`Filed: April 1, 2020
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`Filed on behalf of: NuVasive, Inc.
`By: Michael T. Rosato (mrosato@wsgr.com)
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`Paul D. Tripodi II (ptripodi@wsgr.com)
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`Jad A. Mills (jmills@wsgr.com)
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`Sonja R. Gerrard (sgerrard@wsgr.com)
`Wilson Sonsini Goodrich & Rosati
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________________
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`ALPHATEC HOLDINGS, INC. and ALPHATEC SPINE, INC.,
`Petitioners,
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`v.
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`NUVASIVE, INC.,
`Patent Owner.
`_____________________________
`
`Case No. IPR2019-00362
`Patent No. 8,361,156
`_____________________________
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`PATENT OWNER’S OBJECTIONS TO
`PETITIONER DEMONSTRATIVES
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`I.
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`INTRODUCTION
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`Pursuant to the Board’s hearing order (Paper 43, 3), NuVasive, Inc. (“Patent
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`Owner”) submits the following objections to Alphatec Holdings, Inc. and Alphatec
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`Spine, Inc. (“Petitioners)’s demonstrative slides, and any reference to or reliance
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`on the foregoing by Petitioners.
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`II. OBJECTIONS.
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`1.
`Left side panel of slide 6
`This is an improper new argument because the Petition (at 47) does not cite
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`this image and does not cite paragraph 22 of the Branch Declaration and Petitioner
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`identifies no paper where this is cited.
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`2.
`Left side panel of slide 12
`This is an improper new argument because the Petition (at 9-12) does not
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`cite EX1032 (Michelson), 6:36-37 and Petitioner identifies no paper where this is
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`cited.
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`3.
`Reliance on paragraph 3 of EX1038 on slide 15
`This is an improper new argument because the relied upon paragraph does
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`not appear on the cited paper page of the cited paper and Petitioner identifies no
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`paper where this is cited.
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`-1-
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`4.
`Reliance on paragraph 27 of EX1038 on slide 16
`This is an improper new argument because the relied upon paragraph does
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`not appear on the cited page of the cited paper and Petitioner identifies no paper
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`where this is cited.
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`5.
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`Reliance on EX1054 in slides 18, 26, 34, 75, 106 and any slides
`relying on EX1054.
`EX1054 was improperly submitted by Petitioner in reply and Petitioner
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`improperly attempts to rely on EX1054 to raise new theories of unpatentability.
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`6.
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`Reliance on EX1053 in slides 20, 27 and any slides relying on
`EX1053
`EX1054 was improperly submitted by Petitioner in reply and Petitioner
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`improperly attempts to rely on EX1054 to raise new theories of unpatentability.
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`7.
`Slide 43
`Paragraphs 40-56 of the Branch declaration are not cited in the Petition and
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`Petitioner has identified no paper where these paragraphs are cited, making this
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`citation an improper new argument.
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`8.
`Slide 47
`The red text on slide 47 asserts unsupported claims constructions that were
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`not provided in the petition and are improper new arguments.
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`9.
`Slide 48
`The red text on slide 48 asserts an unsupported claim constructions that was
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`not provided in the petition and is an improper new argument.
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`-2-
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`10. Slide 51
`The red text on slide 51 asserts unsupported claims constructions that were
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`not provided in the petition and are improper new arguments.
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`11. Slide 52
`The red text on slide 52 asserts unsupported claims constructions that were
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`not provided in the petition and are improper new arguments.
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`12. Slides 63 and 86
`The depicted text was not cited in the petition and is an improper new
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`argument.
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`13. Slides 66 and 144
`The red text “Petitioner never suggested inserting 2 implants each having
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`18.95 mm width” is an improper new argument not made in the petition.
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`Left side panel of slide 70
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`This is an improper new argument not made in the petition.
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`14. Slide 73
`Petitioner’s paper citations do not demonstrate this testimony was relied
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`upon in a timely manner and the slide is thus an improper new argument.
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`15. Red text on slide 90
`Petitioner’s paper citations do not demonstrate the arguments in the two red
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`bullet points were made in a timely manner
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`-3-
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`16. Slide 91
`No petition citation supports this improper new argument
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`17. Slide 94
`The relied upon text is not cited in the cited paper, Petitioner’s paper
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`citations do not demonstrate this testimony was relied upon in a timely manner,
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`and the slide is thus an improper new argument.
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`18. Title of slide 95
`The title of slide 95 is argumentative and misleading.
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`19. Bottom left panel of slide 100 and of slide 146
`The cited pages of the Petitions do not cite EX1007 (Brantigan), 7:4-6,
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`Petitioner’s paper citations do not demonstrate this citation was relied upon in a
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`timely manner, and the inclusion of that panel on these slides is thus an improper
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`new argument.
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`20. Slide 104
`Petitioner’s paper citation indicates this text was relied upon for the first
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`time in its Supplemental Sur-Sur Reply, which reliance was therefore not presented
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`in a timely manner and the slide is thus an improper new argument.
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`21. Slide 105
`Petitioner’s paper citation indicates this text was relied upon for the first
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`time in its Supplemental Sur-Sur Reply, which reliance was therefore not presented
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`in a timely manner and the slide is thus an improper new argument.
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`22. Slide 106
`Petitioner’s reliance on McAfee Figure 4 to support the argument that
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`“Marker Argument Not Hindsight: POSAs knew the benefits” is an improper new
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`argument not previously presented in any paper submitted in this case.
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`23. Slide 118
`Collateral estoppel arguments not contained in the petition are improper new
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`arguments.
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`24. Any attempt to depart from the modularity of Michelson
`NuVasive objects to slides 24, 53, 61, 114, and any other of Petitioner’s
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`slides to the extent they attempt to depart from the modularity of Michelson’s
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`block implants as illustrated in Michelson Figs. 18-19.
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`Dated: April 1, 2020
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`Respectfully submitted,
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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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`CERTIFICATE OF SERVICE
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`The undersigned certifies that the foregoing Patent Owner’s Objections to
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`Petitioner’s Demonstratives was served on April 1, 2020, at the following
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`electronic service addresses:
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`Jovial Wong
`Nimalka R. Wickramasekera
`David P. Dalke
`WINSTON & STRAWN LLP
`Alphatec-IPRs@winston.com
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`Dated: April 1, 2020
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`Respectfully submitted,
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`/ Michael T. Rosato /
`Michael T. Rosato, Lead Counsel
`Reg. No. 52,182
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`-6-
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