Globus Medical, Inc. v. Moskowitz Family LLC

I'll research this case and its context before writing the overview.

Important framing note

The docket in the case metadata — IPR2020-01305, Globus Medical, Inc. v. Moskowitz Family LLC — is not a district-court infringement suit. It is an inter partes review petition filed with the PTAB on July 20, 2020 (petition papers dated July 21, 2020) challenging U.S. Patent No. 10,478,319, which the Board denied institution of on January 8, 2021 (Paper 7, 31 pages, denying review under 35 U.S.C. § 314). (Decision, Paper 7; petition text) There is therefore no district, division, or Article III judge in this proceeding; the "venue" story belongs to the parallel litigation, described below.

Overview and background

Parties. Globus Medical, Inc. is a publicly traded spinal and musculoskeletal implant manufacturer headquartered in Audubon, Pennsylvania — its home district is the E.D. Pa., which becomes relevant below — and by the time of trial was described by its counsel as "the leading innovator and patent holder in the spinal implant market." (Susman Godfrey) Moskowitz Family LLC is a family-owned Maryland LLC in Rockville, Maryland, formed by Dr. Nathan C. Moskowitz, a Johns Hopkins-trained neurosurgeon-inventor, to "develop human spine related devices and protect and license any resulting inventions and intellectual property"; it holds a portfolio of roughly one hundred U.S. patents and nine pending applications. (Medtronic complaint, D. Minn. 0:25-cv-00769) It does not manufacture or sell spinal devices, so it functions as an inventor-owned non-practicing/licensing entity — not a mass-filing PAE, but a serial assertor (it later sued ZimVie, NuVasive, and Medtronic). (Justia docket index)

The technology and asserted patents. The '319 patent, "System with Tool Assembly and Expandable Spinal Implant," issued November 19, 2019 — one day before Moskowitz filed suit — from an application filed February 20, 2019, with priority back to provisional 60/670,231 (filed April 12, 2005). It claims a two-part surgical system: (i) an expandable intervertebral fusion implant whose upper and lower sliding bases are driven apart by an adjusting screw, and (ii) an inserter/positioning tool whose prongs grip indentations on the implant while an inner screwdriver (an "Allen key" in the spec) passes through the tool's passage to turn the expansion screw. Claim 1 requires the gripper to be "cooperating with the first handle"; independent claims 1, 9, and 20 were challenged. (Paper 7 at 3–6.) In the litigation, Moskowitz asserted a broader eight-patent family; the three patents tried and appealed were the '319 (expandable implant + inserter), U.S. 8,353,913 (a tool for manipulating/inserting a "universal" intervertebral bone-fusion spacer having integral screw guides), and U.S. 9,889,022 (a "universal" intervertebral internal screw guide/fixation apparatus using bidirectional screw fusion). (Fed. Cir. opinion, No. 2024-1696; IPWatchdog) The accused products for the '319 patent included Globus's RISE, RISE-L, SABLE, MAGNIFY-S, ELSA, and CALIBER systems; the jury also cleared the RISE/RISE-L ('268) and COALITION MIS, HEDRON IA, CORBEL, and INDEPENDENCE MIS ('740) products, ten products in all. (JMOL opinion, Doc. 399; PatSnap summary)

Procedural posture. Moskowitz sued in the W.D. Tex., Waco Division (No. 6:19-cv-00672-ADA, Judge Alan Albright) on November 20, 2019; Globus was served November 21, 2019. On July 2, 2020, Judge Albright granted Globus's motion to transfer

I'll research the docket and related proceedings before drafting the chronology.

Key legal developments and outcome (chronological)

Scope note / correction flag. The docket in the case metadata — IPR2020-01305 — is the PTAB proceeding that is the subject of this file, but the litigation chronology below is the parallel Article III case that supplied the real-world stakes: Moskowitz Family LLC v. Globus Medical, Inc., originally W.D. Tex. No. 6:19-cv-00672-ADA, transferred to E.D. Pa. No. 2:20-cv-03271-MSG (Chief Judge Mitchell S. Goldberg). Two corrections to the previously generated sections, which should be treated as superseded: (1) the prior text says "the three patents tried and appealed were the '319, '913, and '022" — that is wrong; the '913 and '022 never reached a jury (they were resolved on summary judgment of noninfringement in December 2022 and were part of the appeal), while the three patents actually tried in December 2023 were the '268, '319, and '740. (2) The eight-patent complaint is variously reported as including U.S. 10,076,376 (per Judge Albright's transfer order) and 10,076,367 (per later opinions); the discrepancy appears in the sources and I have not resolved it.

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1. Filing and initial pleadings (2019-11-20 – 2020-07)

2. The IPR wave and the transfer (2020-07)

• 2020-07-02 — Judge Albright grants transfer to E.D. Pa.; case formally transferred in 2020-07-06 and re-docketed as 2:20-cv-03271-MSG. (Order, ECF 50)
• 2020-07-20/21 — Globus files eight IPRs against six of the eight asserted patents, each with a parallel "backup" petition in ranked pairs: IPR2020-01303 & -01304 ('268), -01305 & -01306 ('319), -01307 ('913), -01308 ('022), and -01309 & -01310 (reported as the '740 and '643). All petitions relied on Dr. Jorge A. Ochoa's declaration and were paired with § 325(d) arguments. (Petition, IPR2020-01305)
• Significance: the petitions were filed 18 days after transfer and before any stay motion, i.e., Globus chose to race the PTAB against a new E.D. Pa. schedule rather than seek a stay first.

3. IPR denials — the entire wave fails (2020-12-21 – 2021-02-05)

Globus lost on all eight, with the Board finding Globus had not shown a reasonable likelihood as to any challenged claim. Moskowitz's PTAB counsel (Fish & Richardson, Timothy Riffe) publicly framed the clean sweep as clearing the path for the district court case. (Fish & Richardson, 2021-03-02)

Effect on the litigation: decisive and adverse to Globus. Every asserted patent emerged from the PTAB with its claims intact, no estoppel ever attached under § 315(e), no stay was granted (the denials came within ~6 months, before any stay could mature — I did not locate a docketed stay motion, and the rapid denials mooted the question), and Moskowitz's bargaining position hardened. The '319 claims that the Board declined to review are the same claim 1 that later went to the jury.

4. Pleadings amended; discovery (2021-04 – 2022)

• 2021-04-14 — Moskowitz files its First Amended Complaint, adding direct infringement, inducement, contributory infringement, and willfulness theories. (Recited in the Markman opinion.)
• 2021-04-20 — Patent Owner's preliminary response in the IPR track cites the district court's June 17, 2020 opening claim construction brief (IPR2020-01306, Ex. 2001) — the two tracks ran in parallel on the same constructions.
• 2022-04-04 — Globus's infringement expert Michael Sherman serves his report opining that "cooperating" in '319 claim 1 requires actuation of the gripper by the handle — the seed of the eventual verdict. (JMOL Opinion at 5)
• Damages discovery fight: Moskowitz obtained five Globus spinal-implant license/settlement agreements (including the Bonutti/Globus settlement license) and Globus moved to exclude Moskowitz's damages expert Paul Meyer for relying on them; the court denied the motion, and the case went to trial with Moskowitz seeking more than $86 million. (Damages/Daubert opinion; Susman Godfrey)

5. Markman (2021-05-13 – 2021-08-25)

• 2021-05-13 — Opening claim construction briefs on ten disputed terms across seven patents.
• 2021-07-27 — Markman hearing before Chief Judge Goldberg in E.D. Pa.
• 2021-08-25 — Markman opinion, 2021 WL 3784243. The dispositive construction: "universal" = "an intervertebral bone fusion spacer designed to be inserted between [vertebrae/vertebral bodies] in any region of the spine, i.e., cervical, thoracic, or lumbar, using any approach, e.g., posterior, anterior, or lateral." The court also construed "intervertebral/disc space," "gripper having a plurality of prongs," "counterbore," "curvilinear nail screw," and the "means-plus-function" terms.
• Moskowitz's motion for clarification of the "universal" construction was denied, and Moskowitz then dropped claim 15 of the '913 (which recites "universal" in the body)

I'll research the counsel of record for this IPR. Note the framing: in IPR2020-01305 the "plaintiff-side" party is the petitioner, Globus Medical, Inc.; the patent owner Moskowitz Family LLC is the respondent/defendant-side. I'll identify both, with emphasis on petitioner's counsel.

Threshold point on "plaintiff"

Because this proceeding is an IPR, not a district-court suit, the plaintiff-side party is the petitioner, Globus Medical, Inc., and the respondent is the patent owner, Moskowitz Family LLC (which is the plaintiff in the parallel E.D. Pa. action, No. 2:20-cv-03271). I list counsel of record for both sides below, with the petitioner's team first.

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1. Petitioner Globus Medical, Inc. — counsel of record (the "plaintiff side")

Designated in Globus's Power of Attorney and Mandatory Notices filed with the petition on July 21, 2020 (37 C.F.R. § 42.8(b)(3)–(4)):

Sourcing: Globus's Power of Attorney filed in the companion Globus petition, IPR2020-01307 Power of Attorney (July 21, 2020), which uses the identical § 42.8(b)(3) designation as the § 42.8 notices reproduced from the Globus petition papers, PTAB petition file (Moustakas/Utykanski designation); accord the same designation in the other Globus–Moskowitz petitions filed the same day (IPR2020-01305-family petition papers). Confirming the lead-counsel designation specifically for the '319 petitions: Harness Dickey notice in the '319 family.

Notable: No in-house Globus attorney is listed on the § 42.8 notices for this IPR — the power of attorney runs only to the two Harness Dickey attorneys. And, importantly, Globus's district-court trial team did not appear on the PTAB papers: Globus was represented in the E.D. Pa. infringement case by Susman Godfrey LLP (Arun Subramanian, John P. Lahad, Jacob W. Buchdahl, Jeffrey S. Cianciulli, Lora J. Krsulich, Joseph L. Gordon) with a Philadelphia local sponsor, and by Harness Dickey's Moustakas/Utykanski before the Board. That IPR/litigation split is a useful data point for your case-theory section, since it shows Globus ran the PTAB track through its patent prosecution boutique while defending the infringement case with trial counsel. (E.D. Pa. docket aggregation, 2:20-cv-03271; Fed. Cir. Nos. 24-1696/24-1753, arguing counsel John Pierre Lahad for Globus)

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2. Patent Owner Moskowitz Family LLC — counsel of record (respondent; plaintiff in the district court case)

Designated in Moskowitz's Mandatory Notices filed August 10, 2020 (Paper 3 in this proceeding):

Sourcing: Patent Owner's Mandatory Notices, IPR2020-01305 (Aug. 10, 2020) (all five attorneys at the same Minneapolis address, with Fish & Richardson "fr.com" service addresses and the firm's standard PTABInbound@fr.com backup service mailbox).

Notes:

• The same Fish & Richardson team carried Moskowitz's side in the E.D. Pa. litigation — Cordell, Colaianni, Livedalen, Mukerji, McGravey and others appear as Moskowitz's district-court counsel — so the PTAB and district-court campaigns were staffed from one firm, unlike Globus's split. (E.D. Pa. counsel aggregation)
• On appeal, Moskowitz was argued by Lauren Ann Degnan (Moskowitz Family LLC) against Globus's John Pierre Lahad. I have not been able to confirm Degnan's firm affiliation from a primary source in this session, so I am not attributing her to a firm.

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3. Limits and caveats

• The IPR record is thin. The proceeding terminated at the institution stage (Paper 7, Jan. 8, 2021, denying review under § 314), so there are only a handful of papers: petition, patent owner's mandatory notices, a notice regarding the parallel second petition (IPR2020-01306), the patent owner's preliminary response, and the decision. There is no deposition, no oral hearing, and no counsel substitution reflected in the papers I located — so the two designations above are the complete set of counsel of record.
• No local counsel exists at the PTAB; the "local counsel" category in your template does not apply here (it would apply only in the E.D. Pa. case, where a Philadelphia-based sponsor appeared for Globus).
• Bios are lightly sourced. I confirmed registration numbers, addresses, and firm affiliations directly from the PTAB filings, but I was cut off before pulling firm-website biographies for Utykanski, Riffe, Colaianni, Mukerji, Livedalen, and In. Treat the experiential descriptions as provisional and do not publish firm-specific claims about those five without verification.
• One flag for the earlier sections: the January 8, 2021 decision PDF used as the lead citation in the case overview is hosted on a Banner Witcoff website. That is a mirror/hosting artifact of Banner Witcoff's PTAB decision tracking — there is no indication in the papers that Banner Witcoff was counsel of record for either party in IPR2020-01305. The actual counsel of record are Harness Dickey (Globus) and Fish & Richardson (Moskowitz).

I'll research the counsel of record for the patent owner in this IPR, and cross-check the parallel litigation representation.

The Mandatory Notices give me the core list. Let me verify the docket, check for any later changes of counsel, and pull firm bios.

Bottom line

The "defendant" side in an IPR is the patent owner, and in IPR2020‑01305 that is Moskowitz Family LLC. Its entire PTAB team came from one firm — Fish & Richardson P.C. — designated in the Patent Owner's Mandatory Notices filed August 10, 2020 (the document appears on the docket as Patent Owner's Mandatory Notices; the Board cites it as Paper 4 in the companion '319 docket). Five registered practitioners were designated: one lead, four back‑up. No local counsel, no in‑house counsel, and no substitution or withdrawal of counsel appears on the record — the proceeding was denied institution on January 8, 2021, roughly two months after the Preliminary Response, so the Aug. 2020 designation is the complete counsel roster for this case. (Mandatory Notices, Aug. 10, 2020; Paper 7, Jan. 8, 2021)

Counsel of record for Patent Owner Moskowitz Family LLC

Service was directed to all counsel at IPR43982-0006IP1@fr.com and PTABInbound@fr.com, fax 877‑769‑7945, under Fish customer number 26191. Note a small geographic wrinkle worth flagging: the address of record is Fish's Minneapolis office, but the telephone numbers listed for every attorney are 202 (Washington, D.C.) lines, and Riffe signs correspondence with a 202 direct dial — i.e., the PTAB team is functionally D.C.–based even though the caption address is Minneapolis. Neither fact is disputed on the docket; I simply note the inconsistency because it will matter if you are trying to identify the correct office for service or conflicts purposes.

Individual notes

• Timothy W. Riffe (lead). Principal at Fish & Richardson; practice focused on district court and ITC patent litigation plus PTAB post‑grant work. Fish's own and third‑party profiles state he has appeared in approximately 150 PTAB proceedings for both petitioners and patent owners, and IAM Patent 1000 lists him among leading U.S. practitioners in the post-grant proceedings category for both the 2025 and 2026 editions. (Fish bio PDF; BTI profile; IAM/Fish announcement) His reported litigation docket includes Mitel v. Facebook, VirnetX v. Mitel, Hagenbuch v. Komatsu, Innovative Global Systems v. Komatsu, Microsoft v. Primax, and several ITC § 337 investigations. For this case, he was the signatory on the mandatory notices and the attorney of record through the institution decision.
• Joseph V. Colaianni. Registered since 1998 (Reg. No. 39,948); back‑up on the PTAB papers. He is the one member of the team with clearly documented parallel-case continuity: he appears among Moskowitz's counsel in the underlying E.D. Pa. case, Moskowitz Family LLC v. Globus Medical, Inc., No. 2:20‑cv‑03271, and filed the entry of appearance for Moskowitz as appellant in the Federal Circuit appeal, No. 2024‑1696. (UniCourt docket summary, E.D. Pa. 2:20‑cv‑03271; UniCourt Fed. Cir. 24‑1696 summary) Caveat: the office/firm attribution for him comes from those third‑party aggregators plus the PTAB notices; I did not independently pull a current firm bio page.
• Indranil Mukerji. Reg. No. 46,944; also listed among Moskowitz's counsel in the E.D. Pa. litigation per the same docket aggregator. I could not verify a current Fish bio page or additional case history for him in this session — treat his résumé line as unconfirmed beyond the docket appearances.
• Brian J. Livedalen. Reg. No. 67,450; likewise appears in the E.D. Pa. docket and on the Federal Circuit appearance list for Moskowitz as appellant in No. 2024‑1696. No independent bio verification obtained here.
• Hyun Jin In. Reg. No. 70,014; designated back‑up in the PTAB notices only. I found no independent corroboration of her/his role or practice history beyond the notices themselves — the least-documented name on the list, and worth confirming on PTAB E2E/P‑TACTS if you need it for a conflicts check.

What is not on the record

• No local counsel and no in‑house counsel. PTAB practice does not require a local‑counsel admission, and none was designated. Moskowitz Family LLC is inventor‑owned; Dr. Nathan C. Moskowitz does not appear as counsel of record in this IPR (he appears as inventor/principal, not as a registered practitioner in the filings I reviewed).
• No sealed filings or unappeared parties. The docket is short and entirely public: Petition (July 2020), Patent Owner's Mandatory Notices (Aug. 10, 2020), Preliminary Response (Paper 6, filed before the January decision), and the 31‑page denial (Paper 7). The Board's decision expressly notes that "Patent Owner filed a Preliminary Response (Paper 6)" and identifies Moskowitz as the sole real party‑in‑interest. (Paper 7 at 1–2)
• No counsel changeover before termination. Because institution was denied, there was no motion for admission pro hac vice, no counsel withdrawal, and no oral argument appearance to report.

Cross-check against the parallel litigation (useful, but not this docket)

Because the same '319 patent was litigated in Moskowitz v. Globus (transferred to the E.D. Pa. as No. 2:20‑cv‑03271), the district‑court roster is broader than the PTAB roster. Third‑party aggregators list Moskowitz's E.D. Pa. attorneys as including the Fish team above plus Ruffin B. Cordell, Michael J. Ballanco, David M. Hoffman, Laura C. Whitworth, Jack R. Wilson IV, Jason M. Zucchi, Warren Mabey, Jr., and Daniel J. McGravey, while Globus was represented by, among others, Arun Subramanian, Richard L. Jolly, Mark H. Hatch‑Miller, John P. Lahad, Jacob W. Buchdahl, Gaetan Alfano, Jeffrey S. Cianciulli, Lora J. Krsulich, and Joseph L. Gordon. (UniCourt, E.D. Pa. 2:20‑cv‑03271; Fed. Cir. 24‑1696) Caveat: those attributions come from docket aggregators, not from PACER docket sheets I pulled directly, and they post‑date the IPR; I would not attribute any of those additional names to the IPR record without verifying the PACER appearances. On the Federal Circuit appeal, the court's own docket entries confirm the entry of appearance by Colaianni, Livedalen, Ballanco, and Wilson for Moskowitz as appellant, and by Hatch‑Miller, Lahad, and Alicia Lai for Globus as cross‑appellant — which corroborates Colaianni's and Livedalen's continuity across the family of cases.

Sourcing confidence

High confidence (primary PTAB documents): the five‑attorney Fish & Richardson roster, the lead/back‑up designations, registration numbers, address, and service emails. Medium confidence: the individual practice descriptions for Riffe (Fish/BTI/IAM sources) and the parallel‑case appearances for Colaianni and Livedalen (court/aggregator sources). Low confidence / unverified: substantive practice histories for Mukerji, In, and to a lesser extent Colaianni's and Livedalen's current office locations — I did not retrieve firm bio pages for them, and I have not invented any prior‑case credits for those three.