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`UNITED STATES DISTRICT COURT
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`SOUTHERN DISTRICT OF CALIFORNIA
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`WARSAW ORTHOPEDIC, INC.;
`MEDTRONIC SOFAMOR DANEK
`U.S.A., INC., MEDTRONIC PUERTO
`RICO OPERATIONS CO.; and
`OSTEOTECH, INC.,
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` Case No.: 3:12-cv-02738-CAB (MDD)
`
`ORDER TO SUBMIT JOINT
`STATEMENT REGARDING
`STATUS OF LITIGATION
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`v.
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`NUVASIVE, INC.,
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`Plaintiffs,
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`Defendant.
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`The Court hereby directs the parties to submit a joint statement regarding the status
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`of this litigation by March 31, 2016. The Court last received a joint status report on
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`April 28, 2015. [Doc. No. 260.] The docket currently reflects the following status of the
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`various patents asserted in this litigation.
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`I. Warsaw’s Asserted Patents
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`Plaintiffs (collectively “Warsaw”) filed this action asserting infringement of four
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`patents against defendant NuVasive: U.S. Patent Nos. 8,021,430; 8,251,997; 8,444,696
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`and 5,676,146.
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`1
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`3:12-cv-02738-CAB (MDD)
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`
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`Case 3:12-cv-02738-CAB-MDD Document 272 Filed 03/01/16 PageID.21810 Page 2 of 3
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`On May 30, 2013, the Court entered a stay of the litigation as to Warsaw’s ‘430
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`patent. The parties notified the Court that all claims of this patent were cancelled by the
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`PTO on August 26, 2013. As a result, this patent is dismissed from this litigation.
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`On October 30, 2013, the Court enter a stay of the litigation as to Warsaw’s ‘997
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`patent in favor of IPR proceedings. The Court understands the final decisions of the PTO
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`are on appeal to the Federal Circuit.
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`On January 10, 2014, the Court enter a stay of the litigation as to Warsaw’s ‘696
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`patent in favor of IPR proceedings. All asserted claims were found unpatentable by the
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`PTO and no appeal was taken. As a result, this patent is dismissed from this litigation.
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`On February 17, 2016, the Court entered an order of summary judgment of non-
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`infringement in favor of NuVasive on Warsaw’s ‘146 patent. As a result, this patent is
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`dismissed from this litigation.
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`In light of the above, the parties are instructed to apprise the Court on the current
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`status of the ‘997 patent.
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`II. NuVasive’s Asserted Patents
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`Defendant NuVasive filed counterclaims asserting infringement of eight patents
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`against Warsaw: U.S. Patent Nos. 8,000,782; 8,005,535; 8,016,767; 8,192,356;
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`8,187,334; 8,361,156; D652,922; and D666,294.
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`On September 3, 2013, the parties jointly moved to dismiss NuVasive’s ‘294
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`20
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`patent from the litigation.
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`On October 20, 2015, the Court entered an order of summary judgment of non-
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`infringement in favor of Warsaw on NuVasive’s ‘922 patent. As a result, this patent is
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`dismissed from this litigation.
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`On January 10, 2014, the Court enter a stay of the litigation as to NuVasive’s
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`remaining patents in favor of IPR proceedings. As for April 28, 2015, the parties
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`reported the following status on these six patents:
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` The PTO found all asserted claims of the ‘782, ‘535, ‘767, ‘334, and ‘156
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`patents unpatentable.
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`2
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`3:12-cv-02738-CAB (MDD)
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`
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`Case 3:12-cv-02738-CAB-MDD Document 272 Filed 03/01/16 PageID.21811 Page 3 of 3
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` IPR was not instituted as to asserted claims 25 and 26 of the ‘356 patent.
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`These claims depend from claim 21 which the PTO found unpatentable.
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`The 2015 status report indicated appellate review would be sought on the PTO
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`final decisions. The parties are instructed to apprise the Court on the current status of the
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`‘782, ‘535, ‘767, ‘334, and ‘156 patents. With regard to the ‘356 patent, the parties
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`should address whether continuation of the stay is appropriate.
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`
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`IT IS SO ORDERED.
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`Dated: March 1, 2016
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`3:12-cv-02738-CAB (MDD)
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