Depuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., Civil Action No. 01-10165-EFH.
| Decision Date | 11 December 2007 |
| Docket Number | Civil Action No. 01-10165-EFH. |
| Citation | 526 F.Supp.2d 162 |
| 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 |
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, for Plaintiffs.
David E. Marder, Lisa A. Furnald, Robins, Kaplan, Miller & Ciresi L.L.P. Lauren a Fletcher, Mark C. Fleming, Timothy R. Shannon, Wilmerhale LLP, Boston, MA Dirk D. Thomas, Jason R. Buratti, Robins, Kaplan, Miller & Ciresi, Robert A. Auchter, Brian K. Erickson, Kenneth A. Freeling, Dewey Ballantine, L.L.P., Andre J. Bahou, Dewey & Leboeuf LLP, Washington, DC, for Defendants.
The plaintiffs, DePuy Spine, Inc. and Biedermann Motech GMBH, brought this action against the defendants, Medtronic Sofamor Danek, Inc. and Medtronic Sofamor Danek USA, Inc., contending, inter alia, that several of the defendants' products infringe various claims of U.S. Patent No. 5,207,678 (the "'678 patent"), which Biedermann, the patentee, has licensed to DePuy. This Court determined that two of the accused devices, the defendants' Vertex and Vertex MAX products, did not infringe the '678 patent, either literally or under the doctrine of equivalents, and granted summary judgment to the defendants. The Court also granted summary judgment on a third product, the bottom-loaded screw model, but denied summary judgment with respect to the defendants' MAS model. The case proceeded to trial on the MAS model, resulting in a jury verdict in favor of the plaintiffs and damages in the amount of 21 million dollars.
The plaintiffs appealed the Court's order granting summary judgment on the Vertex devices.1 The Federal Circuit affirmed the Court's order with regard to literal infringement, DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1016 (Fed.Cir.2006), cert. denied ___ U.S. ____, 128 S.Ct. 58, ___ L.Ed.2d ____ (2007), but reversed its order granting summary judgment of non-infringement under the doctrine of equivalents, and remanded the case for further proceedings. Id. at 1026. Specifically, the Federal Circuit held that the "hollow sphericallyshaped portion" of the '678 patent includes the edge of that portion and that "[b]ecause the screw head in the Vertex [products] presses against an edge of a hollow conically-shaped portion argued to be an equivalent of the `spherically-shaped' limitation, a question of fact exists as to whether the difference in the equivalent is substantial." Id. at 1020.
Prior to trial on the Vertex devices, the defendants informed the Court that they intended to assert the ensnarement doctrine as a defense to infringement.2 After briefing by the parties, the Court determined that ensnarement was a question of law to be determined by the Court in a supplemental proceeding. Depuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 515 F.Supp.2d 206, 208-09 (D.Mass.2007). The case went to trial and, after a 13 day jury trial, the jury returned a verdict of infringement under the doctrine of equivalents and assessed damages in excess of 226 million dollars. On October 9, 2007, an evidentiary hearing was held on the ensnarement defense.
"[A] patentee should not be able to obtain, under the doctrine of equivalents, coverage which he could not lawfully have obtained from the PTO by literal claims." Wilson Sporting Goods. Co. v. David Geoffrey & Assocs., 904 F.2d 677, 684 (Fed.Cir. 1990). Accordingly, a patentee cannot claim infringement based on an equivalent that would have been anticipated or rendered obvious by the prior art. Id. at 683-84. In determining whether the prior art would have "ensnared" the alleged equivalent, it is useful to craft a hypothetical claim that covers the infringing device. Id. at 684. Once an appropriately crafted hypothetical is devised, the inquiry turns to "whether that hypothetical claim could have been allowed by the PTO, over the prior art." Id. "If such a claim would have been unpatentable under 35 U.S.C. §§ 102 or 103, then the patentee has overreached, and the accused device is noninfringing as a matter of law." Interactive Pictures Corp. v. Infinite Pictures, Inc., 274 F.3d 1371, 1380 (Fed.Cir.2001) (citing Wilson Sporting Goods Co., 904 F.2d at 683-84). "The burden of producing evidence of prior art to challenge a hypothetical claim rests with an accused infringer, but the burden of proving patentability of the hypothetical claim rests with the patentee." Id. (citation omitted). The parties agree that the plaintiffs must meet their burden of persuasion by a preponderance of the evidence.
The defendants contend that the plaintiffs could not have patented a hypothetical claim covering the accused product because such a claim would have been anticipated or rendered obvious by two prior art references: U.S. Patent No. 2,346,346 (the "Anderson" patent), and U.S. Patent No. 5,474,555 (the "Puno" patent).3
Claim 1 of the '678 patent4 reads as follows:
Device for stabilizing spinal column segments, comprising a pedicle screw having a threaded shaft portion and a spherically-shaped head at the end of said threaded shaft portion, a receiver member flexibly connected to said head, said receiver member being provided with two holes for receiving a rod, a receiver chamber being provided within said receiver member, the receiver chamber having at one end thereof a bore for passing the threaded shaft portion therethrough and an inner hollow spherically-shaped portion for receiving the head of said screw, an opening being provided opposite said bore for inserting said screw, said device further comprising a compression member for exerting a force onto said head such that said head is pressed against the hollow spherically-shaped portion.
. Claim 1 discloses a pedicle screw, a receiver member, and a compression member. Pedicle screws are implanted in human vertebra during surgery. The head of each pedicle screw rests in a receiver member. The receiver members of the several screws are connected via threaded rods. Surgeons use this network of screws, receiver members, and rods to stabilize spinal column segments.
The connection between the pedicle screw and the receiver is "polyaxial," meaning that the receiver can rotate and angulate relative to the screw. This polyaxial capacity is a useful feature. Because of variation in the spine, the various screws need to be implanted at assorted angles dictated by the patient's anatomy. This makes it difficult to line up the screws with the rod. The polyaxial connection in the '678 patent reduces this problem by enabling a surgeon to bring the receiver to the rod. In other words, regardless of the angle at which the pedicle screw is inserted, the receiver member can be angulated in such a manner that it is better aligned with the rod. Once a desirable angle is achieved, each screw is locked into place by a compression member, which, as its name implies, exerts force onto the screw head and presses it against the receiver member.5 Rods then connect the several receiver members.
The only relevant difference between claim 1 of the '678 patent and the accused devices is that the receiver chamber in the '678 patent has spherically-shaped portion for receiving the screw head, whereas the receiver chambers in the accused products have conically-shaped portions for receiving the screw head. The jury, applying the doctrine of equivalents, determined that despite this difference, the accused devices infringe the patent claims because they perform substantially the same function, in substantially the same way, to achieve substantially the same result as the patent claims. Cf. Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 39-40, 117 S.Ct. 1040, 137 L.Ed.2d 146 (1997) ().
The parties agree that an accurate hypothetical claim covering the accused devices would be identical to claim 1 of the '678 patent, except that the term "sphericallyshaped. portion" would be replaced with the term "conically-shaped portion." The following hypothetical claim would literally read on the accused device:
Device for stabilizing spinal column segments, comprising a pedicle screw having a threaded shaft portion and a spherically-shaped head at the end of said threaded shaft portion, a receiver member flexibly connected to said head, said receiver member being provided with two holes for receiving a rod, a receiver chamber being provided within said receiver member, the receiver chamber having at one end thereof a bore for passing the threaded shaft portion therethrough and an inner hollow conically-shaped portion for receiving the head of said screw, an opening being provided opposite said bore for inserting said screw, said device further comprising a compression member for exerting a force onto said head such that said head is pressed against the hollow conically-shaped portion.
The Anderson reference discloses an external fracture immobilization splint for immobilizing long bones, such as arm or leg bones. The Anderson device works by first applying pins to a fractured bone on opposite sides of the fracture. Each pin is attached to a metal bar or plate. Affixed to each bar is a swivel clamp, consisting of a receiver member capable of accommodating a rod, and bolt whose head...
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Depuy Spine, Inc. v. Medtronic Sofamor Danek, Inc.
...million in lost-profit damages to DePuy Spine, Inc. and Biedermann Motech GmbH (collectively "DePuy"). DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 526 F.Supp.2d 162 (D.Mass.2007) ("Ensnarement Order"). The district court also found that Medtronic had engaged in litigation misconduct......