`
`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF CALIFORNIA
`CASE NO. 12-cv-2738-CAB
`WARSAW ORTHOPEDIC, INC.,
`MEDTRONIC SOFAMOR DANEK
`ORDER GRANTING MOTION TO
`USA, INC., MEDTRONIC PUERTO
`STAY AND SETTING SCHEDULE
`RICO OPERATIONS COMPANY,
`and OSTEOTECH, INC.,
`[Doc. No. 141]
`
`Plaintiffs,
`
`vs.
`NUVASIVE, INC.,
`
`Defendant.
`
`Before the Court is a motion to stay brought by Warsaw Orthopedic, Inc.,
`Medtronic Sofamor Danek U.S.A., Inc., Medtronic Puerto Rico Operations Co., and
`Osteotech, Inc. (hereinafter collectively “Warsaw”) with regard to U.S. Patent No.
`8,444,696, asserted by Warsaw, and U.S. Patent Nos. 8,361,156; 8,187,334; 8,000,782;
`8,005,535; 8,016,767; 8,192,356; and D652,922, asserted by NuVasive. [Doc. No.
`141.] NuVasive filed a request for inter partes review (“IPR”) of the Warsaw patent,
`which has been granted. Warsaw filed requests for IPR of the NuVasive patents, which
`are still pending.
`The Court considered the relevant factors in deciding whether a stay of this
`litigation as to these patents is appropriate. See I-Flow Corp v. Apex Medical Techs,
`
`- 1 -
`
`12cv2738
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`
`
`Case 3:12-cv-02738-CAB-MDD Document 159 Filed 01/10/14 PageID.5596 Page 2 of 3
`
`Inc., 2008 WL 2078623, at *1 (S.D. Cal. April 15, 2008). The NuVasive patents are
`all related. The IPR will likely simplify issues for trial. Although discovery has been
`ongoing and the Court issued claim construction rulings on four of the NuVasive
`patents, much remains to be completed including all the expert reports and discovery,
`dispositive motion practice and trial preparation. No trial date has been set. Finally,
`although the delay in proceeding with its case may be somewhat prejudicial to
`NuVasive, it is not unduly prejudicial.
`Having considered the submissions of the parties and the arguments of counsel,
`for the reasons set forth on the record, the request for stay is granted on the following
`conditions:
`1.
`
`2.
`
`3.
`
`The litigation of U.S. Patent No. 8,444,696 is stayed pending the
`completion of the IPR.
`The litigation of U.S. Patent Nos. 8,361,156 and 8,187,334 is stayed until
`February 28, 2014. The parties are directed to provide the Court with a
`joint status report on or before February 28, 2014 regarding the PTO’s
`determination on the request for IPR as to these patents. All deadlines and
`discovery as to these patents are vacated.
`The litigation of U.S. Patent Nos. 8,000,782; 8,005,535; 8,016,767;
`8,192,356; and D652,922 is stayed until May 2, 2014, with the exception
`that the parties are directed to complete all outstanding fact discovery by
`that date. The parties are directed to provide the Court with a joint status
`report on or before May 5, 2014, regarding the PTO’s determination on
`the requests for IPR as to these patents. If all the asserted claims are
`subject to review, the stay will continue until the completion of the IPRs.
`NuVasive may request the stay be lifted if any asserted claims are not
`subject to review and NuVasive seeks to proceed on those claims.
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`- 2 -
`
`12cv2738
`
`
`
`Case 3:12-cv-02738-CAB-MDD Document 159 Filed 01/10/14 PageID.5597 Page 3 of 3
`
`4.
`
`The litigation of U.S. Patent No. 5,676,146 will proceed on the following
`schedule:
`•
`May 2, 2014
`•
`May 30, 2014
`•
`June 20, 2014
`•
`July 18, 2014
`•
`August 8, 2014
`
`All fact discovery completed
`Opening expert reports served
`Rebuttal expert reports served
`Expert discovery completed
`Last day to file dispositive/Daubert
`motions
`File and serve Pretrial Disclosures FRCP
`26(a)(3)
`Meet and confer to prepare Pretrial Order
`
`October 24, 2014
`
`October 31, 2014
`
`•
`
`•
`
`•
`•
`
`November 7, 2014 Warsaw provide draft Order to NuVasive
`November 14, 2014
`Lodge final proposed Pretrial Order with
`Court
`Pretrial Conference (2:00 p.m.)
`Trial
`
`November 21, 2014
`•
`December 1, 2014
`•
`IT IS SO ORDERED.
`
`DATED: January 10, 2014
`
`CATHY ANN BENCIVENGO
`United States District Judge
`
`- 3 -
`
`12cv2738
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
