Biomet Inc v. Bonutti Skeletal Innovations LLC

Filing 173

OPINION AND ORDER GRANTING 108 Bonutti Skeletal's Motion to Dismiss with prejudice count of infringement of US Patent No. 7,806,897; DENYING 112 Motion for Attorney Fees. Signed by Judge Joseph S Van Bokkelen on 7/30/15. (mlc)

UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF INDIANA
HAMMOND DIVISION
BIOMET, INC.,
Plaintiff,
v.
BONUTTI SKELETAL INNOVATIONS,
LLC,
Defendant.
______________________________________
BONUTTI SKELETAL INNOVATIONS
LLC,
Counterclaim Plaintiff,
v.
BIOMET, INC.
BIOMET SPORTS MEDICINE, LLC, AND
BIOMET MANUFACTURING
CORPORATION,
Counterclaim Defendants.

Case No. 3:13-CV-176 JVB

OPINION AND ORDER
Defendant Bonutti Skeletal moved under Rule 41(a)(2) to dismiss with prejudice its
counterclaim alleging that Plaintiff infringed U.S. Patent No. 7,806,897. Biomet opposed the
motion on the ground that attorney’s fees should be a condition of dismissal and later moved for
attorney’s fees for this claim. For the reasons stated below, the Court grants Bonutti Skeletal’s
Rule 41(a)(2) motion to dismiss with prejudice its count of patent infringement of U.S. Patent
No. 7,806,897 and denies Biomet’s motion for attorneys’ fees as premature. Biomet may move
for attorneys’ fees under this count at the end of the case if it is determined to be the prevailing
party.
While attorney’s fees may be awarded as a condition of a Rule 41(a)(2) dismissal without
prejudice, they may not be awarded as a condition of voluntary dismissal with prejudice. Cauley
v. Wilson, 754 F.2d 769, 772 (7th Cir. 1985). Attorney’s fees may be awarded in a voluntary
dismissal without prejudice to compensate the defendant for unnecessary expense incurred

because of the litigation. Id. The same justification does not apply for a dismissal with prejudice
because the defendant cannot be made to defend against the charge again. Id. Voluntary
dismissal with prejudice has the same effect as if the defendant had won at trial. The Court will
not condition Bonutti Skeletal’s voluntary dismissal with prejudice upon payment of attorney’s
fees.
Additionally, Biomet’s motion for attorney’s fees as the prevailing party is premature.
There can only be one prevailing party per case, even if there are multiple different patents at
issue. SSL Services, LLC v. Citrix Systems, Inc., 769 F.3d 1073, 1086 (Fed. Cir. 2014) (“In a
patent case, Federal Circuit law governs the determination of which party has prevailed.”); Shum
v. Intel Corp., 629 F.3d 1360, 1367 (Fed. Cir. 2010) (“[T]he plain language of Rule 54
unambiguously limits the number of prevailing parties in a given case to one because the
operative term, ‘prevailing party,’ is singular. . . . Rule 54(d) has no special rule or exception for
mixed judgment cases . . . . For the purposes of costs and fees, there can be only one winner.”).
If, at the end of this case Biomet is the prevailing party, it will have its chance to recover all
reasonable attorney’s fees as allowed by statute. The Court grants Defendant’s motion to dismiss
(DE 108) and denies Plaintiff’s motion for attorney’s fees (DE 112).
SO ORDERED on July 30, 2015.

s/ Joseph S. Van Bokkelen
JOSEPH S. VAN BOKKELEN
UNITED STATES DISTRICT JUDGE

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