Case 1:21-cv-01445-JPM Document 79 Filed 11/10/22 Page 1 of 11 PageID #: 1836
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`
`GLOBUS MEDICAL, INC.,
`
`
`C.A. No. 21-1445 (JPM)
`
`JURY TRIAL DEMANDED
`
`PLAINTIFF GLOBUS MEDICAL, INC.’S
`OPENING CLAIM CONSTRUCTION BRIEF
`
`
`
`WEIR GREENBLATT PIERCE LLP
`Jeffrey S. Cianciulli (No. 4369)
`824 Market Street, Suite 800
`Wilmington, DE 19801
`(302) 652-8181
`jcianciulli@wgpllp.com
`
`Attorneys for Plaintiff Globus Medical, Inc.
`
`
`OF COUNSEL:
`
`Arun S. Subramanian
`Jacob Buchdahl
`Mark Hatch-Miller
`Geng Chen
`SUSMAN GODFREY L.L.P.
`1301 Avenue of the Americas, 32nd Fl.
`New York, NY 10019
`(212) 336-8330
`asubramanian@susmangodfrey.com
`jbuchdahl@susmangodfrey.com
`mhatch-miller@susmangodfrey.com
`gchen@susmangodfrey.com
`
`
`
`
`John P. Lahad
`SUSMAN GODFREY L.L.P.
`1000 Louisiana Street, Suite 5100
`Houston, TX 77002-5096
`(713) 653-7859
`jlahad@susmangodfrey.com
`
`
`
`Dated: November 10, 2022
`
`
`
`Plaintiff,
`
`
`LIFE SPINE, INC.,
`
`
`v.
`
`Defendant.
`
`
`
`
`
`
`
`
`
`
`

`

`Case 1:21-cv-01445-JPM Document 79 Filed 11/10/22 Page 2 of 11 PageID #: 1837
`
`TABLE OF CONTENTS
`
`Page
`
`PRELIMINARY STATEMENT .....................................................................................................1 
`
`PROCEDURAL BACKGROUND ..................................................................................................3 
`
`LEGAL STANDARD ......................................................................................................................4 
`
`ARGUMENT ...................................................................................................................................5 
`
`CONCLUSION ................................................................................................................................8 
`
`
`
`
`
`
`
`
`
`
`
`ii
`
`

`

`Case 1:21-cv-01445-JPM Document 79 Filed 11/10/22 Page 3 of 11 PageID #: 1838
`
`TABLE OF AUTHORITIES
`
`
`
`Page(s)
`
`Cases
`
`Abbott Lab’ys v. Sandoz, Inc.,
`566 F.3d 1282 ............................................................................................................................5
`
`Brilliant Instruments, Inc. v. GuideTech, LLC,
`707 F.3d 1342 (Fed. Cir. 2013)..................................................................................................5
`
`Chef America, Inc. v. Lamb-Weston, Inc.,
`358 F.3d 1371 (Fed. Cir. 2004)..................................................................................................5
`
`Intel Corp. v. Qualcomm Inc.,
`21 F.4th 784 (Fed. Cir. 2021) ....................................................................................................4
`
`Liebel-Flarsheim v. Medrad, Inc.,
`358 F.3d 898 (Fed. Cir. 2004)....................................................................................................6
`
`Markman v. Westview Instruments, Inc.,
`517 U.S. 370 (1996) ...................................................................................................................6
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005)..................................................................................................7
`
`Teva Pharma USA v. Sandoz, Inc.,
`574 U.S. 318 (2015) ...................................................................................................................6
`
`iii
`
`

`

`Case 1:21-cv-01445-JPM Document 79 Filed 11/10/22 Page 4 of 11 PageID #: 1839
`
`PRELIMINARY STATEMENT
`
`Plaintiff Globus Medical, Inc. (“Globus”) submits this opening claim construction brief
`
`relating to the disputed patent terms in this case against Life Spine, Inc. (“Life Spine”).
`
`After the conclusion of the meet-and-confer process, virtually all claim construction
`
`disputes in this medical device patent dispute have been resolved among the parties.1 The
`
`technology in question relates to mechanical devices used in spine surgeries. Globus is an
`
`innovator and leader in the field. Life Spine sells copycats of Globus’s patented products.
`
`More specifically, Globus contends that Life Spine’s PROLIFT products—which bear
`
`striking similarity to Globus’s highly innovative expandable spinal fusion implants, as shown
`
`below—infringe various Globus patents, including U.S. Patent No. 10,925,752 (the “’752 Patent”).
`
`
`
`
`
`
`
`
`
`
`
`Globus’s RISE
`
`Life Spine’s PROLIFT
`
`Globus further contends that the anchors used with Life Spine’s DYNA-LINK products,
`
`non-expandable implants, infringe Globus’s U.S. Patent No. 11,065,128 (the “’128 Patent”). As
`
`
`1 The parties recently reached agreements regarding the following additional terms: “the actuator
`assembly comprises,” “expansion portion,” “at least partially spherical,” and “anchor backout
`prevention mechanism.” Globus therefore does not address those terms herein, but reserves the
`right to address the terms in its response brief to the extent that any of the arguments Life Spine’s
`opening claim construction brief deviate in any way from the parties’ prior agreements.
`
`1
`
`

`

`Case 1:21-cv-01445-JPM Document 79 Filed 11/10/22 Page 5 of 11 PageID #: 1840
`
`with PROLIFT, Life Spine’s DYNA-LINK looks remarkably similar to pre-existing Globus
`
`products.
`
`
`
`Globus’s HEDRON IA
`
`
`
`
`
`
`Life Spine’s DYNA-LINK TI
`with anchor fixation
`
`
`The sole remaining claim construction dispute concerns the following term, used in
`
`independent claim 1 of ’128 Patent, which relates solely to the infringing Dyna-Link anchors:
`
`“elongate fin.” Life Spine’s favored construction of this term has been a moving target throughout
`
`the claim construction process. Globus believes there is no need for the Court to construe the term,
`
`which uses plain, ordinary, and non-technical English words. A “fin” is a commonly understood
`
`term, and the language of the patent specifies that the “fin” of the invention must be elongated. It
`
`is as simple as that. However, to the extent the Court concludes that some construction of this
`
`claim term is required then, Globus proposes in the alternative that the Court construe the term to
`
`mean: “A protrusion extending from the elongate shank.”
`
`
`
`
`
`2
`
`

`

`Case 1:21-cv-01445-JPM Document 79 Filed 11/10/22 Page 6 of 11 PageID #: 1841
`
`PROCEDURAL BACKGROUND
`
`Claim 1 of the ’128 Patent covers “A vertebral anchor, comprising: an elongate shank
`
`extending from the head portion; and an elongate fin extending from the head portion and along a
`
`surface of the elongate shank, the elongate shank and the elongate fin forming a generally t-shaped
`
`cross-section, wherein an outer periphery of the head portion is at least partially spherical such that
`
`curved outer surfaces extend around a circumference of the head portion and an upper end of the
`
`head portion is generally planar, wherein the elongate shank further includes a concave surface”
`
`(emphasis added). Life Spine’s initial claim construction disclosure proposed the following
`
`construction for the term: “A generally flat protrusion extending from the elongate shank at an
`
`approximately 90º angle.” Life Spine initially disclosed the following intrinsic evidence
`
`supposedly supporting its construction of this term: ‘128 Patent at 7:62-8:3, 12:21-28, 13:58-14:3,
`
`15:31-51, Figs. 29, 31, 33, 35, 37, 40, and related discussion.
`
`Life Spine further disclosed the following supposed extrinsic evidence supporting the
`
`construction: “Expert testimony of Chris McDonnell regarding this term, including 1) the field and
`
`technology of the asserted patents; and 2) what a POSITA would have understood this term to
`
`mean, in light of the intrinsic evidence.” Mr. McDonnell’s expert declaration of September 16,
`
`2022 contained approximately four pages discussing this term. That portion of the expert’s
`
`declaration consisted solely of discussion of the specification—similar to what might appear in a
`
`claim construction brief, not an expert report. With regard to the “generally flat” aspect of Life
`
`Spine’s proposed construction, Mr. McDonnell merely observed that the fins depicted in certain
`
`images in the specification appeared to him to be flat. Mr. McDonnell’s declaration did not discuss
`
`dictionary definitions of “fin” or any other extrinsic evidence supporting his construction of the
`
`term “elongate fin.” At Mr. McDonnell’s October 14, 2022 deposition, the expert admitted that his
`
`3
`
`

`

`Case 1:21-cv-01445-JPM Document 79 Filed 11/10/22 Page 7 of 11 PageID #: 1842
`
`opinions about the patent were solely based on reading the specification, and agreed that the term
`
`“elongate fin” is not an established term of art in the field. Ex. A (McDonnell Tr. at 43-44).
`
`On October 28, 2022, Life Spine counsel indicated via email that Life Spine was modifying
`
`its construction of the “elongate fin” term. Life Spine counsel wrote: “[A]fter further
`
`consideration of your position on ‘elongate fin,’ we will agree to drop the 90 degree aspect from
`
`our construction; however, we continue to believe that an elongate fin must be a generally flat or
`
`flattened protrusion or appendage.” On November 1, 2022, Globus counsel wrote to Life Spine
`
`counsel proposing a compromise construction to avoid litigating a dispute over this term: “A
`
`protrusion extending from the elongate shank.” On November 2, 2022, Life Spine counsel
`
`responded: “Life Spine believes there is still a dispute whether an ‘elongate fin’ must be generally
`
`flat or flattened. We will plan to brief that issue.”
`
`In the same November 2, 2022 email, Life Spine counsel belatedly disclosed additional
`
`supposedly supporting extrinsic evidence. Life Spine counsel attached to the email PDF printouts
`
`of certain definitions of the word “fin” appearing in The Chambers Dictionary, 12th Edition; the
`
`New Oxford American Dictionary, Third Edition; and the Cambridge Advanced Learner’s
`
`Dictionary, Fourth Edition. Ex. B-D. The definitions of “fin” in the Chambers Dictionary and in
`
`the Cambridge Advanced Leaner’s Dictionary do not mention flatness; only the New Oxford
`
`American Dictionary includes flatness as part of the definition of a “fin.”
`
`On November 7, 2022, Life Spine’s counsel confirmed via email that Life Spine’s final
`
`proposed construction is “a generally flat protrusion extending from the elongate shank.”
`
`LEGAL STANDARD
`
`Patent claim terms are generally accorded their ordinary meaning—that is, their meaning
`
`to a skilled artisan at the time of the invention.” Intel Corp. v. Qualcomm Inc., 21 F.4th 784, 791
`
`(Fed. Cir. 2021). But not every term in a patent needs to be construed at the claim construction
`
`4
`
`

`

`Case 1:21-cv-01445-JPM Document 79 Filed 11/10/22 Page 8 of 11 PageID #: 1843
`
`stage. When a patent uses “ordinary, simple English words whose meaning is clear and
`
`unquestionable,” then the words “mean exactly what they say.” Chef America, Inc. v. Lamb-
`
`Weston, Inc., 358 F.3d 1371, 1373 (Fed. Cir. 2004). Moreover, “courts must take care not to import
`
`limitations into the claims from the specification” and narrow the claims’ scope to only the
`
`particular embodiments described. Abbott Lab’ys v. Sandoz, Inc., 566 F.3d 1282, 1288 (Fed. Cir.
`
`2009. Construing a term more narrowly than its plain and ordinary meaning is appropriate only
`
`when there is evidence of clear intent to impose such a limitation. See id. (“[T]his court may reach
`
`a narrower construction, limited to the embodiment(s) disclosed in the specification, when the
`
`claims themselves, the specification, or the prosecution history clearly indicate that the invention
`
`encompasses no more than that confined structure or method.” (emphasis added)).
`
`ARGUMENT
`
`
`
`There is no need for the Court to construe the term “elongate fin” from the ‘128 Patent to
`
`mean “a generally flat protrusion extending from the elongate shank.” A fin is a simple, common,
`
`widely understood word. In relevant part, claim 1 of the ‘128 Patent simply requires some kind of
`
`fin which is elongated—or, the equivalent thereof.2 To the extent the Court decides that a
`
`construction of the term is required, however, Globus agrees that the plain meaning of an “elongate
`
`fin,” in the context of the ‘128 Patent, is simply a protrusion extending from the elongate shank.
`
`
`
`Life Spine’s disclosed intrinsic evidence does not support further construing the term to
`
`require a “generally flat” protrusion. The word “flat” (or variations thereof) do not appear
`
`anywhere in the ‘128 Patent specification, other than with respect to the head portion of the shank.
`
`
`2 “To find infringement under the doctrine of equivalents, any differences between the claimed
`invention and the accused product must be insubstantial.” Brilliant Instruments, Inc. v. GuideTech,
`LLC, 707 F.3d 1342, 1346 (Fed. Cir. 2013). “One way of proving infringement under the doctrine
`of equivalents is to show, for each claim limitation, that the accused product performs substantially
`the same function in substantially the same way with substantially the same result as each claim
`limitation of the patented product.” Id. (quotation marks omitted).
`
`5
`
`

`

`Case 1:21-cv-01445-JPM Document 79 Filed 11/10/22 Page 9 of 11 PageID #: 1844
`
`128 Patent at 7:18. And there is certainly no reference anywhere in the patent to a vague concept
`
`of “general” flatness—whatever that means. However, even if the embodiments did disclose “flat”
`
`fins, limitations from preferred embodiments may not be read “into the claims absent a clear
`
`indication in the intrinsic record that the patentee intended the claims to be so limited.” Liebel-
`
`Flarsheim v. Medrad, Inc., 358 F.3d 898, 913 (Fed. Cir. 2004). There is absolutely no indication
`
`anywhere in the intrinsic evidence disclosed by Life Spine, or anywhere in the ‘128 Patent, that
`
`the patentee intended the invention’s elongate fin to be “generally flat.”
`
`Life Spine’s extrinsic evidence also does not support requiring a “generally flat” fin. As a
`
`preliminary matter, the declaration of Mr. McDonnell is not admissible and represents an
`
`impermissible attempt to use an expert as a mouthpiece for purely legal argument. As the United
`
`States Supreme Court stated in Teva Pharma USA v. Sandoz, Inc., 574 U.S. 318 (2015), “experts
`
`may be examined to explain terms of art, and the state of the art, at any given time, but they cannot
`
`be used to prove the proper or legal construction of any instrument of writing.” Id. at 332
`
`(emphasis added). Mr. McDonnell admitted at his deposition that his opinions about the patent
`
`were solely based on reading the specification, and agreed that the term “elongate fin” is not an
`
`established term of art in the field. Ex. A (McDonnell Tr. at 43-44). Further, “[w]here technical
`
`terms are used, or where the qualities of substances . . . or any similar data necessary to the
`
`comprehension of the language of the patent are unknown to the judge, the testimony of witnesses
`
`may be received upon these subjects.” Markman v. Westview Instruments, Inc., 517 U.S. 370, 388
`
`(1996).
`
`Mr. McDonnell does not provide any technical explanations, and the arguments he presents
`
`about the specification are improper subjects for expert testimony. See id. (“[I]n the actual
`
`interpretation of the patent the court proceeds upon its own responsibility, as an arbiter of the law,
`
`6
`
`

`

`Case 1:21-cv-01445-JPM Document 79 Filed 11/10/22 Page 10 of 11 PageID #: 1845
`
`giving to the patent its true and final character and force.”). In any event, it is not clear to Globus
`
`at this juncture whether Life Spine continues to rely on Mr. McDonnell’s opinions for this term,
`
`which advocates for Life Spine’s original proposed construction and concludes that any elongate
`
`fin must extend from the elongate shank at an approximately 90° angle—a requirement that Life
`
`Spine no longer supports.
`
`Neither do Life Spine’s belatedly disclosed dictionary definitions support Life Spine’s
`
`favored constructions. Like expert testimony, dictionary definitions are extrinsic evidence that are
`
`useful primarily to “shed useful light on the relevant art”; as a result, the Federal Circuit, when
`
`discussing the potential utility of dictionaries, has particularly emphasized technical dictionaries.
`
`Phillips v. AWH Corp., 415 F.3d 1303, 1317 (Fed. Cir. 2005). Life Spine provided Globus with
`
`three different definitions of “fin” from three non-technical, ordinary dictionaries. See Ex. B-D.
`
`But each of these three dictionaries defines “fin” slightly differently. The Chambers Dictionary,
`
`12th Edition, defines “fin” as, among other things, “a portion of a mechanism like a fish’s fin in
`
`shape or purpose.” None of the “fin” definitions in this dictionary refers to “general flatness” in
`
`any way. Similarly, the Cambridge Advanced Learner’s Dictionary, Fourth Edition, defines fin as
`
`a “thin vertical part sticking out of the body of especially a fish or an aircraft which helps balance
`
`and movement,” and does not refer to “general flatness.”
`
`Only one of Life Spine’s three dictionaries, the New Oxford American Dictionary, Third
`
`Edition, refers to “flatness” in the definition of “fin”—but even that definition does not support
`
`Life Spine’s vague “generally flat” construction. The fact that even Life Spine’s own extrinsic
`
`sources do not consistently cite flatness as a characteristic feature of fins is powerful evidence that
`
`Life Spine’s construction is wrong.
`
`7
`
`

`

`Case 1:21-cv-01445-JPM Document 79 Filed 11/10/22 Page 11 of 11 PageID #: 1846
`
`CONCLUSION
`
`
`
`The Court should adopt a plain and ordinary meaning construction for “elongate fin.”
`
`Alternatively, the Court should construe “elongate fin” to refer to “a protrusion extending from
`
`the elongate shank.”
`
`
`Dated: November 10, 2022
`
`
`OF COUNSEL:
`
`Arun S. Subramanian
`Jacob Buchdahl
`Mark Hatch-Miller
`Geng Chen
`SUSMAN GODFREY L.L.P.
`1301 Avenue of the Americas, 32nd Fl.
`New York, NY 10019
`(212) 336-8330
`asubramanian@susmangodfrey.com
`jbuchdahl@susmangodfrey.com
`mhatch-miller@susmangodfrey.com
`gchen@susmangodfrey.com
`
`
`
`
`John P. Lahad
`SUSMAN GODFREY L.L.P.
`1000 Louisiana Street, Suite 5100
`Houston, TX 77002-5096
`(713) 653-7859
`jlahad@susmangodfrey.com
`
`
`
`
`
`
`
`
`
`WEIR GREENBLATT PIERCE LLP
`
`
`/s/ Jeffrey S. Cianciulli
`Jeffrey S. Cianciulli (No. 4369)
`824 Market Street, Suite 800
`Wilmington, DE 19801
`(302) 652-8181
`jcianciulli@wgpllp.com
`
`Attorneys for Plaintiff Globus Medical, Inc.
`
`
`
`
`8
`
`