Case 1:12-cv-01107-GMS Document 50 Filed 06/29/15 Page 1 of 4 PageID #: 2149
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`C.A. No. 12-1107-GMS
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`JURY TRIAL DEMANDED
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`C.A. No. 12-1110-GMS
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`JURY TRIAL DEMANDED
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`C.A. No. 14-1040-GMS
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`JURY TRIAL DEMANDED
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`BONUTTI SKELETAL
`INNOVATIONS LLC,
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`v.
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`Plaintiff,
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`ZIMMER HOLDINGS, INC. and
`ZIMMER, INC.,
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`Defendants.
`___________________________________
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`BONUTTI SKELETAL
`INNOVATIONS LLC,
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`v.
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`Plaintiff,
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`WRIGHT MEDICAL GROUP, INC. and
`WRIGHT MEDICAL TECHNOLOGY,
`INC.,
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`Defendants.
`___________________________________
`BONUTTI SKELETAL
`INNOVATIONS LLC,
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`v.
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`Plaintiff,
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`MICROPORT ORTHOPEDICS INC.,
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`Defendant.
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`PLAINTIFF BONUTTI SKELETAL’S
`REPLY IN FURTHER SUPPORT OF ITS MOTION
`TO LIFT STAY AND HOLD SCHEDULING CONFERENCE
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`When the Court stayed these cases pending inter partes review, it ordered that “[t]he
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`parties shall promptly notify the court when the stay should be lifted.” (D.I. 45, 12-1107; D.I.
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`Case 1:12-cv-01107-GMS Document 50 Filed 06/29/15 Page 2 of 4 PageID #: 2150
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`43, 12-1110; D.I. 13, 14-1040.) Once the inter partes reviews concluded, Bonutti Skeletal
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`expected that the parties would file a simple joint motion asking the Court to lift the stay. The
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`case schedule would be determined—as it typically is—through meet-and-confers, a joint status
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`report, and then a Rule 16 Conference. Defendants have rejected that normal approach. Instead,
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`as a precondition to lifting the stay, Defendants seek to upend the schedule with troubling
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`inversions that would prejudice Bonutti Skeletal without any attendant benefit to the case. The
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`Court should lift the stay and save argument over the schedule to its proper place: the scheduling
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`conference.
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`Defendants’ argument, in a nutshell, is that Bonutti Skeletal should identify the asserted
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`claims now because there is no reason it cannot. But there is a very good reason why Bonutti
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`Skeletal cannot: Defendants have not yet produced a single technical document relating to the
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`accused products. Bonutti Skeletal cannot meaningfully identify which claims it intends to assert
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`against which products with access to limited technique guides but without access to product
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`schematics and design history files, surgeon training materials, or even the accused products
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`themselves. Bonutti Skeletal is more than willing to remedy the “continued uncertainty”
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`Defendants bemoan. But Defendants must first remove the pre-discovery blindfold they have
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`left Bonutti Skeletal wearing for the past 33 months.
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`This concept is not novel. In fact, it is quite the opposite and is expressly embodied in
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`the Court’s Default Standard for Discovery. This standard requires (a) within 30 days after the
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`Rule 16 conference, plaintiff identify the accused products and patents; (b) within 30 days of
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`receipt of the above, defendants produce “the core technical documents related to the accused
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`product(s), including but not limited to operation manuals, product literature, schematics, and
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`specifications”; and (c) within 30 days of receipt of the above, plaintiff produce claim charts
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`-2-
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`Case 1:12-cv-01107-GMS Document 50 Filed 06/29/15 Page 3 of 4 PageID #: 2151
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`relating the accused products to asserted claims.1 Notably—and sensibly—plaintiff has to
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`identify asserted claims only 30 days after defendants produce “the core technical documents
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`related to the accused product(s).”
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`Defendants provide no good reason for departing from that common sense here. What
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`Defendants characterize as “pervasive uncertainty” in the scope of these cases is an
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`unremarkable corollary of their pre-discovery status. The scope of these cases would not be
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`better defined—nor would “productivity” or “efficiency” be enhanced—by forcing Bonutti
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`Skeletal to fumble at claim identification from behind a pre-discovery veil of ignorance.
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`Moreover, Bonutti Skeletal is willing to do what is reasonably possible to define the scope of
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`these cases at this early pre-discovery stage, i.e. identify which patents it no longer intends to
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`assert as a result of the inter partes reviews, which should adequately address Defendants’
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`concerns.
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`By insisting on this unnecessary round of briefing, Defendants will have already delayed
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`these cases’ reopening by more than a month. Defendants do not need the further reward of a
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`schedule inversion that would require Bonutti Skeletal to do what it cannot meaningfully do by
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`way of turning common sense, the default standard for discovery, and this Court’s typical
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`practice on their heads. Defendants are certainly free to suggest tweaks to the normal order of
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`discovery at the Rule 16 Scheduling Conference—after the parties have had a chance to
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`meaningfully meet and confer and submit a Joint Status Report. Defendants’ instant proposal,
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`however, must be rejected. The stays should be lifted and further debate about a schedule
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`reserved for the scheduling conference.
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`1 Delaware Default Standard for Discovery, Including Discovery of Electronically Stored
`Information (“ESI”), § 4 (Initial Discovery in Patent Litigation).
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`-3-
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`Case 1:12-cv-01107-GMS Document 50 Filed 06/29/15 Page 4 of 4 PageID #: 2152
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`OF COUNSEL:
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`John M. Desmarais
`Paul A. Bondor
`Alex Henriques
`Dustin F. Guzior
`DESMARAIS LLP
`230 Park Avenue
`New York, NY 10169
`(212) 351-3400
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`Dated: June 29, 2015
`1194057
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`POTTER ANDERSON & CORROON LLP
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`By:
`
`/s/ Philip A. Rovner
`Philip A. Rovner (#3215)
`Jonathan A. Choa (#5319)
`Hercules Plaza
`P.O. Box 951
`Wilmington, DE 19899
`(302) 984-6000
`provner@potteranderson.com
`jchoa@potteranderson.com
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`Attorneys for Plaintiff Bonutti Skeletal
`Innovations LLC
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`-4-