In early November, a federal jury in Texas awarded 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, who sued the company 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.”
Spine Doc Wins $20.3 Million Against Medtronic
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According to court documents, the patent claims cover a “method for aligning vertebrae with a tool that allows a single surgeon to rotate the spinal column as a whole, using pedicle screws, spinal rods and a ‘pedicle screw cluster derotational tool.’” The case went to trial November 3, 2016 and wrapped up a week later on Veteran’s Day. The 10 jurors deliberated for about five hours before coming to a unanimous verdict.
After the week-long trial, the 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.
MassDevice reported on November 15, 2016, that Barry had also tried to drag Globus Medical, Inc., into the case. He wanted the U.S. District Court for Eastern Pennsylvania to subpoena Globus for documents related to its competing Revere device, alleging that the discovery was relevant because Globus copied Barry’s system in developing the Revere device. But Judge Harvey Bartle III found that Barry did not offer any factual basis for his allegation that Globus copied his patent.”
In August 2015, we reported that after a motion from the company to dismiss the case, Judge Ron Clark ruled that he would not dismiss the case, but also said the company won’t be subject to pre-case damages on all of the patents. Medtronic has 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, but partially agreed with the company over the pre-suit damages. But, Judge Clark ruled that the company could not, “escape Barry’s inducement and contributory infringement claims.”
We may still hear more from the Texas court. According to court documents, a day before the trial concluded, Medtronic asked for judgment as a matter of law and asked Judge Clark for an extra two days to file supporting briefs for the motion.
The patents-in-suit are U.S. Patent Numbers 7, 670, 358; 7, 776, 072 and 8, 361, 121.
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This is a fascinating development. In my practice we've seen similar outcomes with the revised protocol. The key differentiator seems to be patient selection criteria. Has anyone else noticed the correlation with BMI thresholds?
Great point. I'd push back slightly on the conclusion, the sample size in the cited study is too small to draw population-level inferences. That said, the directional signal is compelling and worth a larger RCT.
We implemented a similar approach last year. Early results are promising but we're still gathering 12-month follow-up data. Happy to share our protocol if anyone is interested.
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