ConforMIS, Inc. v. Smith & Nephew Inc.

Filing 126

Judge Indira Talwani: ORDER entered. re 91 MOTION to Stay Pending Inter Partes Review filed by Smith & Nephew Inc. For the reasons set forth in the attached Order, The court GRANTS Smith & Nephews request for oral argument. The cler k shall vacate the hearing dates for the Technology Tutorial and Markman Hearing and set a hearing on the Motion to Stay Pending Inter Partes Review 91 on the afternoon of May 3,2017. The case is temporarily STAYED pending this courts decision on the Motion to Stay Pending Inter Partes Review. Case stayed.(MacDonald, Gail)

UNITED STATES DISTRICT COURT
DISTRICT OF MASSACHUSETTS
CONFORMIS, INC.,

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Plaintiff,
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v.
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SMITH & NEWPHEW, INC.,
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Defendant.
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SMITH & NEPHEW, INC., and
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KINAMED, INC.,
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Counterplaintiffs,
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v.
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CONFOMIS, INC.,
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Counterdefendant.
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Civil Action No. 16-cv-10420-IT

ORDER
April 7, 2017
TALWANI, D.J.
Pending before this court is Defendant and Counterplaintiff Smith & Nephew’s Motion to
Stay Pending Inter Partes Review [#91], which Plaintiff and Counterdefendant ConforMIS
opposes. See ConforMIS, Inc.’s Opp’n Mot. Stay Pending Inter Partes Review (“Opp’n Mot.
Stay”) [#95]. At the time of Smith & Nephew’s motion to stay, the Patent Trial and Appeals
Board (“PTAB”) had not yet instituted inter partes review (“IPR”) of any of Smith & Nephew’s
fourteen IPR petitions. Mem. Supp. Mot. Stay Pending Inter Partes Review 4-5 (“Mem. Supp.
Mot. Stay”) [#92].

On March 29, 2017, Smith & Nephew notified the court that the PTAB issued a Decision
on Institution of Inter Partes Review, instituting inter partes review of all claims of the ‘953
patent. Smith & Nephew’s Statement Suppl. Facts Regarding Smith & Nephew’s Mot. Stay
Pending Inter Partes Review Ex. 5, Decision on Inter Partes Review 2 [#123-1]. The parties
have dismissed all claims here relating to the ‘953 patent, see Corrected Stipulation of Dismissal
with Prejudice & Order [#111], but Smith & Nephew argues that a stay would nonetheless
simplify the issues before the court because several of the ‘953 claims overlap with claims of the
patents-in-suit. Mem. Supp. Mot. Stay 9-11 [#92]. ConforMIS counters that the ‘953 patent is
not a patent-in-suit, and in any event, is not a “foundational patent,” as it does not include many
of the limitations set forth in the patents-in-suit. Opp’n Mot. Stay 6-8 [#95]. ConforMIS asserts
further that the prior art on which Smith & Nephew relied in filing its IPR petition was disclosed
to patent examiners during patent prosecution of the remaining patents-in-suit. Id.
Smith & Nephew requested oral argument in its original motion to stay, and continues to
do so in its supplemental filings. See Response ConforMIS’s Statement Suppl. Facts Regarding
Smith & Nephew’s Mot. Stay Pending Inter Partes Review [#109]; Smith & Nephew’s Statement
Suppl. Facts Regarding Smith & Nephew’s Mot. Stay Pending Inter Partes Review [#123]. In
light of the PTAB’s institution of IPR of all claims of the ‘953 patent, the court finds that such
argument may be helpful.
Accordingly, the court GRANTS Smith & Nephew’s request for oral argument. The clerk
shall vacate the hearing dates for the Technology Tutorial and Markman Hearing and set a
hearing on the Motion to Stay Pending Inter Partes Review [#91] on the afternoon of May 3,

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2017. The case is temporarily STAYED pending this court’s decision on the Motion to Stay
Pending Inter Partes Review [#91].
IT IS SO ORDERED.
Date: April 7, 2017

/s/ Indira Talwani
United States District Judge

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