Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper: 37
`
`Entered: February 21, 2020
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ALPHATEC HOLDINGS, INC. and ALPHATEC SPINE, INC.,
`Petitioner,
`
`v.
`
`NUVASIVE, INC.,
`Patent Owner.
`____________
`
`IPR2019-00361 (Patent 8,187,334 B2)
`IPR2019-00362 (Patent 8,361,156 B2)
` IPR2019-00546 (Patent 8,187,334 B2)1
`____________
`
`
`
`Before DENISE M. POTHIER, HYUN J. JUNG, and
`SHEILA F. McSHANE, Administrative Patent Judges.
`
`JUNG, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`In a February 14, 2020 email to the Board, Nuvasive, Inc. (“Patent
`Owner”) contended that Alphatec Holdings, Inc. and Alphatec Spine, Inc.
`
`1 We exercise our discretion to issue one Order to be entered in each
`proceeding. The parties are not authorized to use a multiple-case caption.
`
`
`571-272-7822
`
`
`
`
`Paper: 37
`
`Entered: February 21, 2020
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ALPHATEC HOLDINGS, INC. and ALPHATEC SPINE, INC.,
`Petitioner,
`
`v.
`
`NUVASIVE, INC.,
`Patent Owner.
`____________
`
`IPR2019-00361 (Patent 8,187,334 B2)
`IPR2019-00362 (Patent 8,361,156 B2)
` IPR2019-00546 (Patent 8,187,334 B2)1
`____________
`
`
`
`Before DENISE M. POTHIER, HYUN J. JUNG, and
`SHEILA F. McSHANE, Administrative Patent Judges.
`
`JUNG, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`In a February 14, 2020 email to the Board, Nuvasive, Inc. (“Patent
`Owner”) contended that Alphatec Holdings, Inc. and Alphatec Spine, Inc.
`
`1 We exercise our discretion to issue one Order to be entered in each
`proceeding. The parties are not authorized to use a multiple-case caption.
`
`
`
`IPR2019-00361 (Patent 8,187,334 B2)
`IPR2019-00362 (Patent 8,361,156 B2)
`IPR2019-00546 (Patent 8,187,334 B2)
`
`(collectively, “Petitioner”) included new exhibits and theories in Petitioner’s
`Replies (Papers 352). In particular, Patent Owner identified Exhibits 1053
`and 1054 and pages 1–2 and 10–11 of Petitioner’s Reply in IPR2019-00361.
`Patent Owner requested (1) authorization to file a motion to strike in each of
`the above-listed proceedings; (2) authorization to add 1,500 words for each
`of its sur-replies to address the new references and arguments; and (3) an
`extension of the due date for the sur-replies from February 24, 2020 to
`March 2, 2020.
`In a February 16, 2020 email, Petitioner opposed any motion to strike
`because, in Petitioner’s view, Exhibits 1053 and 1054 clarified the state of
`the art, which Patent Owner raised as an issue in its Responses. In a further
`February 21, 2020 email, the parties indicated that they agreed to a one week
`extension of time for filing Patent Owner’s sur-replies,3 provided that they
`are not accompanied by new declarations.
`Turning to the filings at issue, Exhibit 1053 is U.S. Patent No.
`6,241,770 B1 to Michelson, issued June 5, 2001, and Exhibit 1054 is
`McAfee et al., “Minimally Invasive Anterior Retroperitoneal Approach to
`the Lumbar Spine Emphasis on the Lateral BAK,” 23 SPINE, 1476–1484
`(1998). The filed versions of Exhibits 1053 and 1054 are the same for all
`these proceedings. In Petitioner’s Reply, in an apparent response to Patent
`
`
`2 For purposes of expediency, unless otherwise indicated, we cite to papers
`filed in IPR2019-00361. Petitioner also filed replies in IPR2019-00362
`(Paper 34) and IPR2019-00546 (Paper 35).
`3 As discussed in the Scheduling Order, the parties may stipulate to a
`different due date for Patent Owner’s sur-reply, but a notice of the
`stipulation should be promptly filed. See Paper 20, 6–7.
`
`2
`
`
`
`IPR2019-00361 (Patent 8,187,334 B2)
`IPR2019-00362 (Patent 8,361,156 B2)
`IPR2019-00546 (Patent 8,187,334 B2)
`
`Owner’s contention that implementing a marker configuration to allow
`surgeons to align markers with the spinous process and lateral ends of a
`vertebrae was a benefit realized after the priority date of U.S. Patent
`8,187,334, Petitioner refers to Exhibit 1054 as evidence to attempt to support
`its allegation that it was already known in the art that “BAK cage emit[]
`stronger signals at its center and lateral ends (thereby serving as markers).”
`Paper 35 (“Pet. Reply”), 1–3 (quoting Paper 28 (“PO Resp.”), 55) (citing
`Ex. 1054, 2, 5, 6, 9, Figs. 1, 4, 5). Similar arguments are made in
`Petitioner’s replies for IPR2019-00362 (Paper 34, 1–3) and IPR2019-00546
`(Paper 35, 1–3).
`In an apparent response to Patent Owner’s argument that “‘Michelson
`does not disclose sequential insertion of modular members into the disc
`space but instead teaches assembly prior to insertion,’” Petitioner refers to
`both Exhibit 1032 and Exhibit 1053. Pet. Reply 10–11 (quoting PO Resp.
`43) (citing Ex. 1032, 3:62–64, 5:34–39, 10:52, 10:56–59, Ex. 1053, 10:10–
`16, Figs. 13B, 14B). Exhibit 1032 was filed with the Petition. See Paper 2,
`vii (Petitioner’s exhibit list). Petitioner argues that Exhibit 1053 shows, for
`example, that it was known that implants can be side-by-side for insertion
`generally laterally or anterolaterally into a spine. See Pet. Reply 10–11. A
`similar argument is presented in Petitioner’s reply in IPR2019-00362
`(Paper 34, 12–13). In IPR2019-00546, responding to Patent Owner’s
`argument that “interbody implants available in the late-1990’s were allograft
`bone and non-bone interbody spinal fusion implants were uncommon in
`2003,” Petitioner refers to Exhibits 1053 and 1054 (Paper 35, 4 (citing
`Ex. 1053, 2:20–37; Ex. 1054, 2, 9)).
`
`3
`
`
`
`IPR2019-00361 (Patent 8,187,334 B2)
`IPR2019-00362 (Patent 8,361,156 B2)
`IPR2019-00546 (Patent 8,187,334 B2)
`
`
`Under 37 C.F.R. § 42.23(b), a “reply may only respond to arguments
`raised in the corresponding opposition, patent owner preliminary response,
`or patent owner response.” The panel is capable of identifying new issues or
`belatedly presented evidence when weighing the evidence at the close of
`trial, and disregarding any new issues or belatedly presented evidence that
`exceeds the proper scope of a reply. Based on our review of the records at
`this stage, however, we determine that additional briefing may be helpful.
`Thus, we authorize Patent Owner to file a separate supplemental sur-
`reply to succinctly address why the identified portions of Petitioner’s reply
`and related exhibits are not properly responsive and, in the event that it is
`determined that the arguments and evidence are properly responsive, to also
`address the identified arguments and evidence in each of the above-listed
`proceedings in accordance with the conditions listed below in the Order.
`Petitioner is also authorized to file a supplemental sur-sur-reply limited to a
`discussion of the alleged new arguments and belated presented evidence that
`is responsive to Patent Owner’s supplemental sur-reply.
`To the extent possible, the parties should prepare their supplemental
`briefs so that issues related to allegedly new arguments and belatedly
`presented evidence can be distinguished from what the parties believe are
`properly presented arguments and evidence. For example, Patent Owner
`should consider addressing only arguments and evidence that Patent Owner
`believes are properly responsive in its sur-reply authorized by the
`Scheduling Order, while addressing the allegedly new arguments and
`evidence in its supplemental sur-reply.
`
`
`
`4
`
`
`
`IPR2019-00361 (Patent 8,187,334 B2)
`IPR2019-00362 (Patent 8,361,156 B2)
`IPR2019-00546 (Patent 8,187,334 B2)
`
`
`ORDER
`
`It is hereby:
`ORDERED that Patent Owner is authorized to file a supplemental sur-
`reply to address only the issues identified above, limited to seven (7) pages
`and filed no later than March 2, 2020;
`FURTHER ORDERED that Petitioner is authorized to file a
`supplemental sur-sur-reply, to address only the issues identified above,
`limited to seven (7) pages and filed no later than March 9, 2020;
`FURTHER ORDERED that no additional evidence, including
`declarations, or any other briefing associated with the issues above shall be
`filed;
`FURTHER ORDERED that the parties may agree to different due
`dates for the supplemental sur-reply and supplemental sur-sur-reply by filing
`promptly a notice of stipulation; and
`FURTHER ORDERED that the parties must file a notice of
`stipulation for the parties’ agreed upon extension of time for Patent Owner’s
`sur-replies.
`
`
`
`
`
`5
`
`
`
`IPR2019-00361 (Patent 8,187,334 B2)
`IPR2019-00362 (Patent 8,361,156 B2)
`IPR2019-00546 (Patent 8,187,334 B2)
`
`FOR PETITIONER:
`
`Jovial Wong
`David P. Dalke
`Nimalka R. Wickramasekera (pro hac vice)
`WINSTON & STRAWN LLP
`jwong@winston.com
`ddalke@winston.com
`nwickramasekera@winston.com
`Alphatec-IPR@winston.com
`
`
`FOR PATENT OWNER:
`
`Michael T. Rosato
`Paul D. Tripodi II
`Sonja R. Gerrard
`Jad A. Mills
`WILSON SONSINI GOODRICH & ROSATI
`mrosato@wsgr.com
`ptripodi@wsgr.com
`sgerrard@wsgr.com
`jmills@wsgr.com
`
`
`
`6
`
`
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