Depuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., Civil Action No. 01-CV-10165 EFH.

• Decision Date: 06 February 2008
• Docket Number: Civil Action No. 01-CV-10165 EFH.
• Citation: 533 F.Supp.2d 243
• Parties: DEPUY SPINE, INC., f/k/a Depuy Acromed, Inc. and Biedermann Motech GMBH, Plaintiffs v. MEDTRONIC SOFAMOR DANEK, INC., f/k/a Sofamor Danek Group, Inc., and Medtronic Sofamor Danek USA, Inc., Defendants.
• Court: U.S. District Court — District of Massachusetts

533 F.Supp.2d 243

DEPUY SPINE, INC., f/k/a Depuy Acromed, Inc. and Biedermann Motech GMBH, Plaintiffs v. MEDTRONIC SOFAMOR DANEK, INC., f/k/a Sofamor Danek Group, Inc., and Medtronic Sofamor Danek USA, Inc., Defendants.

Civil Action No. 01-CV-10165 EFH.

United States District Court, D. Massachusetts.

February 6, 2008.

Allan W. Jansen, Jones, Day, Reavis & Pogue, Irvine, CA, Calvin P. Griffith, Patrick J. Norton, Robert L. Canala, Robert C. Kahrl, Thomas R. Goots, Jones Day, Isaac A. Molnar, Jones, Day, Reavis & Pogue, Cleveland, OH, Joseph F. Shea, Scott E. Erlich, Nutter, McClennen & Fish, LLP, Boston, MA, Greer N. Shaw, Luke L. Dauchot, Robert G. Krupka, Kirkland & Ellis LLP, Los Angeles, CA, for Plaintiffs.

David E. Marder, Lisa A. Furnald, Robins, Kaplan, Miller & Ciresi L.L.P., Lauren B. Fletcher, Mark C. Fleming, Timothy R. Shannon, WilmerHale LLP, Boston, MA, Dirk D. Thomas, Jason R. Buratti, Robins, Kaplan, Miller & Ciresi, Robert A. Auchter, Andre J. Bahou, Kenneth A. Freeling, Dewey Ballantine, L.L.P., Washington, DC, Brian K. Erickson, Dewey Ballantine LLP, Austin, TX, for Defendants.

MEMORANDUM AND ORDER

HARRINGTON, Senior District Judge.

The defendants have raised three issues in their Motion for a New Trial on the Question of Infringement: the admission of evidence pertaining to the design history of the Vertex screws, the relevance of other polyaxial screws (not in suit) for determining infringement, and the Court's questioning of defense witness, Prof. Thomas Oxland. Because the Court concurs in the plaintiffs' analysis of the first two issues and considers those matters adequately addressed therein, the Court adopts the plaintiffs' arguments on those two topics.¹ As for the third issue, although the Court agrees with the plaintiffs' analysis, the Court believes that some further amplification of the plaintiffs' argument may be useful.²

Prof. Oxland testified on direct examination that in the '678 patent, the radius of the screw head is substantially equal to the corresponding receiver portion. This substantial equality, he asserted, results in a "mating" between the receiver chamber and the screw head and creates a "mating surface friction fit around the screw head." (Tr. 1212). In the Vertex devices, by contrast, the screw head presses against the edge of the receiver portion, resulting in a higher concentration of force at the point of contact. This, according to Prof. Oxland, creates an "interference fit." Prof. Oxland also testified that because the '678 patent uses a mating friction fit and the accused products rely on an interference fit, the two devices do not operate in substantially the same way.

On cross-examination, Prof. Oxland acknowledged that under the governing claim construction (as set forth by the Federal Circuit in DePuy Spine, Inc., v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed.Cir.2006), cert. denied ___ U.S. ___, 128 S.Ct. 58, 169 L.Ed.2d 243 (2007)), the radius of the screw head does not have to be equal to the spherically-shaped receiver portion and that the '678 patent includes edge contact between the screw-head and the receiver portion.³ He also was asked about a series of figures, arrayed from left to right, featuring screw heads that become progressively smaller in relation to their respective receiver pertions (that is, the figures progressed from mating surfaces to edge contact). (Exhibit 5178A, introduced by the plaintiffs). Prof. Oxland conceded that he compared the Vertex products to only the embodiment described in the specification of the '678 patent, which had matching radii (that roughly corresponded to the figures on the left in the series) and that his function/way/result analysis Aid not reflect the fact that the Federal Circuit's claim construction encompassed non-matching radii as well (as depicted by the figures to the right, which featured smaller screw-heads). In response to these admissions, the defendants, on redirect, elicited testimony that even if the figures on the right literally reflected all of the claim elements, they would not infringe the '678 patent pursuant to the "reverse doctrine of equivalents" because they "locked the screw head[s] in a substantially different way than in the '678 patent." (Defendants' Memorandum at 4 (citing Tr. 1309-1313)). In an effort to understand Prof. Oxland's testimony, the Court questioned him about this proposition, namely, that there could be literal infringement, but no infringement under the doctrine of equivalents. Because the defendants voiced concerns over the Court's colloquy with the witness, the Court, out of an abundance of caution, gave two curative instructions, instructing the jury not to draw any inferences from the exchange.

The defendants contend that they were incurably prejudiced by the Court's colloquy with Prof. Oxland. As the plaintiffs note, however, the Court gave two curative instructions. The defendants have offered this Court no reason to conclude that these instructions were...