Patent Law

Down Boy

By Gary Odom and Jordan Kuhn

Medtronic's lawyers were hammered for malpractice in patent suit against BrainLAB last week. Now a different legal crew barking for Medtronic has been slapped a $10 million fine for similar malfeasance.

In Depuy Spine and Biedermann Motech GMBH v. Medtronic, Massachusetts district court Judge Edward Harrington admonished Medtronic for purposefully misleading the jury:

Throughout trial, the defendants demonstrated a failure to accept the claim construction governing this case. In fact, with the exception of their ensnarement argument, their defense to infringement appears to have been wholly based on an attempt to obscure, evade, or minimize the Federal Circuit's construction of the patent-in-suit (the '678 patent). Even as early as the defendants' opening statements, they essentially urged the jury to adopt an interpretation of the patent claims developed by their experts instead of the construction mandated by the Federal Circuit. This strategy continued...

Judge Harrington referenced the BrainLAB case:

As Judge Richard Matsch of the District of Colorado has recently observed, "Patent law is complex and not intuitive to the average juror. Parties and counsel have an obligation to refrain from seeking to take advantage of those complexities by employing misleading strategies." Medtronic Navigation, Inc. v. Brainlab Medizinische ComputerSystems GMBH, 98-cv-01072- RPM, 2008 WL 410413 at *9 (D. Colo. Feb. 12, 2008) (Order for Award of Attorney Fees and Costs). The defendants here clearly sought to take advantage of the technical and legal complexities inherent in this case.

The judge noted that the post-trial defense action was copasetic, and hence bounded the fine.

The Court notes, however, that the defendants' damages and ensnarement arguments were well and properly litigated. Accordingly, insofar as the defendants' litigation tactics imposed a needless cost upon the plaintiffs, the Court concludes that a penalty of 15% of the plaintiffs' attorneys' fees from the date of the Federal Circuit's mandate through the date of the verdict would constitute a measured and proportionate sanction.

The defendants prolonged the proceedings unnecessarily (thus unduly imposing upon the jury's time), they sought to mislead both the jury and the Court, and they flouted the governing claim construction as set forth by the Federal Circuit. Under these circumstances, the Court concludes that it is proper to impose a penalty of ten million dollars.³

³Although this sum is not based directly upon the damages assessed by the jury in this case (about 226 million dollars), it does bear some relation to that amount. The sanction reflects not only to the magnitude of the malfeasance, but also the need to provide a disincentive for such conduct in the future. Where the amount in controversy in a case is large (as was the case here), the prospective penalty for litigation misconduct, if it is to serve the purpose of deterring that conduct, should also be large. Cf. Fed. R. Civ. P. R. 11(c)(2) ("A sanction imposed for violation of this rule shall be limited to what is sufficient to deter repetition of such conduct or comparable conduct by others similarly situated.").

Medtronic was represented in this matter by Dewey & LeBoeuf.

Plaintiff motion for enhanced damages was denied.

Depuy Spine is a subsidiary of Johnson & Johnson.

Full post as published by The Patent Prospector on February 26, 2008 (boomark / email).