Case 1:12—cv—O1107—GMS Document 36 Filed 01/22/14 Page 17 of 31 Page|D #: 1196
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`A.
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`Staying the BSI Cases Will Simplify the Issues.
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`Staying the BSI cases pending resolution of the knee patent IPRs will simplify the issues
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`to be litigated in several significant respects, including by eliminating certain claims fiom
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`consideration if the PTO cancels them and clarifying the scope of the remaining clairns—which
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`will necessarily impact discovery, infringement, invalidity, and damages issues in these cases.
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`1.
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`The Issue Simplification Resulting from a Stay Is Well-Recognized.
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`As the Federal Circuit has stated, “in a stayed infringement proceeding, ‘if the
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`[patentee’s] claims were canceled in the reexamination, [it] would eliminate the need to try the
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`infiingement issue.’” Fresenius USA, Inc. V. Baxter Int’l, Inc., 721 F.3d 1330, 1340 (Fed. Cir.
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`2013) (quoting Slip Track Sys., Inc. V. Metal Lite, Inc., 159 F.3d 1337, 1342 (Fed. Cir. 1998)).
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`Indeed, there is a high probability that the claims undergoing IPR will be canceled or amended.
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`The PTO canceled several claims in its two IPR decisions to date and canceled or narrowed
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`claims in 92% of granted reexaminations under the prior inter partes reexamination procedure.
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`(See Ex. U; Ex. V at 49; Ex. W at 38-39.) Moreover, “the higher standard to initiate an IPR
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`[compared to reexamination] gives at least some promise that certain challenged claims will be
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`struck down or amended if the PTO grants the petitions.” Software Rights Archive, LLC V.
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`Facebook, Inc., Nos. C-12-3970 RMW, C-12-3971 RMW, C-12-3972 RMW, 2013 WL
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`5225522, at *5 (N.D. Cal. Sept. 17, 2013). These statistics showing a high probability of
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`cancellation or amendment weigh in favor or a stay, Davol, Inc. V. Atrium Med. C0rp., No. 12-
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`cv-958-GMS, 2013 wL 3013343, at *5 n.7 (D. Del. June 17, 2013), as they support “a fair
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`inference that the issues in [these] case[s] are apt to be simplified and streamlined to some
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`degree,” EVer Win Int’! Corp. V. Radioshack Corp., 902 F. Supp. 2d 503, 506 (D. Del. 2012). In
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`contrast, if there is no stay and claims are canceled, “the Court will have wasted time and the
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`parties will have spent additional fiinds addressing an invalid claim or claims.” Textron
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`-10-
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`Zimmer Holdings, Inc. and Zimmer, Inc.
`Exhibit 1011 - 17
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`

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`Case 1:12—cv—O1107—GMS Document 36 Filed 01/22/14 Page 18 of 31 PageID #: 1197
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`InnoVations Inc. V. Toro Co., No. 05-486 (GMS), 2007 WL 7772169, at *2 (D. Del. Apr. 25,
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`2007) (internal quotation marks omitted).
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`Any amendment of the claims or narrowing statements made by BS1 during the IPRs will
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`affect claim construction and narrow the scope of discovery and damages (at a minimum). See,
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`e.g., Krippelz V. Ford Motor Co., 667 F.3d 1261, 1266 (Fed. Cir. 2012) (“A patentee’s
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`statements during reexamination can be considered during claim construction, in keeping with
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`the doctrine of prosecution disclaimer.”); Round Rock Research LLC V. Dole Food Co., Civil
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`Action Nos. 1 1-1239-RGA, 1 1-1241-RGA, 1 1-1242-RGA, 2012 WL 1185022, at *1 (D. Del.
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`Apr. 6, 2012) (“even if [the claims are] neither rejected nor modified, [they] will garner
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`additional prosecution history that may be relevant to claim construction”). 13 To avoid
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`conducting a “significantly wider scope of discovery than necessary” and “examining the
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`validity of claims which are modified or eliminated altogether during [IPR],” it only “makes
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`sense to ascertain the ultimate scope of the claims before trying to figure out whether defendants’
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`products infiinge the patent-in-suit.” Target Therapeutics, Inc. V. SciMed Life Sys., Inc., No. C-
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`94-20775 RPA (EAI), 1995 WL 20470, at *2 (N.D. Cal. Jan. 13, 1995).
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`Even in the unlikely event that every challenged claim in every patent undergoing IPR is
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`upheld, “the court would benefit from the expert analysis the PTO conducts, thus firrther
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`simplifying issues before the court.” Celorio, 2013 WL 4506411, at *1 n.1. Moreover, “the[se]
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`case[s] will still be simplified” as a result of statutory estoppel to the extent it should apply to
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`Zimmer or Wright Medical. See DaVol, 2013 WL 3013343, at *5 (internal quotation marks
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`13
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`. affects claim construction and applies where an applicant’s
`.
`“Prosecution disclaimer .
`actions during prosecution prospectively narrow the literal scope of an otherwise more
`expansive claim limitation.” Trading Techs. Int’l, Inc. V. Open E Cry, LLC, 728 F.3d 1309,
`1322 (Fed. Cir. 2013). The doctrine of prosecution disclaimer “serve[s] to constrain the
`enforceable scope of patent claims commensurate with any subject matter surrendered during
`prosecution to obtain the patent.” Id
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`-11-
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`Zimmer Holdings, Inc. and Zimmer, Inc.
`Exhibit 1011 - 18
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`

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`Case 1:12—cv—O1107—GMS Document 36 Filed 01/22/14 Page 19 of 31 Page|D #: 1198
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`omitted) (citing cases); see also 35 U.S.C. § 315(e)(2).
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`2.
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`Staying the BSI Cases Will Simplify the Issues Even if Not Every Asserted
`Claim Undergoes IPR.
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`Faced with the indisputable simplification that would result fiom a stay pending
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`resolution of the 1PRs, BS1’s primary argument is that a stay is not appropriate because not every
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`claim that BS1 may ultimately assert is undergoing IPR.
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`(See, e.g., D.1. 28, Nov. 26, 2013 Tele.
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`Conf. Tr. at 8: 14-21, 9:18-19.) This argument fails for numerous reasons.
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`First, BS1’s “every claim” argument ignores the fact that BS1 has failed to identify any
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`other asserted claims, despite the Defendants’ requests that BS1 do so. Indeed, the Court
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`acknowledged that the Defendants’ concerns about BS1’s failure to do so “have merit.” (Id. at
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`17:20-18: 12, 30:16-31:14). As another Court explained when rejecting this type of argument,
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`“[the patent owner] has not identified the claims which it contends are infiinged. While not
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`required to do so at this time, we note that it is unhelpfiil in its opposition to the motion for stay
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`to simply point out that there are 61 claims, only three of which are challenged in the inter partes
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`review application.” SSWH0lding C0. V. Schott Gemtron C0rp., No. 3: 12-cv-661-S, 2013 WL
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`4500091, at *1, *3-4 (W.D. Ky. Aug. 21, 2013) (staying case where only 3 of 61 potential
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`asserted claims were subject of IPR petition). Having made a strategic decision to withhold this
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`information, BS1 carmot legitimately argue that a stay is inappropriate on the ground that not
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`every potentially asserted claim is the subject of an 1PR petition. Denying a stay on this ground
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`would only reward BS1 for withholding the claims it intends to assert until afier the one-year
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`deadline for filing an 1PR petition, see 35 U.S.C. § 315(b), and impeding the Defendants’
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`abilities to fairly avail themselves of the 1PR process.
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`Moreover, if the BS1 cases are not stayed, BS1’s apparently strategic delay in identifying
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`the allegedly infiinged claims does not necessarily preclude the Defendants fiom seeking 1PR as
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`-12-
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`Zimmer Holdings, Inc. and Zimmer, Inc.
`Exhibit 1011 - 19
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`

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`Case 1:12—cv—O1107—GMS Document 36 Filed 01/22/14 Page 20 of 31 Page|D #: 1199
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`to additional claims of patents for which stand-alone” IPR petitions were timely filed. This is
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`because “the one-year time bar [under § 3 l5(b) for filing an IPR petition] does not apply to a
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`request for joinder.” Microsoft Corp., 2013 WL 5947704, at *2; see 35 U.S.C. §§ 3l5(b), (c).
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`Accordingly, if these cases were to go forward, the Defendants would still have time to file IPR
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`petitions on additional claims asserted by BS1 (if the claims are in a patent already undergoing
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`IPR) and request joinder of such petition with the corresponding pending petition(s)—whether
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`filed by the Defendant seeking joinder or another party. See 35 U.S.C. §§ 3 l5(b), (c); 37 C.F.R.
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`§§ 42.10l(b), 42.122(b); Microsoft, 2013 WL 5947704, at *2 (granting motion for joinder as to a
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`second IPR petition filed over a year afier service of complaint alleging infiingement of the IPR
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`patent where patent owner asserted “additional claims” in concurrent district court litigation after
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`original IPR petition had been timely filed). This is yet another reason why BSI’s “every claim”
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`argument does not justify denial of a stay.
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`Second, BSI’s “every claim” argument is wrong as a matter of law. Even where “the
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`issues that would remain for litigation do exceed those that might be resolved through the
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`reexamination process,” simplification of the issues “is undeniably a benefit of the requested stay
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`and should be recognized as such.” Image Vision.Net, Inc. V. Internet Payment Exchange, Inc.,
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`No. l2-054-GMS-MPT, 2012 WL 5599338, at *4 (D. Del. Nov. 15, 2012). “[T]he ‘issue
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`simplification’ factor does not require complete overlap.” Neste Oil, 2013 WL 3353984, at *5.
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`Third, BSI’s “every claim” argument ignores the relatedness of the patents and claims at
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`issue in the BSI cases and the pending IPR petitions. Numerous courts have found that the scope
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`of claims not undergoing PTO review can still be clarified by PTO proceedings as to other
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`claims in the same or a related patent. See, e.g., Software Rights Archive, 2013 WL 5225522, at
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`14 See supra note 8 and accompanying text.
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`-13-
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`Zimmer Holdings, Inc. and Zimmer, Inc.
`Exhibit 1011 - 20
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`

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`Case 1:12—cv—O1107—GMS Document 36 Filed 01/22/14 Page 21 of 31 Page|D #: 1200
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`*5 (finding issue simplification despite the fact that the patentee might still assert 40 additional
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`claims); Robert Bosch Healthcare Sys., Inc. V. ExpressMD Solutions, LLC, No. C. 12-00068
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`JSW, 2013 WL 752474, at *4 (N.D. Cal. Feb. 27, 2013) (issues simplified even though one of
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`the asserted patents not subject to reexamination and the PTO had declined to reexamine some of
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`the claims in another asserted patent). Even if BS1 later asserts claims that are not the subject of
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`IPR, simplification will still result to the extent the additional claims are related to and/or share
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`common claim terms with the claims undergoing IPR. See Ruckus Wireless, Inc. V. Netgear,
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`Inc., No. C 09-5271 PJH, 2010 WL 1222151, *1 (N.D. Cal. Mar. 25, 2010) (simplification
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`would result due to common claim terms). Indeed, issue simplification is a “real possibility”
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`where, as here, patents subject to IPR have identical or near-identical specifications and share
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`common claim tern1s—even if not every asserted patent and not every potentially asserted claim
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`is the subject of IPR. See id.; see also SMT Solutions, Inc. V. ExpoEvent Supply LLC, No. 11-
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`6225 (ES) (CLW), 2012 WL 3526830, at *4 (D.N.J. Aug. 15, 2012) (finding simplification
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`where “not all of the patents-in-suit are under reexamination” because “the patents-in-suit all
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`share nearly identical disclosures”); Procter & Gamble Co. V. Kraft Foods Global, Inc., No. C
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`08-0930 PJH, 2008 WL 3833576, at *1 (N.D. Cal. Aug. 15, 2008) (staying case because “closely
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`related” and “sufficiently similar” patent was undergoing reexamination); Alloc, 2003 WL
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`21640372, at *2 (granting stay where “there is a sufficient correlation among all of the patents”
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`although asserted patent not undergoing review).
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`Fourth, the Defendants’ willingness—in order to facilitate a stay—to subject themselves
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`to an estoppel based on another Defendant’s or S&N’s IPR petitions on the knee patents will
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`fiirther simplify the issues. The Defendants’ proposed scope of estoppel is consistent with other
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`orders issued by this Court staying litigations involving some defendants who are not IPR
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`-14-
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`Zimmer Holdings, Inc. and Zimmer, Inc.
`Exhibit 1011 - 21
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`

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`Case 1:12—cv—O1107—GMS Document 36 Filed 01/22/14 Page 22 of 31 PageID #: 1201
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`petitioners. See AIP Acquisitions, No. 1:12-cv-00617-GMS (D. Del. Jan. 7, 2014), D.I. 62 (Ex.
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`R); id., D.I. 63 (D. Del. Jan. 9, 2014) (Ex. S); In re Bear Creek Techs, 2013 WL 3789471. As
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`this Court recognized in AIP Acquisitions, “a limited estoppel against [the non-IPR] defendants
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`regarding arguments actually raised by [a petitioner-defendant] in [its] IPR proceeding would
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`reduce prejudice against the [patentee] and simplify issues at trial.” Id., D.I. 60 at 5 (Ex. T).
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`Other courts have also stayed actions pending third-party IPRs and applied limited or no
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`estoppel to affected defendants who are not IPR petitioners—even where the IPR petition had
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`not yet been instituted by the PTO. See, e.g., e- Watch, Inc. V. Lorex Canada, Inc., No. 4: 12-cv-
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`03314, slip op. at 5-7 (S.D. Tex. Sept. 26, 2013) (declining to require full, statutory estoppel as
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`to non-petitioners, granting a stay before institution of a third-party IPR, and applying limited
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`estoppel to defendant) (Ex. X); e- Watch, Inc. v. ACTi Corp., No. 5:12-cv-00695-FB-PMA, slip
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`op. at 17 (W.D. Tex. Aug. 9, 2013) (granting a stay before institution of a third-party IPR and
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`applying no estoppel to defendant) (Exs. Y, Z). Although not binding on this Court, these
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`decisions further support granting a stay in light of the limited estoppel to which the Defendants
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`in the BSI cases are willing to stipulate.
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`BS1, however, argues that all Defendants should be bound by the full scope of estoppel
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`prescribed by 35 U.S.C. § 315(e)(2), regardless of whether the Defendant filed an IPR petition.
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`(See D.I. 32, Dec. 12, 2013 Tele. Conf Tr. at 15:15-16:3.) But in addition to being at odds with
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`this Court’s previous orders imposing a stay premised in part on a limited estoppel stipulation in
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`the AIP Acquisitions and Bear Creek cases, BSI’s position is contradicted by the statute, which
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`expressly limits the estoppel to “the petitioner,” “the real party in interest,” or the “privy of the
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`-15-
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`Zimmer Holdings, Inc. and Zimmer, Inc.
`Exhibit 1011 - 22
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`

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`Case 1:12—cv—O1107—GMS Document 36 Filed 01/22/14 Page 23 of 31 PageID #: 1202
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`petitioner.”15 35 U.S.C. § 315(e)(2).
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`BSI’s argument is also contradicted by the statute’s legislative history, which makes clear
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`that automatically extending statutory estoppel to co-defendants would be “manifestly unfair”:
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`Whether equity allows extending privity estoppel to codefendants in litigation,
`however, will depend in large measure upon the actions of the patent owner, and
`whether he has made it reasonably and reliably clear which patent claims he is
`asserting and what they mean.
`If one defendant has instituted inter partes
`review, but other defendants do not have the opportunity to join that review
`before it becomes reasonably clear which claims will be litigated and how they
`will be construed, it would be manifestly unfair to extend privity estoppel to
`the codefendant.
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`157 Cong. Rec. S1360-02, at *S1376 (daily ed. Mar. 8, 2011) (statement of Sen. Kyl) (emphases
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`added), available at 2011 WL 797877.
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`In sum, there is no merit to BSI’s argument that the Defendants’ proposed estoppel is an
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`attempt to “subvert the bargain that we came up with in the AIA,” which includes a “broad
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`estoppel.”16 (See D.1. 28, Nov. 26, 2013 Tele. Conf Tr. at 21:1—12.) Nothing in the statute,
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`15
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`16
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`The estoppel provisions of§ 315(e)(2) carmot apply to ConforMIS, for example, because it:
`(1) has not filed an IPR petition; (2) has no control over the IPR proceedings initiated by
`S&N, Wright Medical, or Zimmer; and (3) is neither the real party in interest nor in privity
`with S&N, Wright Medical, or Zimmer in those proceedings. While statutory estoppel may
`ultimately apply to Zimmer with respect to the IPR petitions it filed on the ’73 6, ’635, and
`’896 patents, no statutory estoppel applies to Zimmer with respect to S&N’s IPR petitions on
`the ’821, ’896, ’9229, and ’3229 patents or Wright Medical’s IPR petition on the ’896 patent.
`Likewise, while statutory estoppel may ultimately apply to Wright Medical with respect to
`the IPR petition that it filed on the ’896 patent, no statutory estoppel applies to Wright
`Medical with respect to S&N’s IPR petitions on the ’821, ’896, ’9229, and ’3229 patents or
`Zimmer’s IPR petitions on the ’736, ’635, and ’896 patents.
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`Contrary to BSI’s suggestion, the Defendants are not trying to circumvent the statutory
`estoppel provisions of the AIA; rather, BS1 seeks to expand those provisions beyond the
`scope set forth in the AIA. If BS1 really believes that a non-petitioner Defendant should be
`estopped to the same extent applicable to an IPR petitioner under § 315(e)(2), BS1 may
`challenge the petitioner’s identification of the real party in interest by “provid[ing] objective
`evidence” of the real party or parties in interest. See Changes to Implement Inter Partes
`Review Proceedings, Post-Grant Review Proceedings, and Transitional Program for Covered
`Business Method Patents, 77 Fed. Reg. 48,679, 48,695 (Aug. 14, 2012) (codified at 37
`
`-15-
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`Zimmer Holdings, Inc. and Zimmer, Inc.
`Exhibit 1011 - 23
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`

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`Case 1:12—cv—O1107—GMS Document 36 Filed 01/22/14 Page 24 of 31 Page|D #: 1203
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`legislative history, or case law supports BS1’s position that a stay is inappropriate unless each
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`Defendant subjects itself to the filll scope of statutory estoppel with respect to all of the
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`applicable IPR petitions, regardless of whether the Defendant filed the petition, is a real party in
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`interest to the petitioner, or is in privity with the petitioner.
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`Fifth, the DePuy and Biomet Actions may proceed to final judgment while the BS1 cases
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`in this District are stayed. The parties in the DePuy Action have exchanged preliminary
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`infiingement and invalidity contentions, Markman briefing has begun, the Markman hearing is
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`set for March 27, 2014, and dispositive motions are due on October 23, 2014. (See Ex. F at 5-8.)
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`Markman briefing in the Biomet Action is scheduled to conclude on May 12, 2014.
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`(Ex. 1 at 2.)
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`The more advanced stages of these actions present an additional reason for staying the BS1 cases,
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`because “should a patent or patents be found to be invalid” in the DePuy or Biomet Actions,
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`“simultaneous progressing of litigation [in those actions] and here would be superfluous and a
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`waste of this Court’s and the attorneys’ time.” Consolidated Aluminum, 1988 WL 32213, at *1.
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`B.
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`A Stay of the BSI Cases Will Not Unduly Prejudice, or Present a Clear Tactical
`Disadvantage to, BSI.
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`BS1 will not be unduly prejudiced or suffer a clear tactical disadvantage if the BS1 cases
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`are stayed pending resolution of the IPR petitions. “[B]ecause [BS1] is a non-practicing entity,
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`any prejudice that may result fiom a stay can be remedied by monetary damages.” Walker
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`Digital, 2013 WL 1489003, at *2. The lack of prejudice or tactical disadvantage is confirmed by
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`BS1’s delay of almost 120 days in serving the Complaints in the BS1 cases.
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`When considering whether a party will suffer “undue prejudice” or a “tactical
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`disadvantage” fiom a stay pending PTO review, courts in this District consider: (1) the timing of
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`C.F.R. §§ 42.100 et seq.). Alternatively, BS1 may seek to have another party found to be a
`“privy” of the petitioner. BS1 has done neither.
`
`-17-
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`Zimmer Holdings, Inc. and Zimmer, Inc.
`Exhibit 1011 - 24
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`

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`Case 1:12—cv—O1107—GMS Document 36 Filed 01/22/14 Page 25 of 31 PageID #: 1204
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`the request(s) for PTO review and the timing of the stay request, (2) the status of the PTO
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`proceedings, and (3) the relationship between the parties, and the related question of whether the
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`plaintiff may be compensated through future money damages. Celorio, 2013 WL 4506411, at *1
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`n. 1. “The potential for litigation delay is not, by itself, dispositive and does not demonstrate that
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`a party will be unduly prejudiced.” BodyMedia, Inc. v. Basis Sci., Inc., No. 12-cv-133 (GMS),
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`2013 WL 2462105, at *1 n.l (D. Del. June 6, 2013).
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`Relationship Between the Parties. The relationship between the Defendants, who are
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`participants in the knee-replacement market, and BS1, “a non-practicing entity, which does not
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`manufacture or sell the products covered by the patents in suit and seeks to collect licensing
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`fees,” favors a stay. See Mission Abstract Data L.L. C. v. Beasley Broadcast Grp., No. 11-176-
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`LPS, 2011 WL 5523315, at *4 (D. Del. Nov. 14, 2011). “Since [BS1] is a technology licensing
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`company, monetary damages can adequately compensate it for any potential infiingement.
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`Courts have consistently found that a patent licensor carmot be prejudiced by a stay because
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`monetary damages provide adequate redress for infiingement.” Implicit Networks, Inc. v.
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`Advanced Micro Devices, Inc., No. C08-184JLR, 2009 WL 357902, at *3 (W.D. Wash. Feb. 9,
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`2009) (emphasis added) (collecting cases); see also In re Bear Creek Techs., 2013 WL 3789471,
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`at *3 n.8 (no prejudice to non-practicing entity because monetary damages sufficient to
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`compensate). BS1 certainly will not be unduly prejudiced by a stay. See Celorio, 2013 WL
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`4506411, at *1 n.l (no undue prejudice where patentee could be compensated with money
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`damages).
`
`The Timing of the IPR Petitions and this Motion Favor a Stay. Zimmer, Wright
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`Medical, and S&N filed their respective IPR petitions, and the Defendants jointly filed this stay
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`motion, before a schedule has been set in any of the BS1 cases, before any substantive activity
`
`-18-
`
`Zimmer Holdings, Inc. and Zimmer, Inc.
`Exhibit 1011 - 25
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`

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`Case 1:12—cv—O1107—GMS Document 36 Filed 01/22/14 Page 26 of 31 Page|D #: 1205
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`has occurred in any of those cases, and before discovery has commenced. Under these
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`circumstances, the applicable IPR petitions and this motion were filed “in a timely fashion.” See
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`Ever Win Int’l Corp. V. Radioshack Corp., 902 F. Supp. 2d 503, 508-09 (D. Del. 2012) (timing of
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`requests for PTO review and stay made over six months after filing of complaint favored a stay).
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`Further, the Defendants have no dilatory motive and were not “motivated by inappropriate
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`litigation tactics” or “a case event that harmed [their] litigation position” in their independent
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`filing of IPR petitions and subsequent joint filing of this motion. See id.; see also BodyMedia,
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`2013 WL 2462105, at *1 n.l (no evidence of “dilatory motive” where request for PTO review
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`and stay motion were filed before entry of scheduling order and before any discovery). This sub-
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`factor favors a stay.
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`The Status ofthe PT0 Proceedings. The early stage of the PTO proceedings does not
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`weigh against granting a stay. First, “[i]t is not uncommon for courts to grant stays pending”
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`PTO review even before the PTO has decided to grant review.” Air Vent, Inc. V. Owens Corning
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`Corp., No. 02:10-cv-01699, 2012 WL 1607145, at *3 (W.D. Pa. May 8, 2012); see also, e.g.,
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`Software Rights Archive, 2013 WL 5225522, at *1-6 (granting stay before IPR instituted);
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`Princeton Digital Image Corp. V. Konami Digital Entm ’t, Inc., No. 1:12-cv-01561-LPS-CJB, slip
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`op. at 5 (D. Del. Jan. 15, 2014) (Ex. AA) (granting stay before IPR instituted; defendants not
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`estopped). In the case of IPRs, the PTO is statutorily obligated to decide whether to grant review
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`within six months of a petition being filed and complete its review and issue a final
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`17 As this Court recognized during the November 26 hearing, other courts have been granting
`stays pending IPR before the PTO actually grants the underlying petition.
`(See D.I. 28, Nov.
`26, 2013 Tele. Conf. Tr. at 11:1-6.)
`
`-19-
`
`Zimmer Holdings, Inc. and Zimmer, Inc.
`Exhibit 1011 - 26
`
`

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`Case 1:12—cv—O1107—GMS Document 36 Filed 01/22/14 Page 27 of 31 Page|D #: 1206
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`determination within 18 months of 1i1ing.“‘ See 35 U.S.C. §§ 314(1)), 3 16(a)(l 1). Consequently,
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`the early stage of the IPR petitions does not “overcome the weight of th[o]se other sub-factors”
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`with respect to undue prejudice. See Neste Oil, 2013 WL 3353984, at *4.
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`For all of these reasons, this factor favors a stay.
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`C.
`
`The Early Stage of this Litigation Strongly Favors a Stay.
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`Although more than 16 months have passed since BS1 filed the BS1 cases, they are still in
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`their earliest stages. Indeed, despite the passage of time, the true stage of these cases is apparent
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`in view of the dearth of activity to date. The parties have not exchanged any discovery; the
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`Court has deferred setting a schedule until it decides the present motion to stay;19 and the Court
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`has not issued any substantive rulings on issues of claim construction, infringement, invalidity,
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`or damages. In short, very little has happened in these cases—either procedurally or
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`substantively. Because the BS1 cases are at such an early stage, this factor weighs “strongly” in
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`favor of granting a stay. Neste Oil, 2013 WL 3353984, at *5.
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`V.
`
`CONCLUSION
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`For all of the foregoing reasons, the Defendants respectfiilly request that the Court stay
`
`the BS1 cases pending resolution of Zimmer’s, Wright Medical’s, and S&N’s IPR petitions.
`
`18 The PTO’s one-year decision-making period may be extended for good cause by not more
`than six months, 35 U.S.C. § 3 l6(a)(l 1); 37 C.F.R. § 42. l00(c), although “[e]xtensions of the
`one-year period are anticipated to be rare,” 77 Fed. Reg. at 48,695.
`
`19 See supra note 5 and accompanying text.
`
`-20-
`
`Zimmer Holdings, Inc. and Zimmer, Inc.
`Exhibit 1011 - 27
`
`

`
`Case 1:12—cv—O1107—GMS Document 36 Filed 01/22/14 Page 28 of 31 PageID #: 1207
`
`Dated: January 22, 2014
`
`Respectfirlly submitted,
`
`/s/ Jeremy A. Tigan
`Jack B. Blumenfeld (No. 1014)
`Jeremy A. Tigan (No. 5239)
`MORRIS, NICHOLS, ARSHT &
`TUNNELL LLP
`
`1201 North Market Street, 16th Floor
`P.O. Box 1347
`
`Wilmington, DE 19899
`Telephone: (302) 658-9200
`Facsimile: (302) 658-3989
`E-mail:
`'blumenfeld@mnat.com
`E-mail:
`'tigan@mnat.com
`
`Ken Liebman (admittedpro hac vice)
`Elizabeth Cowan Wright (admittedpro hac vice)
`FAEGRE BAKER DANIELS LLP
`
`2200 Wells Fargo Center
`90 South 7th Street
`
`Minneapolis, MN 55402
`Telephone: (612) 766-7000
`Facsimile: (612) 766-1600
`E-mail: ken.liebman@faegrebd.com
`E-mail: elizabeth.cowanwright@faegrebd.com
`
`Daniel M. Lechleiter (admittedpro hac vice)
`FAEGRE BAKER DANIELS LLP
`
`300 N. Meridian Street, Suite 2700
`Indianapolis, IN 46204
`Telephone: (317) 237-0300
`Facsimile: (317) 237-1000
`E-mail: daniel.lechleiter@faegrebd.com
`
`Attorneys for Defendants Zimmer Holdings, Inc.
`and Zimmer, Inc.
`
`-21-
`
`Zimmer Holdings, Inc. and Zimmer, Inc.
`Exhibit 1011 - 28
`
`

`
`Case 1:12—cv—O1107—GMS Document 36 Filed 01/22/14 Page 29 of 31 Page|D #: 1208
`
`/s/ Melanie K. Sharg
`Melanie K. Sharp (No. 2501)
`Samantha G. Wilson (No. 5816)
`YOUNG CONAWAY STARGATT & TAYLOR, LLP
`Rodney Square
`1000 North King Street
`Wilmington, DE 19801
`Telephone: (302) 571-6681
`E-mail: rnsharp@ycst.com
`E-mail: swilson@,ycst.com
`
`Charles E. Lipsey (admittedpro hac vice)
`FINNEGAN, HENDERSON, FARABOW,
`
`GARRETT & DUNNER, LLP
`Two Freedom Square
`Reston, VA 20190
`Telephone: (571) 203-2700
`E-mail: charles.lipsey@finnegan.com
`
`Howard W. Levine (admittedpro hac vice)
`Sanya Sukduang (admittedpro hac vice)
`FINNEGAN, HENDERSON, FARABOW,
`
`GARRETT & DUNNER, LLP
`901 New York Avenue, NW
`Washington, DC 20001-4413
`Telephone: (202) 408-4000
`E-mail: howard.levine@finnegan.com
`E-mail: Sanya.sukduang@finnegan.com
`
`Alissa K. Lipton (admittedpro hac vice)
`FINNEGAN, HENDERSON, FARABOW,
`
`GARRETT & DUNNER, LLP
`
`Two Seaport Lane
`Boston, MA 02210-2001
`Telephone: (617) 646-1600
`E-mail: alissa.lipton@finnegan.com
`
`Attorneys for Defendant C0nf0rMIS, Inc.
`
`-22-
`
`Zimmer Holdings, Inc. and Zimmer, Inc.
`Exhibit 1011 - 29
`
`

`
`Case 1:12—cv—O1107—GMS Document 36 Filed 01/22/14 Page 30 of 31 PageID #: 1209
`
`/s/ Beniamin A. Smyth
`Matt Neiderman (No. 4018)
`Benjamin A. Smyth (No. 5528)
`DUANE MORRIS LLP
`
`222 Delaware Avenue, Suite 1600
`Wilmington, DE 19801-1659
`Telephone: (302) 657-4900
`Facsimile: (302) 657-4901
`E-mail: mneiderman@duanemorris.com
`E-mail: basm§gh@duanemorris.com
`
`Anthony J. Fitzpatrick (admittedpro hac vice)
`DUANE MORRIS LLP
`
`100 High Street, Suite 2400
`Boston, MA 021 10-1724
`Telephone: (857) 488-4200
`Facsimile: (857) 488-4201
`E-mail: a'fitzpatrick@duanemorris.com
`
`Samuel W. Apicelli (admittedpro hac vice)
`Jeffiey S. Pollack (admittedpro hac vice)
`DUANE MORRIS LLP
`
`30 South 17th Street
`
`Philadelphia, PA 19103
`Telephone: (215) 979- 1000
`Facsimile: (215) 979-1020
`E-mail: swapicelli@duanemorris.com
`E-mail:
`'spollack@duanemorris.com
`
`Michael A. Albert
`
`James J. Foster
`
`WOLF, GREENFIELD & SACKS, P.C.
`600 Atlantic Avenue
`
`Boston, MA 02210-2206
`Telephone: (617) 646-8000
`Facsimile: (617) 646-8646
`E-mail: malbert@wolfgreenf1eld.com
`E-mail:
`'foster@wolfgreenfield.com
`
`Attorneys for Defendants Wright Medical Group,
`Inc. and Wright Medical Technology
`
`-23-
`
`Zimmer Holdings, Inc. and Zimmer, Inc.
`Exhibit 1011 - 30
`
`

`
`Case 1:12—cv—O1107—GMS Document 36 Filed 01/22/14 Page 31 of 31 PageID #: 1210
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on January 22, 2014, I caused the foregoing to be electronically filed
`
`with the Clerk of the Court using CM/ECF, which will send notification of such filing to all
`
`registered participants.
`
`1 fiirther certify that I caused copies of the foregoing document to be served on
`
`January 22, 2014, upon the following in the manner indicated:
`
`Philip A. Rovner
`Jonathan A. Choa
`
`Potter Anderson & Corroon LLP
`
`Hercules Plaza
`
`13 13 N. Market Street
`
`Wilmington, DE 19801
`(302)984-6000
`provner@potteranderson.com
`jchoa@potteranderson.com
`
`Brian M. Rothery
`Steven B. Pokotilow
`
`Deepal S. Chadha
`Stroock & Stroock & Lavan LLP
`
`180 Maiden Lane
`
`New York, NY 10038
`(212)806-5400
`brothery@stroock.com
`spokotilow@stroock.com
`dchadha@stroock.com
`
`VIA ELECTRONIC MAIL
`
`VIA ELECTRONIC MAIL
`
`/s/ Jeremy A. Tigan
`
`-24-
`
`Zimmer Holdings, Inc. and Zimmer, Inc.
`Exhibit 1011 - 31