Paper No. _____
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_____________________________
`
`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
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_____________________________
`
`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
`
`
`
`
`
`
`
`Case No. IPR2013-00506
`U.S. Patent No. 8,361,156
`
`I. Relief Requested
`
`
`
`Pursuant to 35 U.S.C. § 317(a) and (b), and as authorized by the Board in an
`
`email dated April 14, 2017, Patent Owner NuVasive, Inc. and Petitioner Medtronic,
`
`Inc., provide notice that they have reached a settlement and jointly request
`
`termination of the Inter Partes Review of U.S. Patent No. 8,361,156 (“the ’156
`
`patent”), Case No. IPR2013-00506. The Parties request that the Board treat the
`
`Settlement Agreement as business confidential information and keep it separate
`
`from the file of the involved patent.
`
`II. Statement of Reasons for the Relief Requested
`
`The Parties have reached a Settlement Agreement regarding their disputes
`
`relating to the ’156 patent. Because the underlying dispute has been resolved, the
`
`Parties submit that the present Inter Partes Review is ripe for termination. The
`
`present Inter Partes Review is also at a procedural stage affording termination.
`
`The present Inter Partes Review has been remanded to the Board from the U.S.
`
`Court of Appeals for the Federal Circuit in a decision dated December 7, 2016.
`
`But it is unnecessary for the Board to reach a decision on the remanded issues in
`
`view of the requested termination. Termination will at the very least conserve the
`
`resources of the Board in considering these issues.
`
`III. Related Litigation and PTAB Proceedings
`
`The Parties have settled the underlying litigation involving the ’156 patent.
`
`1
`
`
`
`Case No. IPR2013-00506
`U.S. Patent No. 8,361,156
`
`As indicated in Medtronic’s Petition for Inter Partes Review dated August 14,
`
`
`
`2013 and NuVasive’s Mandatory Notices dated September 4, 2013, the underlying
`
`litigation was styled Warsaw Orthopedic, Inc. et al. v. NuVasive, Inc. (originally
`
`filed in N.D. Ind. as Case No. 3:12-cv-00438-JD-CAN on Aug. 17, 2012, and
`
`transferred to S.D. Cal. on Nov. 8, 2012, as Case No. 3:12-cv-02738-CAB (MDD)).
`
`Medtronic’s related corporate entities, Warsaw Orthopedic, Inc., Medtronic
`
`Sofamor Danek USA, Inc., Medtronic Puerto Rico Operations Co., Medtronic
`
`Sofamor Danek Deggendorf, GMBH, and Osteotech, Inc. were parties to the
`
`underlying litigation. As part of the Settlement Agreement, the underlying
`
`litigation was also settled with respect to these related corporate entities.
`
`NuVasive represents that no district court litigation is currently pending
`
`involving the ’156 patent.
`
`U.S. Patent No. 8,187,334 is in the same family as the ’156 patent, was also
`
`at issue in the underlying litigation, and was reviewed in Case Nos. IPR2013-
`
`00508. U.S. Patent No. 8,251,997 is owned by a Medtronic-related entity and was
`
`also at issue in the underlying litigation and was reviewed in Case No. IPR2013-
`
`00206. Although otherwise unrelated, similar joint motions to terminate are being
`
`filed in Cases Nos. IPR2013-00206 and -00508 to effectuate the Parties’ settlement.
`
`IV. Submission of the Settlement Agreement
`
`Submitted concurrently with this Motion is a true copy of the Settlement
`
`2
`
`
`
`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
`
`
`
`37 C.F.R. § 42.74(b).
`
`The Parties jointly request that this Settlement Agreement be treated as
`
`business confidential information and be kept separate from the file of the involved
`
`patent, pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c). Ex. 2041 is being
`
`submitted concurrently having “availability” in the PTAB E2E system of “Parties
`
`and Board Only” as advised in FAQ G2. The Parties jointly request that this
`
`Settlement Agreement (Ex. 2041) be made available only to Federal Government
`
`agencies on written request or to any person only on a showing of good cause.
`
`3
`
`
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`
`
`Case No. IPR2013-00506
`U.S. Patent No. 8,361,156
`
`V. Conclusion
`
`
`
`For the reasons stated above, the Parties respectfully request that the Board
`
`terminate Inter Partes Review of U.S. Patent No. 8,361,156, Case No. IPR2013-
`
`00506.
`
`Dated: April 26, 2017
`
`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
`
`Dated: April 26, 2017
`
`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
`
`
`
`4
`
`
`
`Case No. IPR2013-00506
`U.S. Patent No. 8,361,156
`
`LIST OF EXHIBITS
`
`Exhibit No.
`
`Description
`
`
`
`2101
`
`2102
`
`2103
`
`2104
`
`2105
`
`2106
`
`2107
`
`2108
`
`2109
`
`2010
`
`2011
`
`2012
`
`2013
`
`2014
`
`2015
`
`2016
`
`2017
`
`2018
`
`2019
`
`U.S. Patent No. 7,905,840 to Pimenta et al.
`
`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)
`
`myspinetools.com front page (Not Filed)
`
`myspinetools.com Terms of Use (Not Filed)
`
`Launch Binder (Not Filed)
`
`Webpage Toad MySQL (Not Filed)
`
`Reserved
`
`U.S. Patent 8,512,408 (Hynes) (Not Filed)
`
`Synthes SVS-PR Guide
`
`Medtronic Safamor Danek Boomerang Brochure
`
`Hynes Deposition Transcript
`
`510(k) Summary Medtronic Sofamor Danek K122037
`
`510(k) Summary Telamon® PEEK Spinal System K110562
`
`Synthes Vertebral Spacer – AR Brochure
`
`DePuy Spine Saber Surgical Technique Brochure
`
`Declaration of Barton L. Sachs, M.D. in IPR2013-00206
`
`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.
`
`5
`
`
`
`Case No. IPR2013-00506
`U.S. Patent No. 8,361,156
`
`
`
`2021
`
`2022
`
`2023
`
`2024
`
`2025
`
`2026
`
`2027
`
`2028
`
`2029
`
`2030
`
`2031
`
`2032
`
`2033
`
`2034
`
`2035
`
`2036
`
`2037
`
`2038
`
`2039
`
`2040
`
`2041
`
`Curriculum Vitae of Dr. Hansen A. Yuan, M.D.
`
`NuVasive – CoRoent XL Brochure
`
`Redacted Engineering Drawings
`
`Redacted Deposition of Steven DeRidder
`
`Clydesdale® Spinal System Brochure
`
`Clydesdale® Spinal System Images
`
`Medtronic Direct Lateral Interbody Fusion DLIF Surgical
`Technique Brochure
`
`Medtronic DILF-Direct Lateral Interbody Fusion Brochure
`
`Clydesdale® Spinal Systems Image
`
`Declaration of Patrick Miles
`
`Declaration of Theodore G. Obenchain, M.D.
`
`The Relationship Between Cross Sectional Area and Strength of
`Back Muscles in Patients with Chronic Low Back Pain
`
`Printout, U.S. News & World Report
`
`Lumbar Vertebral Body Replacement
`
`Lumbar – Minimally Invasive Approach (PLIF)
`
`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
`
`Email from Michael A. Amon to Jeff E. Schwartz, dated 9/9/2014
`
`Confidential Settlement Agreement
`
`
`
`
`
`6
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`
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`Case No. IPR2013-00506
`U.S. Patent No. 8,361,156
`
`CERTIFICATE OF SERVICE
`
`
`
`
`
`Pursuant to 37 C.F.R. § 42.6(e), this is to certify that I caused to be served a
`
`true and correct copy of the foregoing Joint Motion to Terminate Proceeding
`
`Pursuant to 35 U.S.C. § 317(A) and Joint Notice of Settlement Pursuant to 35
`
`U.S.C. § 317(B) and 37 C.F.R. § 42.74 and Exhibit 2041, by electronic service, on
`
`this 26 day of April 2017, on the Petitioner at the correspondence address of the
`
`Petitioner as follows:
`
`Respectfully submitted,
`
`
`
`/ 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
`
`
`
`
`
`
`Dated: April 26, 2017
`
`
`
`
`7
`
`
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