Case 3:08-cv-01512-MMA-MDD Document 451-1 Filed 12/23/11 Page 1 of 14
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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’S CLOSING ARGUMENT
`REGARDING INEQUITABLE CONDUCT
`COMMITTED DURING THE
`PROSECUTION OF THE ’973 PATENT
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`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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`Case No. 3:08-CV-1512 MMA (MDD)
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`WARSAW2014
`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 451-1 Filed 12/23/11 Page 3 of 14
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`I.
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`INTRODUCTION
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`During the prosecution of the ’973 patent, three distinct acts of inequitable conduct were
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`committed by Dr. Michelson and his attorneys. First, Dr. Michelson and his attorneys intentionally
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`and repeatedly misrepresented the state of the art by telling the Patent Office that Dr. Michelson
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`was the first to come up with the idea of spinal fusion implants capable of insertion from the lateral
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`aspect of the spine. This statement was known by Dr. Michelson and his attorneys to be false as
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`evidenced by their knowledge of a 1982 article written by Dr. Crock, a 1983 textbook written by
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`Crock, and the Brantigan ’327 patent. Each of these references teaches spinal fusion implants
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`capable of insertion from the lateral aspect of the spine.
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`Second, Dr. Michelson and his attorneys failed to provide either the 1982 Crock article or
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`the 1983 Crock textbook to the Patent Office during the prosecution of the ’973 patent.
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`Compounding the fraud of this second act of inequitable conduct, Dr. Michelson and his attorneys
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`misleadingly described “Crock” in the ’973 patent. Dr. Michelson and his attorneys also incorrectly
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`cited and misleadingly described the 1982 Crock article in the specification of U.S. Patent No.
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`5,484,437, a patent to which the ’973 patent originally claimed priority, as well as in the
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`specifications of at least Patent Nos. 6,080,155; 6,436,098; 5,797,909 and 5,505,732. In every case
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`where a description of Crock was provided, Dr. Michelson and his attorneys were careful not to
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`mention Dr. Crock’s plain disclosure of laterally inserted fusion implants. The net effect of this
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`calculated attempt to conceal Dr. Crock’s lateral work was that any reasonable examiner would be
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`led away from looking at the 1982 Crock article to determine whether the statements by Dr.
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`Michelson and his attorneys in the ’973 specification and prosecution concerning the lateral
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`insertion of spinal implants were true. Moreover, even if an examiner had tried to investigate the
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`characterizations of Crock made by Dr. Michelson and his attorneys, the examiner would not have
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`been able to find the 1982 Crock article because it was incorrectly cited in each of Dr. Michelson’s
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`prior patents. Viewed in context, these were not accidents or innocent mistakes. Dr. Michelson and
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`his attorneys intentionally misled the Patent Office about the teachings of the 1982 Crock article
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`and 1983 Crock textbook knowing that each would preclude the issuance of the ’973 patent.
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`Case 3:08-cv-01512-MMA-MDD Document 451-1 Filed 12/23/11 Page 9 of 14
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`III. DR. MICHELSON AND HIS ATTORNEYS KNOWINGLY AND REPEATEDLY
`MISREPRESENTED THE STATE OF THE PRIOR ART WITH THE INTENT TO
`DECEIVE THE PTO
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`Under Therasense, “[w]hen the patentee has engaged in affirmative acts of egregious
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`misconduct, such as the filing of an unmistakably false affidavit, the misconduct is material.”
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`Therasense, Inc. v. Becton, Dickinson and Co., 649 F.3d 1276, 1292 (Fed. Cir. 2011). The Federal
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`Circuit recognized that “[a]fter all, a patentee is unlikely to go to great lengths to deceive the PTO
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`with a falsehood unless it believes that the falsehood will affect issuance of the patent.” Id. Here,
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`the first sentence in the ’973 patent’s description of the prior art states: “In the past, spinal fusion
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`implants have been inserted only from either an anterior or posterior direction, from the front or the
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`back of the patient.” [NuVasive FOF & COL No. 125.] This was a knowingly false statement
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`made by Dr. Michelson in the specification, which was repeated throughout the prosecution of the
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`’973 patent by his attorneys, and which renders the patent unenforceable for inequitable conduct.
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`Dr. Michelson and his attorneys knew of at least three references that refuted the claim that
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`all prior art implants were inserted only from the front or back of the patent. As discussed above,
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`they knew of the 1982 Crock article and the 1983 Crock textbook, which describe laterally inserting
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`spinal fusion implants, provide X-rays of the results and explain that Dr. Crock had been treating
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`patients in this way since the early 1960’s.
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`Dr. Michelson and his attorneys also knew of the Brantigan ’327 patent, which also refutes
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`their statement regarding prior art implants. The Brantigan ’327 patent repeatedly states that the
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`disclosed implants are for insertion “anteriorly, posteriorly, or laterally.” [NuVasive FOF & COL
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`No. 138, 139.] At the jury trial Dr. Brantigan testified that he “thought it was preposterous” that Dr.
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`Michelson claimed to have invented spinal fusion implants for use in a lateral approach in 1995
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`because he and his colleagues had been inserting his own oval implants laterally since 1990.
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`[NuVasive FOF & COL No. 153, 154.] Here, again, there can be no doubt that the prior art teaches
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`implants inserted from the patient’s side rather than from the front or the back of the patient, and
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`Dr. Michelson knew it.
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`Like he did for Crock, Dr. Michelson came with a story to explain away his knowledge of
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`the Brantigan ’327 patent – and it is equally unbelievable. Here, Dr. Michelson asks the Court to
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`Case 3:08-cv-01512-MMA-MDD Document 451-1 Filed 12/23/11 Page 13 of 14
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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 451-1 Filed 12/23/11 Page 14 of 14
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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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`Page 5
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