[DRAFT — June 12, 2025 — Prepared by Calderwood & Harkness LLP for inclusion as Exhibit E to Definitive Settlement Agreement and Mutual Release dated for execution on June 16, 2025. Target filing date: on or about July 1, 2025.]
[To be filed together with the Proposed Order of Dismissal (separate document). Upon filing, the parties will move to vacate the trial date of September 30, 2025, currently set by the Scheduling Order entered in Case No. 1:24-cv-00587-RGA.]
IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE
STIPULATION OF DISMISSAL WITH PREJUDICE
Plaintiff Apex Surgical Innovations, Inc. ("Apex" or "Plaintiff") and Defendant Solstice Biomedical, Inc. ("Solstice" or "Defendant") (collectively, the "Parties"), by and through their respective undersigned counsel of record — Victoria Stanton of Hargrove, Tate & Bennington LLP, 900 North King Street, Suite 1200, Wilmington, Delaware 19801, on behalf of Apex, and Marcus Delgado of Calderwood & Harkness LLP, 1201 Market Street, Suite 2500, Wilmington, Delaware 19801, on behalf of Solstice — hereby stipulate and agree to the dismissal of this action with prejudice, including all claims, counterclaims, and affirmative defenses asserted herein, pursuant to Federal Rule of Civil Procedure 41(a)(1)(A)(ii). The Parties represent that they have reached an amicable resolution of all disputes at issue in this action and submit this Stipulation of Dismissal with Prejudice (the "Stipulation") on the terms and conditions set forth below.
SECTION 1: BACKGROUND
1.1 The Action
On May 9, 2024, Apex filed its Complaint in this action (D.I. 1), commencing the above-captioned civil action against Solstice. In the Complaint, Apex alleged that Solstice's PrecisionEdge™ line of laparoscopic trocar assemblies — specifically, the PE-5000 Series, the PE-12000 Series, and the PE-15000 Series (collectively, the "Accused Products") — infringe certain claims of three United States patents owned by Apex (collectively, the "Asserted Patents"), as follows:
(a) U.S. Patent No. 9,814,237 (the "'237 Patent"), entitled "Locking Seal Assembly for Minimally Invasive Surgical Access Device," issued on November 14, 2017 by the United States Patent and Trademark Office. Apex asserted infringement of Claims 1, 3, 7, and 12 of the '237 Patent.
(b) U.S. Patent No. 10,271,884 (the "'884 Patent"), entitled "Retractable Blade Deployment Mechanism for Trocar Systems," issued on April 30, 2019 by the United States Patent and Trademark Office. Apex asserted infringement of Claims 1, 2, 5, 9, and 14 of the '884 Patent.
(c) U.S. Patent No. 10,932,105 (the "'105 Patent"), entitled "Integrated Insufflation Valve and Seal for Laparoscopic Trocar," issued on March 2, 2021 by the United States Patent and Trademark Office. Apex asserted infringement of Claims 1, 4, and 8 of the '105 Patent.
Apex's Complaint asserted claims for literal infringement and infringement under the doctrine of equivalents with respect to each of the foregoing Asserted Patents and identified claims thereof.
1.2 Solstice's Defenses and Counterclaims
On June 14, 2024, Solstice filed its Answer, Affirmative Defenses, and Counterclaims (D.I. 8) in response to Apex's Complaint. In its Answer, Solstice denied Apex's allegations of infringement and asserted various affirmative defenses, including, without limitation, defenses of non-infringement, invalidity under one or more of 35 U.S.C. §§ 101, 102, 103, and 112, and inequitable conduct before the United States Patent and Trademark Office. In addition, Solstice asserted counterclaims against Apex seeking declaratory judgments of non-infringement and invalidity with respect to each of the Asserted Patents — namely, U.S. Patent Nos. 9,814,237, 10,271,884, and 10,932,105.
1.3 Resolution.  The Parties represent that they have resolved all disputes between them arising from or related to this action, including all claims and counterclaims asserted in this action, pursuant to the terms and conditions of a confidential Definitive Settlement Agreement and Mutual Release (the "Settlement Agreement") to be executed by the Parties on or about June 16, 2025. The specific terms and conditions of the Settlement Agreement are confidential and are not being filed with the Court. This Stipulation is submitted in furtherance of, and consistent with, the Parties' obligations under the Settlement Agreement.
SECTION 2: STIPULATION
2.1 Dismissal of All Claims with Prejudice
The Parties hereby stipulate and agree that all claims asserted by Apex against Solstice in the Complaint filed in this action, including, without limitation, all claims of patent infringement of U.S. Patent No. 9,814,237 (Claims 1, 3, 7, and 12), U.S. Patent No. 10,271,884 (Claims 1, 2, 5, 9, and 14), and U.S. Patent No. 10,932,105 (Claims 1, 4, and 8), are hereby dismissed with prejudice. This dismissal extends to all claims for damages, injunctive relief, enhanced damages, attorneys' fees, and any and all other relief sought by Apex in the Complaint or in any other pleading, motion, or filing made by Apex in this action.
2.2 Dismissal of All Counterclaims with Prejudice
The Parties hereby stipulate and agree that all counterclaims asserted by Solstice against Apex in Solstice's Answer, Affirmative Defenses, and Counterclaims, including, without limitation, all counterclaims for declaratory judgment of non-infringement and declaratory judgment of invalidity with respect to U.S. Patent Nos. 9,814,237, 10,271,884, and 10,932,105, are hereby dismissed with prejudice. This dismissal extends to all claims for damages, attorneys' fees, and any and all other relief sought by Solstice in its counterclaims or in any other pleading, motion, or filing made by Solstice in this action.
2.3 Dismissal of All Affirmative Defenses
All affirmative defenses asserted by Solstice in this action, including, without limitation, defenses of non-infringement, invalidity, and inequitable conduct, and any other affirmative defenses raised in Solstice's Answer, Affirmative Defenses, and Counterclaims or in any other pleading or filing made by Solstice in this action, are hereby dismissed with prejudice.
2.4 Costs and Attorneys' Fees
Each Party shall bear its own costs, expenses, disbursements, and attorneys' fees incurred in connection with this action, including, without limitation, all costs and fees incurred in connection with the prosecution or defense of any claim, counterclaim, affirmative defense, motion, or other proceeding in this action. No Party shall seek from any other Party any award of costs, expenses, or attorneys' fees in connection with this action. No Party shall be deemed a "prevailing party" for purposes of 35 U.S.C. § 285, Federal Rule of Civil Procedure 54(d), 28 U.S.C. § 1920, or any other statute, rule, regulation, or contractual provision that conditions any right, benefit, or obligation on the status of a party as a "prevailing party" in this action.
2.5 Court's Retention of Jurisdiction
The Court shall retain jurisdiction over this action solely for the limited purpose of enforcing the terms and provisions of this Stipulation of Dismissal. In the event of any dispute arising out of or relating to this Stipulation, any Party may apply to this Court for appropriate relief, including, without limitation, an order enforcing the terms of this Stipulation.
[OPEN ISSUE: Confirm with Hargrove, Tate & Bennington LLP ("HTB") whether Court retention of jurisdiction clause in Section 2.5 is desired in the final version or whether the Parties prefer that the Settlement Agreement's arbitration and dispute-resolution mechanism (governed by Delaware law, as set forth in Section 14.2 of the Settlement Agreement) govern exclusively. If HTB prefers exclusive reliance on the Settlement Agreement's dispute-resolution provisions, Section 2.5 will be deleted in its entirety and replaced with a simple statement that the dismissal is self-executing. Pending resolution of this open issue, Section 2.5 remains in the draft for discussion purposes.]
SECTION 3: NO ADMISSION
This Stipulation and the dismissal of this action shall not constitute, and shall not be construed or interpreted as, an admission by any Party of any liability, fault, wrongdoing, or the truth or accuracy of any allegation, claim, defense, or counterclaim asserted in this action. Without limiting the generality of the foregoing, this Stipulation shall not be construed as an admission by Apex or Solstice of the validity or invalidity, enforceability or unenforceability, or infringement or non-infringement of any claim of U.S. Patent Nos. 9,814,237, 10,271,884, or 10,932,105, or any other patent. This Stipulation shall not be admissible or used in any proceeding, other than a proceeding to enforce the terms of this Stipulation, as evidence of or an admission of any liability or wrongdoing by any Party.
This Stipulation is entered into solely for the purpose of resolving disputed claims and avoiding the burden, expense, delay, and uncertainty of further litigation. Neither this Stipulation nor the Settlement Agreement referenced herein shall be offered or received in evidence in any action or proceeding in any court, arbitral tribunal, administrative agency, or other forum as an admission or concession of liability, wrongdoing, or the merits of any claim or defense.
SECTION 4: AUTHORITY
Each undersigned counsel of record represents and warrants that he or she has been duly authorized by his or her respective client to execute this Stipulation on behalf of such client. Each undersigned counsel further represents and warrants that he or she has full power and authority to bind his or her respective client to the terms and provisions of this Stipulation, and that no further consent, approval, or authorization from any other person or entity is required in order to effectuate the dismissal contemplated hereby.
SECTION 5: PROPOSED ORDER
The Parties respectfully request that the Court enter the accompanying Proposed Order of Dismissal, filed concurrently herewith as a separate document, dismissing this action with prejudice in its entirety and on the terms and conditions set forth in this Stipulation. Upon entry of such Order, all pending motions, deadlines, and the trial date currently scheduled for September 30, 2025, shall be vacated.
[To be filed together with the Proposed Order of Dismissal (separate document).]
[Remainder of page intentionally left blank. Signature pages follow.]
DATED: ___
[Signature blocks to be finalized upon execution of the Definitive Settlement Agreement; target filing date: July 1, 2025.]
FOR PLAINTIFF APEX SURGICAL INNOVATIONS, INC.:
HARGROVE, TATE & BENNINGTON LLP
By: ________
Victoria Stanton (DE Bar No. 5743) 900 North King Street, Suite 1200 Wilmington, Delaware 19801 Telephone: (302) 555-0120 Facsimile: (302) 555-0121
Counsel for Plaintiff Apex Surgical Innovations, Inc.
Date: ________
FOR DEFENDANT SOLSTICE BIOMEDICAL, INC.:
CALDERWOOD & HARKNESS LLP
By: ________
Marcus Delgado (DE Bar No. 6218) 1201 Market Street, Suite 2500 Wilmington, Delaware 19801 Telephone: (302) 555-0250 Facsimile: (302) 555-0251
Counsel for Defendant Solstice Biomedical, Inc.
Date: ________
CERTIFICATE OF SERVICE
I hereby certify that on the date of filing of the foregoing Stipulation of Dismissal with Prejudice, a true and correct copy of the same was served upon all counsel of record via the Court's Case Management/Electronic Case Filing System (CM/ECF), which will send electronic notification of such filing to the following:
Victoria Stanton, Esq. Derek Loomis, Esq. HARGROVE, TATE & BENNINGTON LLP 900 North King Street, Suite 1200 Wilmington, Delaware 19801 Counsel for Plaintiff Apex Surgical Innovations, Inc.
Marcus Delgado, Esq. Christy Bauer, Esq. CALDERWOOD & HARKNESS LLP 1201 Market Street, Suite 2500 Wilmington, Delaware 19801 Counsel for Defendant Solstice Biomedical, Inc.
By: ________
Marcus Delgado (DE Bar No. 6218) CALDERWOOD & HARKNESS LLP 1201 Market Street, Suite 2500 Wilmington, Delaware 19801
Date: ________
APEX SURGICAL INNOVATIONS, INC., a Delaware corporation, with principal office at 1220 North Market Street, Suite 550, Wilmington, DE 19801,
Civil Action No. 1:24-cv-00587-RGA
<!-- indent:2 -->Plaintiff,<!-- /indent -->
Chief Judge Richard G. Andrews
v.
SOLSTICE BIOMEDICAL, INC., a Delaware corporation, with principal offices at 3800 Concord Pike, Suite 410, Wilmington, DE 19803,
<!-- indent:2 -->Defendant.<!-- /indent -->