Bianco v. Globus Medical, Inc.
30 F. Supp. 3d 565
E.D. Tex.2014Background
- Jury trial found Globus liable for misappropriation of trade secrets from Dr. Bianco based on drawings he provided in June 2007 and awarded $4,295,760 as a reasonable royalty tied to Globus’s Caliber, Caliber-L, and Rise intervertebral spacer products.
- Dr. Bianco sought correction of inventorship under 35 U.S.C. § 256 to be named on three patents ('375, '120, '659) and also pressed an equitable unjust-enrichment claim; inventorship issues were reserved for the bench.
- Parties submitted expert declarations (Dr. Cheng for Globus; Dr. McMillin for Bianco); both parties lodged evidentiary objections to portions of each expert’s post-trial declarations.
- Factual findings: Bianco’s drawings depicted a scissor-jack expansion mechanism; the asserted patents claim ramp/translation-member (ramp-based) mechanisms and other structural features not shown in Bianco’s drawings.
- Key development work at Globus: internal engineers (Rhoda, Lee, Dwyer, Glerum, Weiman) considered and implemented ramp-based designs in 2007–2009; there was no direct collaboration between Bianco and the named inventors.
- Court treated the jury’s trade-secret findings as relevant background but concluded (after weighing evidence and expert submissions) that Bianco failed to prove by clear and convincing evidence that he conceived the claimed inventions.
Issues
| Issue | Bianco’s Argument | Globus’s Argument | Held |
|---|---|---|---|
| Correction of inventorship under 35 U.S.C. § 256 | Bianco contended his June 2007 drawings conceived the claimed inventions and thus he is a co-inventor on the '375, '120, and '659 patents | Globus argued the patents claim ramp/translation structures and other details not present in Bianco’s scissor-jack drawings; Bianco did not collaborate or contribute conception to the claimed inventions | Denied — Bianco did not meet the clear-and-convincing burden; drawings were aspirational and lacked conception of the claimed ramp-based structures |
| Effect of jury trade-secret verdict on inventorship | Bianco argued misappropriation and use of his drawings supports inventorship | Globus argued misappropriation (use of ideas) is not dispositive of legal inventorship requirements | Jury finding of misappropriation is relevant but insufficient; court may find trade-secret use without inventorship |
| Evidentiary objections to expert declarations | Bianco sought exclusion of portions of Dr. Cheng’s declaration (hearsay, beyond reports, legal conclusions, mischaracterizations) | Globus sought exclusion of portions of Dr. McMillin’s declaration as new opinions or unsupported statements | Most objections overruled or deemed unnecessary to strike; court admitted declarations but said it would disregard any improper legal conclusions and selectively disregard certain new opinions lacking foundation |
| Unjust enrichment / disgorgement remedy | Bianco sought equitable disgorgement beyond jury’s reasonable-royalty award | Globus relied on jury’s denial of disgorgement and adequacy of reasonable royalty | Denied — court found reasonable royalty adequate and jury’s refusal to disgorge dispositive; no additional equitable recovery awarded |
Key Cases Cited
- Shum v. Intel Corp., 499 F.3d 1272 (Fed. Cir. 2007) (inventorship is an equitable issue for the court)
- Eli Lilly & Co. v. Aradigm Corp., 376 F.3d 1352 (Fed. Cir. 2004) (mere suggestion to try an approach does not establish conception/joint inventorship)
- Hybritech Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367 (Fed. Cir. 1986) (definition of conception as a definite and permanent idea of a complete and operative invention)
- Burroughs Wellcome Co. v. Barr Labs., Inc., 40 F.3d 1223 (Fed. Cir. 1994) (conception is the touchstone of inventorship)
- Ethicon, Inc. v. U.S. Surgical Corp., 135 F.3d 1456 (Fed. Cir. 1998) (contribution must be more than suggestion of a desired result; contribution must be significant in quality)
- Caterpillar Inc. v. Sturman Indus., Inc., 387 F.3d 1358 (Fed. Cir. 2004) (post-issuance correction of inventorship requires clear and convincing evidence of conception by claimant)
- Nartron Corp. v. Schukra U.S.A., Inc., 558 F.3d 1352 (Fed. Cir. 2009) (entrepreneurial idea of a desired function does not equal conception of the claimed means)
- Vanderbilt Univ. v. ICOS Corp., 601 F.3d 1297 (Fed. Cir. 2010) (section 256 burden is heavy; error must be proved by clear and convincing evidence)