Case 1:12-cv-01107-GMS Document 45 Filed 04/07/14 Page 1 of 15 PageID #: 2110
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`IN THE UNITED STATES DISTRICT COURT
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`FOR THE DISTRICT OF DELAWARE
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`BONUTTI SKELETAL INNOVATIONS, L.L.C.,
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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, L.L.C.,
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`CONFORMIS, INC.,
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`Plaintiff,
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`Defendant.
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`BONUTTI SKELETAL INNOVATIONS, L.L.C.,
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`Plaintiff,
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`WRIGHT MEDICAL GROUP, INC. and
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`WRIGHT MEDICAL TECHNOLOGY, INC.,
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`Defendants.
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`VvvvvvvvvVVVVvvvvvvvvvvvvvvvvvvvvv
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`CA. No. 12—cv-1107 (GMS)
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`CA. No. 12—cv-1109 (GMS) .
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`CA. No. l2—cv-1110(GMS)
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`Zimmer Holdings, Inc. and Zimmer, Inc.
`Exhibit 1012 - 1
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`

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`Case 1:12-cv-01107-GMS Document 45 Filed 04/07/14 Page 2 of 15 PagelD #: 2111
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`I.
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`INTRODUCTION
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`MEMORANDUM
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`On September 10, 2012, the plaintiff, Bonutti Skeletal Innovations LLC (“Bonutti”), filed
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`suit against Zimmer, Inc. and Zimmer Holdings, Inc. (collectively “Zimmer”), (D.I. 1, D.I. 10 in
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`12—1107), ConforMIS, Inc. (“ConforMIS”), (D.I. 1, D.I. 46 in 12-1109), Wright Medical Group,
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`Inc. and Wright Medical Technology, Inc. (collectively “Wright”), (D.I. l, D.I. 7 in 12-1110), and
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`Smith & Nephew, Inc. (“Smith”), (D.I. 1, D.I. 9 in 12-1111).1 The court will henceforth refer to
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`Zimmer, ConforMIS, Wright, and Smith as “the Defendants”.
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`In each of its complaints, Bonutti
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`alleged that the Defendants had infringed from one to all of six related patents directed to knee
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`implants. 1d. The six patents are US. Patent Nos. 6,702,821 (“’821 patent”); 7,806,896 (“’896
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`patent”); 8,133,229 (“’3229 patent”); 7,837,736 (“’736 patent”); 7,959,635 (“’635 patent”); and
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`7,749,229 (“’9229 patent”). Bonutti asserts all six patents against Zimmer, the ’896 patent against
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`ConforMIS, and the ’821, ’896, and ’3229 patents against Wright. (DI. 36 at 4.)2
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`Currently, four out of six of the patents are the subjects of inter partes review (“IPR”)
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`petitions before the US Patent and Trademark Office (“PTO”). Two of the IPR petitions have
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`been granted and the rest are pending. In particular, the ‘896 patent is the subject of three separate
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`IPR petitions filed by Smith, Zimmer, and Wright.
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`(D.I. 36 at 6-7.) Smith filed a petition on
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`independent claims 1 and 13, Zimmer filed a petition on independent claim 40, and Wright filed a
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`petition on independent claims 1, 13, 25, and 40.
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`(D.I. 36 at 7; D.[. 29 at 11 6 in 12-1111.) The
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`parties also filed petitions regarding some dependent claims of the “896 patent. On February 28,
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`Although Bonutti filed the complaints in September 2012, it did not serve the complaints on any of the
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`Defendants until January 4, 2013. (DJ. 5 in 12-1107, 12-1109, 12-1110, and 12-1111.)
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`Bonutti initially asserted the ’821, ’896, ’3229, and ’9229 patents against Smith. On January 3, 2014,
`2
`however, Bonutti and Smith stipulated to a dismissal without prejudice of Bonutti’s claims against Smith.
`(D.I. 51
`and 52 in 12-1111.)
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`Zimmer Holdings, Inc. and Zimmer, Inc.
`Exhibit 1012 - 2
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`

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`Case 1:12-cv-01107-GMS Document 45 Filed 04/07/14 Page 3 of 15 PagelD #: 2112
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`2014, the PTO granted Smith’s petition for review of claim 1 of the ‘896 patent and denied Smith’s
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`petition for review of claim 13. (D.I. 42 at 1 and DI. 43 at 1 in 12-1107.) The ‘736 patent is the
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`subject of an IPR petition that Zimmer filed regarding independent claims 15 and 31, as well as
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`certain dependent claims. (BI. 36 at 7.) The ‘635 patent is the subject of an IPR petition filed by
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`Zimmer regarding independent claims 1 and 30, as well as some of its dependent claims.
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`(Id)
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`The ‘9229 patent was the subject of an IPR petition filed by Smith regarding independent claim
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`23. (BI. 29 at 1i 6 in 12-11 1 1.) On February 26, 2014, the PTO granted Smith’s IPR petition as
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`to claim 23 ofthe ‘9229 patent. (D.I. 42 at 1 and D1. 43 at 2 in 12-l107.)
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`Presently before the court is the Defendants’ Joint Motion to Stay Litigation Pending Inter
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`Partes Review (“Motion to Stay”).
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`(D.I. 35 in 12-1107; D.I. 42 in 12—1109; and DI. 33 in 12-
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`11103) For the reasons that follow, the court will grant the Defendants’ Motion to Stay
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`II.
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`BACKGROUND
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`Bonutti is the owner, through assignment of the six patents—in-suit:
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`the ‘821 patent, titled
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`“Instrumentation for Minimally Invasive Joint Replacement and Methods for Using the Same”;
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`the ‘896 patent, titled “Knee Arthroplasty Method”; the ‘3229 patent, titled “Knee Arthroplasty
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`Method”; the ‘736 patent, titled “Minimally Invasive Surgical Systems and Methods”; the ‘635
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`patent, titled “Limited Incision Total Joint Replacement Methods”; and the ‘9229 patent, titled
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`“Knee Arthroplasty Method”.
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`(D1. 10 at 2-3.) The patents are directed to, among other things,
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`specialized procedures, instruments, implants, and systems for performing minimally invasive
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`knee surgery.
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`(D.I. 1 and DI. 10in 12-1107; D.I. 1 and BI. 46 in 12—1109; D.I. 1 and DI. 7 in
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`For ease of reference, the court will henceforth cite to the copies of the Defendants’ Motion to Stay, Bonutti’s
`3
`Opposition, the Defendants’ Reply, and associated declarations that have been filed in 12-1107, except where
`unavailable in 12-1107. Thus, where the case number is not specified in a citation, the docket index number refers to
`12-1107.
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`Zimmer Holdings, Inc. and Zimmer, Inc.
`Exhibit 1012 - 3
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`

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`Case 1:12-cv-01107-GMS Document 45 Filed 04/07/14 Page 4 of 15 PagelD #: 2113
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`12-1110; D1. 1 and DI. 9 in 12-1111.) Bonutti alleges that each of the Defendants designs, offers
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`for sale, and distributes, among other actions taken, knee implants and surgical instruments used
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`in knee surgery in a way that infringes from one to all of the six patents. (Id)
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`III.
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`LEGAL STANDARD
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`As part of the court’s “inherent power to conserve judicial resources by controlling its own
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`docket”, the court may exercise its discretion to stay a pending litigation. Cost Bros, Inc. v.
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`Travelers Indem. Co., 760 F.2d 58, 60 (3d Cir. 1985).
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`It is well established that the court’s
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`authority to stay litigation extends to patent cases in which the PTO has been asked to conduct a
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`reexamination of a patent. Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1426—27 (Fed. Cir. 1988)
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`(“Courts have inherent power to manage their dockets and stay proceedings,
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`including the
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`authority to order a stay pending conclusion of a PTO reexamination”).
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`To determine whether staying a case is appropriate, the court balances the following three
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`factors: “(1) whether a stay would unduly prejudice or present a clear tactical disadvantage to the
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`non-moving party; (2) whether a stay will simplify the issues in question and trial of the case; and
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`(3) whether discovery is complete and [a] trial date has been set.” Bayer Intellectual Prop. GmbH
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`v. Warner Chilcott Co., No. 12-1032-GMS, 2013 US. Dist. LEXIS 172735, at *3-4 (D. Del. Dec.
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`9, 2013) (quoting First Am. Title Ins. Co. v. MacLaren LLC, No. 10—363-GMS, 2012 U.S. Dist.
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`LEXIS 31508, at *4 (D. Del. Mar. 9, 2012)).
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`IV.
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`DISCUSSION
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`A. Undue Prejudice
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`Staying a case pending inter partes review can result in some prejudice to the plaintiff by
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`virtue of prolonging the dispute. See Textron Innovations, Inc. v. Toro Co., No. 05-486—GMS,
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`2007 WL 7772169, at *2 (D. Del. Apr. 25, 2007). Potential delay does not in itself establish undue
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`prejudice to the non-movant, however. See, e. g., BodyMedia, Inc. v. Basis Sci, Inc, No. 12-CV—
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`4
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`Zimmer Holdings, Inc. and Zimmer, Inc.
`Exhibit 1012 - 4
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`

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`Case 1:12-cv-01107-GMS Document 45 Filed 04/07/14 Page 5 of 15 PagelD #: 2114
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`133 (GMS), 2013 US. Dist. LEXIS 82830, at * 4 (D. Del. Jun. 6, 2013) (“With regard to the
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`‘undue prejudice’ consideration, the court notes that the potential for litigation delay is not, by
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`itself, dispositive and does not demonstrate that a party will be unduly prejudiced”) In order to
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`best gauge whether granting a stay would cause the non-movant undue prejudice or place it at a
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`tactical disadvantage, the court weighs a variety of subfactors. These include “the timing of the
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`request for reexamination, the timing of the request for stay, the status of the reexamination
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`proceedings, and the relationship of the parties.” Boston Scientific Corp. v. Cordis Corp, 777 F.
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`Supp. 2d 783, 789 (D. Del. 2011).
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`1. Timing of the Request for Inter Partes Review and for Stay
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`In a patent infringement action, the defendant must file an. IPR petition relating to any
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`underlying patent no later than one year after the date on which the complaint is served. See 35
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`U.S.C. § 315(b). The more diligent a defendant is in seeking inter partes review, the less likely it
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`is that the non-movant will be prejudiced by a stay or that the court will find the defendant’s filing
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`of the IPR petition to be a dilatory tactic. See, e. g., TruePosition, Inc. v. Polaris Wireless, Inc,
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`No. 12-646-RGA/MPT, 2013 US. Dist. LEXIS 150764, at *18 (D. Del. Oct. 21, 2013), adopted
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`by No. 12—646-RGA, 2013 US. Dist. LEXIS 160996 (D. Del. Nov. 12,2013).
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`Bonutti argues that
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`the Defendants’
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`IPR petitions are dilatory tactics because the
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`Defendants filed the IPR petitions “almost a year after service of the complaints, months after the
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`Court’s Rule 16 scheduling conference, and immediately prior to the statutory deadline for filing
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`an IPR petition.” (D.I. 39 at 2.) Bonutti also argues that “the IPR petitions filed by Zimmer and
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`Wright are nominal in that they cover an extremely small percentage of the claims in the patents
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`asserted against each party”.
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`(Id. at 10.) The Defendants deny any dilatory motive, however, and
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`point out that a schedule has not been set in any of these cases and discovery has yet to commence.
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`(D.I. 36 at 18-19.) The Defendants also argue that Bonutti’s refusal to specify which of the claims
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`5
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`Zimmer Holdings, Inc. and Zimmer, Inc.
`Exhibit 1012 - 5
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`

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`Case 1:12-cv-01107-GMS Document 45 Filed 04/07/14 Page 6 of 15 PagelD #: 2115
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`in the “multiple patents with large numbers of claims” contributed to the length of time that elapsed
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`before they filed their IPR petitions.
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`(D.I. 40 at 6-7.)
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`The court concludes that the Defendants are correct.
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`In the instant cases, each of the
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`Defendants’ IPR petitions were timely filed between eight months to exactly a year after Bonutti
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`served its complaints on the Defendants.4 The last of the petitions were filed by January 2014.
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`(See D.I. 35, Exs. M, N, O, and P in 12-1110; D.I. 29, Exs. D and F in 12-1111.) Bonutti does not
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`deny that, as the Defendants contend and the record shows, all of the petitions were filed before
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`the court had set a schedule and before discovery had commenced, and that the teleconferences to
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`date have mostly focused on whether the court should stay these cases. (D.I. 36 at 18-19; D.I. 39
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`at 10.) Because the IPR petitions were filed before any significant occurrences and proceedings
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`in the instant cases, the court rules that the petitions were filed in a timely fashion. Compare Ever
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`Win Int ’1 Corp. v. Radioshack Corp, 902 F. Supp. 2d 503, 508-09 (D. Del. 2012) (concluding that
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`the defendant’s IPR petition was timely filed because “although Defendant did not make its request
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`for reexamination (and its follow-on request for a stay) immediately after it was served...[i]ts
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`requests were filed at a time when little substantive activity had yet occurred) and BodyMedia,
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`2013 US. Dist. LEXIS at *9 (concluding that “the timing of the reexamination and stay requests
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`do not evidence any dilatory motive” because they were filed “before a Scheduling Order was
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`entered and any discovery was conducted”) with TruePositz'on, 2013 US. Dist. LEXIS 150764 at
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`in 12-1107 and 12-
`l
`(D.I.
`Bonutti served the complaint on both Zimmer and Smith on January 4, 2013.
`4
`1111.) Consistent with the statutory deadline, Zimmer filed each of its IPR petitions by January 4, 2014.
`(See D.I.
`35, Ex. M in 12-1110 (indicating that Zimmer filed its IPR regarding the ‘736 patent on November 22, 2013); Ex. N
`(indicating that Zimmer filed its IPR regarding the ‘635 patent on December 31, 2013); Ex. 0 (indicating that Zimmer
`filed its IPR regarding the ‘896 patent on January 3, 2014).) Smith, too, filed each of its IPR petitions by January 4,
`2014.
`(See DJ. 29, Ex. D in 12-1111 (indicating that Smith filed its IPR petition regarding the ‘9229 patent on
`September 25, 2013); Ex. F (indicating that Smith filed its IPR petition regarding the ‘896 patent on September 26,
`2013).) The ‘896 patent that was the subject of Wright’s IPR petition was asserted against Wright in a first amended
`complaint that Bonutti served upon Wright on January 15, 2013. Consistent with the statutory deadline, Wright filed
`its IPR petition on January 15, 2014. (See D.I. 35, Ex. P in l2-l HO.)
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`6
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`Zimmer Holdings, Inc. and Zimmer, Inc.
`Exhibit 1012 - 6
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`

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`Case 1:12-cv-01107-GMS Document 45 Filed 04/07/14 Page 7 of 15 PagelD #: 2116
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`*18 (concluding that that the defendant’s filing its IPR petition close to the end of the statutory
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`deadline suggested a dilatory motive where it was “close to the eve of claim construction briefing,
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`and after substantial document discovery was conducted”).
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`Bonutti’s own contribution to the timing of the Defendants’ IPR petitions also leads the
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`court to conclude that the Defendants’ petitions and stay requests were timely filed. Despite the
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`Defendants’ requests for specificity, Bonutti did not clearly state before the IPR deadline which of
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`the hundreds of claims in its multiple patents it intended to assert against the Defendants.
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`(See,
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`e. g., D1. 10 (stating only “at least one claim” of the patents-in-suit repeatedly); D1. 28, 10:1—25
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`and 12:17-1325 (acknowledging, in response to opposing counsels” assertions, that Bonutti was
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`“not ready to give them a list of claims”).) Under the circumstances, the Defendants’ use of the
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`year-long period to attempt to determine exactly which claims Bonutti would ultimately assert was
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`reasonable. Additionally, the absence of any events or rulings in the instant action that could be
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`potentially harmful to the Defendants’ positions suggests that the Defendants’ stay request is not
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`an inappropriate litigation tactic. See Ever Win Int ’1 Corp, 902 F. Supp. 2d at 508-09 (Observing
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`that “it cannot be asserted that the requests were prompted by, for example, a case event that
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`harmed Defendant's litigation position” where the defendant’s IPR and stay requests “were filed
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`at a time when little substantive activity had yet occurred in this case”).
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`2. Status of the Reexamination Proceedings
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`As the court has recognized, “PTO reexaminations typically result in lengthy delays, which
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`can hinder a plaintiffs ability to obtain timely resolution regarding its allegations of patent
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`infringement.” SenoRx, Inc. v. Hologz'c, Inc, No. 12—173-LPS-CJB, 2013 US. Dist. LEXIS 8044,
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`at *24-25 (D. Del. Jan. 11, 2013). Nonetheless, the mere possibility of a delay in litigation due to
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`a stay pending reexamination is in itself insufficient to establish undue prejudice. See, e. g., Celorio
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`v. 0n DemandBooks, LLC, N0. 12-821-GMS, 2013 US Dist. LEXIS 121449, at *3 (D. Del. Aug.
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`7
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`Zimmer Holdings, Inc. and Zimmer, Inc.
`Exhibit 1012 - 7
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`

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`Case 1:12-cv-01107-GMS Document 45 Filed 04/07/14 Page 8 of 15 PagelD #: 2117
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`21, 2013) (“[T]he mere possibility of a resulting delay is not dispositive and is insufficient to
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`establish that a party will be ‘unduly’ prejudiced”); Neste Oil OYJ v. Dynamic Fuels, LLC, No.
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`12-1744-GMS, 2013 US. Dist. LEXIS 92416, at *4 (D. Del. Jul. 2, 2013) (“The mere potential
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`for delay, however, is insufficient to establish undue prejudice”) (emphasis in original).
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`Bonutti argues that the early stage of the IPR proceedings means that “BS1 will therefore
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`suffer extreme evidentiary prejudice if, three years from now, the parties are just beginning to
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`collect documents and take depositions.” (D1. 39 at 12.) The court finds, however, that Bonutti’s
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`fear of stale evidence is mitigated by the obligation to preserve evidence to which all the parties
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`are already subject and will continue to be subject. See Celorio, 2013 US. Dist. LEXIS at *6
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`(“While the litigation delay may result in some level of difficulty for [plaintiff], it is offset by. . .the
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`fact that parties have a duty to preserve evidence from the point when litigation is pending or
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`reasonably foreseeable”). Thus, the court concludes that the early stage of the IPR proceedings
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`does not render a stay unduly prejudicial.
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`Furthermore, at the time the parties submitted their briefs regarding the motion to stay, the
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`PTO had yet to grant any of the IPR petitions. Since the parties completed briefing, however, the
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`PTO has granted two of the parties’ IPR petitions. Specifically, on. February 26, 2014, the PTO
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`granted Smith’s IPR petition as to claim 23 of the ‘9229 patent.
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`(D.I. 42 at 1, D.I. 43 at 2 in 12-
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`1 107.) Two days later, on February 28, 2014, the PTO granted Smith’s petition for review of claim
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`1 of the ‘896 patent while denying Smith’s petition for review of claim 13.
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`(D1. 42 at 1, D1. 43
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`at 1 in 12-1107.) The timeliness of the PTO’s response to these petitions suggests that the PTO is
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`proceeding with all due haste, in compliance with its statutory obligation, and weighs in favor of
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`granting the stay.
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`Zimmer Holdings, Inc. and Zimmer, Inc.
`Exhibit 1012 - 8
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`

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`Case 1:12-cv-01107-GMS Document 45 Filed 04/07/14 Page 9 of 15 PagelD #: 2118
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`3. Relationship of the Parties
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`As a general matter, courts hesitate to grant stays where the parties are direct competitors.
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`See Vehicle 1P, LLC v. Wal—Mart Stores, Inc, No. 10-503—SLR, 2010 U.S. Dist. LEXIS 123493,
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`at *2 (D. Del. Nov. 22, 2010). The relationship between the parties is no impediment to a stay,
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`however, where the plaintiff is a non—practicing entity. See In re Bear Creek Techs, MDL No. 12-
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`md-2344, 2013 U.S. Dist. LEXIS 103636, at *18 (D. Del. Jul. 17, 2013) (Explaining that the
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`plaintiffs status as “a non-practicing entity composed solely of the [patent]’s inventor”
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`undermined its prejudice assertions); Walker Digital, LLC v. Google, Inc, No. 1 l—309-SLR, 2013
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`US. Dist. LEXIS 52176, at *7 (D. Del. Apr. 11, 2013) (Concluding that “because [the plaintiff] is
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`a non-practicing entity, any prejudice that may result from a stay can be remedied by monetary
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`damages”); Mission Abstract Data LLC v. Beasley Broad. Grp., N0. ll-l76-LPS, 2011 US. Dist.
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`LEXIS 130934, at *12-13 (D. Del. Nov. 14, 2011) (Concluding that the relationship between the
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`parties favored a stay because the plaintiff was “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 fees”)
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`The Defendants argue that the relationship between the parties favors a stay because
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`Bonutti is a non-practicing entity and can be adequately compensated by damages. (D.I. 36 at 18.)
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`Bonutti concedes that it “does not manufacture products or engage in head-to-head competition
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`with Defendants.” (D.I. 39 at 12.) Nevertheless, Bonutti argues that a stay would prejudice it
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`because during a stay, the Defendants would “run roughshod over its patent rights and alter the
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`economics of the market for licenses to the technologies covered by its patents.” (Id) Despite
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`Bonutti’s arguments, its status as a non-practicing entity, rather than a market participant, suggests
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`there is little risk that it will lose sales or goodwill in the market. Thus, the court concludes that
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`this factor favors a stay.
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`Zimmer Holdings, Inc. and Zimmer, Inc.
`Exhibit 1012 - 9
`
`

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`Case 1:12-cv-01107-GMS Document 45 Filed 04/07/14 Page 10 of 15 PageID #: 2119
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`B. Issue Simplification
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`There are many important ways in which granting a stay pending reexamination can
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`simplify the issues in a litigation:
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`(1) all prior art presented to the court at trial will have been first considered by the
`PTO with its particular expertise, (2) many discovery problems relating to the prior
`art can be alleviated, (3) if patent is declared invalid,
`the suit will
`likely be
`dismissed, (4) the outcome of the reexamination may encourage a settlement
`without further involvement of the court, (5) the record of the reexamination would
`probably be entered at trial, reducing the complexity and the length of the litigation,
`(6)
`issues, defenses, and evidence will be more easily limited in pre-trial
`conferences and (7) the cost will likely be reduced both for the parties and the court.
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`Neste Oil OYJ, 2013 US Dist. LEXIS at *12 (citations omitted).
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`The Defendants argue that any amendment or cancellation of challenged claims will
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`streamline claim construction and discovery, and that statistics indicate a high probability that the
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`PTO will indeed cancel or amend these claims. (D.l. 36 at 10-1 1.) The Defendants also argue that
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`the estoppel to which each of the Defendants will be subject will further simplify the issues in the
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`case should the PTO cancel or amend the challenged claims.
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`Id. Furthermore, the Defendants
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`contend, even if the PTO upheld every challenged claim, the count would still benefit from the
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`PTO’s expert analysis. Id. Bonutti counters that any issue simplification from an IPR proceeding
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`would be minimal because the IPR petitions do not involve all of the issues, claims and patents at
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`issue in the litigation. Additionally, Bonutti alleges that the Defendants are engaged in a “scheme”
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`to avoid the full statutory scope of estoppel to which they absolutely must be subject.5 (D.I. 39 at
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`14-17.)
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`Bonutti also argues that the potential value of the PTO’s review is “entirely speculative” until “a scheduling
`5
`order is entered, initial discovery is completed, infringement contentions are produced, and any of the Defendants’
`requests for IPR joinder are decided”. (D1. 39 at 17-18.) A hint of disingenuousness hangs about this argument.
`It
`is contradictory for Bonutti to first argue that the Defendants’ IPR petitions have been filed too late in the litigation,
`as Bonutti did in the hopes of prevailing on the undue prejudice factor, and then now argue that the petitions have
`been filed too early, in order to get the better of the issue simplification factor. Furthermore, there is little support in
`the case law for the notion that the litigation must progress well into discovery in order for the utility of the PTO’s
`review to be determined. Indeed, Bonutti cites no case law at all.
`
`10
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`Zimmer Holdings, Inc. and Zimmer, Inc.
`Exhibit 1012 - 10
`
`

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`Case 1:12-cv-01107-GMS Document 45 Filed 04/07/14 Page 11 of 15 PageID #: 2120
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`Contrary to Bonutti’s suggestion, there is no requirement that the issues in the IPR be
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`identical to those in the litigation. See, e.g., Nexans, Inc. v. Belden‘, Inc, No. 12—1491-SLR-SRF,
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`2014 US. Dist. LEXIS 201 16, at *11 (D. Del. Feb. 19, 2014) (“[A] complete overlap ofthe issues
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`in the litigation and the IPR is not required to establish simplification of the case”), adopted by
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`2014 US. Dist. LEXIS 32322 (D. Del., Mar. 12, 2014); Neste Oil OYJ, 2013 US. Dist. LEXIS at
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`* 15 (“Finally, while the court recognizes that this case likely presents certain questions that simply
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`cannot be addressed through inter partes review, it notes that the ‘issue simplification’ factor does
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`not require complete overlap.”) Also, as noted above, see supra Part IV.A.l., to the degree that
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`there are claims absent from the IPR petitions that Bonutti asserts should be included, this is due
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`in no small part to Bonutti’s refusal to specify exactly which claims it intends to assert against the
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`Defendants. The court cannot count Bonutti’s lack of disclosure in favor of Bonutti’s position.
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`See SSW Holding Co. v. Schott Gemtron Corp, No. 3:12-cv-661-S, 2013 US. Dist. LEXIS
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`1 18326, at *9—10 (W.D. Ky. Aug. 19, 2013) (Noting that where the plaintiff had not identified the
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`claims it contended were infringed, this strategy was “unhelpful in its opposition to the motion for
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`stay” and it was insufficient “to simply point out that there are 61 claims, only three of which are
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`challenged in the inter partes review application”)
`
`Furthermore, Bonutti’s argument that all of the Defendants must agree to full statutory
`
`estoppel in order for there to be any issue simplification is unconvincing.
`
`In the event of a final,
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`non-appealable judgment on the merits of an IPR petition, the scope of the estoppel to which the
`
`Defendants are willing to be subject for reexamination proceedings to which they are not parties
`
`is as follows:
`
`[E]ach Defendant shall be estopped. . .from challenging the validity of such claim,
`to the extent such claim is asserted in such action, as being (a) anticipated under 35
`U.S.C. § 102 on the basis of any prior art reference specifically asserted...and
`specifically used by the PTAB in a finding of anticipation as to such claim, or (b)
`
`11
`
`Zimmer Holdings, Inc. and Zimmer, Inc.
`Exhibit 1012 - 11
`
`

`

`Case 1:12-cv-01107-GMS Document 45 Filed 04/07/14 Page 12 of 15 PageID #: 2121
`
`obvious under 35 USC. § 103 on the basis of (i) any prior art reference specifically
`asserted...to alone render such claim obvious and specifically used by the PTAB
`in a finding of obviousness as to such claim in View of such reference alone, or ( ii)
`a combination of two or more prior art references specifically asserted. . .to render
`such claim obvious in combination and specifically used by the PTAB in a finding
`of obviousness. . ..
`
`(D.l. 42-1 at 3-4 in 12-1109.)
`
`As demonstrated by the stipulations that the court attached to its November 15, 2013 order
`
`scheduling a teleconference,6 this court has granted stays where defendants have agreed to be
`
`estopped only regarding arguments actually raised and prior art actually asserted.
`
`(D.I. 26-1 at 2
`
`in 12-1107 (defendants stipulating that “[s]hould any of the claims. . .survive the. . .reexamination
`
`without being amended or narrowed, the defendants shall be estopped in these matters from
`
`challenging the validity of such claims as being obvious under 35 USC § 103, on the basis of the
`
`one or more combinations of prior art asserted by Cisco and used by the PTO in its findings”);
`
`D.I. 26-2 at in 12-1 107 (defendants stipulating that they “shall not contest the validity of the claims
`
`at issue in the pending inter partes review of the [patent] on grounds actually raised during that
`
`review in this or any subsequent proceedings, but shall be permitted to assert any ground not raised
`
`during the inter partes review (including any ground that reasonably could have been raised). .
`
`. .”)
`
`Ultimately, the court concludes that the issue simplification to be had through PTO review
`
`of the claims subject to IPR petitions weighs in favor of a stay.
`
`C. Stage of Litigation
`
`In considering the stage of litigation, the court asks “whether discovery is complete and
`
`whether a trial date has been set.” FirstAm. Title Ins. Co. , 2012 U.S. Dist. LEXIS at * 13. Staying
`
`a case in its early stages advances judicial efficiency and prevents the court and the parties from
`
`As the parties are aware, the purpose of the teleconference was to discuss the motion to stay that was pending
`6
`at that point. The motion to stay was later withdrawn so that the instant motions to stay could be filed.
`
`l2
`
`Zimmer Holdings, Inc. and Zimmer, Inc.
`Exhibit 1012 - 12
`
`

`

`Case 1:12-cv-01107-GMS Document 45 Filed 04/07/14 Page 13 of 15 PageID #: 2122
`
`expending resources on claims that may be rendered invalid. See SenoRx, Inc, 2013 US. Dist.
`
`LEXIS at *15-16.
`
`As discussed above, see supra Part IV.A.1., this litigation is still in its early stages. There
`
`is not yet a case scheduling order in place nor has discovery begun nor has a trial date been set.
`
`Thus, this factor strongly favors granting a stay. See Neste Oil OYJ, 2013 US. Dist. LEXIS at
`
`* 15-16 (Concluding that “[t]his factor weighs strongly in favor of granting a stay, as the present
`
`case is in its infancy. There has been no scheduling conference, no trial date has been set, and no
`
`discovery has taken place”)
`
`V.
`
`CONCLUSION
`
`For the foregoing reasons, the court concludes that staying this litigation pending the PTO’s
`
`reexamination of the ‘896, ‘736,
`
`‘635 and ‘9229 patents will serve the interest of judicial
`
`efficiency. The court therefore will grant the Defendants’ Joint Motion to Stay Litigation Pending
`
`Inter Partes Review. (D1. 35 in 12-1107; D1. 42 in 12-1109; DJ. 33 in 12-1110.)
`
`_
`Dated: April L, 2014
`
`CHIE
`
`
`
`
`,
`
`i
`
`,
`D STATES D'l
`
`13
`
`Zimmer Holdings, Inc. and Zimmer, Inc.
`Exhibit 1012 - 13
`
`

`

`Case 1:12-cv-01107-GMS Document 45 Filed 04/07/14 Page 14 of 15 PageID #: 2123
`
`IN THE UNITED STATES DISTRICT COURT
`
`FOR THE DISTRICT OF DELAWARE
`
`BONUTTI SKELETAL INNOVATIONS, L.L.C.,
`
`Plaintiff,
`
`ZIMMER HOLDINGS, INC. and ZIMMER, INC.,
`
`Defendants.
`
`BONUTTI SKELETAL INNOVATIONS, L.L.C.,
`
`CONFORMIS, INC.,
`
`Plaintiff,
`
`Defendant.
`
`BONUTTI SKELETAL INNOVATIONS, L.L.C.,
`
`Plaintiff,
`
`WRIGHT MEDICAL GROUP, INC. and
`
`WRIGHT MEDICAL TECHNOLOGY, INC.,
`
`Defendants.
`
`CA. No. 12—cv-1107 (GMS)
`
`CA. No. 12-cv—1109 (GMS)
`
`CA. No. 12-cv-1110 (GMS)
`
`#1
`At Wilmington, this J_ day of April, 2014, consistent with the Memorandum issued this
`
`ORDER
`
`same date, IT IS HEREBY ORDERED THAT:
`
`Zimmer Holdings, Inc. and Zimmer, Inc.
`Exhibit 1012 - 14
`
`

`

`Case 1:12-cv-01107-GMS Document 45 Filed 04/07/14 Page 15 of 15 PageID #: 2124
`
`l. The Defendants’ Joint Motion to Stay Litigation Pending Inter Partes Review (D.I. 35
`
`in 12-1107; D.I. 42 in 12—1109; and DI. 33 in 12-1110) is GRANTED;
`
`2. The parties shall submit a status report to the court no later than six months from now
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`and every six months thereafter;
`
`3. The parties shall promptly notify the court when the stay should be lifted; and
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`4. All pending motions in Civil Action Nos. 12-1107, 12—1109, and 12-1110 are DENIED
`
`without prejudice and, where appropriate, the parties are granted leave to renew these
`
`motions upon the lifting of the stay.
`
`
`
`Zimmer Holdings, Inc. and Zimmer, Inc.
`Exhibit 1012 - 15
`
`