReport2017.pdf (spine.org) (last visited June 17, 2022).
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`3
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`Case 1:21-cv-01445-JPM Document 53 Filed 06/21/22 Page 9 of 17 PageID #: 1760
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`similar products already in the market and the patents disclosing those existing products’ ‘functions
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`and features.’” D.I. 51 at 6.5 But the SAC fails to connect Defendant to the Asserted Patents, alleging
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`only that Life Spine “studied existing patents in the spinal fusion space.” D.I. 42 ¶ 35. Plaintiff’s
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`failure to allege knowledge of the specific Asserted Patents is fatal. See Longitude Licensing v. Apple
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`Inc., 2015 WL 1143071, at *3 (N.D. Cal. Mar. 13, 2015) (“knowledge of the specific patents-in-suit
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`before this lawsuit was filed” is required to survive a motion to dismiss). And mere participation in
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`the same market does not establish knowledge. PPG Indus. Ohio, Inc. v. Axalta Coating Sys., LLC,
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`2022 WL 610740, at *4 (D. Del. Jan. 26, 2022), report and recommendation adopted, 2022 WL
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`611260 (D. Del. Feb. 18, 2022) (no inference based on “bare allegations” of industry participation);
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`Monec Holding AG v. Motorola Mobility, Inc., 897 F. Supp. 2d 225, 232 (D. Del. 2012).
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`Later, Plaintiff adds that “Life Spine searched the Internet for its competitors’ patents.” D.I.
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`51 at 7-8. If the Court accepts this generalized allegation as establishing knowledge of the Asserted
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`Patents, then induced and willful infringement would be present in virtually every patent
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`infringement suit between competitors.6 See VLSI Tech. LLC v. Intel Corp., 2020 WL 3488584, at *5
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`(D. Del. June 26, 2020) (allegations that defendant monitored its competitors’ activities generally
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`and knew its competitors may have similar products was insufficient to establish pre-suit
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`knowledge); Pacing Tech, LLC. v. Garmin Int’l Inc., 2013 WL 444642 at *2 (S.D. Cal. Feb. 5, 2013)
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`(allegations that defendant “performs due diligence including patent searches and prior art searches”
`
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`5 Plaintiff has not alleged “reverse engineering and copying” and thus 10x Genomics, Inc. v. Celsee,
`Inc. is inapposite. 2019 WL 5595666, at *4 (D. Del. Oct. 30, 2019) (alleging a “copying” business
`model and recruiting ex-employees who brought confidential information with them.)
`6 Plaintiff’s reference to its website and 35 U.S.C. § 287(a) regarding “notice” is irrelevant—it is
`black letter law that “[c]onstructive notice . . . is insufficient” to meet the knowledge requirement for
`indirect and willful infringement, and Plaintiff has not alleged that any Life Spine employee visited
`the website. Imonex Servs. v. W.H. Munzprufer Dietmar Trenner GmbH, 408 F.3d 1374, 1377 (Fed.
`Cir. 2005); see also Nike Inc. v. Wal-Mart Stores, Inc., 138 F.3d 1437, 1446 (Fed. Cir. 1998)
`(“However, the issue of willfulness turns on the actual knowledge of the infringer, and is unrelated
`to the adequacy of constructive notice by the patentee.”).
`
`4
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`

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`Case 1:21-cv-01445-JPM Document 53 Filed 06/21/22 Page 10 of 17 PageID #: 1761
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`
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`were “too speculative to support a reasonable inference” of pre-suit knowledge); Lippert
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`Components Mfg. v. MOR/ryde, Inc., 2018 WL 345767, at *2 (N.D. Ind. Jan. 10, 2018) (allegations
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`regarding “competitors” and “actively monitoring” industry insufficient). Generic allegations of Life
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`Spine’s general knowledge of spinal fusion patents is insufficient to establish actual knowledge.
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`Next, Plaintiff asserts that because Life Spine referenced Plaintiff’s products in its 510(k)
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`submissions to the FDA in the past, it must have had knowledge of all of the Asserted Patents. D.I.
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`51 at 7. But the SAC contains no allegations regarding when Life Spine cited Plaintiff’s products in
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`its 510(k) submissions, which specific model numbers were cited in the submissions, nor which
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`specific individual Asserted Patents allegedly cover those models. D.I. 51 at 7; D.I. 42 ¶¶ 53-54.
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`These details matter. The ’739 and ’087 patents did not even issue until 2021, only a few months
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`before Globus filed suit. If Life Spine “reviewed patents as part of that [510(k)] process,” D.I. 42 ¶
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`53, then the Asserted Patents must have issued by the time of that alleged review for Life Spine to
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`plausibly have had knowledge of them. State Indus., Inc. v. A.O. Smith Corp., 751 F.2d 1226, 1236
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`(Fed. Cir. 1985) (“To willfully infringe a patent, the patent must exist and one must have knowledge
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`of it.”). “Culpability, however, is generally measured against the actor’s knowledge at the time of the
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`challenged conduct.” Halo Elecs., Inc. v. Pulse Elecs., Inc., 579 U.S. 93, 94 (2016). One cannot infer
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`from the SAC that Life Spine had actual knowledge of the Asserted Patents by virtue of its 510(k)
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`application submission because the SAC does not even allege that the application was submitted
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`after all the Asserted Patents had issued such that it could even plausibly show that Life Spine had
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`actual knowledge of the issued patents at the time of submission.7
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`It is well established that constructive notice does not equate to actual knowledge of the
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`7 Globus alleges that “[o]n October 8, 2021, Life Spine received a letter from the FDA approving its
`section 501(k) [sic] submission for a new PROLIFT product” which says nothing about when Life
`Spine supposedly “reviewed patents” for its application, if it did so at all. D.I. 42 at ¶ 54.
`
`5
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`

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`Case 1:21-cv-01445-JPM Document 53 Filed 06/21/22 Page 11 of 17 PageID #: 1762
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`Asserted Patents. Supra, n.6. Plaintiff’s attempt to avoid this fact by pointing to its website reveals
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`the weakness of its position. There are no allegations that anyone at Life Spine ever actually visited
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`Plaintiff’s website. Plaintiff makes the entirely speculative allegation that “Globus’s Patents page has
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`received thousands of total pageviews and unique pageviews, including over a hundred views
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`originating from Huntley, Illinois, where Life Spine is headquartered.” D.I. 45 ¶ 32. Plaintiff asks
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`the Court to make several logical leaps to infer that (1) someone who worked at Life Spine (and not
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`just someone located in Huntley, IL or somewhere nearby), (2) whose personal knowledge would
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`impute knowledge to Life Spine, (3) viewed Plaintiff’s patent web page, (4) after the Asserted
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`Patents had issued, (5) specifically saw the Asserted Patents listed there, and (6) understood what
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`they covered. Again, Plaintiff fails to allege a time frame, making it impossible to know whether any
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`of the Asserted Patents had issued at the time of these webpage “views.” D.I. 45 ¶ 32. Because
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`constructive notice does not substitute for actual knowledge, this allegation falls short of the
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`“plausible” standard needed to survive a motion to dismiss under Twombly. Imonex, 408 F.3d at
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`1377; Nike Inc. v. Wal-Mart Stores, Inc., 138 F.3d 1437, 1446 (Fed. Cir. 1998).
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`Plaintiff then asks the Court to infer knowledge of the Asserted Patents because it alleges the
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`spinal implant industry is “tight-knit,” Life Spine “monitor[s] competitors’ patent portfolios,” and
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`Plaintiff’s patent portfolio is “prominen[t].” D.I. 51 at 9.8 Again, this allegation is insufficient, has no
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`ties to the specific Asserted Patents, and would be present in nearly any competitor case. PPG, 2022
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`WL 610740, at *5 (allegations that “patent and award-winning technology were well-known in the
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`automotive industry” were insufficient to demonstrate pre-suit knowledge); Välinge, 2017 WL
`
`
`8 Elm 3DS Innovations, LLC v. Samsung Elecs. Co., 2015 WL 5725768, at *3 (D. Del. Sept. 29,
`2015) is inapposite and has been repeatedly distinguished. There, unlike here, defendants had “fairly
`detailed specific discussions about” patents “that shared the same specification as the asserted
`patent.” Princeton, 2016 WL 6594076 at *7-8; see also Välinge, 2017 WL 5196379 at *3;
`DermaFocus LLC v. Ulthera, Inc., 201 F. Supp. 3d 465, 471 (D. Del. 2016); Evolved Wireless, LLC
`v. Samsung Elecs. Co., 2016 WL 1019667 at *4 (D. Del. Mar. 5, 2016).
`
`6
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`

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`Case 1:21-cv-01445-JPM Document 53 Filed 06/21/22 Page 12 of 17 PageID #: 1763
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`5196379, at *3; MONEC, 897 F. Supp. 2d 225 at 232 (“participation in market” insufficient);
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`Longitude, 2015 WL 1143071 at *3 (allegations regarding portfolio size and licensing insufficient).
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`Finally, Plaintiff argues that “Life Spine consistently cited Globus’s patent portfolio—
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`including the Patents-in-Suit” during prosecution of Life Spine’s patents. D.I. 51 at 11-12. Yet, the
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`SAC does not contain a single allegation that Life Spine ever specifically cited one of the Asserted
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`Patents. The closest allegations Plaintiff makes are that Life Spine cited the application that issued
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`as the ’732 Patent (D.I. 42 ¶¶ 56 & n.9, 62, 63) and the application of a patent that is not asserted
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`here, that is related to the ’739 Patent, in other PTO proceedings (D.I. 42 ¶ 62).9 These are
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`insufficient. There is no allegation that Life Spine “directly cited to the [asserted] patent, nor to any
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`member of [an asserted] patent’s family” when prosecuting its own patents. Princeton, 2016 WL
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`6594076 at *9. Furthermore, mere reference during prosecution may not be “compelling evidence of
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`knowledge, i.e., that the patent was ‘called to the attention’ of defendant.” Spherix Inc. v. Juniper
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`Networks, Inc., 2015 WL 1517508, at *6 (D. Del. Mar. 31, 2015).10 Therefore “[t]he record simply
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`does not indicate that Defendants had any real level of engagement with the particular subject matter
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`that provides the background for the patent[s] in question.” Princeton, 2016 WL 6594076 at *9; see
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`also Välinge, 2017 WL 5196379, at *3.
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`Plaintiff also makes the conclusory assertion that “Life Spine had a practice of citing
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`Globus’s published applications after the patents had already issued” which “might be indicative of
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`willful blindness.” D.I. 51 at 13, n.8. Even if two citations to patent applications constituted a
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`9 Plaintiff does not allege that the ’087 or ’752 Patent are related to either of these.
`10 Plaintiff dismisses Spherix, where the court found the plaintiff’s knowledge allegations
`insufficient because it claimed that defendant cited the asserted patent during only two of its many
`other patent prosecutions. D.I. 51 at 12, n.7. Plaintiff states that “the number of references Life Spine
`submitted to the PTO when prosecuting its patents is not pleaded in the SAC” but that “it is
`reasonable to infer that Life Spine has far fewer than 1,700.” Id. Plaintiff misses the point of Spherix,
`which is that a handful of citations during prosecution does not rise to the level of actual knowledge
`if they were needles in a haystack. 2015 WL 1517508 at *3.
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`7
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`Case 1:21-cv-01445-JPM Document 53 Filed 06/21/22 Page 13 of 17 PageID #: 1764
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`“practice” (it doesn’t), Plaintiff only makes this point in its brief, not the SAC.. The SAC contains
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`only the conclusory assertion that Life Spine was “willfully blind to the disclosures of” the Asserted
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`Patents and their “infringement by [] third parties.” D.I. 42 at ¶¶ 88, 99, 110, 121, 129, 141, 151,
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`161.11 And willful blindness requires that (1) defendant subjectively believed there was a high
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`probability that a fact existed and (2) the defendant took a deliberate action to avoid learning that
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`fact. Helios Streaming, LLC v. Vudu, Inc., 2020 WL 2332045, at *8-9 (D. Del. May 11, 2020)
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`(dismissing willful blindness allegations that plaintiff directly notified defendant of the asserted
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`patents and defendant’s infringement, and defendant “repeatedly avoided substantive licensing
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`discussions.”). In any event, allegations that a defendant “monitors the activities of its primary
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`competitors . . . including patent litigation” and that the defendant had “constructive knowledge” of
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`the asserted patent are “insufficient to establish ‘active efforts by an inducer’ to avoid knowledge of
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`the patent-in-suit” as required by the Supreme Court. MONEC, 897 F. Supp. 2d at 234. Plaintiff has
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`neither pleaded Life Spine’s subjective belief of the Asserted Patents’ existence nor a deliberate act
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`taken to avoid that knowledge and therefore has not sufficiently pled willful blindness. Id. (willful
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`blindness requires, e.g., defendant making a deliberate effort to omit disclosure of the patent to its
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`attorney preparing a patent opinion).
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`For the foregoing reasons, Plaintiff has failed to sufficiently plead actual pre-suit knowledge
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`of the Asserted Patents, and its inducement and willfulness claims should be dismissed.
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`III.
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`PLAINTIFF HAS NOT PLED PRE-SUIT KNOWLEDGE OF INFRINGEMENT OR
`SPECIFIC INTENT TO INDUCE
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`Mere knowledge that a patent exists does not equate to knowledge of infringement of that
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`patent nor intent to induce infringement of that patent. See Commil USA, LLC v. Cisco Sys., Inc., 135
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`11 Willful blindness is alleged as an alternative to actual knowledge for induced infringement only,
`and not willful infringement.
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`8
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`Case 1:21-cv-01445-JPM Document 53 Filed 06/21/22 Page 14 of 17 PageID #: 1765
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`S. Ct. 1920, 1926 (2015); Boston Sci., 415 F. Supp. at 492; MONEC, 897 F. Supp. 2d at 235.
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`Because Plaintiff has not alleged additional facts demonstrating knowledge of infringement and
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`intent to induce infringement, Plaintiff has failed to sufficiently plead induced infringement.
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`Plaintiff puts much weight on its allegations regarding Life Spine’s “encouragement” of its
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`distributors to sell PROLIFT and that Life Spine “encouraged customers to . . . use [PROLIFT] in an
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`infringing manner.” D.I. 51 at 18-19. But merely instructing customers to use the accused products
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`does not satisfy the requirements of induced infringement. MONEC, 897 F. Supp. 2d at 234
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`(Defendant “selling, advertising, supplying and instructing its []customers on the use of the
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`infringing product” were merely “conclusory averments” that “contain[ed] no factual support to
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`establish the requisite ‘intent.’”); see also id. (“Allegations of the marketing activities of the
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`Defendants do not, on their own, demonstrate that Defendants knew such activities were infringing
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`or that Defendants possessed the specific intent to encourage another’s infringement.”); Dodots
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`Licensing Sols. LLC v. Lenovo Holding Co., 2018 WL 6629709, at *4 (D. Del. Dec. 19, 2018).
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`Plaintiff also makes note of the infringement charts that it included with the SAC. D.I. 51 at
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`19 n.13. But even where charts are included, “a bare recitation of the legal elements of an
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`inducement claim” fail to support an inference of specific intent to induce infringement. SIPCO,
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`LLC v. Streetline, Inc., 2018 WL 762335, at *1-2 (D. Del. Feb. 7, 2018) (dismissing inducement
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`claim when amended complaint added “claim charts, which appear to show how the accused
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`products meet each limitation of the asserted claims of the ten patents-in-suit” and “a portion of the
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`[defendant’s] website” but only included a “formulaic” allegation of induced infringement that
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`didn’t contain facts to support the allegation that defendant “specifically intended others to infringe
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`Plaintiff's patents.”). Plaintiff’s “formulaic” allegations of induced infringement therefore are
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`insufficiently pled. See, e.g., D.I. 42 at ¶ 88 (“Life Spine has also actively induced infringement of
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`9
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`Case 1:21-cv-01445-JPM Document 53 Filed 06/21/22 Page 15 of 17 PageID #: 1766
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`
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`the ’731 Patent pursuant to 35 U.S.C. § 271(b) by others, including non-party partners and
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`distributors of the Accused Products, as well as surgeons who use the Accused Products, directly
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`and/or indirectly, on its own and/or through its agents.”); id. at ¶¶ 99, 110, 121, 129, 141, 151, 161.
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`IV.
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`PLAINTIFF PLEADS NO FACTS TO SHOW THAT LIFE SPINE KNEW OR
`SHOULD HAVE KNOWN THAT IT WAS INFRINGING
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`While Plaintiff accuses Life Spine of a “cursory” willfulness analysis, Life Spine’s argument
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`is proportional to the facts that Plaintiff alleges regarding willful infringement; i.e., none. D.I. 51 at
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`20. Indeed, Plaintiff does not include a single citation to the SAC in its argument. Id. at 19-20. As
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`noted in the Renewed Motion to Dismiss, the only allegation that Plaintiff makes regarding willful
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`infringement is that “Life Spine’s infringement of the [Asserted Patents] has been and continues to
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`be willful, as Life Spine had notice of the [Asserted Patents] and deliberately continued to infringe.”
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`D.I. 42 at ¶¶ 92, 103, 114, 125, 134