Medtronic Sofamor Danek, Inc. and Medtronic Sofamor Danek USA, Inc. (collectively “Medtronic”) appeal from a final judgment of the United States District Court for the District of Massachusetts. DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., No. 01-CV-10165 (D. Mass. Dec. 11, 2007). The district court denied Medtronic’s ensnarement defense after a jury found that Medtronic had infringed U.S. Patent No. 5,207,678 (“the ’678 patent”) under the doctrine of equivalents and awarded $226.3 million in lost-profit damages to DePuy Spine, Inc. and Biedermann Motech GmbH (collectively “DePuy”). DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 526 F. Supp. 2d 162 (D. Mass. 2007) (“Ensnarement Order”). The district court also found that Medtronic had engaged in litigation misconduct, for which the court awarded DePuy $425,375 in attorney fees under 35 U.S.C. § 285 and imposed a further $10 million sanction against Medtronic under the court’s inherent authority. Depuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 534 F. Supp. 2d 224 (D. Mass. 2007) (“Sanctions Order”). DePuy cross-appeals from the grant of Medtronic’s motion for judgment as a matter of law (“JMOL”) of no willful infringement and from the denial of DePuy’s motion for new trial on reasonable royalty damages.
Because the district court correctly denied Medtronic’s ensnarement defense and correctly denied Medtronic’s motion for JMOL on lost profits of patented pedicle screws, we affirm the damages award as to those products. However, we reduce the damages award insofar as the lost profits were based partly on lost sales of unpatented “pull-through” products, which neither compete nor function with the patented invention. We also reverse the award of attorney fees and the imposition of sanctions, which were predicated on a legal error involving the application of the reverse doctrine of equivalents. Finally, we conclude that the district court correctly determined that Medtronic was entitled to JMOL of no willfulness, and that it did not abuse its discretion in denying DePuy’s motion for new trial on royalty damages. Thus, we affirm-in-part, reverse-in-part, and remand for calculation of post-judgment interest.
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Because the district court correctly denied Medtronic’s ensnarement defense and correctly denied Medtronic’s motion for JMOL on lost profits of patented pedicle screws, we affirm the damages award as to those products. However, we reduce the damages award insofar as the lost profits were based partly on lost sales of unpatented “pull-through” products, which neither compete nor function with the patented invention. We also reverse the award of attorney fees and the imposition of sanctions, which were predicated on a legal error involving the application of the reverse doctrine of equivalents. Finally, we conclude that the district court correctly determined that Medtronic was entitled to JMOL of no willfulness, and that it did not abuse its discretion in denying DePuy’s motion for new trial on royalty damages. Thus, we affirm-in-part, reverse-in-part, and remand for calculation of post-judgment interest.
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