Case 1:14-cv-01040-GMS Document 19 Filed 07/29/15 Page 1 of 11 PageID #: 357
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`C.A. No. 12-1107-GMS
`
`JURY TRIAL DEMANDED
`
`C.A. No. 12-1110-GMS
`
`JURY TRIAL DEMANDED
`
`C.A. No. 14-1040-GMS
`
`JURY TRIAL DEMANDED
`
`))))))))))))
`
`))))))))))))
`
`)))))))))))
`
`BONUTTI SKELETAL INNOVATIONS LLC,
`
`Plaintiff,
`
`v.
`
`ZIMMER BIOMET HOLDINGS, INC. and
`ZIMMER, INC.,
`
`Defendants.
`
`BONUTTI SKELETAL INNOVATIONS LLC,
`
`Plaintiff,
`
`v.
`
`WRIGHT MEDICAL GROUP, INC. and
`WRIGHT MEDICAL TECHNOLOGY, INC.,
`
`Defendants.
`
`BONUTTI SKELETAL INNOVATIONS LLC,
`
`Plaintiff,
`
`v.
`
`MICROPORT ORTHOPEDICS INC.,
`
`Defendant.
`
`JOINT STATUS REPORT
`
`In accordance with the Court’s Oral Order dated June 30, 2015, Rules 16(b) and 26(f) of
`
`the Federal Rules of Civil Procedure, and District of Delaware Local Rule 16.2(b), counsel for
`
`Plaintiff Bonutti Skeletal Innovations LLC (“Bonutti Skeletal” or “Plaintiff”) and Defendants
`
`

`
`Case 1:14-cv-01040-GMS Document 19 Filed 07/29/15 Page 2 of 11 PageID #: 358
`
`Zimmer Biomet Holdings, Inc. (formerly Zimmer Holdings, Inc.) and Zimmer, Inc. (collectively,
`
`“Zimmer”); Wright Medical Group, Inc. and Wright Medical Technology Inc. (collectively,
`
`“Wright Medical”); and MicroPort Orthopedics, Inc. (“MicroPort” and collectively,
`
`“Defendants”) submit this Joint Status Report.
`
`I.
`
`JURISDICTION & SERVICE
`
`The parties agree that this Court has subject matter jurisdiction over all claims and
`
`counterclaims in these actions pursuant to 28 U.S.C. §§ 1331, 1338(a), 2201 and 2202.
`
`Defendants reserve the right to challenge subject matter jurisdiction to the extent that discovery
`
`reveals that Plaintiff does not have standing to sue. The parties agree that this Court has personal
`
`jurisdiction over the parties for purposes of this action. At this time, the parties are not aware of
`
`any additional party yet to be served.
`
`II.
`
`SUBSTANCE OF THE ACTION
`
`The instant actions are among several patent infringement suits Plaintiff has filed against
`
`medical device manufacturers. Two related cases previously before this Court—Bonutti Skeletal
`
`Innovations, LLC v. ConforMIS, Inc. (C.A. No. 12-1109) and Bonutti Skeletal Innovations, LLC
`
`v. Smith & Nephew Inc. (C.A. No. 12-1111)—have been dismissed pursuant to settlement
`
`agreements between the parties. The instant actions had been stayed pending inter partes review
`
`(“IPR”) proceedings. That stay was lifted by the Court’s Oral Order of June 30, 2015. In
`
`connection with the IPR proceedings, and to streamline the instant actions, Plaintiff is no longer
`
`asserting U.S. Patent No. 6,702,821; U.S. Patent No. 7,749,229; or U.S. Patent No. 7,837,736.
`
`In Plaintiff’s action against Zimmer (C.A. No. 12-1107), Plaintiff alleges that Zimmer
`
`has infringed and is still infringing U.S. Patent No. 8,133,229; U.S. Patent No. 7,806,896; and
`
`U.S. Patent No. 7,959,635 by selling, offering for sale, importing, making, or having made knee
`
`implant systems and instrumentation for use of those systems and by knowingly and
`
`2
`
`

`
`Case 1:14-cv-01040-GMS Document 19 Filed 07/29/15 Page 3 of 11 PageID #: 359
`
`intentionally creating and distributing surgical technique guides that instruct surgeons on using
`
`these knee implant systems in an infringing manner. Zimmer denies that Plaintiff has any
`
`meritorious claim under any of these patents. Zimmer has answered Plaintiff’s First Amended
`
`Complaint, has denied Plaintiff’s allegations of infringement and has asserted affirmative
`
`defenses, including failure to state a claim, invalidity of the asserted patents under one or more
`
`sections of Title 35 of the United States Code, including, without limitation, 35 U.S.C. §§ 102,
`
`103, and/or 112; prosecution history estoppel, laches, prosecution laches, and non-satisfaction of
`
`the requirements of 35 U.S.C. § 287. Zimmer has also asserted counterclaims seeking
`
`declaratory relief of non-infringement and invalidity of each of the asserted patents.
`
`In Plaintiff’s action against Wright Medical (C.A. No. 12-1110), Plaintiff alleges that
`
`Wright Medical has infringed and is still infringing U.S. Patent No. 8,133,229 and U.S. Patent
`
`No. 7,806,896 by selling, offering for sale, importing, making, or having made knee implant
`
`systems and instrumentation for use of those systems and by knowingly and intentionally
`
`creating and distributing surgical technique guides that instruct surgeons on using these knee
`
`implant systems in an infringing manner. Wright Medical denies that Plaintiff has any
`
`meritorious claim under any of these patents. Wright Medical has answered Plaintiff’s First
`
`Amended Complaint, has denied Plaintiff’s allegations of infringement and has asserted
`
`affirmative defenses, including failure to state a claim, invalidity of the asserted patents under
`
`one or more sections of Title 35 of the United States Code, including, without limitation, 35
`
`U.S.C. §§ 102, 103, and/or 112; prosecution history estoppel, laches, prosecution laches, and
`
`non-satisfaction of the requirements of 35 U.S.C. § 287. Wright Medical has also asserted
`
`counterclaims seeking declaratory relief of non-infringement and invalidity of each of the
`
`asserted patents.
`
`3
`
`

`
`Case 1:14-cv-01040-GMS Document 19 Filed 07/29/15 Page 4 of 11 PageID #: 360
`
`In Plaintiff’s action against MicroPort (C.A. No. 14-1040), Plaintiff alleges that
`
`MicroPort has infringed and is still infringing U.S. Patent No. 8,133,229 and U.S. Patent No.
`
`7,806,896 by selling, offering for sale, importing, making, or having made knee implant systems
`
`and instrumentation for use of those systems and by knowingly and intentionally creating and
`
`distributing surgical technique guides that instruct surgeons on using these knee implant systems
`
`in an infringing manner. MicroPort denies that Plaintiff has any meritorious claim under any of
`
`these patents. MicroPort has answered Plaintiff’s Complaint, has denied Plaintiff’s allegations of
`
`infringement and has asserted affirmative defenses, including failure to state a claim, invalidity
`
`of the asserted patents under one or more sections of Title 35 of the United States Code,
`
`including, without limitation, 35 U.S.C. §§ 102, 103, and/or 112; prosecution history estoppel,
`
`laches, prosecution laches, and non-satisfaction of the requirements of 35 U.S.C. § 287.
`
`MicroPort has also asserted counterclaims seeking declaratory relief of non-infringement and
`
`invalidity of each of the asserted patents.
`
`III.
`
`IDENTIFICATION OF ISSUES
`
`The issues to be resolved in this action include:
`
`
`
`the proper construction of disputed claim terms in the asserted claims of the
`patents-in-suit;
`
` whether any Defendant has infringed and/or is infringing, directly or indirectly,
`literally or under the doctrine of equivalents, any asserted claim of the patents-in-
`suit, and whether any such infringement was willful;
`
` Defendants’ knowledge of the patents-in-suit and intent to induce surgeons to
`infringe the patents-in-suit;
`
` whether any asserted claim of the patents-in-suit is invalid under 35 U.S.C.
`§§ 102, 103, and/or 112;
`
` whether Plaintiff’s claims for infringement are barred in whole or in part by, inter
`alia, laches, estoppel or equitable estoppel, waiver, prosecution history estoppel,
`
`4
`
`

`
`Case 1:14-cv-01040-GMS Document 19 Filed 07/29/15 Page 5 of 11 PageID #: 361
`
`non-satisfaction of the requirements of 35 U.S.C. § 287, and/or lack of ownership
`and standing;
`
` whether each Defendant is entitled to declaratory relief;
`
` whether Plaintiff is entitled to an award of damages from any Defendant and, if
`so, the amount of such damages;
`
` whether Plaintiff is entitled to injunctive relief;
`
` whether this case is “exceptional” under 35 U.S.C. § 285.
`
`IV.
`
`NARROWING OF ISSUES
`
`Plaintiff has significantly narrowed the patents-at-issue and is no longer asserting U.S.
`
`Patent No. 6,702,821; U.S. Patent No. 7,749,229; or U.S. Patent No. 7,837,736. The parties
`
`believe that it is currently too early in the case to know whether any additional issues in the
`
`litigation can be narrowed by agreement or by motions. Plaintiff submits that a fair adjudication
`
`of Plaintiff’s infringement claims will require discovery and that document discovery on the
`
`structure, function, operation and implantation techniques and uses of Defendants’ accused
`
`products, Defendants’ marketing and sales of the accused devices, Defendants’ knowledge of the
`
`patents-in-suit, Defendants’ intent, the inventor’s conception and reduction to practice of the
`
`inventions and third party discovery that is typical of these patent infringement actions will need
`
`to be undertaken, as well as the identification and examination of witnesses on these topics. The
`
`parties propose to address any dispositive or partially dispositive issues in accordance with the
`
`Court’s standard summary judgment procedures, and the proposed schedule the parties intend to
`
`submit by September 4, 2015. The parties may identify other issues in these actions that can be
`
`narrowed by agreement or through motion practice as party and non-party discovery continues.
`
`5
`
`

`
`Case 1:14-cv-01040-GMS Document 19 Filed 07/29/15 Page 6 of 11 PageID #: 362
`
`V.
`
`RELIEF SOUGHT
`
`Plaintiff seeks reasonable royalty damages for past infringement and any continuing or
`
`future infringement up until the date such judgment is entered, including interest, costs, and
`
`disbursements. Plaintiff further seeks a permanent injunction. Plaintiff also seeks a judgment
`
`holding that the Defendants’ infringement is willful and a trebling of damages pursuant to 38
`
`U.S.C. § 284. Plaintiff seeks a judgment that each case is exceptional under 38 U.S.C. § 285,
`
`and that Plaintiff be awarded the attorney’s fees, costs, and expenses that it incurs in prosecuting
`
`each action. Plaintiff also seeks further relief at law or in equity as the Court deems just and
`
`proper. Plaintiff is currently unable to determine the amount of damages that it seeks because
`
`the amount depends upon the extent of Defendants’ use of the patents-in-suit, which can only be
`
`learned through discovery.
`
`Defendants contend that Plaintiff will not succeed on the merits of its claims and, in any
`
`event, is not entitled to injunctive relief because Plaintiff has an adequate remedy at law, any
`
`alleged injury to Plaintiff is neither immediate nor irreparable, nor would an injunction serve the
`
`public interest. Defendants seek judgment in their favor against Plaintiff dismissing Plaintiff’s
`
`Complaints in their entirety, with prejudice; finding that no Defendant has infringed or is
`
`infringing any asserted claim of any patent-in-suit; finding that one or more of the claims of the
`
`patents-in-suit are invalid, void and/or unenforceable against Defendants; and entering an order
`
`finding that this is an exceptional case and accordingly requiring Plaintiff to pay Defendants their
`
`costs and reasonable attorneys’ fees under 35 U.S.C. § 285.
`
`VI.
`
`AMENDMENT OF PLEADINGS
`
`The parties propose setting a deadline for amendment of pleadings in the case schedule.
`
`Defendants have reason to believe that, in addition to being invalid under 35 U.S.C. §§ 102, 103
`
`and/or 112 and not infringed, the claims of certain of the patents-in-suit may be unenforceable
`
`6
`
`

`
`Case 1:14-cv-01040-GMS Document 19 Filed 07/29/15 Page 7 of 11 PageID #: 363
`
`due to inequitable conduct that occurred during prosecution of the applications that led to the
`
`patents. Because the facts of inequitable conduct are in the hands of the named inventor,
`
`prosecuting attorneys, and other participants in the prosecution that led to the patents in suit,
`
`discovery may be required before such a serious allegation can be pled with respect to one or
`
`more of the patents in suit. Accordingly, Defendants will amend their pleadings, to the extent
`
`necessary, in accordance with the deadline for amending pleadings.
`
`VII. DISCOVERY
`
`A.
`
`Scope of Discovery
`
`The parties anticipate taking fact discovery in accordance with the Federal Rules of Civil
`
`Procedure and the Court’s Local Rules relevant to Plaintiff’s infringement claims and
`
`Defendants’ defenses and counterclaims, such as the issues identified above in section III,
`
`including (1) requests for production of documents and things, including samples of the accused
`
`products; (2) interrogatories, including contention interrogatories; (3) requests for admission,
`
`including requests directed to the authentication of documents; and (4) depositions, including
`
`depositions pursuant to Fed. R. Civ. P. 30(b)(6). The parties also anticipate that third party
`
`discovery will be required.
`
`The parties also anticipate that testimony from technical and economic experts will be
`
`required and the parties anticipate taking expert discovery pursuant to Fed. R. Civ. P. 26. The
`
`parties each anticipate requiring at least one technical expert and at least one economic expert.
`
`The parties will propose schedules for discovery by September 4, 2015.
`
`B.
`
`Discovery of ESI
`
`The parties will confer regarding a proposed order for discovery of ESI and will submit it
`
`for approval with the Court (and to the extent any areas of disagreement exist, will identify them
`
`for the Court).
`
`7
`
`

`
`Case 1:14-cv-01040-GMS Document 19 Filed 07/29/15 Page 8 of 11 PageID #: 364
`
`C.
`
`Proposed Discovery Limits
`
`The parties propose the following limits and procedures regarding discovery:
`
`1.
`
`Interrogatories
`
`In each of the individual cases, each side is permitted to serve up to a maximum of
`
`twenty-five (25) interrogatories (including all discrete subparts), including contention
`
`interrogatories.
`
`2.
`
`Depositions
`
`The parties agree that in each of the individual cases, each side is limited to a total of
`
`one-hundred and five (105) hours of deposition testimony from party fact witnesses pursuant to
`
`Fed. R. Civ. P. 30(b)(1) or 30(b)(6) and non-party fact witnesses (excluding experts and the
`
`inventor of the patents-in-suit). Each non-30(b)(6) fact deposition is limited to a maximum of 7
`
`hours unless extended by agreement of the parties or order of the Court for good cause shown.
`
`The parties disagree as to the number of hours the inventor of the patents-in-suit, Dr.
`
`Bonutti, may be deposed for. Plaintiff proposes that Dr. Bonutti may be deposed for a maximum
`
`of seven (7) hours collectively by Defendants. Defendants propose that Dr. Bonutti may be
`
`deposed for a maximum of twenty-one (21) hours collectively by Defendants.
`
`The parties agree that in this case the depositions of party witnesses shall occur in the
`
`state where the witness’s business office is located or at some other mutually agreeable location.
`
`The parties agree to meet and confer after the Markman hearing to discuss appropriate
`
`limits to expert discovery.
`
`3.
`
`Requests for Admission
`
`Each party is limited to a total of fifty (50) requests for admission, except that no limit
`
`shall apply with respect to requests for admission regarding the authenticity of a document or
`
`establishing that a document falls within Federal Rule of Evidence 803(6).
`
`8
`
`

`
`Case 1:14-cv-01040-GMS Document 19 Filed 07/29/15 Page 9 of 11 PageID #: 365
`
`VIII. ESTIMATED TRIAL LENGTH
`
`While it is early in the case and discovery has not yet proceeded, the parties currently
`
`estimate a trial length of 5-10 trial days per action will be needed. At the present time,
`
`Defendants believe that pursuant to 35 U.S.C. § 299, and given the variety and breadth of the
`
`asserted patents and accused products in the pending actions, each action will require a separate
`
`trial.
`
`The parties will attempt to reduce the length of the trial by stipulations, use of summaries
`
`or statements, or other expedited means of presenting evidence. But the parties jointly believe
`
`that it is too early in the case for the parties to be able to foresee what methods may be useful and
`
`agreed upon.
`
`IX.
`
`JURY TRIAL
`
`The parties have requested a trial by jury for all issues so triable.
`
`X.
`
`SETTLEMENT
`
`Plaintiff and Zimmer have recently engaged in productive settlement discussions. In
`
`addition, Plaintiff has reached out to Wright Medical and MicroPort regarding potential
`
`settlement. In light of the potential for settlement in the near future, and to allow the parties to
`
`continue negotiations without unnecessarily burdening the resources of the Court or parties, the
`
`parties propose submitting a proposed case schedule by September 4, 2015, whereupon the Court
`
`may enter a case schedule or order a status or Rule 16.1 conference.
`
`XI.
`
`OTHER ISSUES
`
`In light of the expected production of confidential technical and financial information in
`
`this action, the parties agree that a protective order is needed, and will confer and submit a
`
`proposed order to the Court (and to the extent any areas of disagreement exist, will identify them
`
`for the Court).
`
`9
`
`

`
`Case 1:14-cv-01040-GMS Document 19 Filed 07/29/15 Page 10 of 11 PageID #: 366
`
`XII. CONFIRMATION OF RULE 26(f) CONFERENCE
`
`Counsel for the parties have conferred about each of the above matters and submit this
`
`Joint Status Report as agreed. However, as noted above, in light of the potential for settlement in
`
`the near future, and to allow the parties to continue negotiations without unnecessarily burdening
`
`the resources of the Court or parties, the parties propose submitting a proposed case schedule by
`
`September 4, 2015, whereupon the Court may enter a case schedule or order a status or Rule 16.1
`
`conference.
`
`POTTER ANDERSON & CORROON LLP
`
`MORRIS, NICHOLS, ARSHT & TUNNELL LLP
`
`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
`
`Attorneys for Plaintiff
`Bonutti Skeletal Innovations LLC
`
`Of Counsel:
`
`John M. Desmarais
`Paul A. Bondor
`Alex Henriques
`Dustin F. Guzior
`DESMARAIS LLP
`230 Park Avenue
`New York, NY 10169
`(212) 351-3400
`
`By: /s/ Jack B. Blumenfeld
`Jack B. Blumenfeld (#1014)
`1201 North Market Street
`P.O. Box 1347
`Wilmington, DE 19899
`(302) 658-9200
`jblumenfeld@mnat.com
`
`Attorneys for Defendants
`Zimmer Biomet Holdings, Inc. & Zimmer, Inc.
`
`Of Counsel:
`
`Ken Liebman
`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
`
`10
`
`

`
`Case 1:14-cv-01040-GMS Document 19 Filed 07/29/15 Page 11 of 11 PageID #: 367
`
`DUANE MORRIS LLP
`
`ASHBY & GEDDES
`
`By: /s/Tiffany Geyer Lydon
`Tiffany Geyer Lydon (#3950)
`Andrew C. Mayo (#5207)
`500 Delaware Avenue, 8th Floor
`P.O. Box 1150
`Wilmington, DE 19899
`(302) 654-1888
`tlydon@ashby-geddes.com
`amayo@ashby-geddes.com
`
`Attorneys for Defendant
`MicroPort Orthopedics Inc.
`
`Of Counsel:
`
`Gary W. Smith
`James E. Kruzer
`POSTERNAK BLANKSTEIN & LUND LLP
`Prudential Tower
`800 Boylston Street
`Boston, MA 02199-8004
`(617) 973-6100
`
`By: /s/Richard L. Renck
`Richard L. Renck (#3893)
`222 Delaware Avenue, Suite 1600
`Wilmington, DE 19801-1659
`(302) 657-4920
`RLRenck@duanemorris.com
`
`Attorneys for Defendants
`Wright Medical Group, Inc. & Wright Medical
`Technology
`
`Of Counsel:
`
`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
`
`Dated: July 29, 2015
`1196604
`
`11