Case 1:21-cv-01445-JPM Document 90 Filed 01/20/23 Page 1 of 10 PageID #: 2130
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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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`Case No. 1:21-cv-01445-JPM
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`ORDER DENYING DEFENDANT’S MOTION TO DISMISS
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`Before the Court is Defendant Life Spine, Inc.’s (“Life Spine”) Motion to Dismiss and
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`accompanying Opening Brief, both filed on May 31, 2022. (ECF Nos. 45, 46.) Plaintiff Globus
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`Medical, Inc. (“Globus”) filed a Response in Opposition on June 14, 2022. (ECF No. 51.) Life
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`Spine filed a Reply on June 21, 2022. (ECF No. 53.) For the reasons discussed below, the motion
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`is DENIED.
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`I.
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`BACKGROUND
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`A.
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`Factual Background
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` Globus is a corporation organized under the laws of the State of Delaware, with its
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`principal place of business located in Audubon, Pennsylvania. (ECF No. 42 ¶ 2.) Life Spine is a
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`corporation organized under the laws of the State of Delaware, with its principal place of business
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`located in Huntley, Illinois. (Id. ¶ 3.) Both parties are musculoskeletal implant manufacturers,
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`who make different types of medical prostheses and implant devices. (Id. ¶¶ 7, 19.)
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`The patents, products, and methods at issue in the instant action are intervertebral
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`expandable implants, surgical systems, and methods used in spinal fusion procedures. (Id.¶ 8.)
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`Spinal fusion is a procedure in which adjacent vertebrae are fused together at an appropriate
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`distance to treat painful spine conditions such as degenerative disc disease. (Id.) To accomplish
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`this fusion, an implant1 is placed between spinal vertebrae to maintain proper spacing while bone
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`grows between the vertebrae, fusing them into a single bone. (Id.) Implants may be made from
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`bone harvested from the patient or synthetic material. (Id. ¶ 9.) In the past, implants were of a
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`fixed size and “hammered” into place. (Id. ¶ 10.) Expandable implants were later developed,
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`which may be inserted into the intervertebral space in a “contracted” configuration, and then
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`expanded after placement. (Id. ¶ 10.) This process is less traumatic than “hammering” in a spacer
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`of a fixed size, and may be carried out using less invasive surgical techniques. (Id. ¶¶ 10, 12.)
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`Implants may be attached to the vertebrae with different types of fasteners, including traditional
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`screws or curved anchors. (Id. ¶¶ 13, 14.)
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`Globus is the assignee of U.S. Patent Nos. 8,845,731 (the “’731 Patent”), U.S. Patent No.
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`8,845,732 (the “’732 Patent”), U.S. Patent No. 9,402,739 (the “’739 Patent”), U.S. Patent No.
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`9,956,087 (the “’087 Patent”), U.S. Patent No. 10,137,001 (the “’001 Patent”), U.S. Patent No.
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`10,925,752 (the “’752 Patent”), U.S. Patent No. 10,973,649 (the “’649 Patent”), and U.S. Patent
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`No. 11,065,128 (the “’128 Patent”) (together, the “asserted patents”) and owns all rights of
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`recovery for infringement of these patents. (Id. ¶ 21.)
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`Globus alleges that Life Spine’s PROLIFT, PROLIFT Lateral, PROLIFT Lateral Fixated,
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`PROLIFT Lateral Helo, and Dyna-Link Titanium implants (the “accused products”) infringe one
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`or more of the asserted patents. (Id.¶¶ 38, 45.) Globus also alleges that the surgical methods used
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`to install the accused products infringe one or more of the asserted patents. (Id.¶ 46.)
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`Globus alleges that Life Spine actively induces infringement of the patents at issue in
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`violation of 35 U.S.C. § 271(b) by encouraging third parties to infringe one or more of the asserted
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`1 The Complaint uses the terms “spacer” and “implant” to refer to similar devices. (See ECF No.
`42 ¶ 10)
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`patents. (Id.¶¶ 67, 68, 89.) Specifically, Globus alleges that Life Spine encourages its third-party
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`distributors to sell, and surgeons to use, the accused products. (Id. ¶ 68.) Globus also alleges that
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`Life Spine’s infringement of the asserted patents was willful because Life Spine had knowledge
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`or notice of each asserted patent and deliberately continued to infringe. (See generally Id.)
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`B.
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`Procedural Background
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`Globus filed its Complaint accusing Life Spine of infringing its patents on October 13,
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`2021. (ECF No. 1.)
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`i.
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`The First Motion to Dismiss
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`Life Spine filed a Motion to Dismiss and accompanying Opening Brief on December 6,
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`2021. (ECF Nos. 9, 10.) Globus filed an Amended Complaint on January 10, 2022. (ECF No.
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`15.) The Court denied Life Spine’s Motion to Dismiss as moot in light of the Amended Complaint
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`on January 24, 2022. (ECF No. 16.)
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`ii.
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`The Second Motion to Dismiss
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`Life Spine filed a Renewed Motion to Dismiss and accompanying Opening Brief on February 9,
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`2022. (ECF Nos. 18, 19.) Globus filed a Response in Opposition on March 2, 2022. (ECF No.
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`22.) Life Spine filed a Reply on March 16, 2022. (ECF No. 24.) Globus filed a Second Amended
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`Complaint on May 10, 2022. (ECF No. 42.) The Court denied Life Spine’s Renewed Motion to
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`Dismiss as moot in light of the Second Amended Complaint on August 17, 2022. (ECF No. 73.)
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`iii.
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`The Instant Motion to Dismiss
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`Life Spine filed the Instant Motion to Dismiss and accompanying Opening Brief on May
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`31, 2022. (ECF Nos. 45, 46.) Globus filed a Response in Opposition on June 14, 2022. (ECF No.
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`51.) Life Spine filed a Reply on June 21, 2022. (ECF No. 53.)
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`II.
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`LEGAL STANDARD
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`When reviewing a motion to dismiss pursuant to Federal Rule of Civil Procedure 12(b)(6),
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`the Court must accept the complaint’s factual allegations as true. See Bell Atl. Corp. v. Twombly,
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`550 U.S. 544, 555–56 (2007). “Though ‘detailed factual allegations’ are not required, a complaint
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`must do more than simply provide ‘labels and conclusions’ or ‘a formulaic recitation of the
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`elements of a cause of action.’” Davis v. Abington Mem’l Hosp., 765 F.3d 236, 241 (3d Cir.
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`2014) (quoting Twombly, 550 U.S. at 555). A complainant must plead facts sufficient to show
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`that a claim has “substantive plausibility.” Id. at 347. That plausibility must be found on the face
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`of the complaint. Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009).
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`III. ANALYSIS
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`Life Spine argues that Globus has failed to satisfy the standards for pleading induced
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`infringement and willfulness-based enhanced damages in its Second Amended Complaint. (ECF
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`No. 46 at PageID 1693.) Life Spine argues that Globus’s allegations do not support “a plausible
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`inference that Life Spine had actual pre-suit knowledge of the Asserted Patents, as required by the
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`law for both induced and willful infringement” and that Globus has not alleged “facts to support
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`an inference that Life Spine knew or should have known that its conduct amounted to infringement
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`of the Asserted Patents.” (Id.)
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`A.
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`Induced Infringement
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`Life Spine argues that Globus has failed to allege facts “plausibly showing that Life Spine
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`had the requisite actual knowledge of the Asserted Patents at the time of the alleged infringement”
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`or that “Life Spine was ‘willfully blind’ to the disclosure of the Asserted Patents and their
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`infringement by third parties.” (Id. at PageID 1697.) Life Spine further argues that Globus fails to
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`allege facts plausibly showing that Life Spine had the specific intent to induce infringement.” (Id.)
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`35 U.S.C. § 271(b) provides that “[w]hoever actively induces infringement of a patent shall
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`be liable as an infringer.” “[A]ctive inducement has three elements: knowledge of the patent;
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`knowledge that the induced acts will infringe; and intent to bring about the desired result, which
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`is infringement.” Memory Integrity, LLC v. Intel Corp., 144 F. Supp. 3d. 1185, 1193 (Fed. Cir.
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`2015) (internal quotations omitted). “For an allegation of induced infringement to survive a
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`motion to dismiss, a complaint must plead facts plausibly showing that the accused infringer
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`‘specifically intended [another party] to infringe [the patent] and knew that the [other party]’s acts
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`constituted infringement.’” Lifetime Indus., Inc. v. Trim-Lok, Inc.¸869 F.3d 1372, 1379 (Fed. Cir.
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`2017) (quoting In re Bill of Lading Transmission & Processing Sys. Patent Litig., 681 F.3d 1323,
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`1339 (Fed. Cir. 2012)).
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`First, Life Spine argues that Globus’s allegation that Life Spine was on notice of the
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`asserted patents because Globus manufactured and sold its products marked in accordance with 35
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`U.S.C. § 287(a) is insufficient to show knowledge because Globus failed to allege the product was
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`marked at the time that Life Spine allegedly had access to the product. (ECF No. 46 at PageID
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`1698–1700.) Life Spine argues that constructive notice is insufficient to prove actual knowledge,
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`as required to prove induced infringement. (Id. at PageID 1699.)
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`Second, Life Spine argues that Globus’s allegation that Life Spine was aware of Globus’s
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`patents because it cited Globus’s patents and patent applications in its own patent applications is
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`insufficient because Globus “does not point to a single instance when Life Spine cited to any of
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`the Asserted Patents as issued.” (Id. at PageID 1700.) Life Spine argues that knowledge of a
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`patent application is insufficient to establish knowledge of a patent that later issues from that
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`application, and that Globus “alleges no facts to infer that Life Spine learned that any of the
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`referenced patent applications ever led to issued patents that are asserted in this case.” (Id. at
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`PageID 1700–01.)
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`Third, Life Spine argues that Globus’s allegations that Life Spine cited multiple Globus
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`products in its 510(k) submissions to the FDA is insufficient to show knowledge, because Globus
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`has failed to argue how knowledge of its products resulted in knowledge of the asserted patents.
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`(Id. at PageID 1702.)
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`Fourth, Life Spine argues that Globus’s allegation that Life Spine’s engineers studied
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`publicly available information about spinal implants and existing patents in the spinal fusion space
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`is insufficient to show actual knowledge, because Globus does not allege facts regarding Life
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`Spine’s actual knowledge of the specific patents at issue in the instant action. (Id. at PageID 1703.)
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`Life Spine further argues that Globus’s assertions that the patents at issue have been cited by
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`patents or applications belonging to third parties is irrelevant to Life Spine’s actual knowledge.
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`(Id.)
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`Fifth, Life Spine argues that Globus has not alleged facts showing that Life Spine was
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`willfully blind to the disclosures of the asserted patents and their infringement by third parties.
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`(Id. at PageID 1704.) Life Spine argues that Globus has not alleged facts showing that “(1) the
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`defendant subjectively believed that there was a high probability that a fact existed and (2) the
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`defendant took deliberate actions to avoid learning of that fact.” (Id. at PageID 1704; See also
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`Global-Tech Appliances, Inc. v. SEB S.A., 563 U.S. 754, 769 (2011) (noting that these are the two
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`basic requirements for a showing of willful blindness).)
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`Life Spine also argues that Globus has failed to plead facts supporting a plausible inference
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`of Life Spine’s specific intent to induce others to infringe. (ECF No. 46 at PageID 1705.) Life
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`Spine argues that Globus has failed to plead that Life Spine had knowledge of the asserted patents
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`or knowledge that a third party’s acts constituted infringement. (Id. at PageID 1706.) Life Spine
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`argues that evidence of marketing activities and encouraging surgeons to use and learn about the
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`accused products and methods are insufficient to demonstrate a specific intend to induce
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`infringement. (Id. at PageID 1705–07.) Life Spine argues that Federal Circuit precedent requires
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`the plaintiff to show that defendant knew that the accused products were both patented and
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`infringing, and that Globus has failed to allege that Life Spine knew it was causing infringement.
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`(Id. at PageID 1707–08 (citing Fujitsu Ltd. v. Netgear Inc., 620 F.3d 1321, 1330 (Fed. Cir. 2010)).)
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`Globus has alleged sufficient facts to show a substantial plausibility that Life Spine induced
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`infringement of the asserted patents. Globus alleges that Life Spine studied competitors’ products
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`and patents during the development of the accused products, and points to testimony of Life
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`Spine’s former engineering manager supporting this assertion. (ECF No. 42 ¶ 35.) Globus has
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`also alleged that Life Spine cited Globus’s products, which may have been marked with relevant
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`patent numbers, in its 510(k) submissions seeking FDA approval of the PROLIFT devices. (Id. ¶
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`53.) Globus also points to evidence that at least one Life Spine employee also reviewed
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`competitors’ patents, including potentially one or more of the asserted patents, as part of the 510(k)
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`submissions. (Id.)
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`Globus also points to testimony from Life Spine employees testifying that they would
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`conduct research and investigations into competitors’ existing products and patents, and that
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`information regarding the accused Patents was the top result for certain Google searches relating
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`to Globus’s products. (Id. ¶ 55.) These alleged facts, as well as others alleged throughout the
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`Second Amended Complaint, are sufficient to demonstrate a substantial plausibility that Life Spine
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`had knowledge of the asserted patents.
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`Globus argues that Life Spine’s knowledge of infringement and specific intent to induce
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`infringement can be plausibly inferred from the totality of factual allegations in the Second
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`Amended Complaint. (ECF No. 51 at PageID 1743.) Globus argues that it can reasonably be
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`inferred that Life Spine knew its products infringed on the asserted patents, given Life Spine’s
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`technical expertise and knowledge of its own products. (Id. at PageID 1744.) Globus further points
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`to testimony that Life Spine greatly valued its third-party distributors who sold and marketed the
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`accused products. (ECF No. 42 ¶ 84.) Globus also highlights that the “foundation” of a business
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`in the spinal implant industry is its portfolio of intellectual property, and as such corporations such
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`as Life Spine “monitor competitors’ patent portfolios.” (Id. ¶ 19; ECF No. 51 at PageID 1746.)
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`Globus makes numerous additional allegations throughout the Second Amended Complaint that
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`Life Spine has induced others to sell or use the accused products and methods, and each of these
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`actions can constitute infringement. (See generally ECF No. 42; 35 U.S.C. § 271(a).) These
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`alleged facts are sufficient to demonstrate a substantial plausibility that Life Spine knew or should
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`have known that the conduct at issue constituted infringement and that it intended to induce third
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`parties to engage in this conduct.
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` Because Globus has alleged facts sufficient to demonstrate a substantial plausibility that
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`each of the elements for induced infringement have been adequately asserted, dismissal is
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`inappropriate on this issue.
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`B.
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`Enhanced Damages Under Section 284 for Willful Infringement
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`Life Spine argues that Globus “makes no assertions and alleges no facts to support a
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`plausible inference that Life Spine ‘knew, or should have known, that its conduct amounted to
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`infringement of the patent.’” (ECF No. 46 at PageID 1709.) Life Spine argues that Globus’s
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`allegations that Life Spine had knowledge of the existence of asserted patents are insufficient to
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`demonstrate that Life Spine also had knowledge that its acts constituted infringement. (Id. at
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`PageID 1709.)
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`35 U.S.C. § 284 “gives district courts the discretion to award enhanced damages against
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`those guilty of patent infringement.” Halo Elecs., Inc. v. Pulse Elecs., Inc., 579 U.S. 93, 110
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`(2016). “[T]he court may increase the damages up to three times the amount found or assessed.”
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`35 U.S.C. § 284. While enhanced damages may be used to punish a range of inappropriate
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`conduct,
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`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.”
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`Deere & Co. v. AGCO Corp., 1:18-cv-00827-CFC-JLH, 2019 WL 668492, at *3 (D. Del. Feb. 19,
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`2019) (collecting cases).
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`“[T]he concept of ‘willfulness’ requires a jury to find no more than deliberate or intentional
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`infringement” and may be shown by the “subjective willfulness of a patent infringer, . . . without
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`regard to whether his infringement was objectively reckless.” Eko Brands, LLC v. Adrian Rivera
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`Maynez Enterprises, Inc., 946 F.3d 1367, 1378 (quoting Halo, 579 U.S. at 105).
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`a willful infringement-based claim for enhanced damages survives a motion to dismiss if
`it alleges facts from which it can be plausibly inferred that the party accused of
`infringement (1) had knowledge of or was willfully blind to the existence of the asserted
`patent and (2) had knowledge of or was willfully blind to the fact that the party’s alleged
`conduct constituted, induced, or contributed to infringement of the asserted patent.
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`Dynamic Data Techs., LLC v. Amlogic Holdings Ltd., Civil Action No. 19-1239-CFC, 2020 WS
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`4365809, *5 (D. Del. July 30, 2020).
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`As discussed in the above analysis regarding induced infringement, Globus has pled facts
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`from which it can be plausibly inferred that Life Spine knew of or was willfully blind to the
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`existence of the asserted patents and knew or was willfully blind to the fact that its conduct
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`amounted to infringement of one or more asserted patent. (Supra A. Induced Infringement.)
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`Accordingly, dismissal is inappropriate on this issue.
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`IV. CONCLUSION
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`For the reasons discussed above, the Court DENIES Life Spine’s Motion to Dismiss.
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`IT IS SO ORDERED, this 20th day of January, 2023.
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` s/ Jon P. McCalla
`JON P. McCALLA
`UNITED STATES DISTRICT JUDGE
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