Spineology, Inc. v Wright Medical Technology, Inc.

Filing 201

ORDER: Wright Medical Technology's motion for attorney fees under 35 U.S.C. § 285 [Docket No. 169 ] is DENIED. (Written Opinion) Signed by Judge Joan N. Ericksen on November 17, 2017. (CBC)

UNITED STATES DISTRICT COURT
DISTRICT OF MINNESOTA
Spineology, Inc.,
Plaintiff,
v.

Case No. 15-cv-180 (JNE/FLN)
ORDER

Wright Medical Technology, Inc.,
Defendant.
Spineology, Inc., brought this action against Wright Medical Technology, Inc., for
infringement of United States Reissued Patent No. RE42,757 (filed May 7, 2004).
Wright Medical Technology asserted counterclaims for declarations of noninfringement,
absolute and equitable intervening rights, and invalidity. Spineology claimed that Wright
Medical Technology infringed independent claims 15, 33, and 35; claims 21-23, which
depend on claim 15; and claim 34, which depends on claim 33. Wright Medical
Technology prevailed. The Court declared that five of the seven asserted claims are
invalid, granted summary judgment of noninfringement as to the other two, and
dismissed Spineology’s infringement claims. Spineology appealed. 1 Wright Medical
Technology filed a motion for attorney fees under 35 U.S.C. § 285 (2012). For the
reasons set forth below, the Court denies Wright Medical Technology’s motion.
Section 285 states: “The court in exceptional cases may award reasonable attorney
fees to the prevailing party.” “[A]n ‘exceptional’ case is simply one that stands out from
others with respect to the substantive strength of a party’s litigating position (considering

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The appeal is pending before the Federal Circuit.
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both the governing law and the facts of the case) or the unreasonable manner in which the
case was litigated. District courts may determine whether a case is ‘exceptional’ in the
case-by-case exercise of their discretion, considering the totality of the circumstances.”
Octane Fitness, LLC v. ICON Health & Fitness, Inc., 134 S. Ct. 1749, 1756 (2014). No
precise rule or formula exists to determine whether a case is exceptional. Id. Potential
considerations include “frivolousness, motivation, objective unreasonableness (both in
the factual and legal components of the case) and the need in particular circumstances to
advance considerations of compensation and deterrence.” Id. at 1756 n.6 (quoting
Fogerty v. Fantasy, Inc., 510 U.S. 517, 534 n.19 (1994)). “[A] district court may award
fees in the rare case in which a party’s unreasonable conduct—while not necessarily
independently sanctionable—is nonetheless so ‘exceptional’ as to justify an award of
fees.” Id. at 1757. “[A] case presenting either subjective bad faith or exceptionally
meritless claims may sufficiently set itself apart from mine-run cases to warrant a fee
award.” Id.
Wright Medical Technology asserted that this case is exceptional because
Spineology advanced a theory of infringement that depended on a construction of “body”
that is inconsistent with the claims and the written description of the ’757 Patent and the
Order that construed disputed terms, Spineology ignored evidence that contradicted its
infringement theory, and Spineology pursued an insupportable damages theory. Wright
Medical Technology requested an award of all of its reasonable attorney fees and
expenses incurred in this case. In the alternative, it requested an award of its reasonable
attorney fees and expenses incurred after the Court construed disputed terms.
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“Body” was among the disputed terms that the parties presented to the Court for
construction. Spineology asserted that “body” should be construed as “the tube or shaft
in which the blade carrier is housed.” Wright Medical Technology maintained that
“body” should be construed as “outer structure(s) of the reamer.” Later, Wright Medical
Technology proposed “outer structure(s) that house internal components.” The Court
considered the use of “body” in claim 15 and its dependent claims to be illustrative,
found no description of any part of the reamer that used “body” in the written description,
summarized the preferred embodiments, assessed the parties’ proposed constructions,
declined to adopt either party’s proposed construction of “body,” stated that the claims
themselves provide substantial guidance as to the meaning of the term, and discerned no
need to construe the term at that time except to state that “body” does not include the
blade control knob.
A few months after the Court construed disputed terms, each party moved for
summary judgment. Wright Medical Technology moved for summary judgment of
noninfringement of claims 33 and 34 of the ’757 Patent. 2 It also sought summary
judgment to establish that Spineology may not recover damages before Wright Medical
Technology received actual notice from Spineology of the ’757 Patent and of
Spineology’s infringement claims. In addition, Wright Medical Technology moved to
exclude certain opinions and testimony of Spineology’s expert witnesses. Spineology
moved for summary judgment on the issue of infringement of claims 33 and 34.

2

When the Court construed disputed terms, the Court determined that “activation
mechanism” in claims 15 and 35 is indefinite.
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The Court granted Wright Medical Technology’s motion for summary judgment
and denied Spineology’s motion for summary judgment. A reading of the claims in the
context of the patent revealed that “body” is the hollow structure that houses the blade
carrier and that receives a knob or wheel: “body” includes the barrel. Because it was
undisputed that the maximum cross-sectional diameter of the body of the accused product
is greater than the maximum cross-sectional diameter of the blades of the accused
product in their fully expanded position, the Court granted Wright Medical Technology’s
motion for summary judgment and denied Spineology’s motion for summary judgment.
The Court did not consider the parties’ dispute regarding damages and denied as moot
Wright Medical Technology’s motions to exclude.
Although Spineology’s infringement claims depended on a construction of “body”
that was inconsistent with the claims and the written description, their assertion was not
so meritless as to render this case exceptional within the meaning of § 285. When the
Court construed disputed terms, the Court declined to adopt either party’s proposed
construction of “body,” stated that the claims themselves provide substantial guidance as
to the meaning of the term, and discerned no need to construe the term at that time except
to state that “body” does not include the blade control knob. At summary judgment,
Spineology maintained that its proposed construction was correct. The Court rejected its
attempt to find support for its proposed construction in the claims themselves. The
attempt was not so meritless as to render the case exceptional. Nothing about the
extrinsic evidence cited by Wright Medical Technology—deposition testimony of a
named inventor, Spineology’s marketing literature, and Spineology’s engineering
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drawings—renders this case exceptional. Cf. Phillips v. AWH Corp., 415 F.3d 1303,
1318 (Fed. Cir. 2005) (en banc) (“We have viewed extrinsic evidence in general as less
reliable than the patent and its prosecution history in determining how to read claim
terms, for several reasons.”).
As to the damages sought by Spineology, Wright Medical Technology maintained
that Spineology submitted “a baseless damages theory” and pursued damages “over a
period in excess of that allowed by the case law.” Wright Medical Technology relied on
arguments that it presented in its motion to exclude the testimony of Spineology’s
damages expert and its motion for summary judgment. In granting Wright Medical
Technology’s motion for summary judgment, the Court did not address these arguments.
Even if exclusion of Spineology’s damages expert and limitation of the damages period
were warranted, the arguments made by Spineology to support its damages theory and to
oppose the attempt to limit the damages period are not so meritless as to render the case
exceptional. See SFA Sys., LLC v. Newegg Inc., 793 F.3d 1344, 1348 (Fed. Cir. 2015)
(“A party’s position on issues of law ultimately need not be correct for them to not
‘stand[] out,’ or be found reasonable.”).
“The Court has cautioned that fee awards are not to be used ‘as a penalty for
failure to win a patent infringement suit.’” Checkpoint Sys., Inc. v. All-Tag Sec. S.A., 858
F.3d 1371, 1376 (Fed. Cir. 2017) (quoting Octane Fitness, 134 S. Ct. at 1753), petition
for cert. filed, 86 U.S.L.W 3205 (U.S. Oct. 3, 2017) (No. 17-519). Nothing about this
case stands out from others with respect to the substantive strength of Spineology’s

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litigating position or the manner in which the case was litigated. The Court denies
Wright Medical Technology’s motion for an attorney fees under 35 U.S.C. § 285.
Based on the files, records, and proceedings herein, and for the reasons stated
above, IT IS ORDERED THAT:
1.

Wright Medical Technology’s motion for attorney fees under 35 U.S.C.
§ 285 [Docket No. 169] is DENIED.

Dated: November 17, 2017
s/ Joan N. Ericksen
JOAN N. ERICKSEN
United States District Judge

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