IP Law Daily Medical device maker cleared of infringement could not seek verdict of invalidity
Friday, January 19, 2018

Medical device maker cleared of infringement could not seek verdict of invalidity

By Thomas Long, J.D.

A medical device maker defending itself against a patent infringement suit was not entitled to an amendment of a no-infringement judgment to include the jury’s verdict of patent invalidity, the U.S. Court of Appeals for the Federal Circuit has held. The verdict form given to the jury by the court—and not objected to by the device maker—contained a "stop instruction" directing the jury to answer the question of patent validity only if it first found that the device maker infringed the patent. Initially, the jury returned the form with a "no" answer to the first question, regarding infringement, but also with the second question, regarding invalidity, indicating that the patent claims were found invalid. The court instructed the jury to retire again with a blank form, and to follow the written instructions on it. The second time, the jury returned a verdict of no infringement, leaving the question regarding invalidity blank. The court then rendered a judgment that the device maker did not infringe the asserted claims, without addressing the invalidity of the patent. In the Federal Circuit’s view, the district court did not err in denying the device maker’s motion to alter or amend the judgment. The jury’s failure to follow the stop instruction the first time around rendered the verdict inconsistent, because the form unambiguously submitted the issue of validity to the jury only as an affirmative defense (Flexuspine, Inc. v. Globus Medical, Inc., January 19, 2018, Prost, S.).

Flexuspine, Inc., sued Globus Medical, Inc., for patent infringement. Before trial, the parties submitted a joint proposed pretrial order along with proposed jury instructions and verdict forms from each party. Flexuspine’s proposed verdict form included a "stop instruction" that conditioned the submission of invalidity to the jury on an affirmative finding of infringement. Globus’s proposed verdict form did not. The district court decided to adopt Flexuspine’s form. In an on-the-record conference, Globus specifically indicated that it did not object to the form, including the stop instruction pertaining to the invalidity question.

The jury initially filled out the form incorrectly, by answering "no" to the first question, regarding infringement, but going on to answer the second question, and indicating that the patent claims were invalid. The district court instructed the jury to retire again, with a blank verdict form and to return a verdict consistent with both questions. Globus did not object to the jury being sent back for further deliberation. The second time around, the jury returned a verdict of no infringement and left the second question unanswered. Globus then lodged a formal objection for the first time, and shortly thereafter filed a motion under Federal Rule of Procedure 59(e), requesting that the judgment be amended to include the jury’s invalidity verdict. Globus also filed a Rule 50(b) motion for judgment as a matter of law on invalidity. The district court denied Globus’s Rule 59(e) motion. The court also dismissed Globus’s invalidity counterclaims without prejudice and then denied as moot its Rule 50(b) motion. Globus appealed.

Motion to amend verdict. According to Globus, a judgment of invalidity should be added to the judgment in order to correct the manifest errors of law made by the district court when it refused to enter judgment of invalidity and when it retired the jury for further deliberations after the jury initially returned its verdict. The Federal Circuit perceived no manifest error of law. Applying the law of the relevant regional circuit—the Fifth Circuit—the Federal Circuit held that the fact that the jury overlooked the stop instruction was sufficient to render the verdict internally inconsistent. The answer to the validity question was predicated on an affirmative response to the infringement question. Even if the verdict form conflicted with the jury instructions—which Globus argued directed the jury to resolve both infringement and invalidity—the district court had clarified the instructions when it sent the jury back for a second take with a blank form, and Globus did not object on a timely basis. Moreover, the district court did not deprive Globus of its right to a jury trial on the invalidity contentions outright—it merely declined to submit its invalidity counterclaims to this jury. From Globus’s lack of objection to the verdict form, the district court properly determined that Globus submitted the issue of invalidity only as an affirmative defense, not as a counterclaim. Because the district court dismissed the counterclaims without prejudice, Globus could file them again later.

Motion for judgment as a matter of law. Nor did the district court err in denying as moot Globus’s Rule 50(b) motion, the Federal Circuit said. The district court was within its discretion to dismiss Globus’s invalidity counterclaims without prejudice. A district court judge faced with an invalidity counterclaim challenging a patent that it concluded was not infringed has the discretion to either hear the counterclaim or dismiss it without prejudice. Once the district court dismissed Globus’s invalidity counterclaims without prejudice, invalidity was no longer a live issue amenable to being decided as a matter of law.

Cross-appeal. Flexuspine also cross-appealed the district court’s grant of summary judgment of noninfringement of another Flexuspine patent, covering an expandable intervertebral implant with wedged expansion member. However, Flexuspine did not dispute the district court’s finding that Globus’s accused products did not a claim requirement that an angled portion and a flat surface of an expansion member claimed by the patent moved obliquely to the same part of the upper body and lower body of the patented implant. Nor did Flexuspine cite to any evidence that might satisfy this requirement. Therefore, the district court correctly determined that no reasonable jury could find infringement.

The case is No. 2017-1188 and No. 2017-1189.

Attorneys: Mark Strachan (Sayles Werbner, PC) for Flexuspine, Inc. Arun Subramanian (Susman Godfrey LLP) for Globus Medical, Inc.

Companies: Flexuspine, Inc.; Globus Medical, Inc.

MainStory: TopStory Patent FedCirNews

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