May 24, 2013
DEPUY SYNTHES PRODUCTS, LLC, Plaintiff,
SPINAL KINETICS, INC., Defendant. AND RELATED COUNTERCLAIMS.
SIDLEY AUSTIN LLP, JEFFREY M. OLSON (SBN 104074), MATTHEW S. JORGENSON (SBN 229131), Los Angeles, California, Attorneys for Plaintiff DEPUY SYNTHES PRODUCTS, LLC.
Robert W. Dickerson (State Bar No. 89367), DICKSTEIN SHAPIRO LLP, Los Angeles, California, Attorneys for Defendant SPINAL KINETICS, INC.
STIPULATION AND  ORDER TO STAY CASE PENDING APPEAL OF RELATED CASE
RONALD M. WHYTE, District Judge.
On February 26, 2013, DePuy Synthes Products, LLC ("DSP") filed its complaint in the present case ("the DSP case"). Dkt. 1.
On March 15, 2013, the Court ordered the present case related to Synthes USA, LLC (f/k/a Synthes (U.S.A.) v. Spinal Kinetics, Inc., 5:09-CV-01201-RMW ("the Synthes case"). Dkt. 12. The Synthes case involves allegations relating, inter alia, to the validity and/or invalidity of U.S. Patent No. 7, 429, 270 ("the 270 patent") and the infringement and/or non-infringement of the 270 patent by Spinal Kinetics' M6 implants. The DSP case also involves Spinal Kinetics' M6 implants, and includes allegations relating, inter alia, to the validity and/or invalidity and infringement and/or non-infringement of U.S. Patent No. 8, 382, 838, which is a continuation of the 270 patent. DSP asserts that both the 270 patent and the application maturing into the 838 patent were previously assigned to Synthes USA, LLC; and that the plaintiff in the DSP case, DePuy Synthes Products, LLC, is presently the assignee of both the 270 patent and the 838 patent. The Synthes case was tried to a jury and final judgment was entered on April 23, 2012. See Dkt. 524 in the Synthes case. The Synthes case is presently on appeal to the United States Court of Appeals for the Federal Circuit, Appeal No. 2013-1047, -1059.
On April 22, 2013, Spinal Kinetics filed its "Second Corrected" answer and counterclaims. Dkt. 17. Spinal Kinetics' counterclaims include, inter alia, claims for declaratory judgment that the 838 patent is invalid and not infringed and antitrust and other claims that Spinal Kinetics contends are based at least in part on the outcome of the jury trial and judgment in the Synthes case, which is now on appeal to the Federal Circuit.
DePuy Synthes Products, LLC's response to Spinal Kinetics' counterclaims is presently due on May 13, 2013.
Because of the relatedness of these two actions, the potential impact on the DSP case of the Federal Circuit's decision in the Synthes case now on appeal, and to preserve the resources of the parties and this Court,
IT IS HEREBY STIPULATED AND AGREED, by and between the parties, through their undersigned counsel of record, and subject to the approval of this Court, that the present action is stayed in all respects, and all current deadlines are vacated. Such stay shall be without prejudice to the substantive rights of any party, and shall continue until the Federal Circuit's mandate in the appeal of the Synthes case is issued, or until such other time as determined by the Court, including in response to a motion filed by either party to lift or extend the stay.
PURSUANT TO STIPULATION, IT IS SO ORDERED.