EXHIBIT E
UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE
STIPULATION OF DISMISSAL WITH PREJUDICE PURSUANT TO FEDERAL RULE OF CIVIL PROCEDURE 41(a)(1)(A)(ii)
Plaintiff Apex Surgical Innovations, Inc. ("Apex" or "Plaintiff") and Defendant Solstice Biomedical, Inc. ("Solstice" or "Defendant"), by and through their respective undersigned counsel of record, hereby stipulate and agree to the dismissal of the above-captioned action in its entirety, with prejudice, pursuant to Federal Rule of Civil Procedure 41(a)(1)(A)(ii). This Stipulation of Dismissal is entered into in connection with a confidential settlement agreement reached between the parties resolving all disputes at issue in this litigation.
The parties further stipulate and agree to the following terms:
1. Dismissal of Claims. All claims asserted by Apex against Solstice in the Complaint filed on May 9, 2024 (D.I. 1), including, without limitation, all claims of infringement of U.S. Patent No. 9,814,237 (entitled "Minimally Invasive Surgical Instrument with Articulating End Effector") ("the '237 Patent"), U.S. Patent No. 10,271,884 (entitled "Multi-Axis Robotic Surgical Tool Assembly") ("the '884 Patent"), and U.S. Patent No. 10,932,105 (entitled "Haptic Feedback System for Robotic Surgical Instruments") ("the '105 Patent") (collectively, the "Asserted Patents"), are hereby dismissed with prejudice. This dismissal encompasses any and all claims, causes of action, and theories of liability set forth in, or that could have been set forth in, the Complaint arising out of or relating to the Asserted Patents and the facts and circumstances alleged therein.
2. Dismissal of Counterclaims. All counterclaims asserted by Solstice against Apex in the Answer, Affirmative Defenses, and Counterclaims filed on June 14, 2024 (D.I. 12), including, without limitation, counterclaims for declaratory judgment of non-infringement of the '237 Patent, the '884 Patent, and the '105 Patent, declaratory judgment of invalidity of the '237 Patent, the '884 Patent, and the '105 Patent, and inequitable conduct in connection with the prosecution of the Asserted Patents, are hereby dismissed with prejudice. This dismissal encompasses any and all counterclaims, causes of action, and theories of liability set forth in, or that could have been set forth in, Solstice's Answer, Affirmative Defenses, and Counterclaims arising out of or relating to the Asserted Patents and the facts and circumstances alleged therein.
3. Dismissal of Affirmative Defenses. All affirmative defenses asserted by Solstice in its Answer filed on June 14, 2024 (D.I. 12), including, without limitation, affirmative defenses of non-infringement, invalidity under 35 U.S.C. §§ 101, 102, 103, and 112, unenforceability, prosecution history estoppel, laches, equitable estoppel, waiver, and inequitable conduct, are hereby withdrawn as moot in light of the settlement reached between the parties.
4. Costs and Attorneys' Fees. Each party shall bear its own costs, expenses, and attorneys' fees incurred in connection with the prosecution and defense of 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. § 1927, or any other applicable statute, rule, regulation, or contractual provision. Nothing in this paragraph shall affect the parties' respective rights and obligations under the confidential settlement agreement referenced herein.
5. Jurisdiction Retained. The Court shall retain jurisdiction over the parties and this action solely for the limited purpose of enforcing the terms of the Settlement Agreement and Mutual Release entered into by and between the parties dated June 16, 2025 (the "Settlement Agreement"). Any motion to enforce the Settlement Agreement shall be filed in this action under the above-captioned civil action number. The Court's retained jurisdiction under this paragraph shall extend for a period coterminous with the duration of the parties' obligations under the Settlement Agreement.
[Alternative Language — To Be Confirmed with Opposing Counsel: The Court's jurisdiction over this action shall terminate upon entry of the order of dismissal appended hereto. Any and all disputes arising out of or relating to the Settlement Agreement and Mutual Release entered into by and between the parties dated June 16, 2025, including any disputes concerning the interpretation, performance, breach, or enforcement thereof, shall be resolved exclusively pursuant to the dispute-resolution provisions set forth in Section 12 of the Settlement Agreement, which provides for binding arbitration administered by JAMS in Wilmington, Delaware, governed by and construed in accordance with the laws of the State of Delaware, without regard to its conflict-of-laws principles.]
6. No Admissions. This Stipulation of Dismissal and the underlying settlement do not constitute, and shall not be construed as, an admission by any party of any liability, wrongdoing, fault, or the validity or invalidity of any patent claim asserted or defended in this action. Neither this Stipulation of Dismissal nor the Settlement Agreement shall be admissible in any proceeding for any purpose other than to enforce the terms of the Settlement Agreement or to establish the res judicata or claim-preclusive effect of the dismissal with prejudice effected hereby. Nothing in this Stipulation of Dismissal shall be construed as an admission or concession by Apex that any claim of the Asserted Patents is invalid, unenforceable, or not infringed, nor shall anything herein be construed as an admission or concession by Solstice that any claim of the Asserted Patents is valid, enforceable, or infringed.
WHEREFORE, the parties respectfully request that the Court enter the [Proposed] Order appended hereto, dismissing this action in its entirety, with prejudice, pursuant to Federal Rule of Civil Procedure 41(a)(1)(A)(ii), with each party to bear its own costs, expenses, and attorneys' fees.
Dated: _____, 2025
For Plaintiff Apex Surgical Innovations, Inc.:
HARGROVE, TATE & BENNINGTON LLP
By: ________
Victoria Stanton (Del. Bar No. 5783) Derek Loomis (Del. Bar No. 6214) 900 North King Street, Suite 1200 Wilmington, Delaware 19801 Telephone: (302) 654-8100
Email: vstanton@htblaw.com
Email: dloomis@htblaw.com
Counsel for Plaintiff Apex Surgical Innovations, Inc.
For Defendant Solstice Biomedical, Inc.:
CALDERWOOD & HARKNESS LLP
By: ________
Marcus Delgado (admitted pro hac vice) Christy Bauer (Del. Bar No. 5491) 1201 Market Street, Suite 2500 Wilmington, Delaware 19801 Telephone: (302) 429-6700
Email: mdelgado@calderwoodharkness.com
Email: cbauer@calderwoodharkness.com
Counsel for Defendant Solstice Biomedical, Inc.
UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE
[PROPOSED] ORDER
The Court, having reviewed the foregoing Stipulation of Dismissal with Prejudice filed jointly by Plaintiff Apex Surgical Innovations, Inc. and Defendant Solstice Biomedical, Inc. in Civil Action No. 1:24-cv-00587-RGA, and finding that the Stipulation has been duly executed by counsel for all parties to this action, and good cause appearing therefor,
IT IS HEREBY ORDERED that this action, including all claims asserted by Plaintiff Apex Surgical Innovations, Inc. in the Complaint (D.I. 1) and all counterclaims asserted by Defendant Solstice Biomedical, Inc. in the Answer, Affirmative Defenses, and Counterclaims (D.I. 12), is DISMISSED WITH PREJUDICE, with each party to bear its own costs, expenses, and attorneys' fees.
IT IS FURTHER ORDERED that the Court shall retain jurisdiction over the parties and this action solely for the limited purpose of enforcing the terms of the Settlement Agreement and Mutual Release entered into by and between the parties dated June 16, 2025.
[Alternative Language — If Retention of Jurisdiction Is Not Adopted: IT IS FURTHER ORDERED that the Clerk of Court shall close this case and terminate all pending motions and deadlines. Any disputes arising out of or relating to the parties' Settlement Agreement shall be resolved in accordance with the dispute-resolution provisions set forth therein.]
IT IS SO ORDERED.
________________________________________
The Honorable Richard G. Andrews Chief United States District Judge
Dated: Wilmington, Delaware _____, 2025
CERTIFICATE OF SERVICE
I, the undersigned, hereby certify that on the date of the filing of the foregoing Stipulation of Dismissal with Prejudice and [Proposed] Order, a true and correct copy of the same was served on all counsel of record via the Court's CM/ECF electronic filing system, which will send notification of such filing to the following registered participants:
Victoria Stanton (Del. Bar No. 5783) Derek Loomis (Del. Bar No. 6214) HARGROVE, TATE & BENNINGTON LLP 900 North King Street, Suite 1200 Wilmington, Delaware 19801 vstanton@htblaw.com dloomis@htblaw.com Counsel for Plaintiff Apex Surgical Innovations, Inc.
Marcus Delgado (admitted pro hac vice) Christy Bauer (Del. Bar No. 5491) CALDERWOOD & HARKNESS LLP 1201 Market Street, Suite 2500 Wilmington, Delaware 19801 mdelgado@calderwoodharkness.com cbauer@calderwoodharkness.com Counsel for Defendant Solstice Biomedical, Inc.
By: ________
Victoria Stanton (Del. Bar No. 5783) HARGROVE, TATE & BENNINGTON LLP
Dated: _____, 2025
APEX SURGICAL INNOVATIONS, INC.,
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v.
SOLSTICE BIOMEDICAL, INC.,
<!-- indent:2 -->Defendant.<!-- /indent -->
APEX SURGICAL INNOVATIONS, INC.,
<!-- indent:2 -->Plaintiff,<!-- /indent -->
v.
SOLSTICE BIOMEDICAL, INC.,
<!-- indent:2 -->Defendant.<!-- /indent -->