Filed: Apr. 07, 2017
Latest Update: Apr. 07, 2017
Summary: ORDER INDIRA TALWANI , District Judge . Pending before this court is Defendant and Counterplaintiff Smith & Nephew's Motion to Stay Pending Inter Partes Review [#91], which Plaintiff and Counterdefendant ConforMIS opposes. See ConforMIS, Inc.'s Opp'n Mot. Stay Pending Inter Partes Review ("Opp'n Mot. Stay") [#95]. At the time of Smith & Nephew's motion to stay, the Patent Trial and Appeals Board ("PTAB") had not yet instituted inter partes review ("IPR") of any of Smith & Neph
Summary: ORDER INDIRA TALWANI , District Judge . Pending before this court is Defendant and Counterplaintiff Smith & Nephew's Motion to Stay Pending Inter Partes Review [#91], which Plaintiff and Counterdefendant ConforMIS opposes. See ConforMIS, Inc.'s Opp'n Mot. Stay Pending Inter Partes Review ("Opp'n Mot. Stay") [#95]. At the time of Smith & Nephew's motion to stay, the Patent Trial and Appeals Board ("PTAB") had not yet instituted inter partes review ("IPR") of any of Smith & Nephe..
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ORDER
INDIRA TALWANI, District Judge.
Pending before this court is Defendant and Counterplaintiff Smith & Nephew's Motion to Stay Pending Inter Partes Review [#91], which Plaintiff and Counterdefendant ConforMIS opposes. See ConforMIS, Inc.'s Opp'n Mot. Stay Pending Inter Partes Review ("Opp'n Mot. Stay") [#95]. At the time of Smith & Nephew's motion to stay, the Patent Trial and Appeals Board ("PTAB") had not yet instituted inter partes review ("IPR") of any of Smith & Nephew's fourteen IPR petitions. Mem. Supp. Mot. Stay Pending Inter Partes Review 4-5 ("Mem. Supp. Mot. Stay") [#92].
On March 29, 2017, Smith & Nephew notified the court that the PTAB issued a Decision on Institution of Inter Partes Review, instituting inter partes review of all claims of the '953 patent. Smith & Nephew's Statement Suppl. Facts Regarding Smith & Nephew's Mot. Stay Pending Inter Partes Review Ex. 5, Decision on Inter Partes Review 2 [#123-1]. The parties have dismissed all claims here relating to the '953 patent, see Corrected Stipulation of Dismissal with Prejudice & Order [#111], but Smith & Nephew argues that a stay would nonetheless simplify the issues before the court because several of the '953 claims overlap with claims of the patents-in-suit. Mem. Supp. Mot. Stay 9-11 [#92]. ConforMIS counters that the '953 patent is not a patent-in-suit, and in any event, is not a "foundational patent," as it does not include many of the limitations set forth in the patents-in-suit. Opp'n Mot. Stay 6-8 [#95]. ConforMIS asserts further that the prior art on which Smith & Nephew relied in filing its IPR petition was disclosed to patent examiners during patent prosecution of the remaining patents-in-suit. Id.
Smith & Nephew requested oral argument in its original motion to stay, and continues to do so in its supplemental filings. See Response ConforMIS's Statement Suppl. Facts Regarding Smith & Nephew's Mot. Stay Pending Inter Partes Review [#109]; Smith & Nephew's Statement Suppl. Facts Regarding Smith & Nephew's Mot. Stay Pending Inter Partes Review [#123]. In light of the PTAB's institution of IPR of all claims of the '953 patent, the court finds that such argument may be helpful.
Accordingly, the court GRANTS Smith & Nephew's request for oral argument. The clerk shall vacate the hearing dates for the Technology Tutorial and Markman Hearing and set a hearing on the Motion to Stay Pending Inter Partes Review [#91] on the afternoon of May 3, 2017. The case is temporarily STAYED pending this court's decision on the Motion to Stay Pending Inter Partes Review [#91].
IT IS SO ORDERED.