Plaintiff,
`
`
`LIFE SPINE, INC.,
`
`
`v.
`
`Defendant.
`
`
`
`
`
`
`Case 1:21-cv-01445-JPM Document 97-1 Filed 02/27/23 Page 1 of 16 PageID #: 2256
`
`
`
`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
`MEMORANDUM OF LAW IN SUPPORT OF
`MOTION TO STRIKE AFFIRMATIVE DEFENSES
`
`
`
`WEIR GREENBLATT PIERCE LLP
`Jeffrey S. Cianciulli (No. 4369)
`824 Market Street Mall, 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: February 27, 2023
`
`
`
`
`
`

`

`Case 1:21-cv-01445-JPM Document 97-1 Filed 02/27/23 Page 2 of 16 PageID #: 2257
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`
`
`TABLE OF CONTENTS
`
`Page
`
`NATURE AND STAGE OF PROCEEDINGS ...............................................................................1 
`
`SUMMARY OF ARGUMENT .......................................................................................................1 
`
`STATEMENT OF FACTS ..............................................................................................................3 
`
`ARGUMENT ...................................................................................................................................3 
`
`I. 
`
`II. 
`
`Legal Standard .........................................................................................................3 
`
`Life Spine’s Sixth and Ninth Affirmative Defenses Are Clearly
`Deficient ...................................................................................................................4 
`
`A. 
`
`B. 
`
`Life Spine’s Sixth Affirmative Defense Is Clearly Deficient ......................5 
`
`Life Spine’s Ninth Affirmative Defense of License and Implied
`License Is Clearly Deficient .........................................................................8 
`
`III. 
`
`The Court Should Strike Life Spine’s Defenses to Avoid Prejudice to
`Globus ....................................................................................................................11 
`
`CONCLUSION ..............................................................................................................................12 
`
`
`
`
`
`
`
`
`
`
`i
`
`

`

`Case 1:21-cv-01445-JPM Document 97-1 Filed 02/27/23 Page 3 of 16 PageID #: 2258
`
`
`
`Cases
`
`TABLE OF AUTHORITIES
`
`
`
`Page(s)
`
`Analog Devices, Inc. v. Xilinx, Inc.,
`No. 19-CV-2225-RGA, 2021 WL 466859 (D. Del. Feb. 9, 2021) ............................................2
`
`Bench Walk Lighting LLC v. Everlight Elecs. Co.,
`No. 20-CV-49-RGA, 2020 WL 5128086 (D. Del. Aug. 31, 2020) .................................5, 6, 11
`
`Cephalon, Inc. v. Slayback Pharma Ltd. Liab. Co.,
`No. CV 17-1154-CFC, 2019 WL 3497105 (D. Del. Aug. 1, 2019) ..........................................6
`
`Endo Pharms. Inc. v. Amneal Pharms., LLC,
`224 F. Supp. 3d 368 (D. Del. 2016) ...........................................................................................8
`
`Heller Fin., Inc. v. Midwhey Powder Co.,
`883 F.2d 1286 (7th Cir. 1989) ...................................................................................................4
`
`Sonos, Inc. v. D&M Holdings Inc.,
`No. CV 14-1330-RGA-MPT, 2016 WL 4249493 (D. Del. Aug. 10, 2016) .................... passim
`
`Sun Microsystems, Inc. v. Versata Enterprises, Inc.
`630 F. Supp. 2d 395 (D. Del. 2009) ................................................................................. passim
`
`Symbol Techs., Inc. v. Aruba Networks, Inc.,
`609 F. Supp. 2d 353 (D. Del. 2009) ...........................................................................................5
`
`Tenneco Auto. Operating Co. v. Visteon Corp.,
`375 F. Supp. 2d 375 (D. Del. 2005) ...........................................................................................9
`
`Wang Lab’ys v. Mitsubishi Elecs. Am.,
`103 F.3d 1571 (Fed. Cir. 1997)................................................................................................10
`
`Rules
`
`Fed. R. Civ. P. 9(b) ................................................................................................................5, 6, 11
`
`Fed. R. Civ. P. 12(b)(6)....................................................................................................................1
`
`Fed. R. Civ. P. 12(c) ........................................................................................................................6
`
`Fed. R. Civ. P. 12(f) ............................................................................................................... passim
`
`
`
`ii
`
`

`

`Case 1:21-cv-01445-JPM Document 97-1 Filed 02/27/23 Page 4 of 16 PageID #: 2259
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`
`
`NATURE AND STAGE OF PROCEEDINGS
`
`On May 10, 2022, Plaintiff Globus Medical, Inc. (“Globus”) filed a Second Amended
`
`Complaint (“SAC”) alleging infringement of a patent pertaining to intervertebral spacers and
`
`vertebral anchors by Defendant Life Spine, Inc.’s (“Life Spine”) Dyna-Link Titanium product
`
`with barb fixation, D.I. 42, and reiterating allegations of infringement of seven patents pertaining
`
`to expandable spinal implants previously asserted in Globus’s original Complaint, D.I. 1, and
`
`Amended Complaint, D.I. 15, by Life Spine’s PROLIFT products.1 On May 31, 2022, Life Spine
`
`filed a partial Rule 12(b)(6) motion to dismiss Globus’s claims for induced and willful
`
`infringement, D.I. 45, which the Court denied on January 20, 2023, D.I. 90. On February 6,
`
`2023, Life Spine filed an Answer, Defenses, and Counterclaims to Globus’s Second Amended
`
`Complaint for Patent Infringement (“Answer”), pleading twelve affirmative defenses. D.I. 93.
`
`Globus now moves under Rule 12(f) to strike Life Spine’s defenses of equitable estoppel,
`
`waiver, and unclean hands (Sixth Affirmative Defense), and its defenses of license and implied
`
`license (Ninth Affirmative Defense).
`
`SUMMARY OF ARGUMENT
`
`In its Answer, Life Spine takes a “kitchen sink” approach to pleading affirmative
`
`defenses, notwithstanding its obligation to provide more than “mere ‘bare bones conclusory
`
`allegations.’” Sun Microsystems, Inc. v. Versata Enterprises, Inc., 630 F. Supp. 2d 395, 402 (D.
`
`Del. 2009) (quoting Cintron Beverage Grp., LLC v. Depersia, No. CIV. A. 07-3043, 2008 WL
`
`1776430, at *2 (E.D. Pa. Apr. 15, 2008)) (noting that courts are not required to accept clearly
`
`
`1 The seven previously Asserted Patents are U.S. Patent No. 8,845,731 (the “’731 Patent”), U.S.
`Patent No. 8,845,732 (the “’732 Patent”), U.S. Patent No. 9,402,739 (the “’739 Patent”), U.S.
`Patent No. 9,956,087 (the “’087 Patent”), U.S. Patent No. 10,137,001 (the “’001 Patent”), U.S.
`Patent No. 10,925,752 (the “’752 Patent”), and U.S. Patent No. 10,973,649 (the “’649 Patent”).
`The additional Asserted Patent in the Second Amended Complaint is U.S. Patent No. 11,065,128
`(the “’128 Patent”).
`
`1
`
`

`

`Case 1:21-cv-01445-JPM Document 97-1 Filed 02/27/23 Page 5 of 16 PageID #: 2260
`
`
`
`deficient defenses and granting motion to strike affirmative defenses of equitable estoppel,
`
`laches, waiver, and implied license). Life Spine’s Sixth Affirmative Defense simply states that
`
`“Plaintiff’s claims for relief are barred or otherwise limited in whole or in part by the equitable
`
`doctrines of estoppel, waiver, and/or unclean hands and render the Asserted Patents
`
`unenforceable.” D.I. 93 at 23. Its Ninth Affirmative Defense is similarly conclusory: “Globus’s
`
`claims are barred, in whole or in part, by the doctrines of license, implied license, and/or
`
`exhaustion. For example, Globus’s claims are barred to the extent that their allegations rely on
`
`the operation of any licensed product or service.” Id. at 24.
`
`Courts in this District regularly strike plainly insufficient defenses under Federal Rule of
`
`Civil Procedure 12(f) in order to “clean up the pleadings, streamline litigation, and avoid
`
`unnecessary forays into immaterial matters.” Sun Microsystems, 630 F. Supp. 2d at 402 (quoting
`
`McInernery v. Moyer Lumber & Hardware, Inc., 244 F. Supp. 2d 393, 402 (E.D. Pa. 2002)).
`
`Moreover, equitable defenses like estoppel and unclean hands must be pleaded with particularity
`
`under Rule 9(b). Sonos, Inc. v. D&M Holdings Inc., No. CV 14-1330-RGA-MPT, 2016 WL
`
`4249493, at *5 (D. Del. Aug. 10, 2016), report and recommendation adopted, No. CV 14-1330-
`
`RGA, 2016 WL 4581078 (D. Del. Sept. 1, 2016). Life Spine’s cookie cutter pleading fails to
`
`meet these standards, and in some instances, its defenses are additionally foreclosed by factual
`
`averments elsewhere in the Answer. Paring down Life Spine’s defenses to exclude those with no
`
`factual basis in the pleadings and which serve no purpose in this litigation other than to distract
`
`from the relevant issues is entirely consistent with the purpose of Rule 12(f). Accordingly,
`
`2
`
`

`

`Case 1:21-cv-01445-JPM Document 97-1 Filed 02/27/23 Page 6 of 16 PageID #: 2261
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`
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`Globus moves to strike Life Spine’s defenses of equitable estoppel, waiver, unclean hands,
`
`license, and implied license.2
`
`STATEMENT OF FACTS
`
`Globus is a leading manufacturer of spinal implants, including expandable implants. D.I.
`
`42 ¶¶ 7-8. Its first expandable intervertebral implant was launched in 2011; since then, it has
`
`continued to innovate in this space through its RISE and ELSA product families. Id. ¶¶ 10-12.
`
`Globus has also released a number of non-expandable intervertebral spacer systems with curved
`
`fasteners, an improvement upon the traditional method for fixing spacers with linear screws. Id.
`
`¶¶ 13-14. These innovative products were developed in-house by Globus. Id. ¶ 14. Each of the
`
`eight Asserted Patents is associated with one or more Globus products. Id. ¶ 31.
`
`Life Spine launched its first expandable implant, PROLIFT, in 2016—four years after
`
`Globus first entered this space. Id. ¶ 34. Life Spine has admitted that it not only studied
`
`competitor products in the market when initially designing PROLIFT, but it also specifically
`
`studied expandable implant patents and copied the “functions and features” found in existing
`
`products as disclosed in their corresponding patents. Id. ¶ 35. Globus contends that Life Spine
`
`has willfully infringed the Asserted Patents through various products in its PROLIFT line, as
`
`well as its recently released Dyna-Link Titanium product with barb fixation.
`
`
`
`I.
`
`Legal Standard
`
`ARGUMENT
`
`Federal Rule of Civil Procedure 12(f) permits courts to “strike from a pleading an
`
`insufficient defense or any redundant, immaterial, impertinent, or scandalous matter.” Fed. R.
`
`
`2 With respect to Life Spine’s Ninth Affirmative Defense, this motion applies only to Life
`Spine’s license and implied license defenses. It does not apply to Life Spine’s exhaustion
`defense.
`
`3
`
`

`

`Case 1:21-cv-01445-JPM Document 97-1 Filed 02/27/23 Page 7 of 16 PageID #: 2262
`
`
`
`Civ. P. 12(f). Although Rule 12(f) motions are “generally disfavored,” courts in this District
`
`grant motions to strike affirmative defenses where the insufficiency is “clearly apparent.” Sun
`
`Microsystems, 630 F. Supp. 2d at 402 (granting motion to strike affirmative defenses of equitable
`
`estoppel, laches, waiver, and implied license); see also, e.g., Analog Devices, Inc. v. Xilinx, Inc.,
`
`No. 19-CV-2225-RGA, 2021 WL 466859, at *1 (D. Del. Feb. 9, 2021) (granting motion to strike
`
`affirmative defense of inequitable conduct); Sonos, 2016 WL 4249493, at *2 (recommending
`
`striking defenses of equitable estoppel, unclean hands, waiver, acquiescence, patent misuse, and
`
`prosecution laches). Indeed, “a court is not required to accept affirmative defenses that are mere
`
`‘bare bones conclusory allegations,’ and may strike such inadequately pleaded defenses.” Sun
`
`Microsystems, 630 F. Supp. 2d at 408 (quoting Cintron, 2008 WL 1776430, at *2).
`
`Furthermore, although “[m]options to strike under Rule 12(f) ‘should not be granted
`
`unless the presence of the surplusage will prejudice the adverse party,’” Sonos, 2016 WL
`
`4249493, at *2, such prejudice arises if that party is required to litigate insufficiently pleaded
`
`defenses, see Sun Microsystems, 630 F. Supp. 2d at 408 (noting that “striking ‘bare ones
`
`conclusory allegations’ expedites litigation”). As “[m]otions to strike serve ‘to clean up the
`
`pleadings, streamline litigation, and avoid unnecessary forays into immaterial matters,’” they
`
`have been granted when the defenses in question are clearly deficient. Id. at 402 (quoting
`
`McInernery, 244 F. Supp. 2d at 402).
`
`II.
`
`Life Spine’s Sixth and Ninth Affirmative Defenses Are Clearly Deficient
`
`Life Spine’s Sixth and Ninth Affirmative Defenses, reproduced below in their entirety,
`
`are nothing more than conclusory assertions devoid of a single supporting factual allegation. See
`
`Sonos, 2016 WL 4249493, at *2 (“A defense may be deemed meritless because it is simply a
`
`conclusory allegation which fails to provide an appropriate statement of facts or to allege the
`
`4
`
`

`

`Case 1:21-cv-01445-JPM Document 97-1 Filed 02/27/23 Page 8 of 16 PageID #: 2263
`
`
`
`necessary elements of the claims.” (citing Heller Fin., Inc. v. Midwhey Powder Co., 883 F.2d
`
`1286, 1294 (7th Cir. 1989))). These defenses are pleaded as follows:
`
`
`
`SIXTH DEFENSE
`(Equitable Estoppel, Waiver and Unclean Hands)
`
`
`Plaintiff’s claims for relief are barred or otherwise limited in whole or in
`
`part by the equitable doctrines of estoppel, waiver, and/or unclean hands and
`
`render the Asserted Patents unenforceable.
`
`
`
`NINTH DEFENSE
`(License, Implied License, Exhaustion)
`
`
`Globus’s claims are barred, in whole or in part, by the doctrines of license,
`
`implied license, and/or exhaustion. For example, Globus’s claims are barred to the
`
`extent that their allegations rely on the operation of any licensed product or
`
`service.
`
`
`D.I. 93 at 23, 24. Although the insufficiency of these defenses is apparent from their face, see
`
`Heller, 883 F.2d at 1294, they are also consistent with the deficient pleadings that other courts in
`
`this District have struck under Rule 12(f).
`
`A.
`
`Life Spine’s Sixth Affirmative Defense Is Clearly Deficient
`
`The Sixth Affirmative Defense pleads equitable estoppel, waiver, and unclean hands.
`
`These equitable doctrines operate to bar the patentee from enforcing its patent because its own
`
`conduct was misleading or otherwise inequitable. Life Spine’s Answer does not contain even a
`
`hint of the alleged conduct or statements would subject Globus to these defenses.
`
`First, equitable estoppel requires (1) “misleading words, conduct or silence” from Globus
`
`leading Life Spine to infer that Globus did not intend to enforce the Asserted Patents against Life
`
`5
`
`

`

`Case 1:21-cv-01445-JPM Document 97-1 Filed 02/27/23 Page 9 of 16 PageID #: 2264
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`
`
`Spine; (2) reliance by Life Spine; and (3) material prejudice to Life Spine as a result. Sun
`
`Microsystems, 630 F. 2d at 409; see also Symbol Techs., Inc. v. Aruba Networks, Inc., 609 F.
`
`Supp. 2d 353, 356 (D. Del. 2009) (noting that estoppel cannot arise from silence absent a “clear
`
`duty to speak” or circumstances in which “the patentee’s continued silence reenforces the
`
`defendant’s inference from the plaintiff’s known acquiescence that the defendant will be
`
`unmolested”). As this defense requires fraud or mistake, the circumstances constituting such
`
`fraud or mistake must be pleaded with particularity. Fed. R. Civ. P. 9(b). No such circumstances
`
`appear anywhere in Life Spine’s Answer.
`
`The court in Sonos, Inc. v. D&M Holdings Inc. struck an equitable estoppel defense
`
`almost identical to Life Spine’s for failure to meet the Rule 9(b) standard. Compare D.I. 93 at 24
`
`(“Plaintiff’s claims for relief are barred or otherwise limited in whole or in part by the equitable
`
`doctrines of estoppel . . . .”), with Sonos, 2016 WL 4249493, at *5 (striking defense based solely
`
`on conclusory allegation that “[Plaintiff] is barred in whole or in part by the doctrine of equitable
`
`estoppel”); see also Bench Walk Lighting LLC v. Everlight Elecs. Co., No. 20-CV-49-RGA,
`
`2020 WL 5128086, at *1 (D. Del. Aug. 31, 2020) (striking estoppel defense “which must be
`
`plead with particularity” as the defendant had “not pled sufficient (or, indeed, any) facts to
`
`support” it); Sun Microsystems, 630 F. Supp. 2d at 409 (holding defense to be “clearly
`
`insufficient” as the defendant’s pleading gave the plaintiff “no notice as to exactly what
`
`‘misleading, deceptive, or unlawful conduct’ supports a finding of equitable estoppel”).
`
`Furthermore, beyond the insufficiency of its pleading, this defense—which requires Life
`
`Spine to reasonably believe that Globus did not intend to enforce the Asserted Patents against
`
`Life Spine—is irreconcilable with Life Spine’s denial that it was aware of those same patents.
`
`The Second Amended Complaint alleges that “Life Spine is well aware of Globus, its products,
`
`6
`
`

`

`Case 1:21-cv-01445-JPM Document 97-1 Filed 02/27/23 Page 10 of 16 PageID #: 2265
`
`
`
`and its patents.” D.I. 42 ¶ 51 (emphasis added). In its Answer, Life Spine denies this allegation.
`
`D.I. 93 ¶ 51 (“To the extent the allegation [sic] of this paragraph purport to characterize the
`
`contents of a written document, that document speaks for itself. Life Spine otherwise denies the
`
`allegations of this paragraph.” (emphasis added)).3 To the extent Life Spine continues to deny
`
`that it had knowledge of Globus’s patents, its equitable estoppel defense fails as a matter of law.
`
`Second, Life Spine’s unclean hands defense is similarly “bare bones” and “conclusory,”
`
`and therefore deficient. To plead unclean hands, Life Spine must allege under Rule 9(b) that “(1)
`
`the party seeking affirmative relief (2) is guilty of conduct involving fraud, deceit,
`
`unconscionability, or bad faith (3) directly related to matter in issue (4) that injures other party
`
`(5) and affects balance of equities between litigants.” Sonos, 2016 WL 4249493, at *5 (striking
`
`unclean hands defense as the defendant failed to plead sufficient facts with particularity); see
`
`also Bench Walk, 2020 WL 5128086, at *1 (same); cf. Cephalon, Inc. v. Slayback Pharma Ltd.
`
`Liab. Co., No. CV 17-1154-CFC, 2019 WL 3497105, at *1 (D. Del. Aug. 1, 2019) (granting
`
`motion for judgment on the pleadings under Rule 12(c) as the defendant’s “conclusory allegation
`
`that the ‘[asserted] patents are unenforceable for inequitable conduct and unclean hands’ clearly
`
`fails to meet Rule 9(b)’s particularity requirement”). Life Spine fails to plead a single fact that
`
`would support any element of this defense. There is nothing in Life Spine’s Answer suggesting
`
`any fraudulent or bad faith conduct by Globus, let alone conduct so inequitable as to extinguish
`
`Globus’s right to enforce the Asserted Patents against Life Spine.
`
`
`3 Life Spine’s statement concerning the contents of a written document refers to the other
`allegation contained in paragraph 51 of the Second Amended Complaint, in which Globus
`quoted from a court transcript containing testimony given by Life Spine’s Corporate Compliance
`Officer and Manager of Contracting Operations: “Life Spine’s management team considers
`Globus a ‘direct competitor with Life Spine.’” D.I. 52 ¶ 51 (quoting Transcript of Preliminary
`Injunction Hearing at 941:12-16, Life Spine, Inc. v. Aegis Spine, Inc., No. 19 CV 7092 (N.D. Ill.
`July 26, 2021), D.I. 283).
`
`7
`
`

`

`Case 1:21-cv-01445-JPM Document 97-1 Filed 02/27/23 Page 11 of 16 PageID #: 2266
`
`
`
`Third, Life Spine fails to plead any facts to support its affirmative defense of waiver,
`
`which requires “(1) an existing right; (2) knowledge of the right; (3) and an actual intention to
`
`relinquish the right.” Sonos, 2016 WL 4249493, at *5. There is nothing in the Answer suggesting
`
`any intent on the part of Globus to relinquish its right to enforce the Asserted Patents against Life
`
`Spine. See id. (striking waiver defense based on failure to plead any facts to support this
`
`element); see also Sun Microsystems, 630 F.2d at 410 (same).
`
`
`
`Because Life Spine’s Sixth Affirmative Defense contains only “bare bones” and
`
`“conclusory” allegations, they are clearly insufficient, and the Court should grant Globus’s
`
`motion to strike Life Spine’s defenses of equitable estoppel, waiver, and unclean hands.
`
`B.
`
`Life Spine’s Ninth Affirmative Defense of License and Implied License Is
`Clearly Deficient
`
`Life Spine’s license and implied license defenses, as stated in its Ninth Affirmative
`
`Defense, should be stricken. These defenses generally require some agreement by the patentee to
`
`permit others to practice the Asserted Patents, thus foreclosing a subsequent action for
`
`infringement. Life Spine’s Answer does not allege that Globus has licensed the Asserted Patents
`
`or any other conduct by Globus permitting Life Spine to practice them. Other than identifying
`
`the defenses by name, Life Spine’s sole assertion with respect to the Ninth Affirmative Defense
`
`is conclusory and applicable only “to the extent that [Globus’s] allegations rely on the operation
`
`of any licensed product or service.” D.I. 93 at 24. Globus is at a loss to understand the meaning
`
`of this statement, which, in any event, alleges no facts.
`
`First, Life Spine’s license defense fails as a matter of law because Life Spine does not
`
`plead that Globus has ever licensed the Asserted Patents, whether to Life Spine or any other
`
`entity. Nor does Life Spine plead that it has any license to the accused products whose scope
`
`might include the Asserted Patents. Moreover, Life Spine denies that it was aware of Globus, its
`
`8
`
`

`

`Case 1:21-cv-01445-JPM Document 97-1 Filed 02/27/23 Page 12 of 16 PageID #: 2267
`
`
`
`products, and its patents. See supra pp. 6-7 (comparing Globus’s allegation of such awareness in
`
`the Second Amended Complaint with Life Spine’s denial in its Answer). Life Spine cannot
`
`simultaneously deny that it was unaware of Globus’s patents—including the Asserted Patents—
`
`while asserting in bare bones and conclusory terms that it nevertheless had an express license to
`
`practice Globus’s patents. See Sun Microsystems, 630 F. Supp. 2d at 410 (denying motion to
`
`strike license defense where alleged infringer “pointed to a specific license, as well as a specific
`
`Sun technology and a specific claim of a Sun patent allegedly covered by that license”).
`
`Second, implied license arises in the “rare” circumstance where the court finds that the
`
`patentee has waived its right to exclude others from practicing the patented invention, even in the
`
`absence of an express license. Endo Pharms. Inc. v. Amneal Pharms., LLC, 224 F. Supp. 3d 368,
`
`382 (D. Del. 2016) (quoting Wang Lab’ys v. Mitsubishi Elecs. Am., 103 F.3d 1571, 1581 (Fed.
`
`Cir. 1997)). An implied license can arise from “(1) equitable estoppel, (2) acquiescence, (3)
`
`conduct, or (4) legal estoppel.” Sun Microsystems, 630 F.2d at 411. Life Spine has not alleged
`
`facts to support any of these four grounds for finding an implied license. See id. (granting motion
`
`to strike implied license defense).
`
`Equitable estoppel, in this context, “generally requires . . . that ‘the patentee objects to the
`
`infringer’s activities, but the patentee does not seek relief under much later.” Id. (quoting Wang
`
`Lab’ys, 103 F.3d at 1581). The Answer is entirely devoid of facts suggesting that Globus
`
`unreasonably delayed in bringing this action. See id. (“Versata has failed to adequately allege
`
`that Sun improperly delayed in seeking relief.”). Indeed, with respect to the ’128 Patent, the
`
`Second Amended Complaint alleges that Life Spine announced the accused product—Dyna-Link
`
`Titanium used with “barb fixation”— as “now . . . available” on March 14, 2022. D.I. 42 ¶ 45.
`
`After notifying Life Spine of its infringement of the ’128 Patent on March 25, 2022, Globus
`
`9
`
`

`

`Case 1:21-cv-01445-JPM Document 97-1 Filed 02/27/23 Page 13 of 16 PageID #: 2268
`
`
`
`provided Life Spine with a draft of the Second Amended Complaint and an exemplary claim
`
`chart on April 26, 2022, before filing the Second Amended Complaint to add the ’128 Patent to
`
`this action on May 10, 2022. Id. ¶ 85; see also D.I. 93 ¶ 85 (admitting receipt of Globus’s notice
`
`and draft materials on March 25 and April 26, respectively). Life Spine’s Answer lacks any
`
`factual support that would suggest an implied license due to equitable estoppel.
`
`Implied license by acquiescence and implied license by conduct both require the patentee
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`to have consented in some fashion to the alleged infringement. See Sun Microsystems, 630 F.
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`Supp. 2d at 411 (“An implied license by acquiescence arises where ‘a plaintiff was bound to
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`know that the royalties it received were for devices corresponding to the patent in suit, [thus
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`justifying] defendant . . . in concluding that plaintiff consented to the manufacture of the accused
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`devices within the scope of the asserted patent.” (quoting AMP, Inc. v. United States, 389 F.2d
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`488, 452 n.4 (Ct. Cl. 1968))); Tenneco Auto. Operating Co. v. Visteon Corp., 375 F. Supp. 2d
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`375, 384 (D. Del. 2005) (“A defendant establishes a defense of implied license through conduct
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`by showing that: (1) a relationship existed between plaintiff and defendant; (2) within that
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`relationship, plaintiff granted defendant a right to use plaintiff’s patents; (3) plaintiff received
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`valuable consideration for the grant of right; (4) plaintiff’s statements and conduct created the
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`impression that plaintiff consented to defendant’s use of plaintiff's patents; (5) plaintiff denied
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`that defendant had an implied license.” (citing Wang Lab’ys, 103 F.3d at 1579)). Life Spine’s
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`Answer pleads no facts to support any element of either type of implied license. It does not
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`allege that Globus granted any rights to the Asserted Patents under any existing relationship with
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`Life Spine, or that it consented, by acquiescence or by conduct, to Life Spine’s infringement, or
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`that Globus ever received in exchange any “royalties” or “valuable consideration.”
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`Case 1:21-cv-01445-JPM Document 97-1 Filed 02/27/23 Page 14 of 16 PageID #: 2269
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`For the same reason, the Answer contains no factual allegations that might support the
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`fourth basis for finding an implied license—legal estoppel—which “refers to a narrower category
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`of conduct encompassing scenarios where a patentee has licensed or assigned a right, received
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`consideration, and then sought to derogate from the right granted.” Wang Lab’ys, 103 F.3d at
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`1581 (describing example where “a patentee granted a license to, and received payment from, the
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`United States for use of an ‘idea’ which later became the subject matter of its patent,” but
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`subsequently “discovered a preexisting patent covering an aspect of the invention,” acquired that
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`preexisting patent, and “sued the government for infringement”).
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`As Life Spine’s license and implied license defenses are clearly insufficient on their face,
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`foreclosed by Life Spine’s own Answer, or both, they should be struck under Rule 12(f).
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`III. The Court Should Strike Life Spine’s Defenses to Avoid Prejudice to Globus
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`Striking Life Spine’s Sixth Affirmative Defense in its entirety and its Ninth Affirmative
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`Defense with respect to license and implied license would avoid prejudicing Globus, who would
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`otherwise be forced to litigate these clearly insufficient defenses. Life Spine pleaded twelve
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`affirmative defenses, some of which invoke multiple legal doctrines. See D.I. 93 at 22-24
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`(asserting (1) failure to state a claim; (2) no infringement; (3) no willful infringement; (4)
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`invalidity; (5) prosecution history estoppel; (6) equitable estoppel, waiver, and unclean hands;
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`(7) notice, damages, and costs; (8) no immediate or irreparable harm; (9) license, implied license,
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`and exhaustion; (10) acts of others; (11) ensnarement; and (12) lack of standing). Although all of
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`these defenses are bare bones and conclusory, the instant motion is limited to those defenses that
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`appear entirely divorced from the actual issues in this litigation and would require Globus to
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`litigate issues not otherwise implicated. See Sonos, 2016 WL 429493 (noting that motions to
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`strike “streamline litigation” and “avoid unnecessary forays into immaterial matters”).
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`Case 1:21-cv-01445-JPM Document 97-1 Filed 02/27/23 Page 15 of 16 PageID #: 2270
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`For example, Life Spine’s failure to plead any facts to support its defenses of equitable
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`estoppel, waiver, unclean hands, license, and implied license—at least two of which must be
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`pleaded with particularity4—means that Globus may need to expend several of its twenty-five
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`interrogatories to inquire about defenses that may well have no factual basis at all. Moreover, as
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`several of these defenses turn on whether Globus engaged in certain conduct—none of which is
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`described in Life Spine’s Answer—and whether Life Spine reasonably inferred from that
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`conduct that Globus would not enforce the Asserted Patents or had consented to their use,
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`Globus may need to take depositions of witnesses that would otherwise be irrelevant. This
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`prejudice to Globus differentiates these defenses from Life Spine’s conclusory assertions of no
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`infringement or invalidity, which implicate existing issues in the litigation.
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`CONCLUSION
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`For the foregoing reasons, Globus’s motion to strike under Rule 12(f) Life Spine’s
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`affirmative defenses of equitable estoppel, waiver, unclean hands, license, and implied license
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`should be granted.
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`Dated: February 27, 2023
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`
`WEIR GREENBLATT PIERCE LLP
`
`
`/s/ Jeffrey S. Cianciulli
`Jeffrey S. Cianciulli (No. 4369)
`824 Market Street Mall, Suite 800
`Wilmington, DE 19801
`(302) 652-8181
`jcianciulli@wgpllp.com
`
`Attorneys for Plaintiff Globus Medical, Inc.
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`
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`OF COUNSEL:
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`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
`
`4 See Bench Walk, 2020 WL 5128086, at *1 (noting that waiver, as well as estoppel and unclean
`hands, is subject to Rule 9(b)).
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`Case 1:21-cv-01445-JPM Document 97-1 Filed 02/27/23 Page 16 of 16 PageID #: 2271
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`mhatch-miller@susmangodfrey.com
`gchen@susmangodfrey.com
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`
`
`
`John P. Lahad
`SUSMAN GODFREY L.L.P.
`1000 Louisiana Street, Suite 5100
`Houston, TX 77002-5096
`(713) 653-7859
`jlahad@susmangodfrey.com
`
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