Case 1:12-cv-01107-GMS Document 49 Filed 06/19/15 Page 1 of 7 PageID #: 2140
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`BONUTTI SKELETAL
`INNOVATIONS LLC,
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`Plaintiff,
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`v.
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`C.A. No. 12-1107-GMS
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`C.A. No. 12-1110-GMS
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`C.A. No. 14-1040-GMS
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`ZIMMER HOLDINGS, INC. and
`ZIMMER, INC.,
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`Defendants.
`BONUTTI SKELETAL
`INNOVATIONS LLC,
`
`
`Plaintiff,
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`
`
`v.
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`WRIGHT MEDICAL GROUP, INC. and
`WRIGHT MEDICAL TECHNOLOGY,
`INC.,
`
`
`Defendants.
`BONUTTI SKELETAL
`INNOVATIONS LLC,
`
`
`Plaintiff,
`
`
`
`v.
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`
`MICROPORT ORTHOPEDICS INC.,
`
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`Defendant.
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`DEFENDANTS’ JOINT RESPONSE TO PLAINTIFF’S MOTION
`TO LIFT STAY AND HOLD SCHEDULING CONFERENCE
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`

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`Case 1:12-cv-01107-GMS Document 49 Filed 06/19/15 Page 2 of 7 PageID #: 2141
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`I.
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`INTRODUCTION
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`The Defendants do not oppose lifting the stays in these matters, but they do oppose doing
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`so in a way that would merely resurrect the same uncertainty regarding the nature and scope of
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`Plaintiff’s infringement allegations that pervaded these cases until the Court stayed them pending
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`inter partes review (“IPR”). Indeed, this issue arose well before the Court stayed these cases. In
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`holding that the timeliness of Zimmer’s and Wright Medical’s IPR petitions supported a stay, the
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`Court found that “[d]espite the Defendants’ requests for specificity, [Plaintiff, Bonutti Skeletal
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`Innovations LLC (“Bonutti”)] did not clearly state before the IPR deadline which of the hundreds
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`of claims in its multiple patents[1] it intended to assert against the Defendants.” (D.I. 45, at 7.)2
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`The Court noted “Bonutti’s refusal to specify exactly which claims it intends to assert against the
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`Defendants.” (Id. at 11.)
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`There is no reason why the scheduling conference Bonutti requests, (D.I. 48, at 2), should
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`be a necessary prerequisite for Bonutti to identify the asserted claims and accused products in
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`these cases within a reasonable time—the Defendants suggest 21 days—after the Court lifts the
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`stays. On the contrary, a scheduling conference almost certainly will be far more productive and
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`efficient if the Court and the Defendants know, in advance of the conference, the nature and
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`scope of Bonutti’s infringement allegations. The Defendants are not, at this time, seeking full-
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`1 Bonutti asserts against Zimmer six related patents directed to knee implants: U.S. Patent
`Nos. 6,702,821 (“’821 patent”); 7,806,896 (“’896 patent”); 8,133,229 (“’3,229 patent”);
`7,837,736 (“’736 patent”); 7,959,635; and 7,749,229 (“’9,229 patent”). See Bonutti v.
`Zimmer, C.A. No. 12-1107, D.I. 10, ¶¶ 5–10. Those six patents, as issued, contained 258
`claims. See id., D.I. 36, at 7. Bonutti asserts three of those patents, the ’821, ’896, and
`’3,229 patents, against Wright Medical and MicroPort. See Bonutti v. Wright Medical,
`C.A. No. 12-1110, D.I. 7, ¶¶ 5–7; Bonutti v. MicroPort, C.A. No. 14-1040, D.I. 1, 3–5.
`Those three patents, as issued, contained 148 claims. See Bonutti v. Zimmer, C.A. No. 12-
`1107, D.I. 36, at 7.
`2 Unless otherwise indicated, citations to ECF docket entries are citations to Bonutti Skeletal
`Innovations LLC v. Zimmer Holdings, Inc., C.A. No. 12-1107-GMS (“Bonutti v. Zimmer”).
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`2
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`

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`Case 1:12-cv-01107-GMS Document 49 Filed 06/19/15 Page 3 of 7 PageID #: 2142
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`blown infringement contentions, but instead merely the identification of the specific asserted
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`claims and accused products. Two of these cases, Bonutti v. Zimmer, C.A. No. 12-1107, and
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`Bonutti v. Wright Medical, C.A. No. 12-1110, have been pending since September 2012. Yet, at
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`no time in the 33 months since then has Bonutti ever identified the specific claims of the various
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`patents-in-suit that it intends to assert against Zimmer and Wright Medical. Surely, by now,
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`Bonutti knows which claims it intends to assert and which products it intends to accuse. Bonutti
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`should be required to disclose that information now so that the scope of this case is defined and
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`the Defendants do not have to proceed with continued uncertainty.
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`II.
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`ARGUMENT
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`“Courts have inherent power to manage their dockets and stay proceedings, including the
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`authority to order a stay pending conclusion of a PTO reexamination.” Ethicon, Inc. v. Quigg,
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`849 F.2d 1422, 1426–27 (Fed. Cir. 1988) (internal citation omitted). “[T]he same court that
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`imposes a stay of litigation has the inherent power and discretion to lift the stay.” Auto. Techs.
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`Int’l, Inc. v. Am. Honda Motor Co., No. 06-187-GMS, 2009 WL 2969566, at *2 (D. Del. Sept.
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`15, 2009). Accordingly, this Court has discretion to determine the terms on which a stay it has
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`imposed should be lifted. See id.; see also FED. R. CIV. P. 16.
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`Bonutti requests a scheduling conference before it “identifies which claims it intends to
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`assert and which products it accuses of infringement,” (D.I. 48, at 2), but it provides no reason
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`why it cannot or should not provide that information now. And although Bonutti claims that its
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`position is “consistent with this Court’s typical practice,” it fails to acknowledge that, in light of
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`the circumstances present here, these are not “typical” cases. Despite losing 28 claims of the
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`patents-in-suit during IPR (see the table below), Bonutti chose not appeal any of the Patent Trial
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`and Appeal Board’s (“PTAB”) decisions in the IPR proceedings. Bonutti’s strategy is apparently
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`3
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`

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`Case 1:12-cv-01107-GMS Document 49 Filed 06/19/15 Page 4 of 7 PageID #: 2143
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`to get back into court as quickly as possible to best position itself to exert pressure and attempt to
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`coerce settlements from the remaining defendants. If, after 33 months, however, Bonutti is ready
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`to litigate its patents, it should also be ready to make clear what, precisely, it plans to litigate so
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`that the Defendants are not prejudiced by continued uncertainty, and neither the Court nor the
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`Defendants have to expend further resources addressing this issue.
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`Moreover, because the PTAB has found numerous claims of the patents-in-suit invalid as
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`unpatentable, it has substantially shortened Bonutti’s “menu” of claims in these cases, thereby
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`contributing to the Defendants’ uncertainty regarding not only which of the remaining claims
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`may be at issue, but also what products may be accused of infringement and whether some of the
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`patents-in-suit even remain at issue. As a result of the IPRs, the PTAB found the following
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`claims of patents-in-suit to be invalid as unpatentable: claims 1 and 42 of the ’896 patent and
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`claims 21, 22, and 31–36 of the ’736 patent. Additionally, during the course of the IPR
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`proceedings, Bonutti voluntarily disclaimed the following claims of patents-in-suit pursuant to
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`37 C.F.R. § 1.321(a):3 claim 1 of the ’821 patent, claim 23 of the ’9,229 patent, claims 40, 41,
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`44–47 of the ’896 patent, claims 15–20 and 26–28 of the ’736 patent, and claim 1 of the ’3,229
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`patent. These results are summarized in the following table:
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`Invalidated in 
`Patent‐at‐
`IPR 
`Issue 
`6,702,821 
`‐‐ 
`7,749,229 
`‐‐ 
`7,806,896  Claims 1, 42 
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`7,837,736  Claims 21, 22, 
`31‐36 
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`8,133,229 
`Totals: 
`
`‐‐ 
`
`Disclaimed by 
`Bonutti 
`Claim 1
`Claim 23
`Claims 40, 41, 
`44‐47 
`Claims 15‐20, 
`26‐28 
`Claim 1
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`# Original 
`Claims 
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`# Invalid 
`Claims 
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`# Claims 
`Remaining 
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`39
`32
`48
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`40
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`60
`219
`
`1 
`1 
`8 
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`17 
`
`1 
`28 
`
`38
`31
`40
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`23
`
`59
`191
`
`10 
`
`18
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`3 Although voluntary and non-appealable, such a disclaimer has the same effect on a patent
`claim as if a court or the PTAB, for example, were to find it invalid. See 35 U.S.C. § 253.
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`4
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`

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`Case 1:12-cv-01107-GMS Document 49 Filed 06/19/15 Page 5 of 7 PageID #: 2144
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`The ongoing uncertainty regarding the identity of the asserted claims—which is already
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`exacerbated by Bonutti’s loss of 28 claims during IPR—is compounded by similar uncertainty
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`regarding the identity of the accused products. Although Bonutti provided cursory
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`identifications of accused products in its complaints,4 the Defendants presently can only guess
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`which products Bonutti actually intends to accuse. Indeed, in some cases, the fact that certain
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`claims of the patents-in-suit are now invalid may foreclose Bonutti’s ability to maintain its
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`infringement allegations as to those products. Therefore, just as Bonutti should be required to
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`identify the asserted claims, it likewise should be required to identify, without further delay, the
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`products that allegedly infringe each of those claims.
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`In the Defendants’ view, holding a scheduling conference at the Court’s convenience is
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`entirely appropriate, but there is no reason why a scheduling conference or related order are
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`necessary prerequisites for Bonutti to finally disclose the scope of these cases by identifying the
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`accused products and the specific claims each product allegedly infringes. Indeed, as noted
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`above, a scheduling conference almost certainly will be far more productive and efficient if the
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`Court and the Defendants know, in advance of it, the nature and scope of Bonutti’s infringement
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`allegations.
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`III. CONCLUSION
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`The Defendants respectfully request that the Court exercise its discretion and order
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`Bonutti, within 21 days of the Court’s Order lifting the stays, to serve on each Defendant an
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`identification of (a) the Defendant’s accused products, and (b) the specific claim(s) of each
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`4 See Bonutti v. Zimmer, C.A. No. 12-1107, D.I. 10, ¶¶ 15–19; Bonutti v. Wright Medical,
`C.A. No. 12-1110, D.I. 7, ¶¶ 11–14; Bonutti v. MicroPort, C.A. No. 14-1040, D.I. 1, ¶¶ 10–
`13.
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`5
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`Case 1:12-cv-01107-GMS Document 49 Filed 06/19/15 Page 6 of 7 PageID #: 2145
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`asserted patent that each such accused product allegedly infringes. The Defendants submit a
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`proposed Order herewith for the Court’s convenience.
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`MORRIS, NICHOLS, ARSHT & TUNNELL LLP
`
`/s/ Jack B. Blumenfeld
`
`
`
`
`Jack B. Blumenfeld (#1014)
`Jeremy A. Tigan (#5239)
`1201 North Market Street
`P.O. Box 1347
`Wilmington, DE 19899
`(302) 658-9200
`jblumenfeld@mnat.com
`jtigan@mnat.com
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`Attorneys for Defendants Zimmer Holdings,
`Inc. & Zimmer, Inc.
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`6
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`OF COUNSEL:
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`Ken Liebman
`Elizabeth Cowan Wright
`FAEGRE BAKER DANIELS LLP
`2200 Wells Fargo Center
`90 South 7th Street
`Minneapolis, MN 55402
`(612) 766-7000
`
`Daniel M. Lechleiter
`FAEGRE BAKER DANIELS LLP
`300 N. Meridian Street, Suite 2700
`Indianapolis, IN 46204
`(317) 237-0300
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`

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`Case 1:12-cv-01107-GMS Document 49 Filed 06/19/15 Page 7 of 7 PageID #: 2146
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`DUANE MORRIS LLP
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`/s/ Richard L. Renck
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`
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`Richard L. Renck (#3893)
`222 Delaware Avenue, Suite 1600
`Wilmington, DE 19801-1659
`(302) 657-4920
`rlrenck@duanemorris.com
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`Attorneys for Defendants Wright Medical
`Group, Inc. and Wright Medical Technology
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`ASHBY & GEDDES
`
`/s/ Tiffany Geyer Lydon
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`
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`
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`Tiffany Geyer Lydon (#3950)
`Andrew C. Mayo (#5207)
`500 Delaware Avenue, 8th Floor
`P.O. Box 1150
`Wilmington, DE 19899
`(302) 654-19899
`tlydon@ashby-geddes.com
`amayo@ashby-geddes.com
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`Attorneys for Defendant MicroPort
`Orthopedics Inc.
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`7
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`OF COUNSEL:
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`Anthony J. Fitzpatrick
`DUANE MORRIS LLP
`100 High Street, Suite 2400
`Boston, MA 02110-1724
`(857) 488-4200
`
`Samuel W. Apicelli
`Jeffrey S. Pollack
`DUANE MORRIS LLP
`30 South 17th Street
`Philadelphia, PA 19103
`(215) 979-1000
`
`Michael A. Albert
`Jason Honeyman
`WOLF GREENFIELD
`600 Atlantic Avenue
`Boston MA 02210-2206
`(617) 646-8000
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`OF COUNSEL:
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`Gary W. Smith
`James E. Kruzer
`POSTERNAK BLANKSTEIN & LUND LLP
`Prudential Tower
`800 Boylston Street
`Boston, MA 02199-8004
`(617) 973-6100
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`June 19, 2015