Goldberg v. Medtronic, Inc.
| Decision Date | 16 August 1982 |
| Docket Number | Nos. 81-1172,81-1173,s. 81-1172 |
| Citation | 686 F.2d 1219,216 USPQ 89 |
| Parties | Edward M. GOLDBERG, M.D., Plaintiff-Appellee, Cross-Appellant, v. MEDTRONIC, INC., Defendant-Appellant, Cross-Appellee. |
| Court | U.S. Court of Appeals — Seventh Circuit |
John F. Lynch, Arnold White & Durkee, Houston, Tex., for defendant-appellant, cross-appellee.
Roy E. Hofer, Chicago, Ill., for plaintiff-appellee, cross-appellant.
Before PELL, Circuit Judge, FAIRCHILD, Senior Circuit Judge, and GORDON, District Judge. *
The plaintiff's complaint alleged a misappropriation of proprietary information through the breach of an implied obligation of confidence 1 and patent infringement. Judgment, separately entered, dismissing the infringement claim, 2 was affirmed on an earlier appeal. Goldberg v. Medtronic, Inc., 654 F.2d 727 (7th Cir., 1981). Defendant Medtronic appeals from a judgment finding it liable for misappropriation of confidential information. Plaintiff Goldberg cross-appeals insofar as the judgment limited the relief granted.
The facts of this case, essentially as set forth by the district court, are as follows. This litigation involves one aspect of artificial cardiac pacing, a medical technique that allows a person's heartbeat to be steadied, stimulated, or re-established. This artificial pacing of the heartbeat has been achieved by means of a pulse generator which transmits regular electrical impulses to the heart. The pulse generator is connected to the heart by, and relays the electrical impulses to the heart through, electrical leads. The leads are attached to the heart either on the outside of the organ, that is, through the epicardium to the myocardium, by means of a surgical procedure, or the inside of the organ by means of a transvenous procedure, in which case the lead is termed transvenous or endocardial.
The focus of this litigation is on exterior, or myocardial electrical leads, and recent developments in their design which facilitate their installation and improve their reliability and permanence. In the earlier stages of the development of these leads, it was found that they had a tendency to work themselves loose. Early leads consisted simply of insulated stainless steel wire looped through the myocardium. Later, a plastic platform to which two stainless steel spikes were attached, was added to the end of the wire. The plastic platform was sutured to the heart so that the spikes extended into the myocardium. Because the spikes were rigid, however, the pulsating motion of the heart caused the spikes either to break or to enlarge the hole in which they were situated. This problem was greatly alleviated by the development of a flexible coil spring lead in place of the rigid spikes formerly used. The method of insertion of the coil spring lead was not different from that formerly used, that is, the coil was inserted into an incision made by the surgeon in the wall of the heart.
The myocardial leads were implanted by means of a thoracotomy, a major surgical procedure involving the opening of the chest. The difficulty of this procedure, and its debilitating effects on the patient, made it unacceptable for the elderly or in emergency situations. Various other insertion techniques were devised, each with drawbacks. An emergency procedure was developed in which the lead was attached to the heart through a needle that was inserted into the chest wall. This procedure was not totally satisfactory in that the surgeon could not visually monitor the needle within the chest and because the continuous motion of the heart could cause the lead to work itself loose. Another method, known as transvenous insertion, involved feeding the lead down a vein near the base of the neck and into the heart while the surgeon observed by means of a fluoroscope. The drawback of this method was that the lead was not attached to the heart wall and was free to move in the chamber.
In the early sixties, Dr. Goldberg, an attending surgeon at Michael Reese and Cook County Hospitals in Chicago, developed the concept of a safe, sutureless, visually and remotely installable lead for heart pacemakers. Dr. Goldberg's idea involved approaching the heart inferiorly, as opposed to from the neck region, and using a mediastinoscope to screw a rigid, helically shaped lead tip into the ventricle with an insertion tool. Dr. Goldberg first contacted Medtronic, a Minnesota corporation involved in the development and sale of pacemaker leads, in the fall of 1964 in connection with his idea. Dr. Goldberg asked Charles Eddy, the local sales representative for Medtronic, if Medtronic would aid in research and experiments involving the new lead. Medtronic agreed to do so.
In the next year, Dr. Goldberg conducted experiments on dogs at Michael Reese Hospital. The only individuals apprised of these experiments were those working with Dr. Goldberg or associated with him. In the summer of 1965, Dr. Goldberg attended an American Medical Association research forum where he discussed mediastinoscopy and indicated that he was able to approach the heart through the inferior mediastinum and place an electrical lead on the ventricle. He did not, however, disclose the screw-in lead concept or the precise method of insertion and attachment.
The district court found that Dr. Goldberg was subsequently contacted by Inga Haug, a Medtronic representative, who had heard of his presentation at the AMA meeting and his statement that he could attach a lead to the heart through a mediastinoscope through the inferior mediastinum. Haug invited Dr. Goldberg to Medtronic headquarters in Minneapolis to discuss his work. Medtronic paid Dr. Goldberg's expenses for this trip. In Minneapolis, Dr. Goldberg met briefly with Earl Bakken, President of Medtronic. Later, he explained and demonstrated his screw-in lead concept to Bakken and other Medtronic representatives. The court further found that Bakken denied that these meetings took place 3 but numerous other witnesses testified as to their existence. The district court concluded that Dr. Goldberg made this trip and discussed his concepts for insertion of pacemaker leads.
In December, 1965, Eddy first saw the screw-in lead Dr. Goldberg had developed. Eddy communicated his information to Bakken. Bakken stated certain objections to the method of insertion, mediastinoscopy, but not to the screw-in lead concept. Bakken had received these objections from Dr. William M. Chardack, who was advising Medtronic and who apparently was apprised of Dr. Goldberg's work.
In January, 1966, Goldberg made a presentation on the topic of mediastinoscopy at the Michael Reese Heart Institute. Eddy was present and immediately contacted Bakken as to what was discussed. Bakken continued to express his lack of interest in the procedure. However, after further discussion with Eddy on the topic of Dr. Goldberg's screw-in leads, Bakken instructed Eddy to invite Dr. Goldberg to Medtronic's headquarters in Minneapolis in March, 1966. Medtronic once again paid Dr. Goldberg's expenses for the trip, although Medtronic had no record of any such meetings. Eddy, however, testified that he had made the arrangements for the trip and that his diary reflected that the meeting took place on March 16, 1966.
Dr. Goldberg again demonstrated his leads to Bakken who indicated that he would be interested in working with Dr. Goldberg on the project. Medtronic agreed to provide equipment for the research. Dr. Goldberg agreed not to publish the results of his work prematurely so as to protect, as Eddy testified, the proprietary interests of the parties. Eddy conceded that the leads would be improved through further research and that the research involved confidential proprietary information. Medtronic agreed to make for Dr. Goldberg his helically tipped screw-in lead. In the ensuing months, Medtronic sent Dr. Goldberg many leads and other equipment for use in his research. Medtronic, again, kept no records of its transactions with Dr. Goldberg.
In April, 1966, Bakken called Dr. Goldberg and stated that Medtronic's advisor, Dr. Chardack, did not see the need for a new lead and opposed the procedure of mediastinoscopy. For these reasons, Medtronic would not actively participate in the research. Medtronic continued, however, to supply equipment.
At Bakken's request, Eddy contacted Herb Taus at General Electric Company and told him that Dr. Goldberg had an innovative technique for implanting pacemaker leads and was looking for assistance on the project. Bakken instructed Eddy to keep Medtronic advised of the research and of any progress achieved. He was instructed to maintain a rapport and relate to Medtronic anything he saw or was told.
While at General Electric, Dr. Goldberg disclosed his idea of a screw-in lead to Henry Tachick. The research which followed was successful in the development of a viable lead. The patent application filed by General Electric in August of 1967, however, was on behalf of Tachick, not Dr. Goldberg. Several years later, the U. S. Patent and Trademark Office put Dr. Goldberg's patent application and Tachick's patent into an interference to determine the actual inventor. Goldberg prevailed in 1976 when General Electric filed a disclaimer under 35 U.S.C. § 253.
Shortly after Dr. Goldberg's first visit to Medtronic in the fall of 1965, Medtronic hired Lee Bolduc to conduct research in and to manufacture leads. In April, 1966, just after Bakken told Dr. Goldberg he was not interested in actively assisting him in his research. Bolduc, working directly for Medtronic, made a special lead for Dr. Goldberg and was going to send it to him. Later, Eddy asked Bakken about the status of the electrode. Bakken stated that he had changed his mind and would not provide this electrode to Dr. Goldberg even though it incorporated Dr. Goldberg's designs. Eddy and Bolduc then met with...
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