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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`_____________________________
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`MEDTRONIC, INC.,
`Petitioner,
`
`v.
`
`NUVASIVE, INC.,
`Patent Owner.
`_____________________________
`
`Case IPR2013-00506
`Patent 8,361,156
`_____________________________
`
`
`
`JOINT MOTION TO TERMINATE PROCEEDING PURSUANT
`TO 35 U.S.C. § 317(A)
`JOINT NOTICE OF SETTLEMENT PURSUANT TO
`35 U.S.C. § 317(B) AND 37 C.F.R. § 42.74
`
`
`
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`
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`Case No. IPR2013-00506
`U.S. Patent No. 8,361,156
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`I. Relief Requested
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`
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`Pursuant to 35 U.S.C. § 317(a) and (b), and as authorized by the Board in an
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`email dated April 14, 2017, Patent Owner NuVasive, Inc. and Petitioner Medtronic,
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`Inc., provide notice that they have reached a settlement and jointly request
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`termination of the Inter Partes Review of U.S. Patent No. 8,361,156 (“the ’156
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`patent”), Case No. IPR2013-00506. The Parties request that the Board treat the
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`Settlement Agreement as business confidential information and keep it separate
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`from the file of the involved patent.
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`II. Statement of Reasons for the Relief Requested
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`The Parties have reached a Settlement Agreement regarding their disputes
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`relating to the ’156 patent. Because the underlying dispute has been resolved, the
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`Parties submit that the present Inter Partes Review is ripe for termination. The
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`present Inter Partes Review is also at a procedural stage affording termination.
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`The present Inter Partes Review has been remanded to the Board from the U.S.
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`Court of Appeals for the Federal Circuit in a decision dated December 7, 2016.
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`But it is unnecessary for the Board to reach a decision on the remanded issues in
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`view of the requested termination. Termination will at the very least conserve the
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`resources of the Board in considering these issues.
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`III. Related Litigation and PTAB Proceedings
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`The Parties have settled the underlying litigation involving the ’156 patent.
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`Case No. IPR2013-00506
`U.S. Patent No. 8,361,156
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`As indicated in Medtronic’s Petition for Inter Partes Review dated August 14,
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`
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`2013 and NuVasive’s Mandatory Notices dated September 4, 2013, the underlying
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`litigation was styled Warsaw Orthopedic, Inc. et al. v. NuVasive, Inc. (originally
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`filed in N.D. Ind. as Case No. 3:12-cv-00438-JD-CAN on Aug. 17, 2012, and
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`transferred to S.D. Cal. on Nov. 8, 2012, as Case No. 3:12-cv-02738-CAB (MDD)).
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`Medtronic’s related corporate entities, Warsaw Orthopedic, Inc., Medtronic
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`Sofamor Danek USA, Inc., Medtronic Puerto Rico Operations Co., Medtronic
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`Sofamor Danek Deggendorf, GMBH, and Osteotech, Inc. were parties to the
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`underlying litigation. As part of the Settlement Agreement, the underlying
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`litigation was also settled with respect to these related corporate entities.
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`NuVasive represents that no district court litigation is currently pending
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`involving the ’156 patent.
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`U.S. Patent No. 8,187,334 is in the same family as the ’156 patent, was also
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`at issue in the underlying litigation, and was reviewed in Case Nos. IPR2013-
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`00508. U.S. Patent No. 8,251,997 is owned by a Medtronic-related entity and was
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`also at issue in the underlying litigation and was reviewed in Case No. IPR2013-
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`00206. Although otherwise unrelated, similar joint motions to terminate are being
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`filed in Cases Nos. IPR2013-00206 and -00508 to effectuate the Parties’ settlement.
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`IV. Submission of the Settlement Agreement
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`Submitted concurrently with this Motion is a true copy of the Settlement
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`Case No. IPR2013-00506
`U.S. Patent No. 8,361,156
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`Agreement between the Parties (Ex. 2041), as required by 35 U.S.C. § 317(b) and
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`
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`37 C.F.R. § 42.74(b).
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`The Parties jointly request that this Settlement Agreement be treated as
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`business confidential information and be kept separate from the file of the involved
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`patent, pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c). Ex. 2041 is being
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`submitted concurrently having “availability” in the PTAB E2E system of “Parties
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`and Board Only” as advised in FAQ G2. The Parties jointly request that this
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`Settlement Agreement (Ex. 2041) be made available only to Federal Government
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`agencies on written request or to any person only on a showing of good cause.
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`Case No. IPR2013-00506
`U.S. Patent No. 8,361,156
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`V. Conclusion
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`
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`For the reasons stated above, the Parties respectfully request that the Board
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`terminate Inter Partes Review of U.S. Patent No. 8,361,156, Case No. IPR2013-
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`00506.
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`Dated: April 26, 2017
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`Respectfully submitted,
`
`
`
`
`
`/Michael T. Rosato/
`Michael T. Rosato
`Registration No. 52,182
`Attorney for Patent Owner
`WILSON SONSINI GOODRICH &
`ROSATI
`701 Fifth Avenue, Suite 5100
`Seattle, WA 98104
`Telephone: (206) 883-2529
`Facsimile: (206) 883-2699
`Email: mrosato@wsgr.com
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`Dated: April 26, 2017
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`Respectfully submitted,
`
`
`
`
`
`/Jeff E. Schwartz s/
`Jeff E. Schwartz
`Registration No. 39,019
`Attorney for Petitioner
`FOX POTHSCHILD LLP
`1030 15th Street
`Suite 380 East
`Washington, DC 20005
`Telephone: (202) 696-1470
`Facsimile: (202) 461-3102
`Email: jeschwartz@foxrothschild.com
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`
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`Case No. IPR2013-00506
`U.S. Patent No. 8,361,156
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`LIST OF EXHIBITS
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`Exhibit No.
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`Description
`
`
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`2101
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`2102
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`2103
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`2104
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`2105
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`2106
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`2107
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`2108
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`2109
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`2010
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`2011
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`2012
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`2013
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`2014
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`2015
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`2016
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`2017
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`2018
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`2019
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`U.S. Patent No. 7,905,840 to Pimenta et al.
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`Declaration in Support of the Pro Hac Vice Admission of Michael
`A. Amon; Declaration of Charles Forthaus (Not Filed)
`
`Vetebral Spacer-PR Brochure (Not Filed)
`
`Forthaus Memo regarding Vertebral Spacer-PR Brochure (Not
`Filed)
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`myspinetools.com front page (Not Filed)
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`myspinetools.com Terms of Use (Not Filed)
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`Launch Binder (Not Filed)
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`Webpage Toad MySQL (Not Filed)
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`Reserved
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`U.S. Patent 8,512,408 (Hynes) (Not Filed)
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`Synthes SVS-PR Guide
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`Medtronic Safamor Danek Boomerang Brochure
`
`Hynes Deposition Transcript
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`510(k) Summary Medtronic Sofamor Danek K122037
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`510(k) Summary Telamon® PEEK Spinal System K110562
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`Synthes Vertebral Spacer – AR Brochure
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`DePuy Spine Saber Surgical Technique Brochure
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`Declaration of Barton L. Sachs, M.D. in IPR2013-00206
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`Moro et al., “An Anatomic Study of the Lumbar Plexus with
`Respect to Retroperitoneal Endoscopic Surgery”
`
`2020
`
`Declaration of Dr. Hansen A. Yuan, M.D.
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`5
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`Case No. IPR2013-00506
`U.S. Patent No. 8,361,156
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`
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`2021
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`2022
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`2023
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`2024
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`2025
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`2026
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`2027
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`2028
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`2029
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`2030
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`2031
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`2032
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`2033
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`2034
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`2035
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`2036
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`2037
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`2038
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`2039
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`2040
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`2041
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`Curriculum Vitae of Dr. Hansen A. Yuan, M.D.
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`NuVasive – CoRoent XL Brochure
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`Redacted Engineering Drawings
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`Redacted Deposition of Steven DeRidder
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`Clydesdale® Spinal System Brochure
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`Clydesdale® Spinal System Images
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`Medtronic Direct Lateral Interbody Fusion DLIF Surgical
`Technique Brochure
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`Medtronic DILF-Direct Lateral Interbody Fusion Brochure
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`Clydesdale® Spinal Systems Image
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`Declaration of Patrick Miles
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`Declaration of Theodore G. Obenchain, M.D.
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`The Relationship Between Cross Sectional Area and Strength of
`Back Muscles in Patients with Chronic Low Back Pain
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`Printout, U.S. News & World Report
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`Lumbar Vertebral Body Replacement
`
`Lumbar – Minimally Invasive Approach (PLIF)
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`Mathews Deposition Transcript
`
`Second Hynes Deposition Transcript
`
`Josse Deposition Transcript
`
`Patent Owner’s Objection to Evidence Under 37 CFR §
`42.64(b)(1), dated 9/12/2014
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`Email from Michael A. Amon to Jeff E. Schwartz, dated 9/9/2014
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`Confidential Settlement Agreement
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`6
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`Case No. IPR2013-00506
`U.S. Patent No. 8,361,156
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`CERTIFICATE OF SERVICE
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`
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`
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`Pursuant to 37 C.F.R. § 42.6(e), this is to certify that I caused to be served a
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`true and correct copy of the foregoing Joint Motion to Terminate Proceeding
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`Pursuant to 35 U.S.C. § 317(A) and Joint Notice of Settlement Pursuant to 35
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`U.S.C. § 317(B) and 37 C.F.R. § 42.74 and Exhibit 2041, by electronic service, on
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`this 26 day of April 2017, on the Petitioner at the correspondence address of the
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`Petitioner as follows:
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`Respectfully submitted,
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`
`
`/ Michael T. Rosato /
`Michael T. Rosato
`Reg. No. 52,182
`
`
`
`Jeff E. Schwartz
`Seth A. Kramer
`FOX ROTHSCHILD LLP
`1030 15th Street
`Suite 380 East
`Washington, DC 20005
`jeschwartz@foxrothschild.com
`skramer@foxrothschild.com
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`
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`
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`Dated: April 26, 2017
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`7
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