BARRY’S MEDTRONIC AWARD UPPED 20% DUE TO “RECKLESS” COPYING (Orthopedics This Week)
The federal judge that awarded Texas spine surgeon Mark Barry, M.D., $20.3 million after finding that Medtronic, plc “actively induced” infringement of patents covering spinal deformity repair services held by Barry, has thrown in an additional 20% given evidence of “reckless” copying by the company.
Lenke and Medtronic Errors
Law 360 reported on April 21, 2017, that in assessing the appropriateness of a damages enhancement, “the court, among other things, analyzed the actions of Lawrence Lenke, M.D., Medtronic’s chief medical surgical consultant. As the chairman of an industry conference to which Barry had submitted an abstract for his now patented method and system, Lenke reviewed the submission and around the same time, directed his company to prepare to file a patent application.”
“At trial, the jury learned that Dr. Lenke had ‘accidentally’ listed Dr. Barry’s patents on his own CV,” Federal District Judge Ron Clark noted. “There is no evidence that anyone at Medtronic investigated the origins of Dr. Lenke’s work once Dr. Lenke submitted the internal paperwork for a patent, which supports a determination that Medtronic acted with recklessness towards copying Dr. Barry’s work.”
The court also determined that Medtronic was aware of Barry’s patents and that there was no evidence the company had formed “a good-faith belief” the patents were invalid prior to trial.
2014 Lawsuit
Barry sued Medtronic in 2014, alleging infringement of a trio of patents. Barry claimed that the company’s CD Horizon Legacy spinal system infringed on his patent entitled, “System and Method for Aligning Vertebrae in the Ameliorating of Aberrant Spinal Column Deviation Conditions.”
After the week-long trial in November 2016, a federal jury awarded nearly $15.1 million for infringement of one of the patents in the U.S.; more than $2.6 million for U.S. infringement of the second patent; and another $2.6 million for infringement of that patent outside the U.S. The third patent had been dropped from the suit after Barry licensed the patents to Zimmer Biomet Holdings, Inc.
Medtronic “Public Use Claim” Denied
Medtronic had asked for a summary judgement against Barry’s suit alleging prior public use of the invention and that Barry failed to mark the patents and was therefore not entitle to pre-suit damages.
Judge Clark disagreed with Medtronic’s public use claim and that their claim that Barry failed to mark the patents and was therefore not entitle to pre-suit damages.
“Medtronic has not established its prima facie case by clear and convincing evidence that the entire invention was in public use more than 1 year before the priority date of the parent patent. Dr. Barry has raised a genuine issue of fact as to whether any prior use was experimental,” Clark wrote in a July 21, 2015 ruling. “Dr. Barry’s testimony that the first complete public use of the invention was a private surgery attended by a small group of hospital workers suggests that the ‘nature of the activity’ and ‘public access’ was limited. There is a fact issue as to confidentiality, based on affidavits submitted by individuals who had previously worked with Dr. Barry.”
Clark granted Barry’s bid for a damages enhancement, applying a nine-factor test from 1992 Federal Circuit case Read Corp. v. Portec Inc. that takes into account whether the infringer deliberately copied the idea, investigated the scope of the patent, the duration of misconduct and other factors.
Clark declined to grant Barry’s request for $5.5 million in legal fees.