Académique Documents
Professionnel Documents
Culture Documents
19
MEDTRONIC SOFAMOR DANEK USA, INC.; Case No. 08 CV 1512 LAB (AJB)
20 WARSAW ORTHOPEDIC, INC.;
MEDTRONIC PUERTO RICO OPERATIONS DEFENDANT NUVASIVE, INC.’S
21 CO.; and MEDTRONIC SOFAMOR DANEK ANSWER TO PLAINTIFFS’ FIRST
DEGGENDORF, GmbH, AMENDED COMPLAINT FOR PATENT
22 INFRINGEMENT AND
Plaintiffs, COUNTERCLAIMS
23
24 v. JURY TRIAL DEMANDED
25 NUVASIVE, INC.,
26 Defendant.
27
28
1 NUVASIVE, INC.,
2 Counterclaimant,
3
v.
4
MEDTRONIC SOFAMOR DANEK USA, INC.;
5 WARSAW ORTHOPEDIC, INC.;
MEDTRONIC PUERTO RICO OPERATIONS
6 CO.; and MEDTRONIC SOFAMOR DANEK
7 DEGGENDORF, GmbH,
8 Counterclaim Defendants.
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
1 Defendant NuVasive, Inc. (“NuVasive”), by and through its attorneys, hereby answers the
2 First Amended Complaint for Patent Infringement of Plaintiffs Medtronic Sofamor Danek USA,
3 Inc. (“Medtronic USA”), Warsaw Orthopedic, Inc. (“Warsaw”), Medtronic Puerto Rico
4 Operations Co. (“Medtronic Puerto Rico”), and Medtronic Sofamor Danek Deggendorf, GmbH
5 (“Medtronic Deggendorf”) (collectively, “Plaintiffs”). NuVasive denies each and every allegation
21 8. NuVasive admits that it transacts business in this judicial district. NuVasive denies
22 the remaining allegations of paragraph 8.
1 “ Translateral Spinal Implant” and that it issued on January 19, 1999. NuVasive is without
6 PLAINTIFFS’ COUNT II
7 14. In response to paragraph 14, NuVasive incorporates its responses to paragraphs 1-
8 13 as if fully set forth herein.
9 15. NuVasive admits that U.S. Patent No. 5,772,661 (the “ ’661 patent” ) is entitled
10 “ Methods and Instrumentation for the Surgical Correction of Human Thoracic and Lumbar Spinal
11 Disease from the Antero-Lateral Aspect of the Spine” and that it issued on June 30, 1998.
12 NuVasive is without knowledge or information sufficient to admit or deny the remaining
13 allegations of paragraph 15 and therefore denies them.
14 16. NuVasive denies the allegations in paragraph 16.
15 17. NuVasive denies the allegations in paragraph 17.
16 18. NuVasive denies the allegations in paragraph 18.
17 PLAINTIFFS’ COUNT III
18 19. In response to paragraph 19, NuVasive incorporates its responses to paragraphs 1-
21 “ Multilock Anterior Cervical Plating System” and that it issued on August 30, 2005. NuVasive is
22 without knowledge or information sufficient to admit or deny the remaining allegations of
26 ///
27 ///
28 ///
2
Case No. 08 CV 1512 LAB (AJB)
Case 3:08-cv-01512-MMA -AJB Document 12 Filed 10/13/08 Page 5 of 27
1 PLAINTIFFS’ COUNT IV
2 23. In response to paragraph 23, NuVasive incorporates its responses to paragraphs 1-
3 22 as if fully set forth herein.
4 24. NuVasive admits that U.S. Patent No. 6,936,050 B2 (the “ ’050 patent” ) is entitled
5 “ Multilock Anterior Cervical Plating System” and that it issued on August 30, 2005. NuVasive is
6 without knowledge or information sufficient to admit or deny the remaining allegations of
7 paragraph 24 and therefore denies them.
8 25. NuVasive denies the allegations in paragraph 25.
9 26. NuVasive denies the allegations in paragraph 26.
10 PLAINTIFFS’ COUNT V
11 27. In response to paragraph 27, NuVasive incorporates its responses to paragraphs 1-
13 28. NuVasive admits that U.S. Patent No. 6,916,320 B2 (the “ ’320 patent” ) is entitled
14 “ Anterior Cervical Plate System” and that it issued on July 12, 2005. NuVasive is without
19 PLAINTIFFS’ COUNT VI
20 31. In response to paragraph 31, NuVasive incorporates its responses to paragraphs 1-
23 “ Instruments and Methods for Minimally Invasive Tissue Retraction and Surgery” and that it
24 issued on September 20, 2005. NuVasive is without knowledge or information sufficient to admit
13 40. NuVasive admits that U.S. Patent No. 6,428,542 B1 (the “ ’542 patent” ) is entitled
14 “ Single-Lock Anterior Cervical Plate” and that it issued on August 6, 2002. NuVasive is without
19 PLAINTIFFS’ COUNT IX
20 43. In response to paragraph 43, NuVasive incorporates its responses to paragraphs 1-
23 “ Single-Lock Anterior Cervical Plating System” and that it issued on July 15, 2003. NuVasive is
24 without knowledge or information sufficient to admit or deny the remaining allegations of
13 failure to satisfy the requirements of 35 U.S.C. § 101 et seq., including, without limitation,
17 attorneys, agents, and/or others owing a duty of candor to the United States Patent & Trademark
18 Office (collectively, the “ ’973 applicants” ) committed acts constituting inequitable conduct during
21 of an article by H. V. Crock titled “ Anterior Lumbar Interbody Fusion—Indications for its Use
22 and Notes on Surgical Technique,” Clinical Orthopedics, vol. 165, p. 157-163 (1982) (the “ Crock
23 article” ). The Crock article was discussed in the Background of the Invention section of U.S.
24 Patent Application No. 08/074,781, to which the application that issued as the ’973 patent
26 51. The Crock article was not discussed in the application that issued as the ’973 patent
27 and was not cited by the ’973 applicants during prosecution of the ’973 patent.
28 ///
5
Case No. 08 CV 1512 LAB (AJB)
Case 3:08-cv-01512-MMA -AJB Document 12 Filed 10/13/08 Page 8 of 27
1 52. The Crock article was material to the patentability of the ’ 973 patent.
2 53. On information and belief, the ’ 973 applicants withheld the Crock article from the
3 United States Patent & Trademark Office with the intent to deceive the United States Patent &
4 Trademark Office, rendering the ’ 973 patent unenforceable for inequitable conduct.
5 54. The application that issued as the ’ 973 patent originally claimed priority to multiple
6 applications, the earliest of which was U.S. Patent Application No. 07/205,935, filed June 13,
8 55. During prosecution of the application that issued as the ’ 973 patent, the ’ 973
9 applicants filed an information disclosure statement (“ IDS” ) citing more than forty patents,
10 including U.S. Patent No. 5,192,327 to Brantigan (the “ Brantigan patent” ). The Brantigan patent
11 was filed on March 22, 1991, and issued on March 9, 1993. As such, neither the filing date nor
12 the issue date of the Brantigan patent was earlier than the originally-claimed priority date of the
14 56. The examiner signed and dated the IDS which included the Brantigan patent on
16 57. After the claims were allowed and prosecution on the merits was closed, the ’ 973
17 applicants amended the priority claim so that the application that issued as the ’ 973 patent no
18 longer claimed priority back to the 1988 application. The application as amended claimed priority
19 to an application filed on February 27, 1995, which is later than both the filing date and the issue
21 58. The Brantigan patent was material to the patentability of the ’ 973 patent.
22 59. On information and belief, the ’ 973 applicants originally claimed priority to the
23 1988 application and later amended the priority claim after the claims were allowed over the
24 Brantigan patent with the intent to deceive the United States Patent & Trademark Office,
26 60. In the Background of the Invention section of the ’ 973 patent, the ’ 973 applicants
27 stated that “ In the past, Cloward, Wilterberger, Crock, Viche, Bagby, Brantigan, and others have
28 ///
6
Case No. 08 CV 1512 LAB (AJB)
Case 3:08-cv-01512-MMA -AJB Document 12 Filed 10/13/08 Page 9 of 27
1 taught various methods involving the drilling of holes across the disc space between two adjacent
2 vertebrae of the spine for the purpose of causing interbody spinal fusion.” The applicants further
3 stated that “ However, all of the prior implants have been inserted from either the front or the back
4 of the patient.”
5 61. The Crock article discloses an implant inserted from a lateral aspect of the spine.
6 62. The Brantigan patent also discloses an implant inserted from a lateral aspect of the
7 spine.
8 63. The ’ 973 applicants’ statement that “ all of the prior implants have been inserted
9 from either the front or the back of the patient” was false.
10 64. The statement was material to the patentability of the ’ 973 patent.
11 65. On information and belief, the ’ 973 applicants made the statement, knowing it to be
12 false, with the intent to deceive the United States Patent & Trademark Office, rendering the ’ 973
16 attorneys, agents, and/or others owing a duty of candor to the United States Patent & Trademark
17 Office (collectively, the “ ’ 661 applicants” ) committed acts constituting inequitable conduct during
19 67. In particular, during prosecution of the ’ 661 patent, the ’ 661 applicants were aware
20 of the Crock article. The Crock article was discussed in the Background of the Invention section
21 of U.S. Patent Application No. 08/074,781, to which the ’ 661 patent claims priority.
22 68. The Crock article was not discussed in the application that issued as the ’ 661 patent
23 and was not cited by the ’ 661 applicants during prosecution of the ’ 661 patent.
24 69. The Crock article was material to the patentability of the ’ 661 patent.
25 70. On information and belief, the ’ 661 applicants withheld the Crock article from the
26 United States Patent & Trademark Office with the intent to deceive the United States Patent &
27 Trademark Office, rendering the ’ 661 patent unenforceable for inequitable conduct.
28 ///
7
Case No. 08 CV 1512 LAB (AJB)
Case 3:08-cv-01512-MMA -AJB Document 12 Filed 10/13/08 Page 10 of 27
1 COUNTERCLAIMS
2 NuVasive, for its counterclaims against Plaintiffs, states and alleges as follows:
3 The Parties
4 71. NuVasive, Inc. is a Delaware corporation with its principal place of business in San
5 Diego, California.
6 72. On information and belief, Medtronic USA is a Tennessee corporation with its
7 principal place of business in Memphis, Tennessee.
8 73. On information and belief, Warsaw is an Indiana corporation with its principal
9 place of business in Winona Lake, Indiana.
10 74. On information and belief, Medtronic Puerto Rico is a Cayman Islands corporation
11 with its principal place of business in Villalba, Puerto Rico.
12 75. On information and belief, Medtronic Deggendorf is a German corporation with its
13 principal place of business in Deggendorf, Germany.
14 Jurisdiction and Venue
15 76. These counterclaims arise under the patent laws of the United States, Title 35 of the
16 United States Code, and the Federal Declaratory Judgment Act, Title 28 of the United States
17 Code.
18 77. This Court has subject matter jurisdiction over these counterclaims pursuant to 28
21 infringement of the patents-in-suit in this judicial district, as set forth in Plaintiffs’ Complaint and
22 First Amended Complaint.
23 79. Venue is proper in this judicial district pursuant to 28 U.S.C. §§ 1391 and 1400.
24 NUVASIVE’S COUNT I
25 80. NuVasive incorporates by reference the allegations of the preceding paragraphs of
1 81. An actual and justiciable controversy exists between NuVasive and Plaintiffs as to
2 the infringement of the ’ 973 patent, as evidenced by Plaintiffs’ First Amended Complaint and
4 82. NuVasive has not infringed and does not currently infringe, either directly or
6 83. Pursuant to the Federal Declaratory Judgment Act, 28 U.S.C. § 2201 et seq.,
7 NuVasive requests the declaration of the Court that NuVasive has not infringed and does not
8 currently infringe, either directly or indirectly, any valid claim of the ’ 973 patent.
9 NUVASIVE’S COUNT II
10 84. NuVasive incorporates by reference the allegations of the preceding paragraphs of
11 its Counterclaims as if fully set forth herein.
12 85. An actual and justiciable controversy exists between NuVasive and Plaintiffs as to
13 the validity of the ’ 973 patent, as evidenced by Plaintiffs’ First Amended Complaint and
14 NuVasive’ s Answer thereto, as set forth above.
15 86. The ’ 973 patent is invalid for failure to satisfy the requirements of 35 U.S.C. § 101
16 et seq., including, without limitation, sections 101, 102, 103, and 112.
17 87. Pursuant to the Federal Declaratory Judgment Act, 28 U.S.C. § 2201 et seq.,
18 NuVasive requests the declaration of the Court that the ’ 973 patent is invalid for failure to satisfy
19 the requirements of 35 U.S.C. § 101 et seq., including, without limitation, sections 102, 103, and
20 112.
24 89. An actual and justiciable controversy exists between NuVasive and Plaintiffs as to
25 the enforceability of the ’ 973 patent, as evidenced by Plaintiffs’ First Amended Complaint and
1 attorneys, agents, and/or others owing a duty of candor to the United States Patent & Trademark
2 Office (collectively, the “ ’ 973 applicants” ) committed acts constituting inequitable conduct during
4 91. In particular, during prosecution of the ’ 973 patent, the ’ 973 applicants were aware
5 of an article by H. V. Crock titled “ Anterior Lumbar Interbody Fusion—Indications for its Use
6 and Notes on Surgical Technique,” Clinical Orthopedics, vol. 165, p. 157-163 (1982) (the “ Crock
7 article” ). The Crock article was discussed in the Background of the Invention section of U.S.
8 Patent Application No. 08/074,781, to which the application that issued as the ’ 973 patent
10 92. The Crock article was not discussed in the application that issued as the ’ 973 patent
11 and was not cited by the ’ 973 applicants during prosecution of the ’ 973 patent.
12 93. The Crock article was material to the patentability of the ’ 973 patent.
13 94. On information and belief, the ’ 973 applicants withheld the Crock article from the
14 United States Patent & Trademark Office with the intent to deceive the United States Patent &
15 Trademark Office, rendering the ’ 973 patent unenforceable for inequitable conduct.
16 95. The application that issued as the ’ 973 patent originally claimed priority to multiple
17 applications, the earliest of which was U.S. Patent Application No. 07/205,935, filed June 13,
19 96. During prosecution of the application that issued as the ’ 973 patent, the ’ 973
20 applicants filed an information disclosure statement (“ IDS” ) citing more than forty patents,
21 including U.S. Patent No. 5,192,327 to Brantigan (the “ Brantigan patent” ). The Brantigan patent
22 was filed on March 22, 1991, and issued on March 9, 1993. As such, neither the filing date nor
23 the issue date of the Brantigan patent was earlier than the originally-claimed priority date of the
25 97. The examiner signed and dated the IDS which included the Brantigan patent on
1 98. After the claims were allowed and prosecution on the merits was closed, the ’ 973
2 applicants amended the priority claim so that the application that issued as the ’ 973 patent no
3 longer claimed priority back to the 1988 application. The application as amended claimed priority
4 to an application filed on February 27, 1995, which is later than both the filing date and the issue
6 99. The Brantigan patent was material to the patentability of the ’ 973 patent.
7 100. On information and belief, the ’ 973 applicants originally claimed priority to the
8 1988 application and later amended the priority claim after the claims were allowed over the
9 Brantigan patent with the intent to deceive the United States Patent & Trademark Office,
11 101. In the Background of the Invention section of the ’ 973 patent, the ’ 973 applicants
12 stated that “ In the past, Cloward, Wilterberger, Crock, Viche, Bagby, Brantigan, and others have
13 taught various methods involving the drilling of holes across the disc space between two adjacent
14 vertebrae of the spine for the purpose of causing interbody spinal fusion.” The applicants further
15 stated that “ However, all of the prior implants have been inserted from either the front or the back
16 of the patient.”
17 102. The Crock article discloses an implant inserted from a lateral aspect of the spine.
18 103. The Brantigan patent also discloses an implant inserted from a lateral aspect of the
19 spine.
20 104. The ’ 973 applicants’ statement that “ all of the prior implants have been inserted
21 from either the front or the back of the patient” was false.
22 105. The statement was material to the patentability of the ’ 973 patent.
23 106. On information and belief, the ’ 973 applicants made the statement, knowing it to be
24 false, with the intent to deceive the United States Patent & Trademark Office, rendering the ’ 973
26 107. Pursuant to the Federal Declaratory Judgment Act, 28 U.S.C. § 2201 et seq.,
27 NuVasive requests the declaration of the Court that the ’ 973 patent is unenforceable due to
28 inequitable conduct.
11
Case No. 08 CV 1512 LAB (AJB)
Case 3:08-cv-01512-MMA -AJB Document 12 Filed 10/13/08 Page 14 of 27
1 NUVASIVE’S COUNT IV
2 108. NuVasive incorporates by reference the allegations of the preceding paragraphs of
3 its Counterclaims as if fully set forth herein.
4 109. An actual and justiciable controversy exists between NuVasive and Plaintiffs as to
5 the infringement of the ’ 661 patent, as evidenced by Plaintiffs’ First Amended Complaint and
6 NuVasive’ s Answer thereto, as set forth above.
7 110. NuVasive has not infringed and does not currently infringe, either directly or
8 indirectly, any valid claim of the ’ 661 patent.
9 111. Pursuant to the Federal Declaratory Judgment Act, 28 U.S.C. § 2201 et seq.,
10 NuVasive requests the declaration of the Court that NuVasive has not infringed and does not
11 currently infringe, either directly or indirectly, any valid claim of the ’ 661 patent.
12 NUVASIVE’S COUNT V
13 112. NuVasive incorporates by reference the allegations of the preceding paragraphs of
15 113. An actual and justiciable controversy exists between NuVasive and Plaintiffs as to
16 the validity of the ’ 661 patent, as evidenced by Plaintiffs’ First Amended Complaint and
18 114. The ’ 661 patent is invalid for failure to satisfy the requirements of 35 U.S.C. § 101
21 NuVasive requests the declaration of the Court that the ’ 661 patent is invalid for failure to satisfy
22 the requirements of 35 U.S.C. § 101 et seq., including, without limitation, sections 102, 103, and
23 112.
24 NUVASIVE’S COUNT VI
25 116. NuVasive incorporates by reference the allegations of the preceding paragraphs of
1 117. An actual and justiciable controversy exists between NuVasive and Plaintiffs as to
2 the enforceability of the ’ 661 patent, as evidenced by Plaintiffs’ First Amended Complaint and
4 118. The alleged inventor named on the ’ 661 patent, Gary Karlin Michelson, his
5 attorneys, agents, and/or others owing a duty of candor to the United States Patent & Trademark
6 Office (collectively, the “ ’ 661 applicants” ) committed acts constituting inequitable conduct during
8 119. In particular, during prosecution of the ’ 661 patent, the ’ 661 applicants were aware
9 of the Crock article. The Crock article was discussed in the Background of the Invention section
10 of U.S. Patent Application No. 08/074,781, to which the ’ 661 patent claims priority.
11 120. The Crock article was not discussed in the application that issued as the ’ 661 patent
12 and was not cited by the ’ 661 applicants during prosecution of the ’ 661 patent.
13 121. The Crock article was material to the patentability of the ’ 661 patent.
14 122. On information and belief, the ’ 661 applicants withheld the Crock article from the
15 United States Patent & Trademark Office with the intent to deceive the United States Patent &
16 Trademark Office, rendering the ’ 661 patent unenforceable for inequitable conduct.
17 123. Pursuant to the Federal Declaratory Judgment Act, 28 U.S.C. § 2201 et seq.,
18 NuVasive requests the declaration of the Court that the ’ 661 patent is unenforceable due to
19 inequitable conduct.
23 125. An actual and justiciable controversy exists between NuVasive and Plaintiffs as to
24 the infringement of the ’ 051 patent, as evidenced by Plaintiffs’ First Amended Complaint and
26 126. NuVasive has not infringed and does not currently infringe, either directly or
27 indirectly, any valid claim of the ’ 051 patent.
28 ///
13
Case No. 08 CV 1512 LAB (AJB)
Case 3:08-cv-01512-MMA -AJB Document 12 Filed 10/13/08 Page 16 of 27
1 127. Pursuant to the Federal Declaratory Judgment Act, 28 U.S.C. § 2201 et seq.,
2 NuVasive requests the declaration of the Court that NuVasive has not infringed and does not
3 currently infringe, either directly or indirectly, any valid claim of the ’ 051 patent.
19 133. An actual and justiciable controversy exists between NuVasive and Plaintiffs as to
20 the infringement of the ’ 050 patent, as evidenced by Plaintiffs’ First Amended Complaint and
25 NuVasive requests the declaration of the Court that NuVasive has not infringed and does not
26 currently infringe, either directly or indirectly, any valid claim of the ’ 050 patent.
27 ///
28 ///
14
Case No. 08 CV 1512 LAB (AJB)
Case 3:08-cv-01512-MMA -AJB Document 12 Filed 10/13/08 Page 17 of 27
1 NUVASIVE’S COUNT X
2 136. NuVasive incorporates by reference the allegations of the preceding paragraphs of
3 its Counterclaims as if fully set forth herein.
4 137. An actual and justiciable controversy exists between NuVasive and Plaintiffs as to
5 the validity of the ’ 050 patent, as evidenced by Plaintiffs’ First Amended Complaint and
6 NuVasive’ s Answer thereto, as set forth above.
7 138. The ’ 050 patent is invalid for failure to satisfy the requirements of 35 U.S.C. § 101
8 et seq., including, without limitation, sections 102, 103, and 112.
9 139. Pursuant to the Federal Declaratory Judgment Act, 28 U.S.C. § 2201 et seq.,
10 NuVasive requests the declaration of the Court that the ’ 050 patent is invalid for failure to satisfy
11 the requirements of 35 U.S.C. § 101 et seq., including, without limitation, sections 102, 103, and
12 112.
13 NUVASIVE’S COUNT XI
14 140. NuVasive incorporates by reference the allegations of the preceding paragraphs of
16 141. An actual and justiciable controversy exists between NuVasive and Plaintiffs as to
17 the infringement of the ’ 320 patent, as evidenced by Plaintiffs’ First Amended Complaint and
19 142. NuVasive has not infringed and does not currently infringe, either directly or
20 indirectly, any valid claim of the ’ 320 patent.
21 143. Pursuant to the Federal Declaratory Judgment Act, 28 U.S.C. § 2201 et seq.,
22 NuVasive requests the declaration of the Court that NuVasive has not infringed and does not
23 currently infringe, either directly or indirectly, any valid claim of the ’ 320 patent.
24 NUVASIVE’S COUNT XII
25 144. NuVasive incorporates by reference the allegations of the preceding paragraphs of
1 145. An actual and justiciable controversy exists between NuVasive and Plaintiffs as to
2 the validity of the ’ 320 patent, as evidenced by Plaintiffs’ First Amended Complaint and
4 146. The ’ 320 patent is invalid for failure to satisfy the requirements of 35 U.S.C. § 101
6 147. Pursuant to the Federal Declaratory Judgment Act, 28 U.S.C. § 2201 et seq.,
7 NuVasive requests the declaration of the Court that the ’ 320 patent is invalid for failure to satisfy
8 the requirements of 35 U.S.C. § 101 et seq., including, without limitation, sections 102, 103, and
9 112.
13 149. An actual and justiciable controversy exists between NuVasive and Plaintiffs as to
14 the infringement of the ’ 933 patent, as evidenced by Plaintiffs’ First Amended Complaint and
16 150. NuVasive has not infringed and does not currently infringe, either directly or
18 151. Pursuant to the Federal Declaratory Judgment Act, 28 U.S.C. § 2201 et seq.,
19 NuVasive requests the declaration of the Court that NuVasive has not infringed and does not
20 currently infringe, either directly or indirectly, any valid claim of the ’ 933 patent.
24 153. An actual and justiciable controversy exists between NuVasive and Plaintiffs as to
25 the validity of the ’ 933 patent, as evidenced by Plaintiffs’ First Amended Complaint and
1 154. The ’ 933 patent is invalid for failure to satisfy the requirements of 35 U.S.C. § 101
3 155. Pursuant to the Federal Declaratory Judgment Act, 28 U.S.C. § 2201 et seq.,
4 NuVasive requests the declaration of the Court that the ’ 933 patent is invalid for failure to satisfy
5 the requirements of 35 U.S.C. § 101 et seq., including, without limitation, sections 102, 103, and
6 112.
7 NUVASIVE’S COUNT XV
8 156. NuVasive incorporates by reference the allegations of the preceding paragraphs of
9 its Counterclaims as if fully set forth herein.
10 157. An actual and justiciable controversy exists between NuVasive and Plaintiffs as to
11 the infringement of the ’ 390 patent, as evidenced by Plaintiffs’ First Amended Complaint and
12 NuVasive’ s Answer thereto, as set forth above.
13 158. NuVasive has not infringed and does not currently infringe, either directly or
14 indirectly, any valid claim of the ’ 390 patent.
15 159. Pursuant to the Federal Declaratory Judgment Act, 28 U.S.C. § 2201 et seq.,
16 NuVasive requests the declaration of the Court that NuVasive has not infringed and does not
17 currently infringe, either directly or indirectly, any valid claim of the ’ 390 patent.
18 NUVASIVE’S COUNT XVI
19 160. NuVasive incorporates by reference the allegations of the preceding paragraphs of
20 its Counterclaims as if fully set forth herein.
21 161. An actual and justiciable controversy exists between NuVasive and Plaintiffs as to
22 the validity of the ’ 390 patent, as evidenced by Plaintiffs’ First Amended Complaint and
26 ///
27 ///
28 ///
17
Case No. 08 CV 1512 LAB (AJB)
Case 3:08-cv-01512-MMA -AJB Document 12 Filed 10/13/08 Page 20 of 27
1 163. Pursuant to the Federal Declaratory Judgment Act, 28 U.S.C. § 2201 et seq.,
2 NuVasive requests the declaration of the Court that the ’ 390 patent is invalid for failure to satisfy
3 the requirements of 35 U.S.C. § 101 et seq., including, without limitation, sections 102, 103, and
4 112.
19 169. An actual and justiciable controversy exists between NuVasive and Plaintiffs as to
20 the validity of the ’ 542 patent, as evidenced by Plaintiffs’ First Amended Complaint and
25 NuVasive requests the declaration of the Court that the ’ 542 patent is invalid for failure to satisfy
26 the requirements of 35 U.S.C. § 101 et seq., including, without limitation, sections 102, 103, and
27 112.
28 ///
18
Case No. 08 CV 1512 LAB (AJB)
Case 3:08-cv-01512-MMA -AJB Document 12 Filed 10/13/08 Page 21 of 27
15 177. An actual and justiciable controversy exists between NuVasive and Plaintiffs as to
16 the validity of the ’ 586 patent, as evidenced by Plaintiffs’ First Amended Complaint and
18 178. The ’ 586 patent is invalid for failure to satisfy the requirements of 35 U.S.C. § 101
21 NuVasive requests the declaration of the Court that the ’ 586 patent is invalid for failure to satisfy
22 the requirements of 35 U.S.C. § 101 et seq., including, without limitation, sections 102, 103, and
23 112.
24 NUVASIVE’S COUNT XXI
25 180. NuVasive incorporates by reference the allegations of the preceding paragraphs of
1 181. An actual and justiciable controversy exists between NuVasive and Plaintiffs as to
2 the infringement of U.S. Patent No. 7,008,422 B2 (the “ ’ 422 patent” ), titled “ Instruments and
3 Methods for Stabilization of Bony Structures.” A copy of the ’ 422 patent was attached as Exhibit
5 182. Plaintiffs have alleged that Warsaw is the owner of the ’ 422 patent by assignment,
6 and that Medtronic USA, Medtronic Puerto Rico, and Medtronic Deggendorf are co-exclusive
7 licensees of the ’ 422 patent and, together with Warsaw, share the exclusive right to bring suit for
9 183. As evidenced by Plaintiffs’ August 18, 2008 Complaint, Plaintiffs have asserted
10 that NuVasive has contributed to the infringement and continues to contribute to the infringement
12 184. NuVasive has not infringed and does not currently infringe, either directly or
14 185. Pursuant to the Federal Declaratory Judgment Act, 28 U.S.C. § 2201 et seq.,
15 NuVasive requests the declaration of the Court that NuVasive has not infringed and does not
16 currently infringe, either directly or indirectly, any valid claim of the ’ 422 patent.
21 the validity of the ’ 422 patent, as evidenced by Plaintiffs’ August 18, 2008 Complaint.
22 188. The ’ 422 patent is invalid for failure to satisfy the requirements of 35 U.S.C. § 101
25 NuVasive requests the declaration of the Court that the ’ 422 patent is invalid for failure to satisfy
26 the requirements of 35 U.S.C. § 101 et seq., including, without limitation, sections 102, 103, and
27 112.
28 ///
20
Case No. 08 CV 1512 LAB (AJB)
Case 3:08-cv-01512-MMA -AJB Document 12 Filed 10/13/08 Page 23 of 27
23 the validity of the ’ 929 patent, as evidenced by Plaintiffs’ August 18, 2008 Complaint.
24 198. The ’ 929 patent is invalid for failure to satisfy the requirements of 35 U.S.C. § 101
26 ///
27 ///
28 ///
21
Case No. 08 CV 1512 LAB (AJB)
Case 3:08-cv-01512-MMA -AJB Document 12 Filed 10/13/08 Page 24 of 27
1 199. Pursuant to the Federal Declaratory Judgment Act, 28 U.S.C. § 2201 et seq.,
2 NuVasive requests the declaration of the Court that the ’ 929 patent is invalid for failure to satisfy
3 the requirements of 35 U.S.C. § 101 et seq., including, without limitation, sections 102, 103, and
4 112.
19 205. Pursuant to the Federal Declaratory Judgment Act, 28 U.S.C. § 2201 et seq.,
20 NuVasive requests the declaration of the Court that NuVasive has not infringed and does not
21 currently infringe, either directly or indirectly, any valid claim of the ’ 028 patent.
22 NUVASIVE’S COUNT XXVI
23 206. NuVasive incorporates by reference the allegations of the preceding paragraphs of
25 207. An actual and justiciable controversy exists between NuVasive and Plaintiffs as to
26 the validity of the ’ 028 patent, as evidenced by Plaintiffs’ August 18, 2008 Complaint.
27 ///
28 ///
22
Case No. 08 CV 1512 LAB (AJB)
Case 3:08-cv-01512-MMA -AJB Document 12 Filed 10/13/08 Page 25 of 27
1 208. The ’ 028 patent is invalid for failure to satisfy the requirements of 35 U.S.C. § 101
3 209. Pursuant to the Federal Declaratory Judgment Act, 28 U.S.C. § 2201 et seq.,
4 NuVasive requests the declaration of the Court that the ’ 028 patent is invalid for failure to satisfy
5 the requirements of 35 U.S.C. § 101 et seq., including, without limitation, sections 102, 103, and
6 112.
19 5. Declaring that the ’ 973, ’ 661, ’ 051, ’ 050, ’ 320, ’ 933, ’ 390, ’ 542, ’ 586, ’ 422, ’ 929,
20 and ’ 028 patents are invalid;
21 6. Declaring that the ’ 973 and ’ 661 patent are unenforceable due to inequitable
22 conduct;
25 9. Awarding NuVasive any further relief that the Court deems just and proper.
26 ///
27 ///
28 ///
23
Case No. 08 CV 1512 LAB (AJB)
Case 3:08-cv-01512-MMA -AJB Document 12 Filed 10/13/08 Page 26 of 27
1 JURY DEMAND
2 NuVasive hereby demands a trial by jury on all issues so triable.
3
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
24
Case No. 08 CV 1512 LAB (AJB)
Case 3:08-cv-01512-MMA -AJB Document 12 Filed 10/13/08 Page 27 of 27
1 CERTIFICATE OF SERVICE
2
3 The undersigned hereby certifies that a true and correct copy of the above and foregoing
4 document has been served on October 13, 2008, to all counsel of record who are deemed to have
5 consented to electronic service via the Court’ s CM/ECF system per Civil Local Rule 5.4. Any
6 other counsel of record will be served by electronic mail, facsimile and/or overnight delivery.
7
8 s/Kimberly I. Kennedy_________________
Kimberly I. Kennedy (SBN 253828)
9 kennedy@fr.com
10
Attorney for Defendant
11 NUVASIVE, INCORPORATED
60525415.doc
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
25
Case No. 08 CV 1512 LAB (AJB)