Case 1:21-cv-01445-JPM Document 94 Filed 02/07/23 Page 1 of 10 PageID #: 2239
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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` Case No. 1:21-cv-01445-JPM
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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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`CLAIM CONSTRUCTION ORDER
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`This case is before the Court for claim construction pursuant to Markman v. Westview
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`Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995), aff’d, 517 U.S. 370 (1996). A Markman
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`hearing was held on January 26, 2023. (ECF No. 92.) Present were Geng Chen, Mark Hatch-
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`Miller, and Jeffrey Cianciulli, counsel for Plaintiff, and Brianne Straka, Jonathon Studer, and
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`Jennifer Ying, counsel for Defendant. (Id.)
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`I.
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`BACKGROUND
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`This is a civil action for patent infringement of one or more of the claims of U.S. Patent
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`No. 8,845,731 (the “’731 Patent”), U.S. Patent No. 8,845,732 (the “’732 Patent”), U.S. Patent No.
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`9,402,739 (the “’739 Patent”), U.S. Patent No. 9,956,087 (the “’087 Patent”), U.S. Patent No.
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`10,137,001 (the “’001 Patent”), U.S. Patent No. 10,925,752 (the “’752 Patent”), U.S. Patent No.
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`10,973,649 (the “’649 Patent”), and U.S. Patent No. 11,065,128 (the “’128 Patent”) (together, the
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`“asserted patents”). (ECF No. 42 ¶ 21.)
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`1
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`Case 1:21-cv-01445-JPM Document 94 Filed 02/07/23 Page 2 of 10 PageID #: 2240
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`A.
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`Factual Background
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`On May 10, 2022, Plaintiff Globus Medical, Inc. (“Globus”) filed a Second Amended
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`Complaint alleging that Defendant Life Spine, Inc., (“Life Spine”) infringed the asserted patents.
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`(ECF No. 42.)
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`The Court has previously summarized the factual background of this case as follows:
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`The patents, products, and methods at issue in the instant action are intervertebral
`[fixed and] expandable implants, surgical systems, and methods used in spinal
`fusion procedures. ([ECF No. 42] ¶ 8.) Spinal fusion is a procedure in which
`adjacent vertebrae are fused together at an appropriate distance to treat painful spine
`conditions such as degenerative disc disease. (Id.) To accomplish this fusion, an
`implant is placed between spinal vertebrae to maintain proper spacing while bone
`grows between the vertebrae, fusing them into a single bone. (Id.) Implants may
`be made from bone harvested from the patient or synthetic material. (Id. ¶ 9.) In
`the past, implants were of a fixed size and “hammered” into place. (Id. ¶ 10.)
`Expandable implants were later developed, which may be inserted into the
`intervertebral space in a “contracted” configuration, and then expanded after
`placement. (Id. ¶ 10.) This process is less traumatic than “hammering” in a spacer
`of a fixed size, and may be carried out using less invasive surgical techniques.
`(Id. ¶¶ 10, 12.) Implants may be attached to the vertebrae with different types of
`fasteners, including traditional screws or curved anchors. (Id. ¶¶ 13, 14.)
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`Globus is the assignee of [the asserted patents] and owns all rights of recovery for
`infringement of these patents. (Id. ¶ 21.)
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`Globus alleges that Life Spine’s PROLIFT, PROLIFT Lateral, PROLIFT Lateral
`Fixated, PROLIFT Lateral Helo, and Dyna-Link Titanium implants (the “accused
`products”) infringe one or more of the asserted patents. (Id. ¶¶ 38, 45.) Globus
`also alleges that the surgical methods used to install the accused products infringe
`one or more of the asserted patents. (Id. ¶ 46.) Globus alleges that Life Spine
`actively induces infringement of the patents at issue in violation of 35 U.S.C.
`§ 271(b) by encouraging third parties to infringe one or more of the asserted patents.
`(Id. ¶¶ 67, 68, 89.) Specifically, Globus alleges that Life Spine encourages its third-
`party distributors to sell, and surgeons to use, the accused products. (Id. ¶ 68.)
`Globus also alleges that Life Spine’s infringement of the asserted patents was
`willful because Life Spine had knowledge or notice of each asserted patent and
`deliberately continued to infringe. (See generally Id.)
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`(ECF No. 90 at PageID 2130–32.)
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`Globus is a corporation organized under the laws of the State of Delaware, with its principal
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`place of business located in Audubon, Pennsylvania. (ECF No. 42 ¶ 2.) Life Spine is a corporation
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`organized under the laws of the State of Delaware, with its principal place of business located in
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`Huntley, Illinois. (Id. ¶ 3.) Both parties are musculoskeletal implant manufacturers, who make
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`different types of medical prostheses and implant devices. (Id. ¶¶ 7, 19.)
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`B.
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`Procedural Background
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`Plaintiff filed its Claim Construction Opening Brief on November 10, 2022. (ECF No. 79.)
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`Defendant filed its Claim Construction Answering Brief on December 9, 2022. (ECF No. 84.)
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`Defendant filed its Claim Construction Opening Brief on November 10, 2022. (ECF No. 80.)
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`Plaintiff filed its Claim Construction Answering Brief on December 9, 2022. (ECF No. 85.) The
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`Parties filed a Joint Statement on December 16, 2022. (ECF No. 86.) The Parties filed a
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`Supplemental Joint Claim Construction Brief on January 30, 2023. (ECF No. 91.)
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`C. The Patents-in-Suit
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`The ‘128 Patent describes a fixed-height intervertebral spacer (also referred to in the patent
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`as an implant) that includes at least one vertebral anchor. The vertebral anchor further comprises
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`a head portion, an elongate shank, and an elongate fin. (The ‘128 Patent, cl. 1.) The spacer is
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`implanted between vertebrae of a patient, causing the vertebrae to fuse together, and the vertebral
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`anchor(s) are used to secure the spacer to one or more adjacent vertebrae when it is implanted.
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`(See generally the ‘128 Patent.)
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`The Parties agree that the ’731 Patent, the ’732 Patent, the ’739 Patent, the ’087 Patent, the
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`’001 Patent, the ’752 Patent, the ’649 Patent, and the ’128 Patent do not have any claim terms that
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`require claim construction. (See ECF No. 86.)
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`II.
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`LEGAL STANDARD
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`“It is a ‘bedrock principle’ of patent law that ‘the claims of a patent define the invention to
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`which the patentee is entitled the right to exclude.’” Phillips v. AWH Corp., 415 F.3d 1303, 1312
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`(Fed. Cir. 2005) (quoting Innova/Pure Water, Inc. v. Safari Water Filtration Systems, Inc., 381
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`F.3d 1111, 1115 (Fed. Cir. 2004)). Courts, as a matter of law, must construe the claims of a patent
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`in order to ascertain precisely what it is that is patented. See id.; see also Markman v. Westview
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`Instruments, Inc., 517 U.S. 370, 387 (1996).
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`In engaging in that exercise, the words in the claims are “generally given their ordinary
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`and customary meaning,” that is, “the meaning that the term would have to a person of ordinary
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`skill in the art in question at the time of the invention.” Phillips, 415 F.3d at 1312–13 (internal
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`citations and quotation marks omitted). This ordinary and customary meaning “may be readily
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`apparent even to lay judges,” and where that is the case, claim construction involves “little more
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`than
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`the application of
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`the widely accepted meaning of commonly understood
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`words.” Id. at 1314 (citing Brown v. 3M, 265 F.3d 1349, 1352 (Fed. Cir. 2001)).
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`However, as the ordinary and customary meaning is often not immediately apparent, courts
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`must look to other sources of evidence—“the words of the claims themselves, the remainder of the
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`specification, the prosecution history, and extrinsic evidence concerning relevant scientific
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`principles, the meaning of technical terms, and the state of the art.” Id. (citing Innova, 381 F.3d at
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`1116). In Phillips, the United States Court of Appeals for the Federal Circuit provided guidance
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`on the relative weight given to evidence from these various sources. Id.
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`First, “the claims themselves provide substantial guidance as to the meaning of particular
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`claim terms,” particularly the “context in which a term is used in the asserted claim.” Id. at 1314.
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`But because claims are also part of a “fully integrated written instrument,” they must “be read in
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`Case 1:21-cv-01445-JPM Document 94 Filed 02/07/23 Page 5 of 10 PageID #: 2243
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`view of the specification, of which they are a part.” Markman, 52 F.3d at 978, 979 (citations
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`omitted). As the Federal Circuit has stressed, “[a] patent’s specification provides necessary
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`context for understanding the claims, and is always highly relevant to the claim construction
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`analysis.” Abbott Labs. v. Sandoz, Inc., 566 F.3d 1282, 1288 (Fed. Cir. 2009) (en banc in part)
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`(quoting Phillips, 415 F.3d at 1315). Further, “sometimes the specification offers practically
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`incontrovertible directions about claim meaning,” as when inventors “act as their own
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`lexicographers and give a specialized definition of claim terms,” or “intentionally disclaim, or
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`disavow, subject matter that would otherwise fall within the scope of the claim.” Id. (internal
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`citations and quotation marks omitted). But the Court must take care neither “to import limitations
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`into the claims from the specification,” nor to allow “the claims to enlarge what is patented beyond
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`what the inventor has described as the invention.” Id. at 1288 (internal citations and quotation
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`marks omitted). In addition, “a particular embodiment appearing in the written description may
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`not be read into a claim when the claim language is broader than the embodiment.” Resonate Inc.
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`v. Alteon Websystems, Inc., 338 F.3d 1360, 1364–65 (Fed. Cir. 2003).
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`The prosecution history of the patent is the other type of “intrinsic evidence,” along with
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`the specification, courts consider when determining the meaning of disputed terms. Phillips, 415
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`F.3d at 1317.
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`Finally, courts may consider extrinsic evidence—that is, “all evidence external to the
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`patent and prosecution history, including expert and inventor testimony, dictionaries, and learned
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`treatises.” Id. (quoting Markman, 52 F.3d at 980). Such evidence, however, is “less significant
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`than
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`the
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`intrinsic
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`record
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`in determining
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`the
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`legally operative meaning of claim
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`language.” Phillips, 415 F.3d at 1317 (internal quotations and citations omitted).
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`Case 1:21-cv-01445-JPM Document 94 Filed 02/07/23 Page 6 of 10 PageID #: 2244
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`In engaging in a Markman analysis, a court is not required to “repeat or restate every claim
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`term in order to comply with the ruling that claim construction is for the court.” U.S. Surgical
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`Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568 (Fed. Cir. 1997). Rather, “[c]laim construction is a
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`matter of resolution of disputed meanings and technical scope, to clarify and when necessary to
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`explain what the patentee covered by the claims, for use in the determination of infringement.” Id.
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`III. CLAIM CONSTRUCTION
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`A. Agreed-Upon Terms
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`Patent
`‘128
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`‘128
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`‘128
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`‘128
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`Term
`actuator assembly
`comprises
`expansion portion
`at least partially
`spherical
`anchor backout
`prevention
`mechanism
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`Agreed Construction
`actuator member comprises
`a portion with an angled surface that facilitates
`expansion
`no construction necessary
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`no construction necessary
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`B. Disputed Claim Term
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`1. elongate fin
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`Term
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`elongate
`fin
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`Globus's Proposed
`Construction
`plain and ordinary meaning;
`in the alternative, "a
`protrusion extending from
`the elongate shank"
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`Life Spine's
`Proposed
`Construction
`a generally flat
`protrusion extending
`from the elongate
`shank
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`Court’s
`Construction
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`a protrusion
`extending from the
`elongate shank
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`Claim
`Term
`No.
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`1
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`The parties dispute the term “elongate fin” as it appears in claim 1 of the ‘128 patent.
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`Globus argues that there is no need for the Court to construe the term “elongate fin,”
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`because the term “fin” is a simple, common, and widely understood word. (ECF No. 79 at PageID
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`1843.) Globus argues that, should the Court find that construction is necessary, that it construe
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`the term to mean “a protrusion extending from the elongate shank.” (Id.) Globus argues that the
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`term “flat” or similar terms do not appear anywhere in the specification other than when
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`referencing the head portion of the shank, and that any embodiments that do disclose a “flat” fin
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`should not be read into the claims as claim limitations. (Id. at PageID 1843–44.) Globus also
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`argues that Life Spine’s extrinsic evidence does not support its proposed construction, because
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`Life Spine impermissibly attempts to use an expert witness to opine on claim construction. (Id. at
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`PageID 1844.) Globus also argues that the dictionary definitions that Life Spine points to do not
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`support its proposed construction, because these dictionaries are non-technical dictionaries, each
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`define “fin” slightly differently, only one of the three dictionaries refers to “flatness” in the
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`definition of fin, and none of the dictionaries support the term “generally flat.” (Id. at PageID
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`1845.)
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`Life Spine argues that the ‘128 Patent’s specification describes an elongate fin exclusively
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`as a generally flat protrusion extending from the elongate shank. (ECF No. 80 at PageID 1879.)
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`Life Spine argues that each of the ‘128 Patent’s references point to figures in the patent that Life
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`Spine argues illustrate a “generally flat” fin. (Id. at PageID 1879–80.) Life Spine also argues that
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`the prosecution history supports this position, because Globus distinguished prior art on the basis
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`that “the prior art did not include a fin that ran all the way to the apex of the anchor or shank.” (Id.
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`at PageID 1881.) Life Spine also argues that the extrinsic evidence shows that the term “fin” is
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`well-understood to refer to a generally flat protrusion extending from a body. (Id. at PageID 1882.)
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`Life Spine cites the examples of fish, planes, surfboards, radiators, and similar fins to support this
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`position. (Id.) Life Spine also argues that the term “elongate” reinforces that the fin must be
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`generally flat, since it highlights that “the length of the fin is extenuated relative to its width.” (Id.
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`at PageID 1182–83.)
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`In Response, Globus argues that Life Spine has failed to establish that the patentee has
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`acted as his own lexicographer or that the patentee has disavowed the full scope of the claim, which
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`Globus argues are the only circumstances in which a term should be given a meaning other than
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`its plain and ordinary meaning. (ECF No. 85 at PageID 2099.) Globus argues that the patent
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`makes no reference to the fins being flat, and that importing such a limitation into the scope of the
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`claims from the specification would be improper. (Id. at PageID 2100–01.) Globus argues that
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`the amendment made during prosecution “concerned the meaning of ‘apex’ as it pertained to the
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`elongate shank . . . and had nothing to do with whether the elongate fin is ‘generally flat.” (Id. at
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`PageID 2101 (emphasis in original).) Globus also argues that Life Spine’s proposed construction
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`will confuse the issues, because it introduces an ambiguity regarding what would qualify as
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`“generally flat.” (Id. at PageID 2102.)
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`In Response, Life Spine argues that Globus’s proposed construction would be so broad as
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`to cover any protrusion whatsoever. (ECF No. 84 at PageID 2082–83.) Life Spine argues that it
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`is not suggesting reading a limitation into the claims, but rather that its construction of the term
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`“fin” is consistent with its common meaning. (Id. at PageID 2084.) Life Spine also argues that
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`because the ‘128 Patent does not describe or depict any elongate fins that are not generally flat,
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`Globus’s construction could render the claims invalid for lack of written description. (Id. at
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`PageID 2085.)
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`While the parties propose different constructions, at its core the only thing they disagree
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`on is whether the protrusion must be “generally flat.” Life Spine’s intrinsic and extrinsic evidence
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`does not support reading this limitation into the claim. Globus is correct in noting that the ‘128
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`patent makes no reference to the fin being flat. It also appears that the amendment made during
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`prosecution does not relate to the fins being flat, but rather relates to the fins extending entirely
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`along the length of the elongate shaft. (ECF No. 80 at PageID 1881; ECF No. 85 at PageID 2101.)
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`There are no disclaimers and very little evidence in the patent to support a limitation that the fins
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`must be flat, with the only evidence being the patent figures.
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`Additionally, Life Spine’s references to the extrinsic evidence are unconvincing. Life
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`Spine appears to take for granted that “fish, planes, surfboards, radiators, and the like” have
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`“generally flat” fins, however this assertion is not necessarily accurate. Fish oftentimes have fins
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`that are not flat, and many fish have fins that include spines or other supporting features that give
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`the fin texture or a non-flat surface. Fins on aircraft, such as wings, vertical stabilizers, and
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`horizontal stabilizers, are not necessarily flat, and in fact generally must have either convex or
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`concave surfaces to function properly. Radiator fins may take on even more complex shapes,
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`including zig-zags, rods, or irregular crimped surfaces. While Life Spine appears to argue that
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`these fins are “generally” flat, even if they are not truly flat, this highlights another issue in its
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`proposed construction. Adding “generally flat” into the definition risks causing confusion and
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`adding ambiguity into the definition. The term “flat” has a generally well-understood definition,
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`but qualifying it with “generally” makes this definition unclear.
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`The portion of the proposed construction on which both Parties agree is an accurate
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`representation of the definition of an “elongate fin” as described in the ‘128 Patent, and it is
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`improper to read in the limitation that the fin must also be “generally flat.”
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`IV.
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`SUMMARY OF CONSTRUCTION
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`Claim Term No.
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`Term
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`Court’s Construction
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`1
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`elongate fin
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`a protrusion extending from the elongate
`shank
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`SO ORDERED, this 7th day of February, 2023.
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`s/ Jon P. McCalla
` JON P. McCALLA
` UNITED STATES DISTRICT JUDGE
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