Johnson & Johnson subsidiary tries to overthrow $20m verdict
DePuy Synthes tries to overturn a ruling over knee replacement device | Challenges the court's decision, including ownership disputes, interpretation of critical terms, and the granting of a permanent injunction.
A Johnson & Johnson subsidiary has petitioned the Federal Circuit to overturn a $20 million verdict imposed against it.
DePuy Synthes, Johnson & Johnson's orthopaedic company, asked the US Court of Appeals for the Federal Circuit on February 21, 2024, to reverse the award granted to orthopaedic surgeon, Gary Rasmussen.
The award, granted in March 2022, related to a patent infringement case involving a component within DePuy's Attune knee system.
The system, specifically the "Balanced Sizer", was found to infringe on a device invented by Rasmussen, designed to reshape existing bone and cartilage before knee replacement procedures.
DePuy Synthes argued in its brief submitted to the court, that the verdict should be reversed entirely, describing the case as a “cascade of errors, substantive and procedural”.
DePuy’s arguments
The medical device company said the denial of a judgment that Rasmussen is not the rightful owner of the patents in question is a key error in the case.
According to the brief, Rasmussen had assigned the patents to another orthopaedic company, Wright Medical Technology, in 2006 in an attempt to “monetise his invention”, and “never received them back”.
The court's refusal to include the ownership question on the verdict form was enough reason to prompt a new trial, argued DePuy.
Additionally, the court's interpretation of critical terms, including "tibial component," "femoral component," and "tensioning apparatus," was challenged for deviating from established legal standards.
DePuy argued that the court neglected its “gatekeeping responsibilities”, allowing the presentation of expert testimony based on unreliable survey evidence and an impermissible “Nash bargaining solution” assumption to be presented to the jury.
Additional arguments included the court's denial of judgments related to infringement and damages, the refusal to acknowledge non-infringement, and the granting of a permanent injunction.
DePuy also questioned the court's reliance on unrelated precedents for granting the injunction, emphasising the lack of substantive evidence supporting claims of irreparable harm.
Case background
In 2020 Utah-based Rasmussen sued DePuy Synthes, in the US District Court for the District of Massachusetts, accusing it of infringing his knee reconstructive instrument.
The patents in question, US patent numbers 9,492,180 and 10,517,583, cover systems and methods for aligning and tensioning knee prostheses, impacting the knee arthroplasty process.
Allegations included DePuy's knowledge of the patents since at least 2009 as Rasmussen had allegedly pitched the device to DePuy as part of a licensing discussion but this ended in 2014 with no agreement.
The complaint outlined DePuy's continued use and promotion of instruments, specifically the "Balanced Sizer" from its Attune knee system, allegedly infringing on the '180 and '583 patents.
In March 2022, DePuy was ordered to pay Rasmussen $20 million, after it was found to infringe on the patents.
However, in May 2022, Rasmussen argued the award should be tripled to $60 million and to approve $8 million for attorney fees, because it argued that DePuy’s infringement of the ‘180 patent was willful, its defences were “exceptionally weak,” and its litigation tactics were “unreasonable”.
In response, DePuy argued against enhanced damages and attorney's fees, stating that these measures are typically reserved for extraordinary patent infringement cases to penalise severe infringement behaviour.
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