`SOUTHERN DISTRICT OF CALIFORNIA
`WARSAW ORTHOPEDIC, INC.,
`CASE NO. 12-cv-2738-CAB
`MEDTRONIC SOFAMOR DANEK
`USA, INC., MEDTRONIC PUERTO
`ORDER GRANTING MOTION TO
`RICO OPERATIONS COMPANY,
`STAY AND SETTING SCHEDULE
`and OSTEOTECH, INC.,
`[Doc. No. 141]
`
`Plaintiffs,
`
`vs.
`NUVASIVE, INC.,
`
`Defendant.
`
`Before the Court is a motion to stay brought by Warsaw Orthopedic, Inc.,
`Medtronic Sofamor Danek U.S.A., Inc., Medtronic Puerto Rico Operations Co., and
`Osteotech, Inc. (hereinafter collectively “Warsaw”) with regard to U.S. Patent No.
`8,444,696, asserted by Warsaw, and U.S. Patent Nos. 8,361,156; 8,187,334; 8,000,782;
`8,005,535; 8,016,767; 8,192,356; and D652,922, asserted by NuVasive. [Doc. No.
`141.] NuVasive filed a request for inter partes review (“IPR”) of the Warsaw patent,
`which has been granted. Warsaw filed requests for IPR of the NuVasive patents, which
`are still pending.
`The Court considered the relevant factors in deciding whether a stay of this
`litigation as to these patents is appropriate. See I-Flow Corp v. Apex Medical Techs,
`
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`LG 1040
`LG v. BNR
`IPR2020-00319
`
`
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`Inc., 2008 WL 2078623, at *1 (S.D. Cal. April 15, 2008). The NuVasive patents are
`all related. The IPR will likely simplify issues for trial. Although discovery has been
`ongoing and the Court issued claim construction rulings on four of the NuVasive
`patents, much remains to be completed including all the expert reports and discovery,
`dispositive motion practice and trial preparation. No trial date has been set. Finally,
`although the delay in proceeding with its case may be somewhat prejudicial to
`NuVasive, it is not unduly prejudicial.
`Having considered the submissions of the parties and the arguments of counsel,
`for the reasons set forth on the record, the request for stay is granted on the following
`conditions:
`1.
`
`2.
`
`3.
`
`The litigation of U.S. Patent No. 8,444,696 is stayed pending the
`completion of the IPR.
`The litigation of U.S. Patent Nos. 8,361,156 and 8,187,334 is stayed until
`February 28, 2014. The parties are directed to provide the Court with a
`joint status report on or before February 28, 2014 regarding the PTO’s
`determination on the request for IPR as to these patents. All deadlines and
`discovery as to these patents are vacated.
`The litigation of U.S. Patent Nos. 8,000,782; 8,005,535; 8,016,767;
`8,192,356; and D652,922 is stayed until May 2, 2014, with the exception
`that the parties are directed to complete all outstanding fact discovery by
`that date. The parties are directed to provide the Court with a joint status
`report on or before May 5, 2014, regarding the PTO’s determination on
`the requests for IPR as to these patents. If all the asserted claims are
`subject to review, the stay will continue until the completion of the IPRs.
`NuVasive may request the stay be lifted if any asserted claims are not
`subject to review and NuVasive seeks to proceed on those claims.
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`12cv2738
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`4.
`
`The litigation of U.S. Patent No. 5,676,146 will proceed on the following
`schedule:
`•
`May 2, 2014
`•
`May 30, 2014
`•
`June 20, 2014
`•
`July 18, 2014
`•
`August 8, 2014
`
`All fact discovery completed
`Opening expert reports served
`Rebuttal expert reports served
`Expert discovery completed
`Last day to file dispositive/Daubert
`motions
`File and serve Pretrial Disclosures FRCP
`26(a)(3)
`Meet and confer to prepare Pretrial Order
`
`October 24, 2014
`
`October 31, 2014
`
`•
`
`•
`
`•
`•
`
`November 7, 2014 Warsaw provide draft Order to NuVasive
`November 14, 2014
`Lodge final proposed Pretrial Order with
`Court
`Pretrial Conference (2:00 p.m.)
`Trial
`
`November 21, 2014
`•
`December 1, 2014
`•
`IT IS SO ORDERED.
`
`DATED: January 10, 2014
`
`CATHY ANN BENCIVENGO
`United States District Judge
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