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`Paper No. ___
`Filed: March 23, 2020
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________________
`
`ALPHATEC HOLDINGS, INC. and ALPHATEC SPINE, INC.,
`Petitioners,
`
`v.
`
`NUVASIVE, INC.,
`Patent Owner.
`
`—————————————————
`Case IPR2019-00362
`Patent 8,361,156
`_____________________________
`
`
`PATENT OWNER’S REPLY IN SUPPORT OF
`MOTION TO EXCLUDE EVIDENCE
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`
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`NuVasive moved to exclude Exhibits 1053-1056, 1059-1062, 1064, and 1065.
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`Paper 38. Petitioner makes no opposition for Exhibits 1060 and 1062. Paper 44.
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`For the remaining exhibits, Petitioner fails to show they are admissible.
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`I. Exhibits 1053 and 1054
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`NuVasive moved to exclude Exhibits 1053 and 1054 because they are
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`irrelevant and disconnected from the original obviousness theories in the Petition
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`and/or an untimely attempt to cure identified deficiencies in the Petition. Paper 38,
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`1-4. Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369
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`(Fed. Cir. 2016) (“the expedited nature of IPRs bring with it an obligation for
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`petitioners to make their case in their petition”); see also Henny Penny Corp. v.
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`Frymaster LLC, 938 F.3d 1324, 1329-31 (Fed. Cir. 2019); Ariosa Diagnostics v.
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`Verinata Health, Inc., 805 F.3d 1359, 1367 (Fed. Cir. 2015). Petitioner argues in
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`response that these exhibits “fairly respond[] only to arguments made in Patent
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`Owner’s expert’s declaration and Patent Owner’s response.” Paper 44, 1-2.
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`Petitioner does not contest that it could have presented them with the Petition.
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`Petitioner’s belated reliance on these exhibits leaves its improper new attorney
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`arguments completely unsupported by expert testimony.
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` Petitioner concedes it is improper in reply to rely on a new rationale to
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`combine the prior art references and thus disclaims any reliance on Exhibits 1053-
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`1054 to provide a new rationale to combine or a new prima facie case of
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`-1-
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`
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`obviousness. Paper 44, 1-2. Exhibits 1053 and 1054 thus should be excluded under
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`F.R.E. 401-403 because Petitioner fails to demonstrate their relevance to the prima
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`facie case asserted in the Petition.
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`Essentially abandoning pretext to its untimely pivot, Petitioner now argues
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`Exhibits 1053 and 1054 show that “hollow, threaded perforated cylinders,” as
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`opposed to the originally cited modular block assembly of Michelson, “may be
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`used individually or inserted across the disc space in side-by-side pairs.” Paper 44,
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`2. But the Petition relied on the modularity concept of Michelson (EX1032) Figs.
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`18-19 to supply the alleged motivation to modify the primary reference (i.e.,
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`Brantigan), not using multiple cylindrical implants. E.g., Pet. 14, 69-70, 72-75.
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`Further abandoning pretext to its belated attempt to replace its faulty reliance
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`on Baccelli, Petitioner argues that Exhibit 1054 is relevant because it allegedly
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`confirms “POSAs appreciated the benefits of ‘aligning markers with the spinous
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`process and the lateral ends of the vertebrae[.]’” Paper 44, 3. But Petitioner still
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`fails to demonstrate that Exhibit 1054 supports its Petition case that Baccelli
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`instructs using the claimed marker configuration. Paper 38, 2-3.
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`Petitioner argues “‘a skilled artisan would have known about’ the teachings
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`of Michelson ’770 and McAfee” (Paper 44, 4), as if mere existence of the
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`references somehow permits their untimely introduction here. This is not the law,
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`nor does it establish a motivation to combine their teachings with the asserted
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`-2-
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`
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`grounds. Petitioner bears the unshifting burden of proving obviousness, including
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`motivation to combine the asserted teachings of the asserted prior art references. In
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`re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1375 (Fed. Cir. 2016). Petitioner
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`fails to tie these improper new references to the grounds references and
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`obviousness theory asserted in the Petition.
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`Petitioner argues that Koninklijke Philips N.V. v. Google LLC, 948 F.3d
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`1330, 1337 (Fed. Cir. 2020) “requires an assessment of” its improper new
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`references to illustrate the “background knowledge possessed by a person having
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`ordinary skill in the art.” Paper 44, 3-4. But where a petitioner wishes to rely on
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`“the general knowledge” of a POSA to supply a claim limitation or motivation to
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`modify or combine, it must do so expressly in the petition and must include in the
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`petition the evidence corroborating the assertion. See Google, 948 F.3d at 1335-38
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`(Fed. Cir. 2020) (“it is the petition, not the Board’s ‘discretion,’ that defines the
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`metes and bounds of an inter partes review”).
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`Google simply does not support Petitioner’s argument. In Google, the
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`petition proposed modifying the primary reference in light of the “general
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`knowledge” of the POSA and specifically cited the Hua reference to corroborate
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`the expert’s testimony about this general knowledge. Id. at 1334. In contrast, here,
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`the Petition relied on Baccelli to “instruct” a POSA to use the claimed radiopaque
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`marker configuration and did not assert it was within the “general knowledge” of a
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`-3-
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`
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`POSA to align radiopaque markers with the spinous process. See, e.g., Pet. 31. No
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`expert testimony supports Petitioner’s attorney argument that aligning radiopaque
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`markers with the spinous process was generally known to a POSA.
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`Indeed, Petitioner has still failed to point to even a single prior art reference
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`disclosing alignment of radiopaque markers with the spinous process. Contrary to
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`Petitioner’s unsupported assertions, Exhibit 1054 does not confirm that “POSAs
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`appreciated [or, more pertinently, that Baccelli teaches] the benefits of ‘aligning
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`markers with the spinous process[.]’” Paper 44, 3. To the contrary, the image
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`Petitioner relies on is a post-operative image that was not used to position an
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`implant, does not depict radiopaque markers, and does not depict alignment with
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`the spinous process. EX1054, 3 (Fig. 1 “radiographs were obtained after the
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`procedure”). For the reasons discussed above and in NuVasive’s motion, each of
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`Exhibits 1053 and 1054 should be excluded or at least granted no weight.
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`II. Exhibit 1055
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`NuVasive objected to Exhibit 1055 as being cited in Petitioner’s reply with
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`no substantive discussion. Paper 38, 4. Petitioner responded by improperly
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`attempting to back-fill arguments regarding Exhibit 1055. Paper 44, 5-6. The
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`Board should disregard these belated and non-responsive arguments.
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`-4-
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`
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`III. Exhibits 1056, 1059-1061, 1064-1065
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`Petitioner does not dispute that Exhibit 1056 was, and that Exhibits 1059-
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`1061 and 1064-1065 are, incomplete. Paper 44, 5-7. Petitioner approved of
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`NuVasive’s filing of EX2060 as a complete version of the transcript Petitioner
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`filed as EX1056. Id. at 5. Petitioner also fails to establish the admissibility of its
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`exhibits. Paper 38, 4-7.
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`With respect to Exhibit 1064, NuVasive pointed out that Petitioner’s use of
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`the exhibit is misleading and incomplete because Dr. Branch testified during his
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`deposition in the district court case that he was paid several million dollars as a
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`consultant for Medtronic and that this range of compensation reflected fair market
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`value. Paper 38, 5-6. Petitioner does not contest the authenticity or veracity of Dr.
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`Branch’s testimony, but offers attorney argument that the figure should be
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`interpreted lower ($857,593.33) than what Dr. Branch stated. Paper 44, 7. The
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`Board should disregard Exhibit 1064 or afford it no weight.
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`The challenged exhibits should be excluded for the reasons discussed above.
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`Date: March 23, 2020
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`Respectfully submitted,
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`
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`
`
`/ Michael T. Rosato /
`Michael T. Rosato, Lead Counsel
` Reg. No. 52,182
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`-5-
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`
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`CERTIFICATE OF SERVICE
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`I certify that the foregoing Patent Owner’s Reply in support of Motion to
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`Exclude Evidence was served on March 23, 2020, on the Petitioner at the
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`electronic service addresses of the Petitioner as follows:
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`Jovial Wong
`Nimalka R. Wickramasekera
`David P. Dalke
`WINSTON & STRAWN LLP
`Alphatec-IPRs@winston.com
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`
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`
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`Date: March 23, 2020
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`Respectfully submitted,
`
`
`/ Michael T. Rosato /
`Michael T. Rosato, Lead Counsel
`Reg. No. 52,182
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`-6-
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