IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF PENNSYLVANIA
`
`BONUTTI SKELETAL INNOVATIONS,
`LLC
`
`Plaintiff,
`
`v.
`
`GLOBUS MEDICAL INC.
`
`Defendant.
`
`Civil Action No. 14-cv-6650-WB
`
`JURY TRIAL DEMANDED
`
`BONUTTI SKELETAL’S DISCLOSURE OF ASSERTED CLAIMS AND
`INFRINGEMENT CONTENTIONS
`
`Pursuant to the Court’s Scheduling Order No. 1 (D.I. 27), Bonutti Skeletal Innovations
`
`LLC (“Bonutti Skeletal”) hereby provides its Disclosure of Asserted Claims and Infringement
`
`Contentions concerning infringement by Globus Medical Inc. (“Globus”).
`
`Bonutti Skeletal contends that Globus infringes, literally and/or under the doctrine of
`
`equivalents, one or more claims of each of the following patents: U.S. Patent No. 6,099,531
`
`(“the ’531 Patent”); U.S. Patent No. 6,423,063 (“the ’063 Patent”); U.S. Patent No. 7,001,385
`
`(“the ’385 Patent”); U.S. Patent No. 8,486,066 (“the ’066 Patent”); U.S. Patent No. 8,690,944
`
`(“the ’944 Patent”); and U.S. Patent No. 8,795,363 (“the ’363 Patent”) (collectively, the
`
`“Asserted Patents”). In particular, Globus infringes the below-listed claims of each of the
`
`Asserted Patents (collectively, the “Asserted Claims”):
`
`Patent No.
`6,099,531
`6,423,063
`7,001,385
`8,486,066
`8,690,944
`8,795,363
`
`Asserted Claims
`8, 9, 46, 49, 105, 107, 109, 111
`1, 8, 34
`1, 10, 11, 14, 23, 24, 26
`1, 2, 3, 8, 9, 10, 13, 16, 17, 18
`3, 20, 21, 22, 27, 28, 29, 30
`1, 2, 14, 44, 47, 53
`
`1
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`GLOBUS MEDICAL, INC.
`EXHIBIT 1002
`IPR2015-to be assigned
`(Globus v. Bonutti)
`Page 1 of 8
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`

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`The claim charts attached hereto, Exhibits A-F, identify where each limitation of one or
`
`more of the Asserted Claims is present within the Accused Products and/or the use of the
`
`Accused Products. The below table identifies the Accused Products by Asserted Patent:
`
`Patent No.
`6,099,531
`
`6,423,063
`7,001,385
`
`8,486,066
`8,690,944
`8,795,363
`
`Accused Products
`Exhibit Nos.
`A-1 to A-21 CALIBER, CALIBER-L, COALITION, COLONIAL,
`CONTINENTAL, FORGE, FORTIFY, FORTIFY I, FORTIFY
`I-R, INDEPENDENCE, INTERCONTINENTAL,
`MONUMENT, NIKO, RISE, SIGNATURE, SUSTAIN
`ARCH, SUSTAIN LARGE, SUSTAIN MEDIUM,
`SUSTAIN-O, SUSTAIN SMALL, TRANSCONTINENTAL
`FORGE
`B-1
`C-1 to C-11 CALIBER, CALIBER-L, COALITION, COLONIAL,
`CONTINENTAL, INDEPENDENCE, MONUMENT,
`SUSTAIN LARGE, SUSTAIN-O, SUSTAIN SMALL,
`TRANSCONTINENTAL
`FORTIFY I-R STATIC
`FORTIFY I PEEK, FORTIFY I-R STATIC
`COALITION, FORTIFY I PEEK
`
`D-1
`E-1, E-2
`F-1, F-2
`
`
`
`In each of the attached claim charts, Bonutti Skeletal contends that each limitation of
`
`each asserted claim is literally present in that Accused Product and/or in the use of that Accused
`
`Product. To the extent that any claim limitation is found not to be literally present in an Accused
`
`Product and/or the use of that Accused Product, Bonutti Skeletal contends that the Accused
`
`Product and/or the use of that Accused Product embodies such claim limitations under the
`
`doctrine of equivalents because the structural elements of that Accused Product are not
`
`substantially different from any claim limitation, and because the use of the that Accused
`
`Product is performed with substantially the same functions, in substantially the same ways, to
`
`achieve substantially the same results.
`
`
`
`Where a claim limitation is implemented in the same or substantially the same way for
`
`each instrumentality of an Accused Product family, Bonutti Skeletal provides an exemplary
`
`illustration or description setting forth specifically where the limitation is found in Accused
`
`2
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`Page 2 of 8
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`

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`Product without repeating the same illustration or description for each version of each Accused
`
`Product in the family. To the extent these infringement contentions do not cite support for each
`
`member of an Accused Product family, such an omission of evidence shall not be construed as
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`an admission of non-infringement or waiver of the right to rely on such evidence at a later date.
`
`Bonutti Skeletal contends that Globus infringes the Asserted Patents in at least the
`
`following ways:
`
`
`
`
`
`1.
`
`Globus is liable under 35 U.S.C. § 271(a) for direct infringement of the Asserted
`
`Patents because Globus makes, sells, and offers to sell Accused Products that meet all of the
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`limitations of certain asserted apparatus claims of the Asserted Patents.
`
`
`
`2.
`
`Globus is liable under 35 U.S.C. § 271(a) for direct infringement of the Asserted
`
`Patents because medical practitioners employed by Globus, under contract with Globus, or acting
`
`as agents of Globus use Accused Products, thereby infringing the asserted apparatus claims;
`
`assemble (make) Accused Products, thereby infringing the asserted apparatus claims; and/or
`
`perform medical procedures that meet all of the limitations of the asserted method claims,
`
`thereby infringing the asserted method claims.
`
`
`
`3.
`
`Globus is liable under 35 U.S.C. § 271(b) for inducing infringement of the
`
`Asserted Patents. With knowledge that medical practitioners’ assembly and use of the Accused
`
`Products and performance of infringing medical procedures using the Accused Products
`
`constitutes direct infringement, and with the specific intent to cause medical practitioners to
`
`infringe the Asserted Patents, Globus instructs medical practitioners to assemble the Accused
`
`Products into and use the Accused Products as infringing apparatuses and to perform infringing
`
`medical procedures using the Accused Products. For example, Globus provides surgical
`
`technique guides, brochures, and other written materials that instruct medical practitioners to use
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`3
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`Page 3 of 8
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`the Accused Products in an infringing manner. On information and belief, Globus also trains
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`medical practitioners to use the Accused Products in infringing medical procedures with the
`
`intent that those medical practitioners perform infringing medical procedures and use the
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`Accused Products according to the training provided by Globus. E.g., Globus Medical,
`
`COALITION Stand-Alone ACDF System Surgical Technique, No. GMTGD43 (2012), at 34
`
`(“The implantation of intervertebral fusion devices should be performed only by experienced
`
`spinal surgeons with specific training in the use of this system because this is a technically
`
`demanding procedure presenting a risk of serious injury to the patient.”) (emphasis added);
`
`Globus Medical, INDEPENDENCE Stand-Alone ALIF System Surgical Technique, No.
`
`GMTGD49 (2012), at 40 (same); Globus Medical, MONUMENT Anterior Spondylolisthesis
`
`Reduction System Surgical Technique, No. GMTGD197 (2014), at 46 (same).
`
`
`
`4.
`
`Globus is liable under 35 U.S.C. § 271(c) for contributing to the infringement of
`
`the Asserted Patents. Globus contributes to the direct infringement of medical practitioners by
`
`selling and offering to sell the Accused Products (and, for certain Accused Products, related
`
`screws and bone-growth inducing materials) to medical practitioners. Globus sells and offers to
`
`sell the Accused Products with knowledge that medical practitioners use the Accused Products to
`
`perform medical procedures that infringe the asserted method claims and with knowledge that
`
`the Accused Products are especially adapted for use in infringing medical procedures. Further,
`
`Globus sells and offers to sell the Accused Products with knowledge that medical practitioners
`
`use the Accused Products as and assemble the Accused Products into apparatuses that infringe
`
`the asserted apparatus claims and with knowledge that the Accused Products are especially
`
`adapted to be used as or assembled into infringing apparatuses. The Accused Products are key to
`
`practicing the asserted method claims and are key components of the asserted apparatus claims.
`
`4
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`Page 4 of 8
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`The Accused Products are not staple articles suitable for a substantial non-infringing use, at least
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`because they have no use other than being assembled into or used as infringing apparatuses or
`
`being used in infringing spinal implant procedures. For instance, Globus’s product literature
`
`states that the Accused Products are contraindicated for “[a]ny condition not described in the
`
`indications for use.” Globus Medical, COALITION Stand-Alone ACDF System Surgical
`
`Technique, No. GMTGD43 (2012), at 34; see also Globus Medical, INDEPENDENCE Stand-
`
`Alone ALIF System Surgical Technique, No. GMTGD49 (2012), at 40 (same); Globus Medical,
`
`MONUMENT Anterior Spondylolisthesis Reduction System Surgical Technique, No.
`
`GMTGD197 (2014), at 46 (same). As described in the attached claim charts, using the Accused
`
`Products according to their indications for use infringes the Asserted Patents.
`
`
`
` The below table summarizes on a claim-by-claim basis the ways in which Globus
`
`infringes each of the Asserted Claims.
`
`Patent
`No.
`
`1. Make, Sell,
`Offer to Sell
`
`35 U.S.C. § 271(a)
`
`6,099,531 105
`
`6,423,063 N/A
`7,001,385 N/A
`
`8,486,066 1, 8, 9, 10, 13, 16,
`17, 18
`8,690,944 3, 20, 21, 22, 27,
`28, 29, 30
`8,795,363 1, 2, 14, 44, 47, 53
`
`2. Assembly/Use by
`Employee, Under
`Contract, or Agent
`
`35 U.S.C. § 271(a)
`8, 9, 46, 49, 105, 107,
`109, 111
`1, 8, 34
`1, 10, 11, 14, 23, 24,
`26
`1, 2, 3, 8, 9, 10, 13,
`16, 17, 18
`3, 20, 21, 22, 27, 28,
`29, 30
`1, 2, 14, 44, 47, 53
`
`3. Induced
`Infringement
`
`4. Contributory
`Infringement
`
`35 U.S.C.
`§ 271(b)
`8, 9, 46, 49, 105,
`107, 109, 111
`1, 8, 34
`1, 10, 11, 14, 23,
`24, 26
`1, 2, 3, 8, 9, 10,
`13, 16, 17, 18
`3, 20, 21, 22, 27,
`28, 29, 30
`1, 2, 14, 44, 47,
`53
`
`35 U.S.C.
`§ 271(c)
`8, 9, 46, 49, 105,
`107, 109, 111
`1, 8, 34
`1, 10, 11, 14, 23,
`24, 26
`1, 2, 3, 8, 9, 10,
`13, 16, 17, 18
`3, 20, 21, 22, 27,
`28, 29, 30
`1, 2, 14, 44, 47,
`53
`
`
`
`Bonutti Skeletal has prepared
`
`these
`
`infringement contentions from
`
`information
`
`reasonably and presently available to Bonutti Skeletal, including publicly available information,
`
`without the benefit of any substantial discovery. Globus has provided ninety pages of
`
`5
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`Page 5 of 8
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`confidential brochures for a subset of the Accused Products but no other discovery to date. To
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`the best of Bonutti Skeletal’s knowledge, information, and belief, these disclosures are correct as
`
`of the date they are made. Nevertheless, Bonutti Skeletal expects to obtain additional facts
`
`revealing Globus’s infringement of the Asserted Patents during discovery. In particular, Bonutti
`
`Skeletal expects to obtain specifications and design history files for the Accused Products;
`
`surgical technique guides that Globus provides to instruct surgeons on infringing uses of the
`
`Accused Products; documents and deposition testimony regarding the promotion, marketing, and
`
`sales of the Accused Products; documents and deposition testimony regarding clinical,
`
`educational, or technical support that Globus provides for the Accused Products; and deposition
`
`testimony from surgeons regarding their use of the Accused Products.
`
`
`
`Bonutti Skeletal provides these infringement contentions before claim construction
`
`disclosures and before the Court’s claim construction ruling. Bonutti Skeletal’s infringement
`
`contentions are not an admission, adoption, or waiver of any particular claim construction.
`
`Bonutti Skeletal reserves all rights with respect to claim construction.
`
`
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`Consistent with its obligations under the Federal Rules of Civil Procedure, the Local
`
`Rules, and the scheduling order entered by the Court, Bonutti Skeletal reserves the right to seek
`
`leave of Court to supplement or amend the initial infringement charts provided herein as
`
`additional evidence and information becomes available or as otherwise appropriate, including the
`
`issuance of the Court’s claim construction ruling.
`
`
`
`Bonutti Skeletal concurrently produces the documents from which it prepared these
`
`infringement contentions. Bonutti Skeletal continues to obtain and review documents and will
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`produce additional responsive material if and when it is identified.
`
`6
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`Page 6 of 8
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`Dated: March 30, 2015
`
`By:
`
`/s/ Kevin K. McNish
`
`Brian E. Farnan
`Email: bfarnan@farnanlaw.com
`FARNAN LLP
`1125 Walnut Street
`Philadelphia, PA 19107
`Telephone: 302-777-0300
`Facsimile: 302-777-0301
`
`John M. Desmarais (pro hac vice forthcoming)
`Email: jdesmarais@desmaraisllp.com
`Laurie Stempler (pro hac vice)
`Email: lstempler@desmaraisllp.com
`Kevin K. McNish (pro hac vice)
`Email: kmcnish@desmaraisllp.com
`DESMARAIS LLP
`230 Park Avenue
`New York, NY 10169
`Telephone: (212)-351-3400
`Facsimile: (212)-351-3401
`
`Attorneys for Bonutti Skeletal Innovations LLC
`
`7
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`Page 7 of 8
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`CERTIFICATE OF SERVICE
`
`
`
`I hereby certify that on this 30th of March, 2015, a true and correct copy of the foregoing
`
`was electronically served on counsel for Globus Medical, Inc. as follows:
`
`Via Email:
`
`Via Email:
`
`Jacob Buchdahl
`Arun Subramanian
`Seth Ard
`SUSMAN GODFREY L.L.P.
`560 Lexington Avenue, 15th Floor
`New York, New York, 10022
`(212) 336-8330
`jbuchdahl@susmangodfrey.com
`asubramanian@susmangodfrey.com
`sard@susmangodfrey.com
`
`Jeffrey S. Cianciulli
`Susan Verbonitz
`WEIR & PARTNERS LLP
`Suite 500, The Widener Building
`1339 Chestnut Street
`Philadelphia, PA 19107
`(215) 665-8181
`Fax: (215) 665-8464
`jcianciulli@weirpartners.com
`sverbonitz@weirpartners.com
`
`Attorneys for Globus Medical, Inc.
`
`Attorneys for Globus Medical, Inc.
`
`By:
`
`/s/ Kevin K. McNish
`Kevin K. McNish (pro hac vice)
`Email: kmcnish@desmaraisllp.com
`DESMARAIS LLP
`230 Park Avenue
`New York, NY 10169
`Telephone: (212)-351-3400
`Facsimile: (212)-351-3401
`
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`Page 8 of 8