Bonutti Skeletal Innovations LLC v. Zimmer Holdings Inc. et al
Filing
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MEMORANDUM AND ORDER GRANTING (42 in 1:12-cv-01109-GMS) Joint MOTION to Stay Litigation Pending Inter Partes Review filed by ConforMIS Inc., (35 in 1:12-cv-01107-GMS) MOTION to Stay Litigation Pending Inter Partes Review fil ed by Wright Medical Technology Inc., Zimmer Holdings Inc., Zimmer Inc., Wright Medical Group Inc., ConforMIS Inc., (33 in 1:12-cv-01110-GMS) MOTION to Stay Litigation Pending Inter Partes Review filed by Wright Medical Techno logy Inc., Wright Medical Group Inc. The parties shall submit a status report to the court no later than six months from now and every six months thereafter and promptly notify the court when the stay should be lifted. All pending motions in Civi l Action Nos. 12-1107, 12-1109, and 12-1110 are DENIED without prejudice and, where appropriate, the parties are granted leave to renew these motions upon the lifting of the stay. Signed by Chief Judge Gregory M. Sleet on 4/7/14. Associated Cases: 1:12-cv-01107-GMS, 1:12-cv-01109-GMS, 1:12-cv-01110-GMS(mmm)
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
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BONUTTI SKELETAL INNOVATIONS, L.L.C., )
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Plaintiff,
)
)
v.
)
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ZIMMER HOLDINGS, INC. and ZIMMER, INC., )
)
)
Defendants.
C.A. No. 12-cv-1107 (GMS)
______________________________)
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BONUTTI SKELETAL INNOVATIONS, L.L.C., )
)
)
Plaintiff,
)
)
v.
)
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CONFORMIS, INC.,
)
)
Defendant.
C.A. No. 12-cv-1109 (GMS)
______________________________)
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BONUTTI SKELETAL INNOVATIONS, L.L.C., )
)
Plaintiff,
)
)
)
v.
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WRIGHT MEDICAL GROUP, INC. and
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WRIGHT MEDICAL TECHNOLOGY, INC.,
)
)
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Defendants.
______________________________ )
C.A. No. 12-cv-1110 (GMS)
MEMORANDUM
I.
INTRODUCTION
On September 10, 2012, the plaintiff, Bonutti Skeletal Innovations LLC ("Bonutti"), filed
suit against Zimmer, Inc. and Zimmer Holdings, Inc. (collectively "Zimmer"), (D.I. 1, D.l. 10 in
12-1107), ConforMIS, Inc. ("ConforMIS"), (D.I. 1, D.I. 46 in 12-1109), Wright Medical Group,
Inc. and Wright Medical Technology, Inc. (collectively "Wright"), (D.I. 1, D.I. 7 in 12-1110), and
Smith & Nephew, Inc. ("Smith"), (D.I. 1, D.I. 9 in 12-1111). 1 The court will henceforth refer to
Zimmer, ConforMIS, Wright, and Smith as "the Defendants". In each of its complaints, Bonutti
alleged that the Defendants had infringed from one to all of six related patents directed to knee
implants. !d. The six patents are U.S. Patent Nos. 6,702,821 ('"821 patent"); 7,806,896 ("'896
patent"); 8,133,229 ('"3229 patent"); 7,837,736 ("'736 patent"); 7,959,635 ("'635 patent"); and
7,749,229 ("'9229 patent"). Bonutti asserts all six patents against Zimmer, the '896 patent against
ConforMIS, and the '821, '896, and '3229 patents against Wright. (D.I. 36 at 4.) 2
Currently, four out of six of the patents are the subjects of inter partes review ("IPR")
petitions before the U.S. Patent and Trademark Office ("PTO"). Two of the IPR petitions have
been granted and the rest are pending. In particular, the '896 patent is the subject of three separate
IPR petitions filed by Smith, Zimmer, and Wright. (D.I. 36 at 6-7.) Smith filed a petition on
independent claims I and 13, Zimmer filed a petition on independent claim 40, and Wright filed a
petition on independent claims 1, 13, 25, and 40. (D.I. 36 at 7; D.L 29
at~
6 in 12-1111.) The
parties also filed petitions regarding some dependent claims of the ' 896 patent. On February 28,
Although Bonutti filed the complaints in September 2012, it did not serve the complaints on any of the
Defendants until January 4, 2013. (D.l. 5 in 12-1107, 12-1109, 12-1110, and 12-1111.)
Bonutti initially asserted the '821, '896, '3229, and '9229 patents ag1inst Smith. On January 3, 2014,
however, Bonutti and Smith stipulated to a dismissal without prejudice of Bonu11i's claims against Smith. (D.I. 51
and 52 in 12-1111.)
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2014, the PTO granted Smith's petition for review of claim 1 of the '896 patent and denied Smith's
petition for review of claim 13. (D.I. 42 at 1 and D.I. 43 at 1 in 12-1107.) The '736 patent is the
subject of an IPR petition that Zimmer filed regarding independent claims 15 and 31, as well as
certain dependent claims. (D.I. 36 at 7.) The '635 patent is the subject of an IPR petition filed by
Zimmer regarding independent claims 1 and 30, as well as some of its dependent claims. (!d.)
The '9229 patent was the subject of an IPR petition filed by Smith regarding independent claim
23. (D.I. 29
at~
6 in 12-1111.) On February 26, 2014, the PTO granted Smith's IPR petition as
to claim 23 of the '9229 patent. (D.I. 42 at 1 and D.I. 43 at 2 in 12-l1 07.)
Presently before the court is the Defendants' Joint Motion to Stay Litigation Pending Inter
Partes Review ("Motion to Stay"). (D.I. 35 in 12-1107; D.I. 42 in 12-1109; and D.I. 33 in 12-
1110. 3) For the reasons that follow, the court will grant the Defendants' Motion to Stay
II.
BACKGROUND
Bonutti is the owner, through assignment of the six patents-in-suit: the '821 patent, titled
"Instrumentation for Minimally Invasive Joint Replacement and Methods for Using the Same";
the '896 patent, titled "Knee Arthroplasty Method"; the '3229 patent, titled "Knee Arthroplasty
Method"; the '736 patent, titled "Minimally Invasive Surgical Systems and Methods"; the '635
patent, titled "Limited Incision Total Joint Replacement Methods"; and the '9229 patent, titled
"Knee Arthroplasty Method". (D.I. 10 at 2-3.) The patents are directed to, among other things,
specialized procedures, instruments, implants, and systems for performing minimally invasive
knee surgery. (D.I. 1 and D.I. 10 in 12-1107; D.I. 1 and D.I. 46 in 12-1109; D.I. 1 and D.I. 7 in
For ease of reference, the court will henceforth cite to the copies of the Defendants' Motion to Stay, Bonutti's
Opposition, the Defendants' Reply, and associated declarations that have been filed in 12-1107, except where
unavailable in 12-1107. Thus, where the case number is not specified in a citation, the docket index number refers to
12-1107.
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12-1110; D.I. 1 and D.l. 9 in 12-1111.) Bonutti alleges that each ofthe Defendants designs, offers
for sale, and distributes, among other actions taken, knee implants and surgical instruments used
in knee surgery in a way that infringes from one to all of the six patents. (Id.)
III.
LEGAL STANDARD
As part of the court's "inherent power to conserve judicial resources by controlling its own
docket", the court may exercise its discretion to stay a pending litigation. Cost Bros., Inc. v.
Travelers Indem. Co., 760 F.2d 58, 60 (3d Cir. 1985). It is well established that the court's
authority to stay litigation extends to patent cases in which the PTO has been asked to conduct a
reexamination of a patent. Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1426-27 (Fed. Cir. 1988)
("Courts have inherent power to manage their dockets and stay proceedings, including the
authority to order a stay pending conclusion of a PTO reexamination.").
To determine whether staying a case is appropriate, the court balances the following three
factors: "(1) whether a stay would unduly prejudice or present a clear tactical disadvantage to the
non-moving party; (2) whether a stay will simplify the issues in question and trial of the case; and
(3) whether discovery is complete and [a] trial date has been set." Bayer Intellectual Prop. GmbH
v. Warner Chilcott Co., No. 12-1032-GMS, 2013 U.S. Dist. LEXIS 172735, at *3-4 (D. Del. Dec.
9, 2013) (quoting First Am. Title Ins. Co. v. MacLaren LLC, No. 10-363-GMS, 2012 U.S. Dist.
LEXIS 31508, at *4 (D. Del. Mar. 9, 2012)).
IV.
DISCUSSION
A. Undue Prejudice
Staying a case pending inter partes review can result in some prejudice to the plaintiff by
virtue of prolonging the dispute. See Textron Innovations, Inc. v. Taro Co., No. 05-486-GMS,
2007 WL 7772169, at *2 (D. Del. Apr. 25, 2007). Potential delay does not in itself establish undue
prejudice to the non-movant, however. See, e.g., BodyMedia, Inc. v. Basis Sci., Inc., No. 12-CV4
133 (GMS), 2013 U.S. Dist. LEXIS 82830, at * 4 (D. Del. Jun. 6, 2013) ("With regard to the
'undue prejudice' consideration, the court notes that the potential for litigation delay is not, by
itself, dispositive and does not demonstrate that a party will be unduly prejudiced.") In order to
best gauge whether granting a stay would cause the non-movant undue prejudice or place it at a
tactical disadvantage, the court weighs a variety of subfactors. These include "the timing of the
request for reexamination, the timing of the request for stay, the status of the reexamination
proceedings, and the relationship of the parties." Boston Scientific Corp. v. Cordis Corp., 777 F.
Supp. 2d 783, 789 (D. Del. 2011).
1. Timing of the Request for Inter Partes Review andl for Stay
In a patent infringement action, the defendant must file an IPR petition relating to any
underlying patent no later than one year after the date on which the complaint is served. See 35
U.S.C. § 315(b). The more diligent a defendant is in seeking inter partes review, the less likely it
is that the non-movant will be prejudiced by a stay or that the court will find the defendant's filing
of the IPR petition to be a dilatory tactic. See, e.g., TruePosition, Inc. v. Polaris Wireless, Inc.,
No. 12-646-RGA/MPT, 2013 U.S. Dist. LEXIS 150764, at *18 (D. Del. Oct. 21, 2013), adopted
by No. 12-646-RGA, 2013 U.S. Dist. LEXIS 160996 (D. Del. Nov. 12, 2013).
Bonutti argues that the Defendants' IPR petitions are dilatory tactics because the
Defendants filed the IPR petitions "almost a year after service of the complaints, months after the
Court's Rule 16 scheduling conference, and immediately prior to the statutory deadline for filing
an IPR petition." (D.I. 39 at 2.) Bonutti also argues that "the IPR petitions filed by Zimmer and
Wright are nominal in that they cover an extremely small percentage of the claims in the patents
asserted against each party". (Id. at 10.) The Defendants deny any dilatory motive, however, and
point out that a schedule has not been set in any of these cases and discovery has yet to commence.
(D.I. 36 at 18-19.) The Defendants also argue that Bonutti's refusal to specify which of the claims
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in the "multiple patents with large numbers of claims" contributed to the length of time that elapsed
before they filed their IPR petitions. (D.I. 40 at 6-7.)
The court concludes that the Defendants are correct. In the instant cases, each of the
Defendants' IPR petitions were timely filed between eight months to exactly a year after Bonutti
served its complaints on the Defendants. 4 The last of the petitions were filed by January 2014.
(See D.I. 35, Exs. M, N, 0, and Pin 12-1110; D.I. 29, Exs. D and Fin 12-1111.) Bonutti does not
deny that, as the Defendants contend and the record shows, all of the petitions were filed before
the court had set a schedule and before discovery had commenced, and that the teleconferences to
date have mostly focused on whether the court should stay these
ca~:es.
(D.I. 36 at 18-19; D.I. 39
at 10.) Because the IPR petitions were filed before any significant occurrences and proceedings
in the instant cases, the court rules that the petitions were filed in a timely fashion. Compare Ever
Win Int'l Corp. v. Radioshack Corp., 902 F. Supp. 2d 503,508-09 (D. Del. 2012) (concluding that
the defendant's IPR petition was timely filed because "although Defendant did not make its request
for reexamination (and its follow-on request for a stay) immediately after it was served ... [i]ts
requests were filed at a time when little substantive activity had yet occurred) and BodyMedia,
2013 U.S. Dist. LEXIS at *9 (concluding that "the timing of the reexamination and stay requests
do not evidence any dilatory motive" because they were filed "before a Scheduling Order was
entered and any discovery was conducted") with TruePosition, 2013 U.S. Dist. LEXIS 150764 at
Bonutti served the complaint on both Zimmer and Smith on January 4, 2013. (D.I. 1 in 12-1107 and 121111.) Consistent with the statutory deadline, Zimmer filed each of its IPR petitions by January 4, 2014. (See D.l.
35, Ex. Min 12-1110 (indicating that Zimmer filed its IPR regarding the '736 patent on November 22, 2013); Ex. N
(indicating that Zimmer filed its IPR regarding the '635 patent on December 31, 2013); Ex. 0 (indicating that Zimmer
filed its IPR regarding the '896 patent on January 3, 2014).) Smith, too, filed each of its IPR petitions by January 4,
2014. (See D.l. 29, Ex. D in 12-1111 (indicating that Smith filed its IPR petition regarding the '9229 patent on
September 25, 2013); Ex. F (indicating that Smith filed its IPR petition regarding the '896 patent on September 26,
2013).) The '896 patent that was the subject of Wright's 1PR petition was asserted against Wright in a first amended
complaint that Bonutti served upon Wright on January 15,2013. Consistent with the statutory deadline, Wright filed
its lPR petition on January 15,2014. (See D.l. 35, Ex. Pin 12-1110.)
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* 18 (concluding that that the defendant's filing its IPR petition close to the end of the statutory
deadline suggested a dilatory motive where it was "close to the eve of claim construction briefing,
and after substantial document discovery was conducted.").
Bonutti's own contribution to the timing of the Defendants' IPR petitions also leads the
court to conclude that the Defendants' petitions and stay requests were timely filed. Despite the
Defendants' requests for specificity, Bonutti did not clearly state bef
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