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Keywords

damageslitigationattorneyappealpatent

damagesattorneypatentoverruled

Related Cases

DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 90 U.S.P.Q.2d 1865

Facts

DePuy Spine, Inc. and Biedermann Motech GmbH (collectively 'DePuy') brought a patent infringement action against Medtronic Sofamor Danek, Inc. and Medtronic Sofamor Danek USA, Inc. regarding a spinal implant device. The jury found that Medtronic infringed U.S. Patent No. 5,207,678 under the doctrine of equivalents and awarded DePuy $226.3 million in damages. Medtronic raised an ensnarement defense, arguing that the hypothetical claim would encompass prior art, but the district court denied this defense. The court also awarded attorney fees to DePuy due to Medtronic's litigation misconduct.

Issue

Did the district court err in denying Medtronic's ensnarement defense and in its rulings on lost profits and attorney fees?

Rule

Ensnarement bars a patentee from asserting a scope of equivalency that would encompass prior art. The burden of persuasion is on the patentee to establish that the asserted scope of equivalency would not ensnare the prior art. The court determines ensnarement as a legal limitation on the doctrine of equivalents, separate from the jury's equivalence analysis.

Ensnarement bars a patentee from asserting a scope of equivalency that would encompass, or 'ensnare,' the prior art. See Wilson Sporting Goods Co. v. David Geoffrey & Assoc., 904 F.2d 677, 683 (Fed.Cir.1990), overruled in part on other grounds, Cardinal Chem. Co. v. Morton Int'l, Inc., 508 U.S. 83, 92 n. 12, 113 S.Ct. 1967, 124 L.Ed.2d 1 (1993).

Analysis

The court found that Medtronic's ensnarement defense was properly denied because the combination of prior art did not render the hypothetical claim obvious. The jury's finding of no acceptable noninfringing alternatives was supported by substantial evidence. The court also determined that DePuy was not entitled to recover lost profits on unpatented products, as they did not function with the patented invention.

The district court took the question from the jury and held that ensnarement, like prosecution history estoppel, is a legal limitation on the doctrine of equivalents that would be decided by the court at the conclusion of the infringement proceeding.

Conclusion

The Court of Appeals affirmed the district court's denial of Medtronic's ensnarement defense and its ruling on lost profits, but reversed the award of attorney fees and sanctions against Medtronic.

Thus, 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.

Who won?

DePuy Spine, Inc. and Biedermann Motech GmbH prevailed in the patent infringement action against Medtronic. The jury found that Medtronic had infringed DePuy's patent under the doctrine of equivalents, leading to a substantial damages award. The court upheld the jury's findings regarding the lack of acceptable noninfringing alternatives and the denial of lost profits on unpatented products, reinforcing DePuy's position in the case.

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