Acromed Corporation v. Sofamor Danek Group, Inc.

253 F.3d 1371 (2001)

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Nature of the Case

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Facts

P is the assignee of the '290 patent which names Dr. Steffee as its sole inventor. The patent discloses a plate for surgical implantation onto a patient's spinal column. The spine plate straightens a spine misshapen by disc degeneration or fracture. In his first spine straightening operations, Dr. Steffee hooked and wired rods to patients' spines. The rods would later slip and diminish the effectiveness of the operation. Dr. Steffee began to use a plate-and-screw system similar to that described in the '290 patent. His plates with holes in fixed locations were difficult to install and adapt to different patients because the holes were rarely spaced identically to pedicle distances between a patient's vertebrae. Dr. Steffee conceived of headless screws that would permit him to first optimally locate such screws in each vertebral pedicle, and then attach the spine plate to the installed screws. He took his regular bone screws to the hospital machine shop, and asked Janson, a machinist, to cut the heads off of the screws. Without screw heads, Dr. Steffee conceived of using a tapered, conical nut from a Hagie pin, a pin commonly used by orthopedists to fix broken hips in children. To modify the fixed location screw holes in the plate Dr. Steffee used a slotted Egger's plate which orthopedic surgeons use to fix long bone fractures. Dr. Steffee asked Janson to make a bigger Egger's plate to accommodate a spine. Still, the slots in the plate could slide along the screws and defeat the proper fixation of the plate to the spine. Dr. Steffee told Janson that he needed a plate designed so that the Hagie pin nut 'sinks in and stays right there.' Janson responded to this instruction by putting nests in the slots. The '290 patent claims the resulting combination. Dr. Steffee also improved the headless bone screw. The '311 patent discloses a bone screw with an elongated shank to fasten the plate of the '290 patent to a spine, connect broken bones, or connect prostheses to bones in any part of the body. According to the '311 patent, the claimed bone screw has a cylindrical body portion and a shoulder portion that act as a sort of stopper, blocking effluence from leaking out of the bone. Dr. Steffee founded P in 1983 and assigned all of his rights in the '290 and '311 patents to P. Janson went to work for P. An Employment Agreement required him to disclose any pre-existing invention in which he had an interest. Janson checked the box marked 'Employee has no such property,' and signed that agreement. Janson worked as a machinist at D until 1992 and continued as a consultant until June 1994. In June 1994, Janson met with D's counsel. P requested Janson to sign a declaration and power of attorney to add him as a co-inventor of the '290 patent and to assign his rights in the '290 patent if he signed the declaration. Janson signed an agreement with Danek to assign his 'patent rights' to D for $150,000. P sued D for infringement and D counterclaimed for failure to name Janson as an inventor. After a jury trial, the court judge granted P's motion for JMOL that the '290 patent was not invalid for improper inventorship. The jury awarded P $32,913,444 in damages and found that D had willfully infringed the '290 patent. The district court denied all of D's motions and then increased the damages to $47,806,701 to account for post-verdict damages and prejudgment interest. D appealed.