‘This was no David and Goliath story': Susman Godfrey on fighting off $86m claim for Globus Medical

Last week, Globus Medical defended an infringement claim worth $86 million in a patent dispute over spinal implants and related products.

But this was not a typical case. The complaint was brought against Globus—a large medical device company in the US—by a relatively small, family-led neurosurgery practice founded by Nathan Moskowitz and his two sons.

The case also has a labyrinthine history. In its original complaint, filed in November 2019, the Moskowitz Family practice claimed that Globus had directly infringed eight of its patents with multiple products.

By the end, these were whittled down to three patents and ten of Globus’ products, which had a sales value of $860 million.

After an eight-day trial, which concluded on December 13, the jury found that Globus did not infringe on any patents due to a lack of evidence, and cleared the company of the $86 million in damages demanded by the plaintiff.

One small win for Moskowitz Family, though, was that the Pennsylvania jury concluded that Globus had not proven invalidity.

Mark Hatch-Miller, partner and co-lead of the Susman Godfrey trial team acting for Globus, tells LSIPR more about how they won.

Was the case unusual in any way?

“This was a big-deal case. It was a heavy lift against a very talented plaintiff's counsel with an overwhelming number of products and patents they threw at us. And it was hard to fight back.

“It was my first trial as co-lead counsel. I've done a bunch of jury trials in the past where I've had a significant role, but this was my first time as co-lead. And so, to lead to victory, alongside my partner, John Lahad, was particularly meaningful to me, both personally and professionally. It was my first time running the show.

“An important part of the story is that Moskowitz was not suing in relation to the patent that it obtained in 2000, nor the patent applications that it filed 15 years ago.

"The practice hired lawyers at  Fish & Richardson, which is the number-one patent firm in the country, and wrote new claims that sure look like they were written specifically to cover already-existing Globus products.

“We argued in our presentation that, although the plaintiffs can, for technical patent law reasons, claim priority back to the 2000s, the actual patent claims were written long after Globus' products were on the market already.

"This was really an effort to try to snag Globus by rewriting the patent claims.”

Can you explain how evidence helped you to win?

“The jury wanted to know a lot about the timeline of these inventions—Moskowitz' old patent applications, versus Globus’ products, and then Moskowitz rewriting its patent claims ten years later, after Globus was already out on the market.

“They were very focused on the question: who really came first? Was it Globus' inventions first, and these patent claims later on? That was an important part of the story that we focused a lot on, and I think the jury was interested in.

“The plaintiff filed provisional patent applications in 2007 and 2009. But then, the actual patents pursued in the case were not filed until 2018 and 2019. And in fact, they sued one day after the last of those patents was granted.

“The timeline that went to the jury shows that we had prior art going back to 1995, and then the priority date, which is the plaintiffs' early provisional applications in 2007 and 2009. Then it shows Globus' products being launched, and the plaintiff filing new patents after our products were on the market.

“That really was a huge part of the case: whether the patents that were filed later on tied back to the old applications. To be fair, the jury did side with Moskowitz on that, but they found no infringement.

“It was an unsuccessful attempt to try to ensnare us. But even with the plaintiff’s ability to write claims on products that already existed, it was not able to expand their old invention enough to cover any of it.”

Was this a story of David and Goliath?

“The inventors named on the patents are a neurosurgeon and two of his sons, but then also a fourth individual. They hired engineering graduate students to do designs for them in the 2000s. From the evidence at trial, the principal designer wasin many ways the graduate student they hired, not the doctor or his sons.

“Yet, all of the right to recovery in the lawsuit was going to Moskowitz and not the fourth co-inventor, who is no longer in the picture. So that's a little bit of a wrinkle in the ‘family versus David and Goliath’ story.

"Another very significant part of our presentation was that the plaintiffs' own expert’s claims of the differences from the prior art were teeny tiny. There was an implant and a tool in the prior art that met every limitation, and they were more or less claiming, 'We took a tool that existed and an implant that existed and we've put them together'.

“One of Moskowitz' arguments was that it added indentations on the end of the implant, so that the tool could hold on to it better. So a big theme of our case was, if that's what they're claiming—that the innovation is adding an indentation—is that worth $86 million?

"[Also,] Moskowitz doesn’t make any products. It has done some prototyping, and it has patents. And it partnered with Fish & Richardson, the biggest behemoth in patent law. So, maybe Moskowitz is small, but it’s working alongside the most established firm out there."

What were the key challenges for Globus and the trial team during the case?

“One thing that we overcame early was [the location of the trial]. Globus is in Pennsylvania. But the plaintiff initially filed the case in the Western District of Texas, Waco, which is where a lot of plaintiff-side patent cases get filed.

“It's very rare to win a transfer, and we succeeded in convincing the judge in western Texas that there were not enough connections to maintain a case against Globus there. This meant we got the case sent back to Philadelphia, where the jury ended up being made up of people from the Philadelphia area. We were in our hometown.

“The Moskowitz Family practice is in Maryland, so the plaintiff wanted this case not to be on our home turf, and that was a big, big win to get out and into our client’s home district office and was much more convenient for our client and witnesses.

“[But] I think the biggest thing that we really overcame was the plaintiff's strategy: to throw everything at the wall and see what sticks. It started with eight patents and numerous claims and a huge number of products.

“Our opponent tried to overwhelm us with volume—so many different accusations that it was very hard to focus on which ones that mattered. So we had to whittle the case down, via summary judgment rulings and claim constructions, to get to trial.

“The strategy from the other side really seemed to be to throw everything at us, and see if we could defend it. And we did our job: we had limited time, but we explained to the jury every technical reason why we didn't infringe.

"Their strategy, to throw everything at the wall and see what sticks—well, nothing stuck.”

And what are you most proud of?

“One particular thing about the case that we're proud about is, we are a general litigation firm that doesn't specialise in patents, we specialise in trials. And we took on the top firm for patents and won.

“We overcame that David and Goliath story that they wanted to tell—they definitely did want to be the little guys versus the Big Bad Company. But it didn't work.

“Our trial theme was, Who came first? The trial ended up being a lot about [the fact] that Globus had its products out on the market before these patents were written. So the jury has basically recognised that Globus, with its innovative products, was the real innovator. They were copycatting us.

“The jury recognised that Globus is the number-one patent holder in spinal implants in the US, and has its own patents on all of these products that it was being accused of infringing.”

What's next for both parties?

“If Moskowitz appeals, we’ll fight back.”