Orthophoenix LLC v. Dfine Inc. et al

Filing 45

MEMORANDUM ORDER re (56 in 1:13-cv-01628-LPS) MOTION to Stay with Regard to Four Patents Pending Inter Partes Review filed by Stryker Corporation is GRANTED; (41 in 1:13-cv-01628-LPS) MOTION to Bifurcate and Stay Antitrust Counterclaim f iled by Orthophoenix LLC is GRANTED; the Court will appoint a special master to resolve all discovery disputes; the rulings of the Court regarding the scheduling order shall be incorporated into a revised proposed scheduling order due by 5/4/15. Signed by Judge Leonard P. Stark on 4/28/15. Associated Cases: 1:13-cv-01003-LPS, 1:13-cv-01004-LPS, 1:13-cv-01007-LPS, 1:13-cv-01008-LPS, 1:13-cv-01628-LPS (ntl)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE

ORTHOPHOENIX, LLC,
Plaintiff,
v.

DFINE, INC., JOHN AND/OR
JANE DOES 1-100,
Defendants.

ORTHOPHOENIX, LLC,
Plaintiff,

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Civil Action No. 13-1003-LPS

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Civil Action No. 13-1004-LPS
Civil Action No. 13-1008-LPS

OSSEON THERAPEUTICS INC., ET AL., )
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Defendants.
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ORTHOPHOENIX, LLC,
Plaintiff,
V.

WRIGHT MEDICAL
TECHNOLOGY INC., ET AL.,
Defendants.

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Civil Action No. 13-1007-LPS

ORTHOPHOENIX, LLC,
Plaintiff,

v.
STRYKER CORPORATION, ET AL.,
v.

ORTHOPHOENIX LLC,
IP NAVIGATI ON GROUP, LLC,
MEDTRONIC, INC.
Defendants.

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Civil Action No. 13-1628-LPS

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MEMORANDUM ORDER
At Wilmington this 28th day of April, 2015:
Having conducted teleconferences with the parties in these various related matters on
October 14, 2014 and again on April 27, 2015; and
Having reviewed all pertinent filings, including the pending motions, briefing, status
reports, and proposed scheduling orders;

IT IS HEREBY ORDERED that:
1.

The motion to bifurcate and stay the antitrust counterclaim (C.A. No. 13-1628 D.I.

41) filed by Stryker Corporation ("Stryker") against Plaintiff and counterclaim defendant
Orthophoenix LLC ("Orthophoenix") and against counterclaim defendants IP Navigation Group,
LLC ("IPNav") and Medtronic, Inc. ("Medtronic"), is GRANTED. All discovery and
proceedings that relate solely to the antitrust counterclaim are STAYED. Discovery relating to
the validity (or infringement) of the patents-in-suit is not stayed.

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These related cases are already large and complex and the Court concludes that the best
exercise of its discretion is to focus the parties on litigating the 15 patents-in-suit (although
proceedings with respect to four of the patents will be stayed, as noted below), and the multiple
accused products sold by the various defendant groups. Stryker's antitrust counterclaim raises
complex issues potentially requiring discovery well beyond what is relevant to patent
infringement and invalidity. While there may be considerable overlap between the antitrust and
patent issues, there will also likely be substantial and expensive discovery that is related solely to
antitrust issues, and which may prove to be largely or entirely unnecessary after resolution of the
patent issues. There is also a likelihood that, absent a stay, a trial of patent infringement, patent
validity, and antitrust issues before the same jury may lead to jury confusion. Overall, the
circumstances do not warrant departure from the Federal Circuit's general guidance that antitrust
issues should typically be bifurcated in patent cases. See In re Innotron Diagnostics, 800 F.2d
1077, 1084-85 (Fed. Cir. 1986); see also Masimo Corp. v. Philips Electronics North Am. Corp.,

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742 F. Supp.2d 492, 496 (D. Del. 2010) ("Bifurcation of patent and antitrust claims is not
mandatory, but it is common.").
2.

By separate order, the Court will APPOINT a special master to handle all

discovery disputes. The special master will resolve all discovery disputes that may arise,
including any disputes as to whether particular discovery sought is related solely to antitrust
issues, in which case such discovery shall not be permitted during the pendency of the stay, or
relates at least in part to patent infringement and/or invalidity, in which case such discovery may
be permitted notwithstanding the stay.
3.

Stryker's motion to stay with regard to four patents pending inter partes review

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(D.I. 56), which is not opposed by Orthophoenix (D.I. 70), 1 is GRANTED.
4.

With respect to scheduling, the parties are directed to SUBMIT a revised

proposed scheduling order, no later than May 4, 2015, which shall incorporate the following
rulings, as well as any other dates and/or provisions to which the parties all agree:
a.

the parties shall make their initial disclosures pursuant to F.R.C.P. 26(a)(l)
no later than thirty (30) days after the date the scheduling order is entered

(see C.A. No. 13-1628 D.I. 84 if 2);
b.

the fact discovery cut off shall be April 22, 2016, as proposed by
Defendants (see id.

if 5.a), and as is reasonable and appropriate under the

circumstances, which have changed since the Court last considered this
issue in the context of these cases more than six months ago;
c.

document production shall be substantially completed by February 22,
2016 (see id.

d.

if 5.c);

the total number of hours for depositions, including minimum and
maximum per party, and "additional deposition issues" (see id.

if 5.e.i.(a)-

(b) & 5.e.ii), shall be as "Defendants" propose, which are reasonable and
appropriate provisions given the size and complexity of these cases;2

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It appears that Medtronic opposes Stryker's motion, since Stryker's preference is to
proceed on its antitrust counterclaims with respect to the four patents while staying only the
patent infringement/validity proceedings with respect to those same four patents. (See D.I. 75;
but see D.I. 69) Medtronic's position is largely irrelevant at this point given that the Court is
staying proceedings on Stryker's antitrust counterclaims (see above).
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The further proposal of Defendants Wright and Dfine regarding limiting the number of
Rule 30(b )( 6) notices is REJECTED as unnecessary.
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e.

expert reports shall be due on June 22, 2016, August 10, 2016, and August
31, 2016, with expert discovery closing on October 31, 2016, reflecting the
essentially agreed-upon lengths of time required for each of these events
and the Court's adoption of Defendants' proposed cut off for fact
discovery (see id.

f.

if 5.f.i);

paragraph 5.g, regarding "Discovery Matters," is REJECTED, as all
discovery disputes will be referred to a special master and should be
brought to the attention of the special master through whatever procedures
he or she adopts;

g.

Plaintiffs proposal regarding its 4(a) disclosures is ADOPTED (see id.

if 6.a) and any deficiencies Defendants believe are contained in Plaintiff's
disclosures should be treated as a discovery dispute, and brought to the
attention of the special master;
h.

Plaintiffs proposal for Defendants to produce their initial invalidity
contentions (see id.

if 6.d) is ADOPTED, as it is reasonable and as the

Court is not adopting Defendants' proposals regarding "Patent Group A;"
i.

Defendants shall provide final invalidity contentions no later than March
31, 2016 (see id.

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if 6.f);

Defendants' proposal regarding supplementation (see id.

if 7) is

ADOPTED;
k.

the claim construction process shall proceed as follows (see id.
( 1)

iril 14-16):

Defendants' proposed dates for claim construction issue

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identification and briefing are ADOPTED, with the

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exception that the Court will NOT at this time schedule a

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status teleconference;
(2)

the claim construction hearing will be held on Thursday,
December 3, 2015 beginning at 10:00 a.m. - each side will
be allocated a maximum of three (3) hours for its
presentation;

(3)

while the parties must include in the joint claim
construction chart all claim terms that they believe to be
material and disputed in all of the patents-in-suit, the claim
construction process set forth in the scheduling order will

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be limited as follows:
the Court will construe a maximum of 22

(i)

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disputed terms (i.e., two per patent-in-suit,

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although the parties need not present two

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disputes for each patent-in-suit and may
present more than two disputes per patent-

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in-suit, provided that the maximum number
of disputes altogether is 22);
(ii)

each side may file opening and answering
claim construction briefs of up to thirty (30)
pages (so the maximum total of pages of
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claim construction briefing the Court will
receive will be 120); and
(iii)

in the event the parties cannot agree on the
22 terms that should be construed in
connection with the process described here,
their dispute shall be treated as a discovery
matter and shall be brought to the attention
of the special master for resolution;

(4)

the parties' competing proposals for categorizing the
various patents-in-suit (i.e., Group 1, Group 2, Group 3 or
Group A, Group B, Group C) are REJECTED;

1.

the case dispositive motion date to be included in paragraph 17 is
November 30, 2016;

m.

the page limits set out in paragraph 17 shall apply to each SIDE, as
proposed by Plaintiff - should any party believe it requires
additional pages for briefing, it shall in advance of filing its case
dispositive and Daubert motion(s) file a motion for leave to exceed
these page limits by a specific, reasonable number of pages, and
explain the necessity for such an extension;

n.

the Court will hear oral argument on any case dispositive and/or
Daubert motions on February 28, 2017 beginning at 9:00 a.m., and
at that hearing also consider any specific proposals the parties will
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have by then made for the sequence of trials (see id.
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ii 18);

the pretrial conference will be held on June 2, 2017 beginning at
9:00 a.m., and the proposed pretrial order shall be filed no later
than May 15, 2017; and

p.

each trial in these matters will be scheduled for separate 5-10 day
jury trials with the first trial beginning on June 12, 2017 (see id.

ii 24).

HON. L ONARD P. STARK
UNITED STATES DISTRICT COURT

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