Synthes Inc. v. Medtronic Sofamor Danek USA.. Inc.

• Decision Date: 30 November 2010
• Docket Number: No. 2009-1538.,2009-1538.
• Citation: 620 F.3d 1305
• Parties: SPINE SOLUTIONS, INC., Synthes Spine Company, L.P. and Synthes, Inc., Plaintiffs-Appellees, v. MEDTRONIC SOFAMOR DANEK USA, INC., and Medtronic Sofamor Danek, Inc., Defendants-Appellants.
• Court: U.S. Court of Appeals — Federal Circuit

620 F.3d 1305

SPINE SOLUTIONS, INC., Synthes Spine Company, L.P. and Synthes, Inc., Plaintiffs-Appellees,

v.MEDTRONIC SOFAMOR DANEK USA, INC., and Medtronic Sofamor Danek, Inc., Defendants-Appellants.

No. 2009-1538.

United States Court of Appeals,Federal Circuit.

Sept. 9, 2010.

Rehearing and Rehearing En Banc Denied Nov. 30, 2010.

COPYRIGHT MATERIAL OMITTED.

Jeffrey M. Olson, Sidley Austin LLP, of Los Angeles, CA, argued for plaintiffs-appellees. With him on the brief were Paul H. Meier, Robert A. Holland, Sean A. Commons, Samuel N. Tiu and Matthew S. Jorgenson.

Seth P. Waxman, Wilmer Cutler Pickering Hale and Dorr LLP, of Washington, DC, argued for defendants-appellants. With him on the brief were William G. McElwain, Jamaica P. Szeliga and Jason A. Skinder; and Mark C. Fleming of Boston, MA. Of counsel on the brief were Jan M. Conlin, Munir R. Meghjee and Cyrus A. Morton, Robins, Kaplan, Miller & Ciresi LLP, of Minneapolis, MN.

Before DYK, FRIEDMAN, and MOORE, Circuit Judges.

MOORE, Circuit Judge.

Medtronic Sofamor Danek USA, Inc. and Medtronic Sofamor Danek, Inc. (collectively, Medtronic) appeal the decision of the United States District Court for the Western District of Tennessee granting summary judgment that Medtronic infringes the asserted claims of U.S. Patent No. 6,936,071 (the ' 071 patent). Medtronic also appeals the court's grant of summary judgment that the asserted claims are not invalid for failure to satisfy the written description requirement and the court's denial of its motions for judgment as a matter of law (JMOL) of obviousness, no willfulness, and no entitlement to lost profits. Further, Medtronic appeals the court's order permanently enjoining Medtronic from using or selling any of the accused devices that are currently outside the U.S. For the following reasons, we affirm-in-part, reverse-in-part, vacate-in-part, and remand.

I. Background

This patent case relates to intervertebral implants, which are also known as artificial intervertebral discs or total disc replacement devices. Intervertebral implants are used to replace discs between vertebrae in the spinal column that have degenerated or become diseased.

Spine Solutions, Inc. (SSI) is the assignee of the '071 patent. The ' 071 patent discloses an intervertebral implant that includes an upper part and a lower part, each of which has a “support face” for an adjacent vertebra. '071 patent col.1 ll.3-5. Each of the upper and lower parts has a single anchor, or keel, that is centrally positioned on the support face. Id. figs. 1-7 (nos.6, 14). The anchors affix the upper and lower parts into the adjacent vertebrae. Id. col.5 ll.59-64.

The '071 patent discloses that the upper and lower parts of the implant each have “protrusions and recesses ... which are offset laterally from one another in such a way that ... they mesh with each other” when the two parts are brought close together. Id. col.1 ll.56-62. This orientation allows the implant's structural height to be minimized during insertion, making it easier to insert the implant into the intervertebral space. Id. col.1 ll.52-55, col.4 ll.30-32. Figures 2 and 4 of the '071 patent depict a view of the implant's upper and lower parts when brought into maximum proximity with each other:

The '071 patent discloses that “in a preferred embodiment, the lower part and the upper part each have a respective receptacle for a pivot insert.” Id. col.3 ll.1-2. This pivot insert is placed between the upper and lower parts after the implant is inserted. Id. col.5 ll.1-8. The insert “supports the upper part and lower part against one another” and “leads to a certain pivotability of the two parts ... relative to one another, so that a pivotability of the adjacent vertebra is thus attainable as well.” Id. col.3 ll.2-9.

SSI sued Medtronic, alleging that Medtronic's Maverick, A-Maverick, and O-Maverick intervertebral implants infringe independent claim 1 and dependent claims 2, 6, 7, 10, 11, and 13 of the '071 patent. Medtronic raised various defenses, including noninfringement and invalidity for obviousness and failure to comply with the written description requirement. After claim construction, Medtronic filed a motion for summary judgment of noninfringement with respect to O-Maverick; SSI filed a cross-motion for partial summary judgment that O-Maverick infringes claims 1 and 2. The district court granted SSI's motion, ruling that O-Maverick infringes claims 1 and 2 both literally and under the doctrine of equivalents. The court then denied Medtronic's motion for summary judgment that claim 1 is invalid for lack of written description and granted SSI's cross-motion to dismiss all of Medtronic's 35 U.S.C. § 112 defenses. The parties then stipulated that the accused products infringed all of the asserted claims.

A few weeks before trial, Medtronic filed a motion in limine to preclude SSI from offering any evidence relating to lost profits. There is no dispute that SSI, the assignee of the '071 patent, does not make or sell any device covered by the patent. However, SSI's sister company Synthes Spine Co., L.P. (Synthes Spine) makes and sells the ProDisc II implant, which is the commercial embodiment of the '071 patent. SSI opposed Medtronic's motion and sought to amend its complaint to add as co-plaintiffs Synthes Spine and Synthes, Inc., SSI's parent corporation. Medtronic objected, arguing that Synthes Spine and Synthes, Inc. had no standing to bring an infringement suit on the '071 patent. As SSI was the sole owner, Medtronic argued that SSI alone could bring suit. The parties ultimately agreed that Medtronic could submit an offer of proof (outside the presence of the jury) as to the standing issue, and the court allowed SSI to amend its complaint to name SSI, Synthes Spine, and Synthes, Inc. (collectively, SSI) as co-plaintiffs.

The case went to trial on Medtronic's obviousness defense, SSI's willful infringement claim, and damages. At trial, the jury rendered a verdict in favor of SSI. The jury found that Medtronic did not prove that the '071 patent was invalid for obviousness. The jury also found that Medtronic's infringement was willful. The jury awarded SSI $5.7 million in lost profits for the 2005-2007 time-frame and an 18% reasonable royalty on the remaining $9.1 million in revenue from infringing sales of the accused O-Maverick, A-Maverick, and Maverick products. The court then denied Medtronic's motions for JMOL of obviousness and no willfulness. The court also found that Medtronic waived its standing argument and therefore denied Medtronic's motion for JMOL that SSI was not entitled to lost profits. The court doubled the damages award pursuant to 35 U.S.C. § 284 and awarded attorney fees under 35 U.S.C. § 285. Finally, the court entered a permanent injunction that forbids Medtronic from, among other things, using, selling, or transferring any accused devices that are already outside the U.S. This extraterritorial portion of the injunction is stayed pending this appeal.

Medtronic appeals, raising numerous issues. We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(1).

II. Discussion

A. Obviousness

Medtronic argues that the district court erred in denying its motion for JMOL that the asserted claims of the '071 patent would have been obvious to one of skill in the art. We review denials of JMOL under the law of the regional circuit, here the Sixth Circuit. Gemtron Corp. v. Saint-Gobain Corp., 572 F.3d 1371, 1379 (Fed.Cir.2009). The Sixth Circuit reviews a denial of a motion for JMOL de novo. Imwalle v. Reliance Med. Prods., 515 F.3d 531, 543 (6th Cir.2008). JMOL will be granted only where “a party has been fully heard on an issue and there is no legally sufficient evidentiary basis for a reasonable jury to find for that party on that issue.” Id. “The grant is appropriate only if, in viewing the evidence in the light most favorable to the nonmoving party, reasonable minds could come to but one conclusion, in favor of the moving party.” Id. (citation omitted).

Claim 1 of the '071 patent, the only independent claim at issue, reads as follows:

An intervertebral implant insertable between adjacent vertebrae, comprising,

an upper part having an upper surface for engaging a vertebrae and a lower surface which includes a rounded portion,

a lower part having a lower surface for engaging a vertebrae and an upper surface portion in operative engagement with the rounded portion of the upper part,

said implant being constructed to be the sole implant in its intervertebral space,

the implant having a lead end which leads as the implant is inserted along a path into the intervertebral space and a trailing end opposite the lead end, and lateral planes which pass through the outermost boundaries of the implant and parallel to the said path, and

a single anchor on each of the upper surface of the upper part and the lower surface of the lower part, each said anchor being elongated, having a height greater than its width, and located along a line parallel to said path, the two anchors lying essentially in the same vertical plane, which plane is essentially midway between said lateral planes, each said anchor being adapted to enter a groove in the adjacent vertebrae as the implant moves along said path into the intervertebral space, to anchor its respective part to the vertebrae which its surface engages.

'071 patent col.6 l.54-col.7 l.13 (emphasis added).

It is undisputed that U.S. Pat. No. 5,314,477 (the '477 patent) discloses every element of claim 1 except for the “single anchor” limitation. The ' 477 patent discloses an intervertebral implant that includes a top plate and a bottom plate, with the bottom plate having a “joint piece” embedded by force. '477 patent col.2 ll.26-32. Each plate is equipped with two “anchoring flaps” positioned near the outside edges of the plate that affix the implant into the adjacent vertebrae. Id. col.4 ll.7-10. The named inventor of the '477 patent is Dr....