Case 6:15-cv-00201-JRG-KNM Document 210 Filed 08/12/16 Page 1 of 4 PageID #: 7171
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`UNITED STATES DISTRICT COURT
`EASTERN DISTRICT OF TEXAS
`TYLER DIVISION
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`Flexuspine, Inc.
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`CASE NO. 6:15-cv-201-JRG-KNM
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`JURY TRIAL DEMANDED
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`ORDER ADOPTING REPORT AND RECOMMENDATION
`OF UNITED STATES MAGISTRATE JUDGE
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`Before the Court are cross-objections to the Report and Recommendation of the United
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` Plaintiff,
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`v.
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`Globus Medical, Inc.
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` Defendant.
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`States Magistrate Judge (Doc. No. 149) regarding Defendant Globus Medical, Inc.’s
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`(“Defendant”) Motion for Summary Judgment (Doc. No. 107). Plaintiff Flexuspine, Inc.
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`(“Plaintiff”) filed objections (Doc. No. 167), to which Defendant filed a response (Doc. No.
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`190). Defendant also filed objections (Doc. No. 168), to which Plaintiff filed a response (Doc.
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`No. 188). Having reviewed the written objections filed by both parties de novo, the Court
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`concludes that the findings and conclusions of the Magistrate Judge are correct and the
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`objections are without merit.
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` Accordingly, Plaintiff and Defendant’s objections are
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`OVERRULED and the Magistrate Judge’s Report and Recommendation (Doc. No. 149) is
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`hereby ADOPTED.
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`PLAINTIFF’S OBJECTIONS
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`In its objections, Plaintiff submits that its doctrine of equivalents theory of infringement
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`for U.S. Patent No. 8,123,810 (“the ’810 Patent”) survives summary judgment and remains a
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`triable issue. Doc. No. 167 at 8. Plaintiff contends that the opinion disclosed in its expert report
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`“covers a situation where even if the Court found that the expansion member itself does not
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`Case 6:15-cv-00201-JRG-KNM Document 210 Filed 08/12/16 Page 2 of 4 PageID #: 7172
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`move obliquely, the relative oblique movement of the portions of the upper and lower bodies
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`with respect to the expansion member is an equivalent solution.” Doc. No. 167 at 8 (citing Doc.
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`No. 113-2 at ¶¶ 130–131, 134). Defendant responds that the doctrine of equivalents “cannot
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`resuscitate” the asserted claim of the ’810 Patent because the doctrine of equivalents “vitiates the
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`claim limitation and renders oblique meaningless,” and would also ensnare the prior art. Doc.
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`No. 190 at 7–8.
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`Flexuspine’s doctrine of equivalents theory vitiates the oblique limitation of the asserted
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`claim. The asserted claim requires the “first angled portion and the substantially flat superior
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`and inferior surfaces” of the expansion member to advance “in a substantially linear direction
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`between and at least partially oblique to at least a portion” of the upper and lower bodies. The
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`Magistrate Judge correctly reasoned that even “[v]iewed in the most favorable light,
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`Flexuspine’s evidence demonstrates the expansion member’s movement is only substantially
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`linear, and not in a slanting or sloping direction,” or oblique to, “the upper and lower bodies.”
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`Additionally, as the Magistrate Judge identified, Flexuspine’s theory wholly fails to address the
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`requirement agreed to by the parties in claim construction that “both the first angled portion and
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`the flat surfaces of the expansion member move obliquely to the same part of the superior and
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`inferior surfaces of the upper and lower bodies.” Flexuspine’s theory therefore reads “and at
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`least partially oblique” entirely out of the claims. In terms of the function-way-result test, no
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`reasonable juror could find that the horizontal advancement of the expansion member is
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`advancement in substantially the same way as the oblique requirement of the claim.
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`Flexuspine’s theory of equivalents vitiates the oblique limitation of the asserted claim.
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`Like Flexuspine’s infringement theory, therefore, its doctrine of equivalents theory cannot
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`Case 6:15-cv-00201-JRG-KNM Document 210 Filed 08/12/16 Page 3 of 4 PageID #: 7173
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`withstand summary judgment. Accordingly, Plaintiff’s objection that its doctrine of equivalents
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`theory presents a triable issue is OVERRULED.
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`DEFENDANT’S OBJECTIONS
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`Turning to Defendant’s objections, Globus argues Flexuspine’s doctrine of equivalents
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`theory with respect to U.S. Patent No. 7,316,714 (“the ’714 Patent”) fails as a matter of law
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`because it encompasses, or “ensnares,” prior art reference Biedermann. Doc. No. 168 at 8.
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`Plaintiff responds that there is a genuine issue of material fact as to whether Altera is “configured
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`such that increasing the separation distance between the upper body and the lower body allows
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`articulation or increased articulation of the implant.” Doc. No. 188 at 7.
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`In her Report and Recommendation, the Magistrate Judge identified factual disputes
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`regarding whether the bearing member in Biedermann anticipates the set screw limitation, as
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`well as whether the drive nut in Altera infringes the set screw limitation. Although not expressly
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`stated in the Report and Recommendation, upon de novo review, a genuine dispute of material
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`fact also remains regarding whether Biedermann teaches or suggests the articulation limitation.
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`Defendant relies on the embodiments depicted in Figures 9 and 10 of Biedermann as
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`anticipatory. Plaintiff presents evidence that in this embodiment, the upper and lower bodies
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`“have had their relative angles changed during expansion” which ultimately results in “a tilting
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`of the upper body with respect to the lower body.” Doc. No. 113-3 ¶ 152. Figure 10 depicts an
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`expanded version of this embodiment, in which the upper and lower bodies are “held rigidly in
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`their final position,” and therefore “[t]here is no relative rotation about an axis between the upper
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`and lower bodies in this expanded configuration.” Id. Whether the embodiment disclosed in
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`Figures 9 and 10 of Biedermann teaches or suggests an implant that “allows articulation or
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`increased articulation” is a genuine dispute of material fact. This fact issue, in combination with
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`Case 6:15-cv-00201-JRG-KNM Document 210 Filed 08/12/16 Page 4 of 4 PageID #: 7174
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`the fact issues properly identified by the Magistrate Judge in her Report, renders summary
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`judgment improper.
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`CONCLUSION
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`The remaining objections presented by Plaintiff and Defendant were already presented to
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`and properly considered by the Magistrate Judge. With the supplement contained herein, the
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`Court ADOPTS the Report and Recommendation of the United States Magistrate Judge (Doc.
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`No. 149) as the findings of this Court. All objections by Plaintiff and Defendant are
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`OVERRULED.
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