Case 3:08-cv-01512-MMA-MDD Document 467 Filed 02/14/12 Page 1 of 14
`
`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF CALIFORNIA
`
`MEDTRONIC SOFAMOR DANEK USA,
`INC., et al.,
`Plaintiff and Counterclaim Defendants,
`
`CASE NO. 08 CV 1512 MMA (MDD)
`MEMORANDUM OF DECISION
`FOLLOWING BENCH TRIAL ON
`INEQUITABLE CONDUCT
`
`vs.
`
`NUVASIVE, INC.,
`Defendant and Counterclaimant
`
`[FED. R. CIV. P. 52(a)(1)]
`
`On December 16, 2011, the Court held a one-day bench trial on NuVasive’s allegations
`that United States Patent number 5,860,973 (“‘973 patent”) is unenforceable due to inequitable
`conduct. NuVasive argues inventor Dr. Gary Karlin Michelson, and his agents, including Amedeo
`Ferraro, Lewis Anten, and Thomas Martin, (collectively, “applicants”), engaged in three discrete
`acts of misconduct during the prosecution of the ‘973 patent before the United States Patent and
`Trademark Office (“PTO”). First, the applicants allegedly withheld a relevant 1982 article
`authored by Dr. Henry V. Crock. Second, the applicants allegedly misrepresented the state of the
`prior art by stating that, “[i]n the past, spinal fusion implants have been inserted only from either
`an anterior or posterior direction, from the front or back of the patient.” [PX0326, col. 1:21-23.]
`Third, the applicants purportedly changed the priority date of the ‘973 patent from 1988 to 1995,
`after prosecution of the patent on the merits had closed.
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`WARSAW2011
`NuVasive, Inc. v. Warsaw Orthopedic, Inc.
`Case IPR2013-00206
`
`Page 1
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`

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`Case 3:08-cv-01512-MMA-MDD Document 467 Filed 02/14/12 Page 2 of 14
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`At trial,1 attorneys Luke Dauchot, Alex MacKinnon, and Nimalka Wickramasekera
`represented Warsaw, and attorneys Frank Scherkenbach, Todd Miller, and Keeley Vega
`represented NuVasive. Witnesses were sworn and called to testify; documents and other exhibits
`were offered and received into evidence; and written closing arguments and proposed findings of
`fact and conclusions of law were submitted by both parties on December 23, 2010. Having
`weighed the evidence presented in this case, for the reasons set forth below, the Court concludes
`NuVasive did not carry its burden to prove the existence of inequitable conduct during the
`prosecution of the ‘973 patent.
`
`LEGAL STANDARD
`Patent applicants and their agents owe a duty of candor, good faith, and honesty to the
`PTO. Bristol-Myers Squibb Co. v. Phone-Poulenc Rorer, Inc., 326 F.3d 1226, 1233 (Fed. Cir.
`2003). If the applicant breaches this duty, his inequitable conduct may render his patent
`unenforceable. Warner-Lambert Co. v. Schwarz Pharma, Inc., 418 F.3d 1326, 1342 (Fed. Cir.
`2005). In 2011, the Federal Circuit recognized “the problems created by the expansion and
`overuse of the inequitable conduct doctrine” and tightened the standard for establishing that a
`patentee engaged in misconduct before the PTO. Therasense, Inc. v. Becton, Dickinson & Co.,
`649 F.3d 1276, 1285 (Fed. Cir. 2011). In Therasense, the Federal Circuit noted that the judge-
`made inequitable conduct doctrine emerged from a line of infringement cases that “dealt with
`particularly egregious misconduct, including perjury, the manufacture of false evidence, and
`suppression of evidence,” but over time it grew to encompass a much broader scope of
`misconduct. Id. at 1287. The appellate court therefore sought to redirect the overused doctrine
`that has come to “plague[] not only the courts but also the entire patent system.” Id. at 1289, 1290.
`Accordingly, after Therasense, “[t]o prove inequitable conduct, the accused infringer must provide
`evidence that the applicant (1) misrepresented or omitted material information, and (2) did so with
`specific intent to deceive the PTO.” Am. Calcar, Inc. v. Am. Honda Motor Co., 651 F.3d 1318,
`1334 (Fed. Cir. 2011) (citing Therasense, 649 F.3d at 1287).
`/ / /
`
`1 Unless noted otherwise, “trial” refers to the bench trial on December 16, 2011.
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`Case 3:08-cv-01512-MMA-MDD Document 467 Filed 02/14/12 Page 3 of 14
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`I.
`
`MATERIALITY
`In cases such as this, where the patentee allegedly failed to disclose prior art to the PTO,
`the party alleging inequitable conduct must establish that the undisclosed reference is “but-for”
`material. Therasense, 649 F.3d at 1291. Stated another way, the court must determine “whether
`the PTO would have allowed the claim if it had been aware of the undisclosed reference.” Id. In
`making this determination, the court must give claims their broadest reasonable construction. Id.
`A party alleging inequitable conduct need not prove but-for materiality, however, when the
`patentee engages in affirmative egregious misconduct “such as the filing of an unmistakably false
`affidavit . . . After all, a patentee is unlikely to go to great lengths to deceive the PTO with a
`falsehood unless it believes that the falsehood will affect issuance of the patent.” Id. at 1292
`(citations omitted).
`II.
`INTENT
`With respect to intent, the “accused infringer must prove that the patentee acted with the
`specific intent to deceive the PTO.” Id. at 1290 (citation omitted). Where, as here, the alleged
`inequitable conduct involves non-disclosure of information, “clear and convincing evidence must
`show that the applicant made a deliberate decision to withhold a known material reference.” Id.
`(emphasis in original) (citation omitted). “While deceptive intent can be inferred from indirect
`and circumstantial evidence, that inference must not only be based on sufficient evidence and be
`reasonable in light of that evidence, but it must also be the single most reasonable inference able to
`be drawn from the evidence to meet the clear and convincing standard.” Am. Calcar, Inc., 651
`F.3d at 1334 (internal marks omitted) (citing Star Scientific, Inc. v. R.J. Reynolds Tobacco Co.,
`537 F.3d 1357, 1366 (Fed. Cir. 2008)). Therasense also made clear that intent and materiality are
`separate requirements, and courts can no longer use a “‘sliding scale,’ where a weak showing of
`intent may be found sufficient based on a strong showing of materiality, or vice versa.” Am.
`Calcar, Inc., 651 F.3d at 1334 (citation omitted).
`With the aforementioned principles in mind, the Court issues the following findings of fact
`and conclusions of law with respect to NuVasive’s allegations of inequitable conduct, as required
`by Federal Rule of Civil Procedure 52(a)(1).
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`FINDINGS OF FACT
`
`I.
`
`‘973 PATENT2
`1.
`The 5,860,973 (“‘973 patent”) issued on January 19, 2009 from U.S. Patent
`Application No. 741,301 (“‘301 application”), which was filed on October 30, 1996. [PX0326 at
`01-02.]
`
`The ‘973 patent teaches “a spinal fusion implant that is inserted from the side of the
`2.
`patient . . . referred to as the translateral approach to the spine.” [PX0326 at col.3:1-3.]
`3.
`The ‘973 patent states that, “all prior implants have been inserted from either the
`front or the back of the patient.” [PX0326 at col.1:65-66.]
`4.
`Claim 1 of the ‘973 patent recites: “A translateral spinal implant for insertion from
`the lateral aspect of the spine in the disc space between two adjacent vertebrae, said implant
`having a length that is greater than one half the transverse width of the vertebrae, said length being
`substantially greater than the depth of the vertebrae, and a height for contacting each of the two
`adjacent vertebrae.” [PX0326 at col.11:21-27.]
`5.
`Dr. Michelson appointed Lewis Anten and Amedeo Ferraro to prosecute his
`application for the ‘973 patent, and transact business with the PTO in connection with the
`application. [PX0325 at 34.]
`6.
`On July 25, 1997, Lewis Anten submitted an Associate Power of Attorney
`appointing Thomas H. Martin as his associate attorney to assist in prosecuting the ‘973 patent.
`[PX0325 at 142-143.]
`II.
`CROCK PUBLICATIONS
`7.
`In 1982, Dr. Crock published an article entitled “Anterior Lumbar Interbody
`Fusion—Indications for its Use and Notes on Surgical Technique,” which appeared in the peer
`reviewed journal, Clinical Orthopaedics and Related Research, volume 165 at pages 157 through
`163 (“Crock Article”). [DX5885; Tr. 9:25-10:10.]
`/ / /
`
`2 The headings used herein are solely for ease of reference and should not be read to limit the
`Court’s findings of fact and conclusions of law to any particular allegation, argument, or discussion.
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`In 1983, Dr. Crock published a book entitled, “Practice of Spinal Surgery,” which
`8.
`contains a section entitled, “Technique of Anterior Lumbar Interbody Fusion” (“Crock Book”).
`[DX5091.]
`NuVasive alleges the applicants failed to disclose the Crock publications during the
`9.
`prosecution of the’973 patent, with the specific intent to deceive the PTO.
`10.
`The applicants did not provide copies of the 1982 Crock Article or the 1983 Crock
`Book to the patent examiners in connection with prosecution of the ‘973 patent.
`11.
`Dr. Crock, however, is mentioned by name in the ‘973 patent. In the “Background
`of the Invention” section, under the heading “Description of the Related Art,” the patent states: “In
`the past, spinal fusion implants have been inserted only from either an anterior or posterior
`direction, from the front or the back of the patient. Such implants are well known in the art and
`may have cylindrical, rectangular and other shapes. In the past, Cloward, Wilterberger, Crock,
`Viche, Bagby, Brantigan, and others have taught various methods involving the drilling of holes
`across the disc space between two adjacent vertebrae of the spine for the purpose of causing an
`interbody fusion.” [PX0326 at col.1:21-29 (emphasis added).]
`12.
`The applicants cited Dr. Crock’s 1982 article in materials that they incorporated by
`reference into the application that eventually issued as the ‘973 patent.
`13.
`James Carmichael testified at trial as an expert in PTO practice and procedure,
`including the duty of candor and good faith. [Tr. 202:22-206:15.]
`14.
`Carmichael provided credible testimony that PTO examiners are supposed to
`consider applications incorporated by reference and treat them as if fully set forth in the pending
`application. [Tr. 211:7-14.] The examiner is also supposed to review the incorporated patents for
`prior art. [Tr. 210:22-211:2.]
`15.
`The ‘301 application (which issued as the ‘973 patent) is a continuation of U.S.
`Patent Application No. 479,596 (“‘596 application”), filed on June 7, 1995. [PX0326 at col.1:4-
`5.]
`
`16. When the ‘596 application was originally filed it stated: “This is a continuation in
`part of co-pending Application Serial No. 08/074,781 entitled THREADED SPINAL IMPLANT
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`filed on June 10, 1993, which is a continuation in part of Application Serial No. 07/698,674 filed
`on May 10, 1994 which is a divisional of Application Serial No. 07/205,935 filed on June 13,
`1988, now United States Patent No. 5,015,247 all of which are incorporated herein by reference.”
`[PX0325 at 09.]
`17.
`Dr. Michelson’s application for the ‘973 patent therefore incorporated by reference
`his then co-pending application 08/074,781, which became the ‘437 patent. [PX0325 at 33-34;
`PX0322 at 01, 09.]
`18.
`The ‘437 patent, filed on June 10, 1993 and issued to Dr. Michelson on January 16,
`1996, is a continuation of the ‘247 patent, which issued from application 07/205,935, filed on Jun.
`13, 1988. [PX0298 col.1:5-9.]
`19.
`The ‘437 patent explicitly references the 1982 Crock Article, stating: “Crock
`(Crock, H.V., “Anterior Lumbar Interbody Fusion—Indications for its Use and notes on Surgical
`Techniques,” “Clinical Orthopedics, Volume 165, pg. 157-163, 1981) described his technique and
`instrumentation for Anterior Body Fusion of the lumbar spine, wherein he drilled two large holes
`side by side across the disc space from anterior to posterior essentially unprotected and then
`pounded in two at least partially cylindrical grafts larger than the holes prepared.” [PX0298 at
`col.6:61-7:2; see Tr. 54:5-22.]
`20.
`The ‘473 patent contains an inadvertent typographical error that erroneously
`identifies the year of publication for the Crock Article as 1981, instead of 1982. [Compare
`PX0298 at col.6:61-7:2 with DX5885; see Tr. 85:16-86:6; 156:22-157:8; 158:11-18; 159:2-8;
`167:25-168:25; 169:10-18; 171:22-172:3.]
`21.
`Carmichael provided credible testimony that the examiner(s) considering the ‘301
`application were supposed to review the prior applications cited by the applicants for prior art, and
`therefore, they would have seen the citation to the 1982 Crock Article. [Tr. 230:5-231:2.]
`22.
`Dr. Michelson provided credible testimony that he does not recall seeing the 1982
`Crock Article prior to the current litigation. [Tr. 172:10-23; 187:10-25; 188:15-19.]
`23.
`Dr. Michelson provided credible testimony that prior to filing the application for his
`‘973 patent, he read Dr. Crock’s 1983 textbook. [Tr. 167:22-168:17.]
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`Dr. Michelson provided credible testimony that he believes he wrote the description
`24.
`that accompanies the citation to the 1982 Crock Article in the ‘473 patent. [PX0298 at col.:6:61-
`7:2; Tr. 171:12-15; 186:5-13.]
`25.
`Dr. Michelson provided credible testimony that he believes the description to be an
`accurate representation of the relevant procedure discussed in the 1982 Crock Article and the 1983
`Crock Book. [Tr. 156:22-157:8; 158:11-18; 159:2-8; 167:25-168:25; 169:10-18; 171:16-173:23.]
`26.
`The same description of the Crock Article appears in several of Dr. Michelson’s
`patents. [See, e.g., DX6446 at col.7:9-18; DX6452 at col.7:1-9; DX6456 at col.7:1-9; DX6458 at
`col. 7:3-11; PX0322 at col.6:61-7:2.]
`27.
`Figure 3 in the Crock Article is described as: “A lateral illustration of the
`orientation of dowel cavities transversely in the intervertebral space suitable for interbody grafting
`in the upper lumbar area.” [DX5885, p.160.]
`28.
`Figure 3 is not contained in the Crock Book. [DX5091.]
`29.
`It is not material that Figure 3 depicted in the 1982 Crock Article is not contained in
`the 1983 Crock Book.
`30.
`To a person of ordinary skill in the art, the Crock Article and the Crock Book
`address anterior lumbar interbody fusion operations, not translateral spinal implant procedures.
`[DX5885; DX5091.]
`31.
`The Crock Article contains Figures 7A and 7B, which depict: “(A) Lateral view
`roentgenogram of the lumbar spine in a 45-year-old man, showing Grade 2 spondylolisthesis at
`L4-5. (B) Interbody grafts have been inserted transversely (one year after operation). [DX5885,
`p.162.]
`The same images in Figures 7A and 7B of the Crock Article appear in the Crock
`32.
`Book as Figures 5.7a and 5.7b, with the following description: “a A lateral radiograph of the
`lumbar spine in a 45 year-old man showing Grade to spondylolisthesis at L4/5. b Interbody grafts
`have been inserted transversely. The tomogram shows the appearance one year after operation.”
`[DX5091, p.141.]
`/ / /
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`To a person of ordinary skill in the art, neither set of images depicts the translateral
`33.
`insertion of spinal fusion implants as taught by the ‘973 patent.
`34.
`Dr. Michelson provided credible testimony that he had no reason to hide Crock’s
`publications from the PTO because Dr. Michelson did not, and still does not, read them to disclose
`a translateral spinal implant as taught by the ‘973 patent. [Tr. 165:20-166:8; 167:25-168:10;
`168:14-23; 170:13-17; 175:3-7.]
`35.
`Carmichael provided credible testimony that an applicant has no duty to disclose
`references that he does not know about. [Tr. 208:22-209:4.]
`36.
`Dr. Michelson, Lewis Anten, Amedeo Ferraro, and Thomas Martin did not
`withhold the Crock publications from the PTO.
`37.
`The record contains no evidence Dr. Michelson, Lewis Anten, Amedeo Ferraro, or
`Thomas Martin had a specific intent to deceive the PTO by withholding the Crock Article from the
`PTO during prosecution of the ‘973 patent.
`III.
`STATE OF PRIOR ART
`38.
`NuVasive alleges the applicants intentionally and repeatedly misrepresented the
`state of the prior art to the PTO through statements representing that, “In the past, spinal fusion
`implants have been inserted only from either an anterior or posterior direction, from the front or
`the back of the patient.” [PX0326 at col.1:21-23; PX0325 at 09-11.]
`39.
`According to NuVasive, the applicants knew the statement was false because Dr.
`Michelson was aware of at least one publication by Dr. Crock and the Brantigan ‘327 patent,
`which both allegedly teach spinal fusion implants capable of insertion from the lateral aspect of
`the spine. [Doc. No. 451 ¶¶128-154.]
`40.
`As discussed above, Dr. Michelson understood the Crock Article to describe a
`technique and instrumentation for anterior body fusion of the lumbar spine, wherein Dr. Crock
`drilled two large holes side by side across the disc space from anterior to posterior essentially
`unprotected and then pounded in two at least partially cylindrical grafts larger than the holes
`prepared. [PX0298 at col.6:61-7:2; see Tr. 54:5-22; 165:20-166:8.]
`/ / /
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`Dr. Michelson did not, and still does not, read the Crock Article nor the Crock
`41.
`Book to disclose a translateral spinal implant as taught by the ‘973 patent. [Tr. 165:20-166:8;
`167:25-168:10; 168:14-23; 170:13-17; 175:3-7.]
`42.
`Dr. Michelson provided credible testimony he believed the statements (i.e. all of the
`prior implants have been inserted from the front or the back of the patient) to be true when he filed
`the ‘973 patent application. [Tr. 163:1-5, 23-25; 164:1-19.]
`43.
`Dr. Michelson provided credible testimony he still believes the statement is
`accurate. [Tr. 164:25-165:3.]
`44.
`Dr. Sachs provided credible testimony that Dr. Michelson’s representation of the
`state of the prior art was accurate. [See Tr. 99:22-100:10; see also Tr. 101:22-102:8.]
`45.
`To a person of ordinary skill in the art, the Crock Article and the Crock Book
`address anterior lumbar interbody fusion operations—Dr. Crock’s teachings are consistent with
`Dr. Michelson’s representation that prior to his ‘973 patent spinal fusion implants were only
`inserted from the front or back of the patient. [DX5885; DX5091.]
`46.
`The ‘973 patent identifies Dr. Brantigan by name, and discusses three of Dr.
`Brantigan’s patents, not including the ‘327 patent. [PX0326 at col.1:25-29, 37-44, 50-66.]
`47.
`To a person of ordinary skill in the art, Dr. Brantigan’s use of the term “lateral” in
`the ‘327 patent does not mean the same thing as Dr. Michelson’s use of the term “translateral” in
`the ‘973 patent.
`48.
`To a person of ordinary skill in the art, the Brantigan ‘327 patent does not teach
`spinal fusion implants capable of translateral insertion.
`49.
`To a person of ordinary skill in the art, the teachings of the Brantigan ‘327 patent
`are consistent with Dr. Michelson’s representation of the state of the prior art.
`50.
`The record contains no evidence that Dr. Michelson was aware of the 1973
`publication by H.B.S. Kemp et al., entitled “Anterior Fusion of the Spine for Infective Lesions in
`Adults” [DX6265] prior to this litigation. [Tr. 181:3-17.]
`
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`The record contains no evidence Dr. Michelson, Lewis Anten, Amedeo Ferraro, or
`51.
`Thomas Martin had a specific intent to deceive the PTO by allegedly misrepresenting the state of
`the prior art during prosecution of the ‘973 patent.
`IV.
`PATENT PRIORITY DATE
`52.
`NuVasive alleges the applicants changed the priority date of the ‘973 patent from
`1988 to 1995, which caused new art that was not previously considered by the examiner (i.e. the
`Brantigan ‘327 patent) to become prior art to the ‘973 patent.
`53.
`As discussed above, Dr. Michelson’s application for the ‘973 patent incorporated
`by reference his then co-pending application 08/074,781, which became the ‘437 patent. [PX0325
`at 33-34; PX0322 at 01, 09.]
`54.
`The ‘437 patent is a continuation of the ‘247 patent, which issued from application
`07/205,935, which was filed on Jun. 13, 1988. [PX0298 at col.1:5-9.]
`55.
`Carmichael provided credible testimony that Michelson’s inclusion of conditional
`claims of priority to his earlier applications in his Declaration and Power of Attorney [PX0325 at
`33-34] was not improper, and indeed was “common” because the final form of the claims (and
`whether the disclosures in prior applications provide support for those final claims) is not finally
`determined until the claims are allowed. [Tr. 211:25-213:11; 232:6-22.]
`56.
`Dr. Michelson provided credible testimony his attorneys determined whether the
`priority date of the ‘973 patent should be amended; Dr. Michelson was not personally involved in
`that decision. [Tr. 160:25-161:11.]
`57.
`After the ‘973 patent issued, the applicants requested the PTO to amend the
`specifications in the patent “to delete the reference to the related applications filed prior to
`February 27, 1995.” [PX0325 at 159; 37 C.F.R. § 1.312.]
`58.
`In seeking the amendment, the applicants represented that “[a] review of the file
`history of [the ‘301] application by the Applicant’s attorneys revealed that the reference in the
`specification to related applications filed prior to February 27, 1995 is not necessary to support the
`claims in their amended form.” [PX0325 at 159.]
`/ / /
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`Carmichael provided credible testimony that the applicants’ request to amend the
`59.
`priority date “did not change the actual date that the examiners were using as the priority date
`when examin[ing] the ‘973 patent. The examiners always used the 1995 date.” [Tr. 213:12-214:2;
`223:12-224:18.]
`60.
`The record contains no evidence the applicants sought to amend the priority date of
`the ‘973 patent, after allowance, with the specific intent to deceive the PTO.
`61.
`Carmichael provided credible testimony the PTO is “very strict” about granting
`amendments under 37 C.F.R. 1.312 after allowance (“312 amendment”), and the PTO will not
`permit a 312 amendment where it will create additional work for the examiners, such as additional
`searches, consideration of new information, or review of new prior art not previously considered.
`[Tr. 217:19-219:2.]
`62.
`In a communication mailed October 17, 1997, Examiner Truong indicated the
`applicants’ desired 312 amendment had been considered and entered. [PX0325 at 162-163.]
`63.
`Carmichael credibly opined that the PTO would never have granted the applicants’
`request to remove the references to related applications filed prior to February 27, 1995 “if it
`changed the actual priority date that had been used all along in the examination.” [Tr. 219:3-18.]
`64.
`Carmichael’s opinion is bolstered by his credible testimony that the PTO took
`actions during the examination process, such as considering U.S. Patent No. 4,911,718 (Lee) and
`U.S. Patent No. 4,834,757 (Brantigan) as prior art, which indicate the examiners never applied a
`1988 priority date. [Tr. 220:5-221:1; 233:24-235:2; cf. Tr. 235:3-236:9; see also PX0325 at 46-50,
`53, 82-83.]
`On July 28, 1997, the PTO received an Information Disclosure Statement,
`65.
`submitted by Thomas Martin, disclosing several references to the PTO, including U.S. Patent No.
`5,015, 247 (Michelson) and U.S. Patent No. 5,192,327 (Brantigan). [PX0325 at 144-147; Tr.
`214:3-11.]
`The same day, July 28, 1997, Examiner Truong initialed each reference on the July
`66.
`1997 Information Disclosure Statement indicating he had considered each of the references listed.
`[PX0325 at 146-147; Tr. 214:3-216:4.]
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`Case 3:08-cv-01512-MMA-MDD Document 467 Filed 02/14/12 Page 12 of 14
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`On August 6, 1997, the PTO mailed a Notice of Allowability for the ‘301
`67.
`application. [PX0325 at 156-157.]
`68.
`NuVasive has not proven Dr. Michelson, Lewis Anten, Amedeo Ferraro, or Thomas
`Martin failed to disclose any material information or submitted false information to the PTO in
`connection with the conditional priority claims or the subsequent 312 amendment.
`69.
`The record does not contain evidence that proves Dr. Michelson, Lewis Anten,
`Amedeo Ferraro, or Thomas Martin acted with the specific intent to deceive the PTO with respect
`to the conditional priority claims or the subsequent 312 amendment.
`CONCLUSIONS OF LAW
`NuVasive did not prove by clear and convincing evidence that Dr. Michelson,
`70.
`Amedeo Ferraro, Lewis Anten, or Thomas Martin misrepresented or omitted material information
`during the prosecution of the ‘973 patent with the specific intent to deceive the PTO.
`71.
`NuVasive did not prove by clear and convincing evidence that Dr. Michelson,
`Amedeo Ferraro, Lewis Anten, or Thomas Martin submitted materially false information to the
`PTO.
`
`NuVasive did not prove by clear and convincing evidence that Dr. Michelson,
`72.
`Amedeo Ferraro, Lewis Anten, or Thomas Martin engaged in affirmative acts of egregious
`misconduct.
`Dr. Michelson, Lewis Anten, Amedeo Ferraro, and Thomas Martin did not engage
`73.
`in inequitable conduct during the prosecution of the ‘973 patent.
`CROCK PUBLICATIONS
`I.
`74.
`NuVasive did not prove by clear and convincing evidence that Dr. Michelson,
`Amedeo Ferraro, Lewis Anten, or Thomas Martin knew of the 1982 Crock Article, knew it was
`material, and made a deliberate decision to withhold it from the PTO.
`75.
`NuVasive did not prove by clear and convincing evidence that Dr. Michelson,
`Amedeo Ferraro, Lewis Anten, or Thomas Martin knew of the 1983 Crock Book, knew it was
`material, and made a deliberate decision to withhold it from the PTO.
`/ / /
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`Even if the PTO did not consider the 1982 Crock Article during prosecution of the
`76.
`‘973 patent, NuVasive failed to prove that the 1982 Crock Article is “but for” material to the
`patentability of the technology at issue.
`77.
`Even if the PTO did not consider the 1983 Crock Book during prosecution of the
`‘973 patent, NuVasive failed to prove that the 1983 Crock Book is “but for” material to the
`patentability of the technology at issue.
`II.
`STATE OF PRIOR ART
`78.
`NuVasive did not prove by clear and convincing evidence that the representation,
`“all prior implants have been inserted from either the front or the back of the patient” is false.
`79.
`NuVasive did not prove by clear and convincing evidence that Dr. Michelson,
`Amedeo Ferraro, Lewis Anten, or Thomas Martin made the representation that “all prior implants
`have been inserted from either the front or the back of the patient” with the specific intent to
`deceive the PTO.
`III.
`PATENT PRIORITY DATE
`80.
`NuVasive did not prove by clear and convincing evidence that Dr. Michelson,
`Amedeo Ferraro, Lewis Anten, or Thomas Martin misrepresented or omitted material information
`in connection with amending the specification of the application that led to the ‘973 patent, after
`the PTO issued the Notice of Allowance.
`81.
`NuVasive did not prove by clear and convincing evidence that Dr. Michelson,
`Amedeo Ferraro, Lewis Anten, or Thomas Martin acted with the intent to deceive the PTO in
`connection with amending the specification of the application that led to the ‘973 patent, after the
`PTO issued the Notice of Allowance.
`
`/ / /
`/ / /
`/ / /
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`CONCLUSION
`For the reasons set forth above, the Court finds NuVasive has not demonstrated by clear
`and convincing evidence that Dr. Michelson, Amedeo Ferraro, Lewis Anten, or Thomas Martin
`engaged in inequitable conduct during the prosecution of the ‘973 patent. Accordingly, the ‘973
`patent is not rendered unenforceable on this ground, and judgment shall be entered in favor of
`Warsaw, and against NuVasive on the issue of inequitable conduct.
`IT SO ORDERED.
`DATED: February 14, 2012
`
`Hon. Michael M. Anello
`United States District Judge
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