Moskowitz Family LLC v. Globus Med.

• Decision Date: 22 December 2022
• Docket Number: Civil Action 20-3271
• Parties: MOSKOWITZ FAMILY LLC Plaintiff, v. GLOBUS MEDICAL, INC. Defendants.
• Court: U.S. District Court — Eastern District of Pennsylvania

MOSKOWITZ FAMILY LLC Plaintiff,
v.
GLOBUS MEDICAL, INC. Defendants.

Civil Action No. 20-3271

United States District Court, E.D. Pennsylvania

December 22, 2022

MEMORANDUM OPINION

Goldberg, J.

Plaintiff Moskowitz Family LLC (“Plaintiff”) holds several patents pertaining to spinal implants designed to reduce adverse outcomes in spinal fusion patients. Plaintiff's inventions include minimal impaction, steerable, and custom-fit intervertebral implants that minimize musculoskeletal disruption and nerve root retraction during and after the procedure. Defendant Globus Medical, Inc. (“Defendant”) is another spinal fusion company that sells intervertebral spinal implants. Plaintiff accuses Defendant's products of directly and indirectly infringing on Plaintiff's patents.

Defendant moves for partial summary judgment on Plaintiff's direct infringement and indirect infringement claims. For the following reasons, I will grant Defendant's Motion and enter judgment on its behalf regarding the direct infringement claims but will deny Defendant's Motion on induced infringement.

I. GENERAL FACTUAL BACKGROUND

As explained during the claim construction hearing, the human spine is composed of vertically arranged bones called vertebrae, which are separated by cartilaginous intervertebral

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discs. The vertebrae are divided into three portions: (1) the uppermost seven are called the cervical spine; (2) the middle twelve are called the thoracic spine; and (3) the bottom five are called the lumbar spine. Two pedicle bones dorsally extend from each vertebra and form an arch that protects the spinal cord.

In some individuals, the cartilaginous disc between vertebrae may wear, causing pain and pressure on the spinal cord. For such individuals, spinal fusion surgery may offer relief. This procedure permanently connects two or more spinal vertebrae to improve spinal stability, correct deformations, and reduce pain. This procedure can also result in some adverse patient outcomes such as high-impaction, neural or vascular injury, esophageal injuries, excessive blood loss, prolonged surgical duration, prolonged recovery, and incomplete return to work results. These adverse events may be the result of static and non-expandable implants, misplaced implants, and implant pull-out after surgery.

Plaintiff sought to invent minimally invasive spinal implants designed to reduce these adverse outcomes. From January 15, 2013 through November 19, 2019, the United States Patent and Trademark Office (“PTO”) issued to Plaintiff the eight patents at issue. These patents are directed to intervertebral spine implant screws, staples, and expandable implant systems. U.S. Patent Nos. 8,353,913 (the “'913 patent”), 110,307,268 (“'268 patent”), and 10,478,319 (the “'319 patent”) are for tools used to manipulate and insert spacers into a disc space between two vertebral bodies to facilitate bone and screw fusion. U.S. Patent No. 9,889,022 (the “'022 patent”) is for an intervertebral screw guide and fixation apparatus for insertion into a disc space between two vertebrae to encourage bone and screw fusion. U.S. Patent No. 10,028,740 (the “'740 patent”) claims a “curvilinear nail screw,” a holding structure implanted into a vertebra and around the pedicle bones to avoid penetrating them. U.S. Patent No. 10,251,643 (the “'643 patent”) relates

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to an intervertebral mechanism that expands between vertebral bodies and engages vertebral endplates to keep the mechanism in place. U.S. Patent No. 10,076,367 (the “'367 patent”) is for a bidirectional system inserted between vertebrae to facilitate their linking and fusion. Finally, U.S. Patent No. 10,376,386 (the “'386 patent”) claims a spinal staple with a curved based and ridged spikes that hinder the staple's removal.

On November 20, 2019, Plaintiff sued Defendant alleging both direct and indirect infringement of these various patents.

II. STANDARD OF REVIEW

Federal Rule of Civil Procedure 56 states, in pertinent part:

A party may move for summary judgment, identifying each claim or defense-or the part of each claim or defense-on which summary judgment is sought. The court shall grant summary judgment if the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law. The court should state on the record the reasons for granting or denying the motion

Fed. R. Civ. P. 56(a). “Through summary adjudication, the court may dispose of those claims that do not present a ‘genuine dispute as to any material fact' and for which a jury trial would be an empty and unnecessary formality.” Capitol Presort Servs., LLC v. XL Health Corp., 175 F.Supp.3d 430, 433 (M.D. Pa. 2016). A factual dispute is “material” if it might affect the outcome of the suit under the applicable law. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986). An issue is “genuine” only if there is a sufficient evidentiary basis that would allow a reasonable factfinder to return a verdict for the non-moving party. Id.

The initial burden is on the moving party to adduce evidence illustrating a lack of genuine, triable issues. Hugh v. Butler Cnty. Family YMCA, 418 F.3d 265, 267 (3d Cir. 2005). Once the moving party satisfies its burden, the non-moving party must, in rebuttal, present sufficient evidence of a genuine issue, in rebuttal. Santini v. Fuentes, 795 F.3d 410, 416 (3d Cir. 2015). The

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court must then resolve all doubts as to the existence of a genuine issue of material fact in favor of the non-moving party. Saldana v. Kmart Corp, 260 F.3d 228, 232 (3d Cir. 2001). Summary judgment is appropriate if the non-moving party provides merely colorable, conclusory or speculative evidence. Anderson, 477 U.S. at 249. There must be more than a scintilla of evidence supporting the non-moving party and more than some metaphysical doubt as to the material facts. Id. at 252. Unsubstantiated arguments made in briefs are not considered evidence of asserted facts. Versarge v. Twp. of Clinton, 984 F.2d 1359, 1370 (3d Cir. 1993). Moreover, “a party resisting a [Rule 56] motion cannot expect to rely merely upon bare assertions, conclusory allegations or suspicions.” Gans v. Mundy, 762 F.2d 338, 241 (3d Cir. 1985) (citing Ness v. Marshall, 660 F.2d 517, 519 (3d Cir. 1981)).

III. MOTION FOR SUMMARY JUDGMENT ON DIRECT INFRINGEMENT

A. Facts Relating to Direct Infringement

The following facts are derived from the evidence submitted by the parties in support and opposition to summary judgment. Where there is conflicting evidence about a particular fact, Federal Rule of Civil Procedure 56 requires that I view all facts and evidence in the light most favorable to Plaintiffs.^[1]

Plaintiff accuses Defendant's products of direct infringement. Defendant seeks summary judgment on the direct infringement claims relating to the '913 patent and the '022 patent.

Claim 1 of the '913 patent recites:

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A tool for manipulating and inserting a universal, intervertebral bone fusion spacer into a disc space between a first vertebral body and a second vertebral body for providing fusion of the first vertebral body to the second vertebral body via biological bone fusion and screw fusion, wherein the universal, intervertebral bone fusion spacer includes an intervertebral cage having a first integral screw guide and a second integral screw guide, wherein each longitudinal end of the intervertebral cage includes a slot or indentation formed adjacent to an edge of an upper surface of the intervertebral cage, the tool comprising:

a gripper having a plurality of prongs,

wherein a distal end of each of the plurality of prongs is capable of engaging a respective slot or indentation of the intervertebral cage; and a screw guide for controlling a direction of screws that are inserted into the first integral screw guide and the second integral screw guide,

wherein the screw guide is positioned between the plurality of prongs.

(DSUF ¶ 1; PR ¶ 1.)^[2]

Asserted claim 47 of the '022 Patent states:

A universal, intervertebral combination internal screw guide and fixation apparatus configured to be inserted into a disc space between a first vertebral body and a second vertebral body and to provide fusion of the first vertebral body to the second vertebral body via biological bone fusion and screw fusion, the apparatus comprising:

an intervertebral cage including;

a top wall, a bottom wall, and two sidewalls defining an open space capable of receiving bone filling for the biological bone fusion;

an internal screw guide having an internal bore with an entry opening and an exit opening, the entry opening of the internal bore formed only in a top surface of the top wall and the exit opening formed at least partially in a bottom surface of the top wall and at

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least partially in a side surface of the top wall, wherein the internal screw guide further includes a counterbore that is larger than and coaxial with internal bore and has a counterbore entry opening that is formed only in the top surface of the top wall;

a second integral screw guide having a second internal bore with a second entry opening and a second exit opening, the second entry opening of the second internal bore formed only in the top surface of the top wall and the second exit opening formed at least partially in the bottom surface of the top wall and at least partially in a second side surface of the top wall; and

a circular hole extending through the top wall in a direction substantially normal to the top surface of the top wall, wherein the circular hole is positioned between the internal screw guide and the second internal screw guide at the top surface of the top wall.

(DSUF ¶ 3; PR ¶ 3.)^[3]

In my August 25, 2021 claim construction order, I construed the term “universal”-as used in both Patents-to mean...