Barry v. Medtronic, Inc.
230 F. Supp. 3d 630
E.D. Tex.2017Background
- Dr. Mark A. Barry sued Medtronic alleging indirect (induced) infringement of two related patents (the ’358 and ’121 patents) covering a spinal derotation system and method; a jury found infringement, inducement, willfulness, and awarded domestic and overseas damages.
- Medtronic moved for judgment as a matter of law (JMOL) on induced infringement, overseas infringement under 35 U.S.C. § 271(f)(1), willfulness, damages, invalidity defenses (public use, on-sale, prior invention), and argued Dr. Barry lacked standing due to an exclusive license.
- Trial evidence for plaintiff included expert testimony, a surgeon survey (Neal survey), Medtronic surgical guides, presentations by Medtronic consultant Dr. Lenke, and damages modeling by Ms. Schenk; Medtronic contested survey reliability, scope of accused products, and sufficiency of evidence for foreign supply under § 271(f)(1).
- The court reviewed JMOL under Rule 50 and the Fifth Circuit’s substantial-evidence standard, drawing all reasonable inferences for the nonmoving party and deferring credibility assessments to the jury.
- Rulings: the court granted JMOL only as to overseas infringement under § 271(f)(1) (and the corresponding $2,625,210 overseas damages item), but denied JMOL on induced infringement, willfulness, domestic damages, and on Medtronic’s invalidity and standing challenges (finding sufficient evidence to support the jury on those issues). Inequitable conduct and enhanced damages were reserved for separate orders.
Issues
| Issue | Barry's Argument | Medtronic's Argument | Held |
|---|---|---|---|
| Induced infringement (domestic) | Surgeons directly infringed using Legacy/Solera + VCM; Medtronic’s training materials, guides, sales force and consultant (Lenke) induced infringement | Insufficient evidence of underlying direct infringement and of specific acts showing inducement; survey unreliable | Denied JMOL — substantial evidence supports direct infringement and inducement (survey, expert testimony, Medtronic materials, Lenke evidence) |
| Overseas infringement (§ 271(f)(1)) | Medtronic supplied rods (and other components) from U.S. and induced combinations abroad; damages include overseas sales | No evidence Medtronic (vs. foreign subsidiaries) supplied the VCM kits or that rods were a ‘‘main or substantial’’ component required by § 271(f)(1) | Granted JMOL — insufficient evidence that Medtronic supplied/cause-supplied all or a substantial portion of components abroad; overseas damages vacated |
| Willfulness / enhanced damages | Medtronic knew of patents and acted despite (or was willfully blind to) infringement — evidence of patent alerts, timing, consultant conduct | Medtronic had objectively reasonable invalidity defenses and lacked subjective willfulness at relevant times | Denied JMOL — substantial evidence supported jury’s willfulness finding (knowledge/willful blindness; credibility issues) |
| Invalidity defenses (public use, on-sale, prior invention) | Medtronic: prior surgeries, meetings, and Lenke’s work invalidated claims | Dr. Barry: surgeries were experimental/confidential; offers were preliminary and not commercial; Lenke’s evidence weak/uncorroborated | Denied JMOL — jury had substantial evidence to reject Medtronic’s clear-and-convincing invalidity proofs on public use, on-sale bar, and prior invention |
Key Cases Cited
- Limelight Networks, Inc. v. Akamai Techs., Inc., 134 S. Ct. 2111 (U.S. 2014) (elements for induced infringement require underlying direct infringement and specific intent)
- Reeves v. Sanderson Plumbing Prods., Inc., 530 U.S. 133 (U.S. 2000) (standard for JMOL; courts must draw all reasonable inferences for nonmoving party)
- Eli Lilly & Co. v. Aradigm Corp., 376 F.3d 1352 (Fed. Cir. 2004) (definition of substantial evidence in patent JMOL context)
- Halo Elecs., Inc. v. Pulse Elecs., Inc., 136 S. Ct. 1923 (U.S. 2016) (willfulness and enhanced damages standards; culpability measured at time of conduct)
- Pfaff v. Wells Elecs., Inc., 525 U.S. 55 (U.S. 1998) (on-sale bar; tests for commercial offer and readiness for patenting)
- Warsaw Orthopedic, Inc. v. NuVasive, Inc., 824 F.3d 1344 (Fed. Cir. 2016) (circumstantial evidence and willful blindness can support inducement knowledge)
- WesternGeco L.L.C. v. ION Geophysical Corp., 837 F.3d 1358 (Fed. Cir. 2016) (intent requirements under related foreign-supply doctrines)