Paper No. 21
`Filed July 23, 2019
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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 No. IPR2019-00362
`United States Patent No. 8,361,156
`________________
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`PETITIONERS’ OBJECTIONS PURSUANT TO 37 C.F.R. § 42.64(B)(1)
`TO PATENT OWNER’S EVIDENCE SUBMITTED WITH PATENT
`OWNER PRELIMINARY RESPONSE
`
`
`
`
`
`Filed July 23, 2019
`
`
`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 No. IPR2019-00362
`United States Patent No. 8,361,156
`________________
`
`PETITIONERS’ OBJECTIONS PURSUANT TO 37 C.F.R. § 42.64(B)(1)
`TO PATENT OWNER’S EVIDENCE SUBMITTED WITH PATENT
`OWNER PRELIMINARY RESPONSE
`
`
`
`
`
`
`IPR2019-00362
`Petitioners’ Objections to Evidence
`Pursuant to 37 C.F.R. § 42.64(b)(1) and the Federal Rules of Evidence
`
`(“FRE”), Petitioners submit the following objections to evidence served with
`
`Patent Owner Preliminary Response Pursuant to 37 C.F.R. § 42.107 (Paper No.
`
`11). Petitioners’ objections are timely filed within 10 business days of the July 9,
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`2019 Institution Decision (Paper No. 18).
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`Petitioners reserve the right to present further objections to this or any
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`additional evidence submitted by Patent Owner, consistent with the applicable
`
`rules and other authority.
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`Exs. 2002 and 2011 – Petitioners object to Exhibits 2002 and 2011 under
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`FRE 401, 402, and 37 C.F.R. § 42.61 because the Exhibits do not have a tendency
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`to make a consequential fact in this action more or less probable than it would
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`without the evidence. For example, and without limitation, Exhibits 2002 and
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`2011 were filed in a proceeding involving a patent other than the ’156 patent at
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`issue in this IPR. Further, Exhibit 2002 refers to the ’156 patent for the proposition
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`that implants disclosed in the ’156 patent do “not require the removal of portions
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`of the adjacent vertebrae,” which are not limitations recited by the challenged
`
`claims, and as such, are not relevant to whether there is any nexus between the
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`challenged claims and any objective indicia of nonobviousness, including
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`commercial success, industry praise, copying, skepticism, failure of others, and
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`unexpected results. The same objections apply to Exhibit 2011, which Exhibit
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`1
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`IPR2019-00362
`Petitioners’ Objections to Evidence
`2002 cites in support of purported secondary considerations. Petitioners further
`
`object to Exhibits 2002 and 2011 under FRE 403 because any probative value is
`
`substantially outweighed by the risk of unfair prejudice, confusing the issues,
`
`wasting time, or needlessly presenting cumulative evidence. For example, and
`
`without limitation, the probative value of an unauthenticated and not self-
`
`authenticating (FRE 901 and FRE 902) declaration (Ex. 2002) and underlying
`
`exhibit (Ex. 2011) relating to a different patent in a different proceeding is
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`substantially outweighed by the confusion created regarding whether there is any
`
`nexus between any limitations of the challenged claims and any objective indicia
`
`of nonobviousness (FRE 403). Further, Petitioners object to Exhibits 2002 and
`
`2011 under FRE 801 and 802 to the extent Patent Owner relies upon these Exhibits
`
`to prove any objective indicia of nonobviousness.
`
`Exs. 2003 and 2018 – Petitioners object to these unauthenticated and not
`
`self-authenticating (FRE 901 and FRE 902) documents under FRE 401, 402, and
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`37 C.F.R. § 42.61 because Exhibits 2003 and 2018 do not have a tendency to make
`
`a consequential fact in this action more or less probable than it would without the
`
`evidence. For example, and without limitation, the work history of certain
`
`Alphatec employees is not relevant to the invalidity of the challenged claims.
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`Further, the probative value of the work history of certain Alphatec employees is
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`substantially outweighed by the confusion created regarding invalidity of the
`
`
`
`2
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`
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`IPR2019-00362
`Petitioners’ Objections to Evidence
`challenged claims (FRE 403). Additionally, even if the Exhibits were relevant
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`(and they are not), Petitioners object because Exhibits 2003 and 2018 are hearsay
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`pursuant to FRE 801 and FRE 802.
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`Exs. 2013 through 2015 – Petitioners object to these unauthenticated and
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`not self-authenticating (FRE 901 and FRE 902) Exhibits 2013, 2014, and 2015
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`under FRE 401, 402, and 37 C.F.R. § 42.61 because these Exhibits do not have a
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`tendency to make a consequential fact in this action more or less probable than it
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`would without the evidence. For example, and without limitation, Patent Owner
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`identifies Exhibit 2013 as part of a string cite and does not identify any paragraphs
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`from Exhibit 2013 to support any proposition in the Patent Owner Preliminary
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`Response. See, e.g., Patent Owner Preliminary Response at 62. Additionally, the
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`whole of Exhibit 2013 relates to the declarant’s “opinions regarding infringement.”
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`See, e.g., Ex. 2013 at ¶ 1. Similarly, Patent Owner cites “Ex. 2014 at 7” (Patent
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`Owner Preliminary Response at 62), but that page of Exhibit 2014 expresses the
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`declarant’s opinion regarding infringement of the ’156 patent.
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`Further, and without limitation, Patent Owner cites “Ex. 2015, ¶¶ 314-366,”
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`(Patent Owner Preliminary Response at 62). Those paragraphs express the
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`declarant’s opinion regarding validity of certain claims of U.S. Patent Nos.
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`7,819,801; 8,355,780; 8,439,832; 9,833,227; and 8,753,270.
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`3
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`IPR2019-00362
`Petitioners’ Objections to Evidence
`Petitioners also object to these Exhibits under FRE 801 and 802 to the extent
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`Patent Owner relies upon these Exhibits to prove any objective indicia of
`
`nonobviousness or what certain prior art references may disclose because the
`
`declarant has not submitted any declarations in this proceeding and is not subject to
`
`cross examination.
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`
`
`
`Date: July 23, 2019
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`Respectfully submitted,
`
`/Jovial Wong/
`Jovial Wong
`Reg. No. 60,115
`WINSTON & STRAWN LLP
`1700 K Street, N.W.
`Washington, DC 20006-3817
`Tel: (202) 282-5200
`Fax: (202) 282-5100
`Email:jwong@winston.com
`
`Lead Counsel for Petitioners
`
`
`
`4
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`
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`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. §§ 42.6(e) and 42.105(a), I certify that, on July 23, 2019,
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`true and correct copies of the foregoing Petitioners’ Objections Pursuant to 37
`
`C.F.R. § 42.64(b)(1) to Patent Owner’s Evidence Submitted with Patent
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`Owner Preliminary Response was served by via email to the following counsel
`
`for the Patent Owner:
`
`Michael T. Rosato (Reg. No. 52,182)
`WILSON SONSINI GOODRICH & ROSATI
`701 Fifth Avenue, Suite 5100
`Seattle, WA 98104
`Tel.: 206-883-2529
`Fax: 206-883-2699
`Email: mrosato@wsgr.com
`
`Paul D. Tripodi II (Reg. No. 40,847)
`WILSON SONSINI GOODRICH & ROSATI
`633 West Fifth Street, Suite 1550
`Los Angeles, CA 90071
`Tel.: 323-210-2902
`Fax: 866-974-7329
`Email: ptripodi@wsgr.com
`
`Sonja R. Gerrard (Reg. No. 72,802)
`WILSON SONSINI GOODRICH & ROSATI
`701 Fifth Avenue, Suite 5100
`Seattle, WA 98104-7036
`Tel.: 206-883-2649
`Fax: 206-883-2699
`Email: sgerrard@wsgr.com
`
`Jad A. Mills (Reg. No. 63,344)
`WILSON SONSINI GOODRICH & ROSATI
`701 Fifth Avenue, Suite 5100
`
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`Date: July 23, 2019
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`Seattle, WA 98104-7036
`Tel.: 206-883-2554
`Fax: 206-883-2699
`Email: jmills@wsgr.com
`
`
`
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`
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`Respectfully submitted,
`
`
`
`
`
`/Jovial Wong/
`Jovial Wong (Reg. No. 60,115)
`Lead Counsel for Petitioners
`
`
`
`
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