DePuy Spine wins Federal Circuit affirmance of $149.1 million award, one of ten largest patent jury verdicts affirmed on appeal
Clients DePuy Spine, Inc.
On June 1, 2009, the United States Court of Appeals for the Federal Circuit issued a decision affirming a $149.1 million patent damages award for Jones Day client DePuy Spine, Inc., (a Johnson & Johnson company) in DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., Nos. 2008-1240, 2008-1253 and 2008-1401. The dispute involved a patent owned by co-plaintiff Biedermann Motech GmbH related to polyaxial "pedicle" screws, which are used in spine surgery. The $149.1 million award was for Medtronic's infringement with its Vertex spine screw. In an earlier phase of the case, Jones Day secured an award of $27 million for DePuy Spine and Biedermann Motech for a different infringing product sold by Medtronic. The two awards, coupled with accountings and interest, netted DePuy Spine and Biedermann Motech a total of $206 million.
At trial in 2007 on the Vertex product, a Jones Day trial team led by Cal Griffith (Cleveland) obtained a jury verdict in favor of DePuy Spine for $226 million. The award included $149.1 million for lost profits, and $77 million for "pull-through" damages, which were based on a novel and untested theory of patent damages. While the Federal Circuit ultimately dismissed the "pull-through" damages as unprecedented, it affirmed the lost profits award of $149.1 million. Medtronic ultimately paid $179 million on the claim, as a consequence of interest and a post-trial accounting. The award is one of the ten largest patent damages awards to be affirmed by the Federal Circuit.
The appeal was argued on January 5, 2009. Cal Griffith argued for DePuy Spine and Biedermann Motech. Seth Waxman, former Solicitor General in the Clinton administration, argued for Medtronic. Medtronic sought to have the liability award reversed and, alternatively, to have all damages reduced. The Federal Circuit affirmed the jury verdict both as to liability and the lost profits damages award, in their entirety, as well as affirming the trial judge's ruling on an additional defense asserted by Medtronic.
The Jones Day team representing DePuy Spine at trial included Patrick Norton, Isaac Molnar, Tracy Stitt and John Evans, all of the Firm's Cleveland office. Greg Castanias of the Firm's Washington office, as well as Ken Adamo of the Cleveland office, joined the team for the appeal phase.
In the earlier phase of the case, Bob Kahrl of the Cleveland office led the trial team in 2004, and Ken Adamo argued the case on appeal, securing a $27 million award for DePuy Spine and Biedermann Motech. In addition, the Federal Circuit remanded the case for a trial on the Vertex product.
DePuy Spine, Inc., et al. v. Medtronic Sofamor Danek, Inc., et al., Appeal Nos. 2008-1240, -1253, -1401; DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314 (Fed. Cir. 2009)