On March 2, 2015, the Federal Circuit affirmed the district court's decision on invalidity and infringement of '973, '933 and '236 patents but remanded the case for a new trial on damages. Warsaw Orthopedic, Inc. v. Nuvasive, Inc., No. 2013-1576; and -1577 (Fed. Cir. Mar. 2, 2015). Warsaw Orthopedic sued NuVasive for infringement of the '973 and '933 patents and NuVasive couterclaimed for infringement of the '236 patent. The '973 and '933 patents relate to spinal implants and spinal surgery respectively while the '236 patent relates to neuromonitoring during surgery. A jury found '973 patent valid and infringed, the '933 patent infringed under the doctrine of equivalents, and the '236 as infringed. After trial, the district court denied motions for JMOL or new trial, denied Warsaw's request for supplemental damages and set an ongoing royalty rate at 13.75% of sales of infringing implants.
On appeal, the Federal Circuit upheld the validity of the '973 patent rejecting NuVasive's arguments of indefiniteness reasoning that the average dimensions of human vertebrae are "well-known, easily ascertainable, and well-documented in the literature" and therefore, the relative nature of the claim does not make it indefinite. On infringement, the court found that there was substantial evidence to support a finding of infringement of the '933 and '236 patents.
At trial, the jury awarded Warsaw $101 million in total damages but the verdict form indicated it as "Lost Profit Damages", although the form failed to provide how much of the award was for lost profits, how much for reasonable royalty and how the lost profits were attributable to each of Warsaw's revenue streams (convoyed sales, royalty payments, payments from transfer pricing agreement). In finding that the district court erred in denying the JMOL, the court ruled that Warsaw failed to provide the necessary functional relationship to support convoyed sales, failed to provide proof of lost sales of its product due to infringing sales, and made no efforts to identify what percentage of true-ups was attributable to sales of patented products. Without resolving the issue of supplemental damages, the court stated that at the new trial, Warsaw may assert a claim for supplemental damages limited to reasonable royalty which the court may award.
Full text of the opinion is available here.
On appeal, the Federal Circuit upheld the validity of the '973 patent rejecting NuVasive's arguments of indefiniteness reasoning that the average dimensions of human vertebrae are "well-known, easily ascertainable, and well-documented in the literature" and therefore, the relative nature of the claim does not make it indefinite. On infringement, the court found that there was substantial evidence to support a finding of infringement of the '933 and '236 patents.
At trial, the jury awarded Warsaw $101 million in total damages but the verdict form indicated it as "Lost Profit Damages", although the form failed to provide how much of the award was for lost profits, how much for reasonable royalty and how the lost profits were attributable to each of Warsaw's revenue streams (convoyed sales, royalty payments, payments from transfer pricing agreement). In finding that the district court erred in denying the JMOL, the court ruled that Warsaw failed to provide the necessary functional relationship to support convoyed sales, failed to provide proof of lost sales of its product due to infringing sales, and made no efforts to identify what percentage of true-ups was attributable to sales of patented products. Without resolving the issue of supplemental damages, the court stated that at the new trial, Warsaw may assert a claim for supplemental damages limited to reasonable royalty which the court may award.
Full text of the opinion is available here.
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