Case 3:08-cv-01512-MMA-MDD Document 449 Filed 12/23/11 Page 1 of 16
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`Todd G. Miller (SBN 163200), miller@fr.com
`Craig E. Countryman (SBN 244601), countryman@fr.com
`Fish & Richardson P.C.
`12390 El Camino Real
`San Diego, CA 92130
`Phone: 858-678-5070/Fax: 858-678-5099
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`Frank E. Scherkenbach (SBN 142549), scherkenbach@fr.com
`Fish & Richardson P.C.
`One Marina Park Drive
`Boston, MA 02210-1878
`Phone: 617-542-5070/Fax: 617-542-8906
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`John M. Farrell (SBN 99649), farrell@fr.com
`Jonathan J. Lamberson (SBN 239107), lamberson@fr.com
`Keeley I. Vega (SBN 259928), kvega@fr.com
`Fish & Richardson P.C.
`500 Arguello Street, Suite 500
`Redwood City, CA 94063
`Phone: 650-839-5070/Fax: 650-839-5071
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`Attorneys for Defendant/Counterclaimant/Counterclaim Defendant
`NUVASIVE, INC.
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`UNITED STATES DISTRICT COURT
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`SOUTHERN DISTRICT OF CALIFORNIA
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`WARSAW ORTHOPEDIC, INC.,
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`Plaintiff,
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`v.
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`NUVASIVE, INC.,
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`Defendant.
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`Case No. 3:08-CV-1512 MMA (MDD)
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`NUVASIVE, INC.’S REPLY IN SUPPORT
`OF ITS RENEWED MOTION FOR
`JUDGMENT AS A MATTER OF LAW OR
`A NEW TRIAL
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`
`January 24, 2012
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`Date:
`2:30 p.m.
`
`Time:
`Judge: Hon. Michael M. Anello
`Courtroom: 5, 3rd floor
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`NUVASIVE, INC.,
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`MEDTRONIC SOFAMOR DANEK USA, INC.,
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`Counterclaimant,
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`Counterclaim Defendant.
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`v.
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`AND RELATED COUNTERCLAIMS.
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`WARSAW2012
`NuVasive, Inc. v. Warsaw Orthopedic, Inc.
`Case IPR2013-00208
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`Page 1
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`Case 3:08-cv-01512-MMA-MDD Document 449 Filed 12/23/11 Page 9 of 16
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`implant” imposes those requirements.1 Warsaw’s validity case, which was built solely on
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`contradicting the Court’s construction, (e.g., Tr. at 679:2-15), fails as a matter of law.
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`C. Warsaw Doesn’t Dispute the Claims Are Invalid Under a Proper Construction.
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`It is telling that Warsaw’s opposition cannot identify any differences between the Brantigan
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`commercial implants and the asserted claims of the ’973 patent under the proper claim construction.
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`Instead, Warsaw’s analysis focuses only on where and how the devices may have been implanted.
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`That is wrong as a matter of law. The dimensions of the Brantigan implants—42 mm x 28 mm x 14
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`mm and 35 mm x 24 mm x 15 mm implants—are undisputed. The pictures in NuVasive’s opening
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`brief at p. 12 (which come from admitted evidence) show the dimensions are identical to what is
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`claimed. And Warsaw never disputes they are prior art. Nothing more is required to show that the
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`Brantigan implants anticipate all claims as a matter of law under the right construction.
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`Warsaw argues the Brantigan implants were not capable of being inserted translaterally
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`because they lack an “engagement means.”2 (Doc. No. 422 at 12-13.) But Dr. Sachs admitted that
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`a translateral spinal implant does not turn into something else simply because a doctor uses his
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`fingers to insert it rather than holes in the side. (Tr. at 2209:17-2210:16.) Warsaw also argues the
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`Brantigan implants do not have the claimed “length.” (Doc. No. 422 at 13-14.) But the cited
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`testimony is irrelevant under the correct construction because the “lengths” of the Brantigan
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`implants are necessarily 42 mm and 35 mm because that is the greatest dimension. It also does not
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`matter whether the length of the implant used with JC was not substantially greater than the depth of
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`JC’s vertebrae where the implant was placed because the claims do not require actual insertion.
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`Warsaw tries the same trick with the Brantigan ’327 patent, but it never contests that
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`Brantigan ’327 discloses an implant that fits within the dimensions of the properly construed claims.
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`That is all that is required to anticipate claims 24, 57, and 61. Brantigan ’327 also repeatedly states
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`that its implants are suitable for “anterior, posterior or lateral placement.” (DTX-5909 at 2:56-65,
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`1 The NTP, Eaton and Goldenberg cases, cited by Warsaw, are irrelevant. The issue here is not
`whether the term “said implant” refers to “translateral spinal implant”—it is what the term
`“translateral spinal implant” means. The Markman order correctly holds the term imposes no
`additional structural limitations. Warsaw’s cases are silent on that issue.
`2 Warsaw’s attacks on Dr. Brantigan are unfounded, but, more importantly, irrelevant because
`the claims do not require actual insertion—only that the claimed dimensions be met. It is
`undisputed that the dimensions of the JC implant fall within the properly construed claims.
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`Case 3:08-cv-01512-MMA-MDD Document 449 Filed 12/23/11 Page 10 of 16
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`5:31, 6:65-66). Even if “lateral” in Brantigan ’327 meant something other than it says, this is
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`irrelevant. The implant is thus capable of being inserted from a lateral approach (translaterally).
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`Warsaw’s non-obviousness arguments for claims 41 and 42 fail, as discussed in the opening brief.
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`Finally, for Michelson ’247, Warsaw’s arguments about the terms “translateral spinal
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`implant” and “length” are again irrelevant under proper constructions of those terms. Warsaw
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`protests that Michelson ’247 does not disclose the “height for contacting” limitation, but Warsaw
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`admitted in the pre-trial order that it does, (Doc. No. 338 at ¶ 96; JTX-1 at ¶ 92), which is binding.
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`II.
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`JMOL OF NON-INFRINGEMENT OF THE ’933 IS APPROPRIATE
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`There is no infringement of the ’933 as a matter of law for three independent reasons. First,
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`vitiation bars Warsaw from saying the enclosed three-blade working channel in NuVasive’s
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`retractors is equivalent to the claimed “working channel being closed by said first portion and said
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`second portion.” Second, if Warsaw is permitted to say that all three blades of NuVasive’s
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`retractors are the “said first portion and said second portion” in the part of the claims addressing the
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`“closed” working channel, then it must also show all three blades meet the other requirements the
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`claim sets forth for that same structure—namely, that the “working channel is enlargeable by
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`laterally moving each of said first and second portions away from one another and pivoting each of
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`said distal ends of the first and second portions away from one another.” Warsaw cannot do so
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`because it is undisputed that only two of NuVasive’s three blades (i.e., not “each”) laterally move
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`and pivot. Third, and relatedly, Warsaw never identified what part of the NuVasive products
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`satisfies the laterally moving and pivoting requirement.
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`Warsaw’s response to the first point (vitiation) is to argue about the trial presentations.
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`(Doc. No. 422 at 21-23.) But vitiation is a legal question that is separate from the trial evidence, the
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`specification, and prosecution history disclaimer. DePuy Spine, v. Medtronic Sofamor Danek, 567
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`F.3d 1314, 1323 (Fed. Cir. 2009) (holding that vitiation is “to be determined by the Court . . . on a
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`motion for judgment as a matter of law at the close of the evidence and after the jury verdict”).
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`Warsaw tries to concoct a concession from Dr. van Dam, but he was not testifying about vitiation.
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`Warsaw also argues that “using two components to accomplish what is claimed as one
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`component does not vitiate or constitute antithetical structure.” (Doc. No. 422 at 22.) But neither
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`Case 3:08-cv-01512-MMA-MDD Document 449 Filed 12/23/11 Page 15 of 16
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`Dated: December 23, 2011
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`FISH & RICHARDSON P.C.
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`By: s/ Todd G. Miller
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`Todd G. Miller
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`Attorneys for Defendant/Counterclaimant/
`Counterclaim Defendant NUVASIVE, INC.
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`Case 3:08-cv-01512-MMA-MDD Document 449 Filed 12/23/11 Page 16 of 16
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a true and correct copy of the above and foregoing
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`document has been served on December 23, 2011 to all counsel of record who are deemed to have
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`consented to electronic service via the Court’s CM/ECF system per Civ LR 5.4(d). Any other
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`counsel of record will be served by U.S. mail or hand delivery.
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`By: s/ Todd G. Miller
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`Todd G. Miller
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