Judge: Doc can’t drag Globus into patent spat with Medtronic

A doctor suing Medtronic (NYSE:MDT) for allegedly infringing his patents covering spinal deformity repair devices can’t drag Globus Medical (NYSE:GMED) into the dispute, a federal judge in Pennsylvania ruled last week.

Dr. Mark Barry sued Medtronic in February 2014 in a Texas federal court, alleging infringement of a trio of patents covering a “System and method for aligning vertebrae in the amelioration of aberrant spinal column deviation conditions” (the 3rd patent was later dropped from the suit; Barry licenses the patents to Zimmer Biomet (NYSE:ZBH)). Medtronic asked the U.S. Patent & Trademark Office for an inter partes review of the patents a year later, but the patent office’s Patent Trial & Appeals Board declined to grant the review, according to court documents.

The parties tried to negotiate a settlement, but by April 2015 could not come to terms. By July of that year Judge Ron Clark of the U.S. District Court for Eastern Texas denied Medtronic’s bids for summary judgment on prior public use and induced and contributory infringement, but granted the company’s move to block pre-suit damages due to failure to mark.

Barry then asked the U.S. District Court for Eastern Pennsylvania to subpoena Globus for documents related to its competing Revere device, alleging that the discovery is relevant because Globus copied Barry’s system in developing the Revere device.

“According to Dr. Barry, the commercial success of Revere, which allegedly copied his patented system, is germane to the underlying action because it allows him to rebut Medtronic’s claim that his patents are invalid as obvious,” according to court documents.

Judge Harvey Bartle III shot down that notion, finding that Barry “has not offered any factual basis for his allegation that Globus copied his patent.”

“Rather, Dr. Barry simply requests discovery of the Globus system because his patented system and Revere both serve a similar function and look similar when diagrammed. This is insufficient. If competition from similar products were an adequate factual basis, every patent owner could obtain detailed discovery from all competitors simply by filing a lawsuit against one of them,” Bartle wrote.

“Even if the discovery Dr. Barry sought were relevant, we find that it is overly burdensome and disproportional to the needs of the parties in the underlying action. To comply with the subpoenas, Globus would have to conduct a broad review of all of information it possesses on research and development, sales, marketing, licensing, and use of Revere,” he wrote. “Responding to these requests would require Globus to conduct extensive research into every surgery conducted by any purchaser of Revere. This would be an enormous and expensive undertaking. Requiring Globus to respond to the subpoenas would be unduly burdensome and disproportional to the needs of the case.”

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