4WEB, Inc. v. NuVasive, Inc.

Opinion

1 2 3 4 5 6 7 8 UNITED STATES DISTRICT COURT 9 SOUTHERN DISTRICT OF CALIFORNIA 10 11 4WEB, INC. and 4WEB, LLC, Case No.: 24-CV-1021 JLS (MMP)

12 Plaintiffs, ORDER GRANTING PLAINTIFFS’ 13 v. MOTION TO STRIKE NUVASIVE’S AMENDED INVALIDITY 14 NUVASIVE, INC., CONTENTIONS 15 Defendant. (ECF No. 165) 16 17 18 19 20 Presently before the Court are Plaintiffs 4WEB, Inc. and 4Web, LLC’s (collectively, 21 “4Web”) Motion to Strike NuVasive’s Amended Invalidity Contentions (“Mot.,” ECF 22 No. 165) and Memorandum of Points and Authorities in Support thereof (“Mem.,” ECF 23 No. 165-1), to which Defendant NuVasive, Inc. (“NuVasive”) filed an Opposition 24 (“Opp’n,” ECF No. 178) and Plaintiffs filed a Reply (“Reply,” ECF No. 184). Having 25 considered the Parties’ arguments and the law, the Court GRANTS Plaintiffs’ Motion as 26 follows. 27 / / / 28 / / / 1 BACKGROUND 2 This is a patent infringement action bearing on a set of patents related to spinal 3 implant technology. 4Web1 originally asserted 128 claims across eleven patents against 4 NuVasive, but as this case nears the end of discovery, only thirty claims spanning eight 5 patents remain. Those remaining patents are U.S. Patent Nos. 8,430,930 (the “’930 6 patent”); 9,999,516 (the “’516 patent”); 9,545,317 (the “’317 patent”); 11,278,421 (the 7 “’421 patent”); 9,271,845 (the “’845 patent”); 9,549,823 (the “’823 patent”); 9,572,669 8 (the “’669 patent”); and 10,849,756 (the “’756 patent”). See ECF No. 165-3, Ex. D (“3d 9 Am. Invalidity Contentions”) at 2. 10 4Web initially filed suit in the United States District Court for the Eastern District 11 of Texas. While there, 4Web served NuVasive with its original infringement contentions 12 on September 14, 2023, see ECF No. 165-3, Ex. G (“Infringement Contentions”), and 13 nearly two months later, NuVasive served 4Web with its original invalidity contentions on 14 November 9, 2023, see ECF No. 165-3, Ex. A (“Invalidity Contentions”). Then, on May 2, 15 2024, the case was transferred to the Southern District of California. ECF No. 45. 16 After the case was transferred, Magistrate Judge Michelle Pettit held a Case 17 Management Conference on June 28, 2024, after which she issued a Case Management 18 Order. ECF No. 67. In the Order, Magistrate Judge Pettit set various deadlines for 19 discovery and other pretrial proceedings up and through a final pretrial conference that was 20 tentatively scheduled for October 16, 2025. Id. at 7. Of relevance here are the deadlines 21 relating to claim construction, for which discovery was set to conclude on November 19, 22 2024. Id. at 2. Along with that discovery deadline, Magistrate Judge Pettit also set a 23 briefing schedule providing for opening and responsive claim construction briefs to be filed 24 on December 3, 2024, and December 17, 2024, respectively. Id. The claim construction 25 hearing was scheduled for about three weeks later on January 9, 2025, id., although the 26

27 1 This case was originally filed by a single Plaintiff, 4WEB, Inc., but a second Plaintiff, 4Web, LLC, has 28 since been added. See ECF No. 109. For the sake of simplicity, the Court will refer to both Plaintiffs 1 briefing scheduled was pushed to the right by three days and the claim construction hearing 2 pushed to the right by about a month, ECF Nos. 105, 127. 3 Meanwhile, NuVasive had served 4Web with both first and second amended 4 invalidity contentions as a matter of right on September 10, 2024, and November 26, 2024, 5 respectively. See ECF No. 165-3, Ex. B (“1st Am. Invalidity Contentions”); ECF 6 No. 165-3, Ex. C (“2d Am. Invalidity Contentions”). In between service of the two sets of 7 amended invalidity contentions, 4Web had been ordered to narrow its claim selection to no 8 more than thirty-two claims. See ECF No. 103. But both sets of amended invalidity 9 contentions were served during the pendency of claim construction discovery, with the 10 second amended invalidity contentions being served the same day claim construction 11 discovery concluded. In general, NuVasive’s invalidity contentions contained a host of 12 objections to 4Web’s asserted patents, including arguments that the asserted claims were, 13 among other defects, invalid as anticipated, obvious, indefinite, and ineligible for patent 14 protection. See, e.g., 1st Am. Invalidity Contentions at 3. 15 One of these arguments, indefiniteness, captured the full attention of claim 16 construction. The Parties jointly identified seven claim terms for construction, see ECF 17 No. 110 at 1–2, grouping them into three categories: the “Microstrain” terms, the 18 “Substantially Parallel” term, and the “Central Portion” term. All three groupings, 19 NuVasive argued, were indefinite under 35 U.S.C. § 112 for “failing to provide a skilled 20 artisan an understanding of the scope of the claims with reasonable certainty.” ECF 21 No. 113 (“Def.’s Opening Br.”) at 1. 4Web, on the other hand, maintained that the three 22 terms were definite and should be given their plain and ordinary meaning. ECF No. 114 23 (“Pl.’s Opening Br.”) at 1. 24 The Court issued its Claim Construction Order (“CC Order,” ECF No. 130) on 25 February 18, 2025. As to the “Microstrain” and “Substantially Parallel” terms, the Court 26 agreed with 4Web that the terms are definite and should be given their plain and ordinary 27 meaning. CC Order at 34–35. As to the “Central Portion” term, however, the Court agreed 28 with NuVasive that the term is indefinite. Id. at 35. This mixed result effectively nixed 1 two of 4Web’s asserted claims, leaving thirty claims remaining upon which the Parties 2 could develop a factual record during discovery in preparation for trial. 3 At the time of the Claim Construction Order on February 18, 2025, the Parties had 4 several months of discovery remaining. That timeline included a fact discovery deadline 5 of May 7, 2025, expert disclosures on June 4, 2025, and a complete discovery deadline of 6 July 30, 2025. ECF No. 67 at 3. However, on April 23, 2025—two weeks before the fact 7 discovery deadline—the Parties jointly requested a several-month extension to the Case 8 Management Order, in part at least, because of what can only be described as myriad 9 unabating and intractable discovery disputes. ECF No. 153. Magistrate Judge Pettit agreed 10 to the joint request on April 25, 2025, extending all remaining milestones by a few months. 11 ECF No. 155. That extension included pushing the fact discovery deadline to August 12, 12 2025, expert disclosures to September 11, 2025, and the complete discovery deadline to 13 November 12, 2025. Id. 14 The same day as the Parties’ joint request to extend certain case management 15 deadlines, NuVasive served 4Web with its third amended invalidity contentions. See ECF 16 No. 165-3, Ex. E at 4; see also 3d Am. Invalidity Contentions. The Parties met and 17 conferred about the propriety of this final set of invalidity contentions and eventually 18 reached an impasse as to whether the contentions were permitted by the Patent Local Rules. 19 See ECF No. 165-3, Ex. E at 1–3. That impasse prompted the instant Motion, in which 20 4Web asks the Court to strike the third amended invalidity contentions as improper under 21 Patent Local Rule 36(b)(2). See generally Mot. 22 LEGAL STANDARD 23 The Patent Local Rules “seek to balance the right to develop new information in 24 discovery with the need for certainty as to the legal theories” relied upon by the parties. 25 O2 Micro Int’l Ltd. v. Monolithic Power Sys., Inc., 467 F.3d 1355, 1366 (Fed. Cir. 2006). 26 Thus, on the one hand, the “Patent Local Rules ‘are designed to require parties to crystallize 27 their theories of the case early in the litigation and to adhere to those theories once they 28 have been disclosed.’” Wi-LAN Inc. v. LG Elecs., Inc., No. 18-cv-01577-H-BGS, 1 2019 WL 5790999, at *2 (S.D. Cal. Sept. 18, 2019) (quoting Nova Measuring Instruments 2 Ltd. v. Nanometrics, Inc., 417 F. Supp. 2d 1121, 1123 (N.D. Cal. 2006)). On the other 3 hand, there may be times “when new information comes to light in the course of discovery” 4 that justifies amendment to the operative legal theories of the case. See O2, 467 F.3d 5 at 1366. Ultimately, the Patent Local Rules are “designed to provide structure to discovery 6 and to enable the parties to move efficiently toward claim construction and the eventual 7 resolution of their dispute.” Simpson Strong-Tie Co. v. Oz-Post Int’l, LLC, 8 411 F. Supp. 3d 975, 981 (N.D. Cal. 2019) (quoting Golden Bridge Tech. Inc. v. Apple, 9 Inc., No. 12-cv-04882-PSG, 2014 WL 1928977, at *3 (N.D. Cal. May 14, 2014)). 10 In the Southern District of California, the Patent Local Rules provide a reticulated 11 framework for amending invalidity contentions. Up until the completion of claim 12 construction discovery, “a party opposing a claim of patent infringement may serve 13 Amended Invalidity Contentions” as a matter of right. S.D. Cal. Patent L.R. 3.6(b). But 14 after the close of claim construction discovery, a party opposing a claim of patent 15 infringement may only amend its invalidity contentions in one of three circumstances: 16 (1) the party claiming patent infringement amended its infringement contentions in a way 17 that “so require[s]” an amendment to the invalidity contentions, (2) no later than fifty days 18 after a claim construction ruling that differs from that proposed by the party opposing 19 infringement but only if such party “believes in good faith that amendment is necessitated 20 by” the court’s construction, or (3) upon a showing of good cause. Id. In each of those 21 three circumstances, an accused infringer may only amend its invalidity contentions upon 22 an additional showing that there is no “undue prejudice to the opposing party.” Id. 23 The net result of this district’s Patent Local Rules is an amendment framework that 24 “is decidedly conservative, and designed to prevent the ‘shifting-sands’ approach to claim 25 construction.” Pelican Int’l, Inc. v. Hobie Cat Co., 2023 WL 2127995, at *3 (S.D. Cal. 26 Feb. 10, 2023) (quoting Regents of Univ. of Cal. v. Affymetrix, Inc., 27 No. 17-CV-01394-H-NLS, 2018 WL 4053318, at *2 (S.D. Cal. Aug. 24, 2018)). 28 Amendments to contentions, therefore, are not permitted “‘as a matter of course when new 1 information is revealed in discovery,’ but instead require parties to file amendments to 2 contentions with diligence” as contemplated by the Patent Local Rules. Zest IP Holdings, 3 LLC v. Implant Direct MFG, LLC, No. 10cv0541-GPC-WVG, 2014 WL 358430, at *3 4 (S.D. Cal. Jan. 31, 2014) (quoting O2, 467 F.3d at 1365–66)). “Any infringement theories 5 or invalidity theories not properly disclosed pursuant to the Court’s Patent Local Rules ‘are 6 barred . . . from presentation at trial (whether through expert opinion testimony or 7 otherwise).’” Hobie Cat, 2023 WL 2127995, at *3 (quoting Verinata Health, Inc. v. 8 Sequenom, Inc., No. 12-cv-00865, 2014 WL 4100638, at *3 (N.D. Cal. Aug. 20, 2014)). 9 Because local rules governing amendment to invalidity contentions are “intimately 10 involved in the substance of enforcement of the patent right,” Federal Circuit law is 11 controlling. O2, 467 F.3d at 1364 (quoting Sulzer Textil A.G. v. Picanol N.V., 12 358 F.3d 1356, 1363 (Fed. Cir. 2004)). But district courts have “wide discretion in 13 enforcing the Patent Local Rules,” and the Federal Circuit defers to district courts enforcing 14 their own Patent Local Rules unless the decision is “clearly unreasonable, arbitrary, or 15 fanciful; based on erroneous conclusions of law; clearly erroneous; or unsupported by any 16 evidence.” CliniComp Int’l, Inc. v. Cerner Corp., No. 17-cv-02479-GPC (DEB), 17 2022 WL 16985003, at *12 (S.D. Cal. Nov. 15, 2022). 18 ANALYSIS 19 The Parties’ briefing revolves exclusively around application of Patent Local Rule 20 3.6(b)(2). That Rule provides that, after completion of claim construction discovery, 21 absent undue prejudice to the opposing party, a party opposing infringement may only amend its validity contentions [i]f, not 22 later than fifty (50) days after service of the Court’s Claim 23 Construction Ruling, the party opposing infringement believes in good faith that amendment is necessitated by a claim 24 construction that differs from that proposed by such party. 25 26 S.D. Cal. Patent L.R. 3.6(b)(2). Both Parties agree that this Rule sets forth the appropriate 27 standard for amending invalidity contentions at this stage of the litigation. See Mem. at 8; 28 Opp’n at 6. 1 The Parties quibble, however, over how to apply the Rule. In 4Web’s view, 2 NuVasive’s third amended invalidity contentions are sound only if both (1) the contention 3 amendments are necessitated by the Court’s Claim Construction Order and (2) the 4 amendments do not prejudice 4Web. As to the first prong, 4Web’s argument is two-fold. 5 First, 4Web argues that neither of NuVasive’s new invalidity theories—lack of written 6 description and inadequate enablement—are tied to claim construction because those 7 “defenses hinge on the disclosures in the patents-in-suit.” Mem. at 10. Put differently, 8 because NuVasive has had access to the asserted patents’ disclosures since the inception 9 of this suit, the claim construction phase had no impact on the availability of the defenses. 10 Second, 4Web contends that the Court’s constructions of the disputed claim terms were 11 entirely foreseeable, thus negating the possibility that the third amended invalidity 12 contentions were “necessitated” by the Claim Construction Order. In any event, 4Web also 13 claims prejudice from the third amended invalidity contentions due both to NuVasive’s 14 delay in serving and the conclusory nature of the contentions. 15 NuVasive disagrees on both points. Unlike 4Web, NuVasive argues that written 16 description and enablement issues “are inextricably tied to claim scope.” Opp’n at 7. And 17 although the Court, in its Claim Construction Order, adopted 4Web’s position of giving 18 the “Microstrain” and “Substantially Parallel” Terms their plain and ordinary meaning, 19 NuVasive claims that it was caught unaware at just how broad of an interpretation that was. 20 On that basis, NuVasive contends that the Court’s Claim Construction Order was not 21 “foreseeable” simply by virtue of the Court accepting 4Web’s proffered plain and ordinary 22 interpretation.2 NuVasive additionally argues that 4Web cannot claim prejudice from the 23 third amended invalidity contentions because 4Web does not identify any extensive fact 24 discovery that would be necessary if the contention amendments are permitted and because 25 4Web’s pattern of claim selection thus far in this case does not indicate that the third 26 27 28 2 NuVasive spills no ink justifying its third amended invalidity contentions under the “good cause” 1 amended invalidity contentions would have any impact on 4Web’s ability to proceed on 2 the claims of its choosing. 3 The Parties’ arguments are best considered in view of the concrete amendments that 4 NuVasive hopes to make. As NuVasive frames it, there are “three types of amendments 5 related to written description and enablement” that are presently at issue. Opp’n at 5. The 6 first type of amendment involves adding written description and enablement challenges to 7 new claims involving identical terms—such as the “Substantially Parallel” Term—to those 8 in other claims that NuVasive had challenged on the same grounds in prior invalidity 9 contentions. The second type of amendment involves adding renewed written description 10 and enablement challenges to claims that had been challenged in NuVasive’s first amended 11 invalidity contentions but went unchallenged in NuVasive’s second amended invalidity 12 contentions because those claims were independent claims not being asserted by 4Web. 13 And the third type of amendment involves adding written description and enablement 14 challenges to new, unique claim terms that had not been challenged in any set of prior 15 invalidity contentions. This last type of amendment should be permitted, as NuVasive sees 16 it, because of “4Web’s overly expansive view of the claims.” Id. at 6. 17 A. NuVasive’s First Two Types of Amendment 18 NuVasive’s own framing is quite helpful to succinctly discuss why the first two 19 types of amendment are plainly improper under Patent Local Rule 3.6(b)(2). The 20 ostensible purpose behind framing the amendments the way it did was to emphasize that 21 “4Web clearly had notice of the § 112 infirmities NuVasive saw in these terms,” thereby 22 squashing any notion that 4Web could be prejudiced by the amendments. Id. That much 23 may be true. But highlighting purported written description and enablement deficiencies 24 in the “Microstrain” and “Substantially Parallel” Terms that NuVasive previously 25 identified in its first and second amended invalidity contentions is equally revealing of 26 something else: that NuVasive was able to identify said deficiencies prior to the Court’s 27 Claim Construction Order. NuVasive served its first and second amended invalidity 28 contentions on 4Web on, respectively, September 10, 2024, and November 26, 2024, both 1 of which passed several months before the Court resolved the Parties’ claim construction 2 disputes on February 18, 2025. Thus, it “is entirely implausible” that NuVasive had a good 3 faith belief that its written description and enablement challenges to the “Microstrain” and 4 “Substantially Parallel” Terms were necessitated by the Court’s Claim Construction Order. 5 Hobie Cat, 2023 WL 2127995 (finding it “impossible” that the accused infringer had a 6 good faith belief that prior art disclosures were necessitated by a claim construction order 7 where the disclosures were made fourteen days before the order). 8 It is perhaps possible that NuVasive has a good faith belief that, after the Claim 9 Construction Order, the “Microstrain” and “Substantially Parallel” Terms were even more 10 susceptible to § 112 challenge than before the Court’s construction. But a claim 11 construction order does not “necessitate” amendment where the amending party has 12 preemptively anticipated that certain legal theories are already on the table. Cf. Silver State 13 Intell. Techs., Inc. v. Garmin Int’l, Inc., 32 F. Supp. 3d 1155, 1166 (D. Nev. 2014) 14 (granting a motion to strike new invalidity theories where the amending party “does not 15 explain why [it] could not have anticipated” the new theories prior to the claim construction 16 order). To allow the first two types of amendment to proceed at this stage would be to 17 endorse “the ‘shifting sands’ approach to claim construction” that the Patent Local Rules 18 were meant to prevent. Verinata Health, Inc. v. Ariosa Diagnostics, Inc., 19 236 F. Supp. 3d 1110, 1113 (N.D. Cal. 2017) (quoting LG Elecs. Inc. v. Q-Lity Comput. 20 Inc., 211 F.R.D. 360, 367 (N.D. Cal. 2002)). 21 Nevertheless, in its Reply, 4Web disclaims “seek[ing] to strike § 112 defenses 22 reciting identical language if that language was previously challenged in the same patent,” 23 thereby “provid[ing] NuVasive with the benefit of doubt.” Reply at 3. So the Court 24 declines to strike any newly asserted defenses matching that description, which appears to 25 map directly onto NuVasive’s self-described first type of amendment. However, the Court 26 STRIKES NuVasive’s third amended invalidity contentions to the extent they raise written 27 description or enablement challenges that were present in the first amended invalidity 28 contentions but omitted from the second set of invalidity contentions, a description that 1 appears to map directly onto NuVasive’s self-described second type of amendment. 2 B. NuVasive’s Third Type of Amendment 3 The final type of amendment sought by NuVasive presents a closer question, but the 4 result remains the same. In this third type of amendment, NuVasive seeks to challenge, for 5 the first time, new claim terms from the ’930 and ’317 Patents on written description and 6 enablement grounds. The fear, as NuVasive finds it, is that 4Web interpreted the disputed 7 terms during the claim construction stage in an unexpectedly broad manner that calls into 8 question whether the full scope of the newly challenged terms is sufficiently described and 9 enabled. See Opp’n at 10. By this, NuVasive is referencing its surprise that 4Web’s 10 proposed construction of the “Microstrain” and “Substantially Parallel” Terms rested on 11 an unpredictably broad foundation. NuVasive’s basic contention, as the Court understands 12 it, is that NuVasive did not have a fair opportunity prior to the Court’s Claim Construction 13 Order to serve invalidity contentions consistent with 4Web’s broad reading of the claims. 14 4Web’s response starts with the nearly unconditional assertion that written 15 description and enablement theories should never be permitted following a claim 16 construction order because those two theories merely require objective inquiries into “the 17 four corners of the specification.”3 Mem. at 9–10 (quoting Ariad Pharms., Inc. v. Eli Lilly 18 & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc)). From that central premise, 4Web 19 concludes that “[n]either lack of written description nor inadequate enablement are tied to 20 claim construction,” so NuVasive cannot say, in good faith, that the claim construction 21 necessitated its third amended invalidity contentions. Id. at 10 (citing Horus Vision, LLC 22 v. Applied Ballistics, LLC, No. 5:13CV05460BLF(HRL), 2014 WL 6895572, at *3 23 (N.D. Cal. Dec. 5, 2014)). 24 Though 4Web’s argument has some appeal, the Court declines to adopt such a 25 categorical rule. True, the written description and enablement requirements of § 112 26

27 3 4Web appears to offer a slight qualification in its Reply by asserting that “new § 112 defenses are rarely, 28 if ever, permitted under L.R. 3.6(b)(2),” Reply at 1, but the Court construes 4Web’s briefing to push for a 1 depend on little more than an objective inquiry into the contents of the patent specification. 2 See Ariad, 598 F.3d at 1351 (“[T]he [written description] test requires an objective inquiry 3 into the four corners of the specification from the perspective of a person of ordinary skill 4 in the art.”); see also Cephalon, Inc. v. Watson Pharms., Inc., 707 F.3d 1330, 1336 5 (Fed. Cir. 2013) (“Th[e enablement] requirement is met when at the time of filing the 6 application one skilled in the art, having read the specification, could practice the invention 7 without ‘undue experimentation.’” (quoting In re Wands, 858 F.2d 731, 736–37 (Fed. Cir. 8 1988))). And as 4Web points out, at least some district courts seem to have denied 9 post-claim construction invalidity contention amendments on § 112 grounds with little 10 analysis. See, e.g., Horus Vision, 2014 WL 6895572, at *3 (accepting the patentee’s 11 argument that the accused infringers “were not diligent with respect to this new enablement 12 argument because they could have asserted it in their original contentions along with their 13 other enablement arguments”); Barco N.V. v. Tech. Props. Ltd., 14 No. 5:08-cv-05398 JF/HRL, 2011 WL 3957390, at 2 (N.D. Cal. Sept. 7, 2011) 15 (concluding that the accused infringer “should have been able to assert its lack of 16 enablement theory based on the . . . patent specifications alone”). 17 But the Court agrees with NuVasive in concluding that written description and 18 enablement issues depend upon claim scope, which may, in turn, depend upon a court’s 19 construction of certain claim terms. See, e.g., McRO, Inc. v. Bandai Namco Games Am. 20 Inc., 959 F.3d 1091, 1100 (Fed. Cir. 2010) (“Once the precise scope of the claimed 21 invention is defined, the question is whether undue experimentation is required to make 22 and use the full scope of embodiments of the invention claimed.”). Indeed, at least with 23 respect to enablement, the Federal Circuit has stated in no uncertain terms that “the 24 enablement inquiry necessarily depends on an interpretation of the claims . . . .” Liquid 25 Dynamics Corp. v. Vaughan Co., 449 F.3d 1209, 1224 n.2 (Fed. Cir. 2006). Accordingly, 26 there is little doubt that an accused infringer’s perception of potential § 112 issues may 27 very well adjust depending upon how a court resolves claim construction. 28 Nevertheless, to decide the instant Motion, the Court must determine whether the 1 Court’s Claim Construction Order “necessitated” NuVasive’s proposed amendments, not 2 whether the Court’s Claim Construction Order led NuVasive to regret its pre-claim 3 construction litigation strategy. That standard, under Patent Local Rule 3.6(b)(2), is not 4 satisfied by the simple “fact that the Court adopts a claim construction different from that 5 proposed by the party seeking to amend[,] . . . particularly where the Court adopts the 6 construction proposed by the other party.” Silver State, 32 F. Supp. 3d at 1162 (citing 7 Finisar Corp. v. DirecTV Grp., Inc., 424 F. Supp. 2d 896, 901–02 (E.D. Tex. 2006)). 8 Rather, in this district, a court’s claim construction order “necessitates” amendment only 9 when it “come[s] as a surprise to” the party seeking to amend. Apple Inc. v. Wi-LAN, Inc., 10 No. 14cv2235 DMS (BLM), 2018 WL 9538772, at *1 (S.D. Cal. Mar. 2, 2018). 11 The Court finds it implausible that the Court’s adoption of 4Web’s proffered plain 12 and ordinary construction of the “Microstrain” and “Substantially Parallel” Terms came as 13 a surprise to NuVasive. As early as October 23, 2024—when the Parties exchanged 14 preliminary claim constructions—NuVasive would have been aware that 4Web was 15 seeking a plain and ordinary construction of those Terms. See ECF No. 105 at 2 (Order 16 setting forth claim construction deadlines); see also ECF No. 110-1 (Joint Claim 17 Construction Chart). Thus, when NuVasive served 4Web with its second amended 18 invalidity contentions on November 26, 2024, NuVasive had a full month when it “should 19 have been ‘aware of the risk that the Court could adopt these constructions.’” Apple, 20 2018 WL 9538772, at *1 (quoting Slot Speakers Techs., Inc. v. Apple, Inc., 21 No. 13-cv-01161-HSG, 2017 WL 4354999, at *3 (N.D. Cal. Sept. 29, 2017)). An accused 22 infringer generally cannot claim in good faith that a claim construction order necessitated 23 amendment when it “could have . . . made accommodations for [the opposing party’s] 24 constructions in its [previous] contentions” yet chose not to. Id.; see also Sunpower Corp. 25 Sys. v. Sunlink Corp., No. C-08-2807 SBA (EMC), 2009 WL 1657987, at *1 (N.D. Cal. 26 June 12, 2009) (disallowing amendments to invalidity contentions where “[t]he risk of the 27 construction rendered by the presiding judge was well known and anticipated by” the 28 accused infringer). 1 NuVasive argues that 4Web’s broad reading of the “Microstrain” and “Substantially 2 Parallel” Terms could “appl[y] equally to the terms that were not expressly before the Court 3 during claim construction,” Opp’n at 10, but NuVasive was free to identify additional terms 4 for construction in the Parties’ Joint Hearing Statement in advance of the claim 5 construction hearing. See S.D. Cal. Patent L.R. 4.2(a) (allowing the Parties to identify “up 6 to a maximum of ten (10) terms”). As an example, NuVasive posits that 4Web might be 7 interpreting the word “adjacent” in a way that “might extend the meaning of that term to 8 something far more remote” than the usual interpretation. But the claim term “adjacent” 9 was never before the Court on claim construction, and it is much too speculative to begin 10 hypothesizing at this late stage as to whether the Court’s construction of certain claim terms 11 was so unforeseeable that it might have an impact on other, newly presented terms. The 12 Court also finds at least some irony in NuVasive’s position, given that the Court relied on 13 NuVasive’s own cited cases to arrive at its ultimate constructions in the Claim Construction 14 Order. See, e.g., CC Order at 21–22 (“Rather than support NuVasive’s argument that the 15 Microstrain Terms are indefinite, Geneva Pharmaceuticals [v. GlaxoSmithKline PLC, 16 349 F.3d 1373 (Fed. Cir. 2003)], properly understood, actually supports the view that the 17 Microstrain Terms should be read broadly to encompass any combination of strut length, 18 strut diameter, and web structure density that results in a microstrain in any implant 19 location.”). A careful reading of the cases cited by NuVasive in its claim construction 20 briefs could hardly yield a construction that was unexpected or unforeseeable. 21 Citing CellCast Technologies, LLC v. United States, 152 Fed. Cl. 414 (Fed. Cl. 22 2021), NuVasive argues that 4Web has set the bar too high by relying on a “foreseeability” 23 standard, which at least some courts have rejected. But there, the court applied its own 24 distinct local rule, which provided for “modification of a court-imposed schedule only for 25 good cause and with the judge’s consent.” CellCast, 152 Fed. Cl. at 420 (internal quotation 26 marks omitted). Recognizing that it was without “a specific rule governing parties’ 27 contention amendments after claim construction orders issue,” the court canvassed the 28 patent local rules from several other districts from around the country in search of guidance. 1 Id. at 423. And in that process, the court identified that there is a split between some 2 districts—like the Northern District of California—that eschew the “foreseeability” 3 standard, and other districts—like the Eastern District of Texas—that espouse the 4 “foreseeability” standard. Id. at 424 (noting that “there is a discrepancy between” the local 5 patent rules of the Northern District of California and those of the Eastern District of 6 Texas). 7 CellCast is, thus, less than authoritative as to how the Court should apply the 8 Southern District of California’s Patent Local Rules, which were not discussed there. But 9 that case, at minimum, is instructive in highlighting the freedom each district has to 10 “balance the right to develop new information in discovery with the need for certainty as 11 to the legal theories” as that district sees fit. Echologics, LLC v. Orbis Intelligent Sys., Inc., 12 No. 21-cv-01147-RBM-AHG, 2022 WL 17724142, at *7 (S.D. Cal. Dec. 15, 2022) 13 (quoting O2, 467 F.3d at 1365–66). And to the extent CellCast acknowledges a divide 14 between those courts that apply the “foreseeability” standard and those that do not, this 15 district’s Patent Local Rules are most closely analogous to those of the Eastern District of 16 Texas, which do indeed impose a “foreseeability” standard.4 Contrary to NuVasive’s 17 suggestion otherwise, at least one other court in the Southern District of California has 18 favorably cited the “foreseeability” standard, see Hobie Cat, 2023 WL 2127995, at *9, and 19 the Federal Circuit has, on at least one occasion, rubberstamped a lower court’s use of that 20

21 4 In CellCast, the court considered the Eastern District of Texas’s Patent Local Rule 3-6(a)(1), which 22 provides:

23 If a party claiming patent infringement believes in good faith that the 24 Court’s Claim Construction Ruling so requires, not later than 30 days after service by the Court of its Claim Construction Ruling, that party may serve 25 “Amended Infringement Contentions” without leave of court that amend its “Infringement Contentions” with respect to the information required by 26 Patent R. 3-1(c) and (d).

27 Note the similarity between the Eastern District of Texas’s rule, which only allows amendment if the claim 28 construction order “so requires,” and this district’s rule, which only allows amendment if such amendment 1 standard, too, see BookIT Oy v. Bank of Am. Corp., 817 F. App’x 990, 994 (Fed. Cir. 2020). 2 At any rate, even under the laxer “good cause” standard of the Northern District of 3 California,5 NuVasive is unable to amend its invalidity contentions for a third time. As 4 noted above, merely adopting the opposing party’s construction “in and of itself does not 5 constitute good cause [to amend invalidity contentions].” Slot Speaker, 6 2017 WL 4354999, at *3 (quoting Verinata Health, Inc. v. Sequenom, Inc., 7 No. C 12-00865 SI, 2014 WL 789197, at *2 (N.D. Cal. Feb. 26, 2014)). And in cases 8 where the court allowed post-claim construction contention amendments, those courts had 9 predominantly adopted constructions earlier in the case that were altogether different from 10 those proposed by either party. See id. (“The Court nevertheless finds good cause here 11 where the Court did not adopt the construction of ‘groundplane audio speaker system’ 12 proposed by either party.”); GPNE Corp. v. Apple Inc., Nos. 5:12-cv-02885-LHK-PSG, 13 5:12-cv-03057-LHK-PSG, 2013 WL 6157930, at *2 (N.D. Cal. Nov. 22, 2013) (granting 14 leave to amend infringement contentions where the court “departed from both parties’ 15 suggested constructions”). Thus, the Court concludes that NuVasive has not shown that 16 the Claim Construction Order “necessitated” amendment under any articulation of the 17 standard.6 Accordingly, the Court STRIKES NuVasive’s third amended invalidity 18 contentions to the extent they present written description or enablement challenges that 19 were not served on 4Web at any point prior to the Court’s Claim Construction Order. 20 / / / 21 / / / 22 / / / 23 24 25 5 For context, the Northern District of California’s Patent Local Rule 3-6 allows for amendment only “upon a timely showing of good cause,” one non-exhaustive example of which is a claim construction 26 order “different from that proposed by the party seeking amendment.”

27 6 The Court need not reach the Parties’ arguments regarding prejudice because, unless one of the three 28 conditions in Patent Local Rule 3.6(b)(1)–(3) are met, post-claim construction amendment is 1 CONCLUSION 2 Based on the foregoing analysis, the Court GRANTS 4Web’s Motion to Strike (ECF 3 ||No. 165). NuVasive’s third amended invalidity contentions SHALL be stricken in 4 || accordance with this Order. 5 IT IS SO ORDERED. 6 Dated: July 28, 2025 jae LL mrmaitene- 7 on. Janis L. Sammartino g United States District Judge 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28