Indiana Patent Litigation: Court Permits Bonutti to Withdraw Counterclaim, Denies Attorneys’ Fees to Biomet

Hammond, Indiana – In the matter of Biomet, Inc. v. Bonutti Skeletal Innovations, LLC, the Northern District of Indiana, Hammond Division granted Defendant Bonutti’s motion to dismiss with prejudice its counterclaim. Bonutti’s counterclaim alleged that Biomet had infringed U.S. Patent No. 7,806,897 (the “‘897 patent”). Patent attorneys for Biomet Inc. asked the court to impose attorneys’ fees as a condition of the dismissal but this motion was denied.

On March 8, 2013, patent lawyers for Plaintiff Biomet filed an action for declaratory judgment against Bonutti Skeletal Innovations LLC. At issue were contentions of patent infringement of fifteen patents. Bonutti counterclaimed against Biomet and several other counterclaim Defendants. This multi-faceted dispute had been resolved with respect to some of the patents prior to this order. Other allegations of patent infringement remained.

Among the assertions by Bonutti that had remained was a counterclaim that Biomet had infringed the ‘897 patent. In this order, the court granted Bonutti’s request under Rule 41(a)(2) to dismiss this counterclaim with prejudice. The court also addressed Biomet’s contention that it should be awarded attorneys’ fees as a “prevailing party” in this portion of the patent litigation.

The court denied attorneys’ fees to Biomet on several grounds. First, it noted that, while attorney’s fees are available as part of a Rule 41(a)(2) dismissal without prejudice, this is justified as compensation for requiring a defendant to incur unnecessary litigation expenses. That same rationale does not apply where, as in this case, the dismissal is with prejudice.

Additionally, the court noted that any request for attorneys’ fees was premature. Such fees are only available to the “prevailing party” and Biomet had not established itself as such a prevailing party. Biomet may yet be able to recover attorneys’ fees if, at the conclusion of the patent lawsuit, Biomet is held to be the prevailing party.

The case was assigned to Judge Joseph S. Van Bokkelen in the Northern District of Indiana and assigned Case No. 3:13-CV-176-JVB.