Braun et al v. Medtronic Sofamor Danek et al

Filing 716

MEMORANDUM DECISION AND ORDER denying 647 Medtronics Motions for a New Trial; denying 648 Motion for Judgment as a Matter of Law ; granting 657 Dr. Brauns Motion to Limit Scope ; denying 678 Dr. Brauns Motion for Sanctions. Signed by Judge Robert J. Shelby on 10/21/2015. (jds)

IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF UTAH
CENTRAL DIVISION

JOHN T. BRAUN, MD,
Plaintiff,

MEMORANDUM DECISION AND
ORDER

v.
MEDTRONIC SOFAMOR DANEK, INC.,

Case No. 2:10-CV-001283

Defendant.

Judge Robert J. Shelby

A ten-day jury trial in this case resulted in a verdict in favor of Plaintiff John T. Braun,
M.D., on his claims for breach of contract, breach of implied covenant of good faith and fair
dealing, trade secret misappropriation, and fraudulent inducement. The jury also awarded Dr.
Braun punitive damages after finding that Defendant Medtronic Sofamor Danek, Inc. acted
willfully and maliciously, or with reckless indifference toward Dr. Braun’s rights. Medtronic
now moves for judgment on these claims as a matter of law under Federal Rule of Civil
Procedure 50(b) (Dkt. 648), or alternatively for a new trial under Rule 59 (Dkt. 647). In turn, Dr.
Braun moves to limit the scope of Medtronic’s Rule 50(b) motion (Dkt. 657), and asks the court
to sanction Medtronic for improperly withholding evidence in discovery. (Dkt. 678.)
Given the extensive briefing on these motions and the court’s familiarity with the issues
and evidence, oral argument is unnecessary. For the reasons stated below, Dr. Braun’s motion to
limit the scope of Medtronic’s Rule 50(b) motion is granted. The three remaining motions are
denied.

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BACKGROUND
Dr. Braun is an orthopedic spine surgeon. He invented a device and method to treat
pediatric scoliosis surgically, without requiring spinal fusion. In general, the invention was a
method of so-called “active correction” of spinal curvature using tethered bone-anchor screws
that are surgically placed in the vertebrate. Medtronic is a medical device company that does
business in many areas, including the treatment of scoliosis. In October 1999, Dr. Braun
disclosed his invention to Medtronic, and the parties negotiated Medtronic’s licensing of his
invention. In April 2000, the parties signed an agreement in which Medtronic contracted to pay
Dr. Braun a lump sum of $200,000 and a five percent royalty on each sale of a licensed device.
Dr. Braun’s business relationship with Medtronic later deteriorated, leading Dr. Braun to
file this lawsuit in December 2010. Extensive motion practice ensued. Several pretrial motions
are relevant to the issues now before the court. First, Medtronic filed after the close of discovery
a number of motions for summary judgment, including a motion seeking judgment on Dr.
Braun’s trade secret misappropriation claim. Medtronic’s motion was based, in part, on the fact
that Dr. Braun styled his claim as one arising under common law. Medtronic’s moving papers
correctly noted that Utah eliminated common law claims for trade secret theft when it adopted a
preemptive statutory basis for recovery. Dr. Braun responded to Medtronic’s motion
substantively, and also sought leave to make a technical correction to the heading of the claim in
his operative complaint, clarifying that the claim arose under the Utah statute. The court allowed
the requested amendment, noting that the substance of the claim was unchanged and that
Medtronic was not unfairly prejudiced by the purely technical amendment.
Following resolution of the motions for summary judgment, the case was set for trial on
Dr. Braun’s claims for breach of contract, breach of the implied covenant of good faith and fair
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dealing, fraudulent inducement, trade secret misappropriation, and tortious interference with
prospective economic relations. The parties then filed numerous pretrial motions in limine.
Important to the issues addressed below, Medtronic filed a pretrial Daubert motion seeking to
exclude at trial the testimony of Dr. Braun’s damages expert, Michael Collins (the Collins
Daubert Motion). After receiving argument from the parties during a pretrial motion hearing, the
court declined to exclude Mr. Collins’ testimony. However, the court stated it would “consider a
timely objection at trial if there’s – if it turns out there just is not a sufficient foundation provided
for this testimony at trial.” (Dkt. 530, p.36.)
The case then proceeded to trial. Mr. Collins testified at the trial without
contemporaneous objection by Medtronic concerning the adequacy of the foundation for his
opinions. After the close of Dr. Braun’s case in chief, Medtronic purported to renew the Collins
Daubert Motion, and then made an oral motion under Federal Rule of Civil Procedure 50(a) for
judgment as a matter of law. Medtronic timely renewed the Rule 50(a) motion at the close of all
evidence. (Dkt. 657, p. v.) The court reserved the motion.
After deliberating for two days, the jury returned a verdict in favor of Dr. Braun on all of
his claims, save for tortious interference with economic relations. The jury awarded $16 million
on the breach of contract claims, nominal damages of $2 on the trade secret misappropriation
claim, and $25,050,000 on Dr. Braun’s fraudulent inducement claim. After finding by clear and
convincing evidence that Medtronic’s conduct was willful and malicious, or manifested a
reckless indifference to Dr. Braun’s rights, the jury awarded Dr. Braun $12 million in punitive
damages. To avoid overlapping damages on alternative claims, the court entered judgment in the
amount of $37,050,002. (Dkt. 588.)

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Medtronic then moved for judgment as a matter of law or, in the alternative, for a new
trial. (Dkt. Nos. 647, 648.) Dr. Braun opposed these motions, moved to limit the scope of
Medtronic’s motion for judgment as a matter of law (Dkt. 657), and moved for sanctions against
Medtronic. (Dkt. 678.)
The court reviews these motions in turn, beginning with Dr. Braun’s motion to limit the
scope of Medtronic’s Rule 50(b) motion for judgment as a matter of law. As explained below,
the court finds the motion to be well taken. In view of that decision, the court then addresses
those portions of Medtronic’s Rule 50(b) motion that were properly preserved at trial, before
taking up Medtronic’s Rule 59 motion for a new trial. Finally, the court considers Dr. Braun’s
motion for sanctions.
DISCUSSION
I. Dr. Braun’s Motion to Limit the Scope of Medtronic’s Rule 50(b) Motion for Judgment
as a Matter of Law
A. Standard of Review
Federal Rule of Civil Procedure 50(a) allows a party during trial to move for judgment as
a matter of law before the case is submitted to the jury. The motion must “specify the judgment
sought and the law and facts that entitle the movant to the judgment.” Fed. R. Civ. P. 50(a)(2). If
that motion is not granted, the matter is deemed submitted to the jury. After a jury returns its
verdict, a party may “file a renewed motion for judgment as a matter of law.” Fed. R. Civ. P.
50(b). In combination, Rule 50(a) and Rule 50(b) limit the scope of posttrial motions for
judgment as a matter of law to those issues presented to the court before the jury deliberates.
The parties in the instant case disagree about the purposes of Rule 50 and its specificity,
preservation, and renewal requirements. Medtronic seeks to avoid a “technical, rigid”
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application of Rule 50, arguing that the court may consider in its Rule 50(b) motion any
arguments Dr. Braun had notice of during this litigation. (Dkt. 662, pp. 1-3.) Dr. Braun urges
the court to take a narrow approach, carefully comparing the arguments made in Medtronic’s oral
Rule 50(a) motion with the arguments now raised in its posttrial Rule 50(b) motion. (Dkt. 657,
pp. 1-3.)
If, as Medtronic suggests, the only preservation requirement for a Rule 50(b) motion is
some prior notice to the court and the opposing parties of an argument or position, then a Rule
50(b) motion could renew arguments made in any pretrial motion or any colloquy during trial.
Under such an approach, a Rule 50(b) motion could hardly be said to be renewing a Rule 50(a)
motion. Rule 50(b) would instead be a catch-all, and a Rule 50(a) motion would have no
practical relationship to the Rule 50(b) motion renewing it. Whatever other limitations exist,
Rule 50(b) cannot be read to render a Rule 50(a) motion superfluous.
The court will not adopt this approach. While Rule 50(b) does not require the
hypertechnical parsing of the content of a Rule 50(a) motion urged by Dr. Braun, the Rule 50(a)
motion necessarily defines the subject matter boundaries of a subsequent Rule 50(b) motion.
Medtronic may properly renew in its Rule 50(b) motion only those arguments included in some
form in its Rule 50(a) motion made at trial.
B. Analysis
In his motion to limit the scope of Medtronic’s Rule 50(b) motion, Dr. Braun argues that
several of Medtronic’s arguments were not included in the Rule 50(a) motion and have not been

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preserved.1 Before turning to the merits of Medtronic’s 50(b) arguments, the court must first
address Dr. Braun’s efforts to limit the scope of those arguments.
1. Breach of Contract
Dr. Braun first argues that none of Medtronic’s Rule 50(b) breach of contract arguments
were made in its Rule 50(a) motion at trial and are therefore not preserved.2 In response,
Medtronic argues that it preserved the issues by renewing its Collins Daubert Motion close in
time to its Rule 50(a) motion after the close of Dr. Braun’s case in chief.
The parties dispute whether the record supports the conclusion that Medtronic
successfully incorporated into its Rule 50(a) motion its pretrial arguments in the Collins Daubert
Motion. But even assuming it did, Medtronic waived those arguments when it failed to timely
object during Mr. Collins’ testimony at trial. Because these Daubert arguments were waived
before Medtronic offered its Rule 50(a) motion, the motion could not preserve them. They
cannot now be renewed in a Rule 50(b) motion.
Though an objection need not be “perfectly contemporaneous with the challenged
testimony,” it should at the latest be “raised within a sufficient time after the proffer of testimony
so as to allow the district court an adequate opportunity to correct any error.” Jones v. Lincoln
Elec. Co., 188 F.3d 709, 727 (7th Cir. 1999). Here, Medtronic’s attempted renewal of its pretrial
Collins Daubert Motion after Mr. Collins completed his testimony deprived Dr. Braun’s counsel
of the opportunity to address any specific foundation objections by eliciting additional testimony
from the witness on the stand, and is therefore untimely.

1

Dr. Braun stipulates that several arguments were properly preserved from Medtronic’s 50(a) motion.
(Dkt. 657, pp. x-xiii.) These arguments are resolved on the merits in Part II below.
2

Dr. Braun stipulates that the issue of breach of implied covenant damages is preserved.

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The Tenth Circuit applies a three-part test in determining whether a failure to make a
timely objection at trial waives an earlier objection made in a motion in limine, looking to
whether “(1) the matter was adequately presented to the district court; (2) the issue was of a type
that can be finally decided prior to trial; and (3) the court’s [pretrial] ruling was definitive.”
Pandit v. Am. Honda Motor Co., 82 F.3d 376, 380 (10th Cir. 1996). All three elements must be
satisfied before a party is relieved of its obligation to renew an objection at trial. The court’s
ruling on Medtronic’s pretrial motion to exclude Mr. Collins’ testimony was neither final nor
definitive. To the contrary, the court clearly informed Medtronic that it would revisit the issue at
trial if a timely objection was presented during Mr. Collins’ testimony. Medtronic’s failure to
make a timely objection at trial therefore waived the issues presented in the Collins Daubert
Motion. Because these Daubert arguments were waived, they could not have been included
within Medtronic’s Rule 50(a) motion, and cannot now be renewed by Medtronic’s Rule 50(b)
motion.
2. Fraudulent Inducement
Dr. Braun next argues that Medtronic attempts to raise in its Rule 50(b) motion several
arguments relating to fraudulent inducement that were not included in its Rule 50(a) motion at
trial: (1) that there is no evidence Dr. Braun relied on any of Medtronic’s alleged
misrepresentations; (2) that Dr. Braun failed to present evidence in support of damages; (3) that
Dr. Braun failed to present evidence that Medtronic’s conduct caused him any damages; and (4)
that lost profits testimony from Mr. Collins, submitted to the jury, was impermissibly speculative
and unreliable and should have been excluded.
These arguments were not raised in Medtronic’s Rule 50(a) motion at trial. Medtronic
attempts to overcome this deficiency in two ways. First, Medtronic resurrects the same argument
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it made regarding Mr. Collins’ contract damages testimony—claiming its foundational objection
extended to damages for fraudulent inducement, and was preserved through its pretrial Collins
Daubert Motion. (Dkt. 662, pp. 16-18.) These arguments, like the Daubert arguments relating
to breach of contract, were waived by Medtronic’s failure to timely object during Mr. Collins’
testimony at trial and cannot now provide a basis for a Rule 50(b) motion.
Second, Medtronic argues that despite a lack of “technical” recitation in its Rule 50(a)
motion, Dr. Braun was “on notice” of Medtronic’s objections relating to damages and reliance.
Medtronic urges an impermissibly broad view of the scope of Rule 50(b) renewals, which, for
the reasons given above, are necessarily constrained by the scope of the earlier Rule 50(a)
motion at trial. In that motion, Medtronic argued in relation to fraudulent inducement only (1)
that there was a failure of evidence that Medtronic lacked a present intention to perform the
contract with Dr. Braun, and (2) that Dr. Braun needed to show a non-speculative option
available to him in order to prove damages and that such evidence was lacking. (Dkt. 601-4, pp.
34-36.) These arguments are properly preserved for Rule 50(b). But they do not encompass the
other fraudulent inducement damages arguments raised by Medtronic in its Rule 50(b) motion.
And contrary to Medtronic’s suggestion that it challenged the sufficiency of the fraudulent
inducement claim as a whole (Dkt. 662, p. 19), the arguments in its Rule 50(a) motion were
narrow and specific.
Medtronic has provided no basis for finding the challenged fraudulent inducement
arguments preserved. They may not be considered in connection with its Rule 50(b) motion.
3. Trade Secret Misappropriation
Finally, Dr. Braun challenges Medtronic’s purported renewal of three distinct arguments
relating to trade secret misappropriation: (1) that Medtronic was severely prejudiced by the
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inclusion of a new trade secret misappropriation claim on the eve of trial; (2) that nominal
damages are not recoverable under the Utah Uniform Trade Secrets Act (UUTSA); and (3) that
Dr. Braun failed to present evidence of damages for each of his alleged trade secrets.
In its Rule 50(a) motion, Medtronic raised a number of arguments directed to trade secret
misappropriation. (Dkt. 601-4, pp. 36-39.) But the three arguments challenged by Dr. Braun
were not among them. In arguing that it preserved these issues, Medtronic again relies on both
its claimed renewal of its pretrial Collins Daubert Motion on damages and on a concept of
general “notice” as a catch-all replacement for articulation of the specific bases on which a Rule
50(a) motion is made. (Dkt. 662, pp. 14-15.) These arguments fail for the same reasons
discussed above regarding the breach of contract and fraudulent inducement claims. The Collins
Daubert Motion cannot preserve the damages arguments now offered because they were waived
at trial, and other matters raised pretrial or during trial outside the context of a Rule 50(a) motion
cannot be “renewed” in a Rule 50(b) motion.
Medtronic raises a different argument for preservation on the issue of nominal damages.
Medtronic claims that as a matter of law a jury cannot award nominal compensation or unjust
enrichment damages on a UUTSA claim, and the fact that it did so means the damages evidence
on this claim was legally insufficient. (Dkt. 648, p. 50.)
There is no dispute that Medtronic did not raise the issue of the legal availability of
nominal damages in its Rule 50(a) motion. (Dkt. 662, p. 15.) Medtronic argues, however, that it
“had no way of knowing during trial that the jury would return a verdict providing nominal
damages under the trade secret claim.” Id. The instructions and verdict form submitted to the
jury support Medtronic’s position. The jury instructions included no charge concerning nominal
damages for trade secret misappropriation: Instruction #66 discussed only actual loss suffered by
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Dr. Braun and unjust enrichment accruing to Medtronic. (Dkt. 572, pp. 73-74.) Similarly, the
Verdict Form did not mention nominal damages for trade misappropriation.
But a Rule 50(b) motion can renew only those matters first raised under Rule 50(a)
before the jury begins its deliberations. Rule 50(b) cannot incorporate arguments that could not
have been raised under Rule 50(a). Medtronic’s argument for an exception on the basis of
impossibility ignores both the plain language of Rule 50 and the availability of Rule 59 to
address the work of an allegedly wayward jury.
First, Rule 50(a) expressly provides that a motion for judgment as a matter of law may be
made “at any time before the case is submitted to the jury.” On its face, the Rule is limited to
addressing issues that arise before a verdict is returned. And as previously stated, Rule 50(b)
cannot properly be read to expand the scope of a motion for judgment as a matter of law beyond
the bases included in a Rule 50(a) motion. Beyond that, Rule 59 provides the correct vehicle for
the issue Medtronic seeks to address. A litigant need not anticipate before deliberation
arguments that might arise as a result of a jury verdict. But where the question is not whether the
jury had a sufficient basis for awarding certain damages, but simply whether the jury could
legally do so, a party should move for a new trial under Rule 59. See Guidance Endodontics,
LLC v. Dentsply Int’l, Inc., 2010 WL 4054115 *17 (D. N.M. Aug. 26, 2010) (noting that where
arguments involve “issues of law and not of the sufficiency of the evidence,” Rule 59 is
implicated). Here, where the basis of the argument is that the jury could not legally award
nominal damages, Rule 50(a) and Rule 50(b) are not the appropriate procedural vehicles, and
Medtronic’s argument is outside the scope of renewal.3

3

Medtronic opposes Dr. Braun’s motion to limit scope for this claim based only on the impossibility of
anticipating an award of nominal damages. (Dkt. 662, pp. 15-16.) Another potential basis to find the nominal
damages argument preserved can be found in Medtronic’s motion for judgment as a matter of law. (Dkt. 648, pp.

10

4. Conclusion
Dr. Braun’s motion to limit the scope of Medtronic’s Rule 50(b) motion is granted. (Dkt.
657.) The court will limit its consideration of Medtronic’s 50(b) motion to the arguments
included and properly preserved in its Rule 50(a) motion at trial.
II. Medtronic’s Motion for Judgment as a Matter of Law
A. Standard of Review
A district court will grant a motion for judgment as a matter of law “[i]f a party has been
fully heard on an issue during a jury trial and the court finds that a reasonable jury would not
have a legally sufficient evidentiary basis to find for the party on that issue.” Fed. R. Civ. P.
50(a)(1). A motion renewed after the jury has returned its verdict is decided under the same
standard. Smith v. Aztec Well Servicing Co., 462 F.3d 1274, 1287 (10th Cir. 2006). To be legally
sufficient, the jury verdict must be “supported by substantial evidence when the record is viewed
most favorably to the prevailing party.” Webco Indus., Inc. v. Thermatool Corp., 278 F.3d 1120,
1128 (10th Cir. 2002). Sufficient evidence can mean “something less than the weight of the
evidence,” and consists of “such relevant evidence as a reasonable mind might accept as
adequate to support a conclusion, even if different conclusions also might be supported by the
evidence.” Id. (quoting Beck v. N. Natural Gas Co., 170 F.3d 1018, 1022 (10th Cir.1999)).
Importantly, “the mere existence of contrary evidence does not itself undermine the jury’s
findings as long as sufficient other evidence supports the findings.” Webco, 278 F.3d at 1128

49-51.) There, Medtronic discusses a case where a district court found that an award of nominal damages can
demonstrate the insufficiency of evidence for any damages. Alphamed Pharm. Corp. v. Arriva Pharm., Inc., 432 F.
Supp. 2d 1319, 1337 (S.D. Fla. 2006) aff’d, 294 F. App’x 501 (11th Cir. 2008). If Medtronic’s nominal damages
argument is construed to address the sufficiency of evidence, then its Rule 50(b) argument is arguably preserved.
(Dkt. 657, p. 11.) The court does not address whether the Alphamed approach is appropriate in this Circuit, and is
not convinced that this argument is preserved for purposes of Rule 50(b). Nonetheless, the court finds there is
sufficient evidence for trade secret misappropriation damages in the amount awarded. See infra pp. 15-16.

11

(internal quotations omitted). A Rule 50(b) motion should be granted only “if the evidence
points but one way and is susceptible to no reasonable inferences supporting the party opposing
the motion.” Hardeman v. City of Albuquerque, 377 F.3d 1106, 1112 (10th Cir. 2004) (internal
quotations omitted).
B. Analysis
Medtronic seeks judgment as a matter of law on all the claims on which Dr. Braun
prevailed at trial and on the jury’s punitive damages award. (Dkt. 648.) Having granted Dr.
Braun’s motion to limit the scope of Medtronic’s motion, the court will address only those
arguments Medtronic properly preserved at trial. (Dkt. 647, pp. v-vii.) Because all of
Medtronic’s arguments for judgment as a matter of law on the breach of contract claim are
excluded, the motion on that claim is denied.
1. Breach of Implied Covenant of Good Faith and Fair Dealing
Medtronic seeks judgment as a matter of law on Dr. Braun’s claim for breach of the
implied covenant of good faith and fair dealing, arguing there was a lack of sufficient evidence
of damages. (Dkt. 648, pp. 28-29.)
Both parties recognize that breach of contract and breach of the implied covenant have a
close relationship. Under Utah law, all contracts are subject to the implied covenant, and a
breach of the implied covenant is a breach of the contract itself. Brown v. Weis, 871 P.2d 552,
563 (Utah Ct. App. 1994). Damages likewise may be similar or even identical. Though the
claims here were separately pled, the same evidence could provide a sufficient basis for damages
on either or both of the breach claims. Accordingly, the question of damages for both claims was
presented to the jury under a single heading of the Verdict Form. (Dkt. 573, pp. 2-3.) The jury
was first asked to determine whether the elements for each claim had been satisfied, and then
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instructed to enter one award of damages if the jury found liability on either or both breach
claims. (Dkt. 573, p. 3.)
In light of the jury’s verdict that Medtronic breached both the contract and the implied
covenant, there is no basis for concluding that the jury awarded damages based on one claim but
not the other. And because there was sufficient evidence for a damages award based on the
breach of contract claim, any failure in sufficiency of the evidence for damages on breach of the
implied covenant claim would not disturb the award in any event.4
Moreover, even if the jury had awarded damages based solely on the implied covenant
claim, Medtronic has not demonstrated that the jury lacked sufficient evidence for its verdict on
the claim. Without separately reciting here all the evidence the jury received and had available
for consideration, and having contemporaneously heard the evidence and testimony as it was
received at trial, the court finds that the evidence was sufficient to support the jury’s verdict.
Therefore, Medtronic’s motion for judgment as a matter of law on the breach of implied
covenant claim is denied.
2. Fraudulent Inducement
Medtronic also seeks judgment as a matter of law on Dr. Braun’s claim for fraudulent
inducement. (Dkt. 648, pp. 30-46.) Medtronic contends that Dr. Braun failed to present
sufficient evidence that Medtronic did not intend to perform the License Agreement (Dkt. 648,
pp. 32-39) and that Dr. Braun failed to present evidence that a third party would have licensed
his invention. (Dkt. 648, pp. 39-41.)

4

Moreover, Medtronic did not object to the Verdict Form containing only one damages question on the two
contract claims.

13

Medtronic first submits that Dr. Braun failed to provide sufficient evidence that
Medtronic did not intend to perform the License Agreement, arguing (1) that Medtronic’s
undisputed partial performance of the License Agreement and its passion and excitement for the
bone-anchor device to treat pediatric scoliosis negate any inference that it did not intend to
perform its contractual obligations to Dr. Braun, and (2) that the evidence presented by Dr. Braun
is insufficient because it relates only to Medtronic’s post-execution conduct.
Both arguments focus on the sufficiency of the direct evidence at trial but fail to account
for the reasonable and justifiable inferences the jury was permitted to draw from that evidence.
Dr. Braun correctly notes that the jury was instructed that it could weigh both direct and
circumstantial evidence in considering the sufficiency of the evidence to support the claim. (Dkt.
675, p. 25.)
Medtronic separately argues that there is a lack of evidence that a third party would have
licensed the bone-anchor device. (Dkt. 648, pp. 39-41.) To the extent this would even provide a
basis for judgment as a matter of law, the court finds Dr. Braun’s opposition memorandum on
this point convincing. (Dkt. 675, pp. 19-23.) Medtronic arbitrarily and improperly attempts to
limit a critical aspect of the jury’s work—drawing those inferences that the jury concludes
reasonably and justifiably follow from all the direct and circumstantial evidence. The court
declines Medtronic’s invitation to apply an unduly technical and restrictive view of the evidence
the jury could properly consider, and the inferences it could reasonably draw from that evidence.
As with the breach of contract claims, the court is satisfied that the evidence presented at
trial adequately supports the jury’s damages award for fraudulent inducement.

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3. Trade Secret Misappropriation
Medtronic also seeks judgment as a matter of law on Dr. Braun’s claim for trade secret
misappropriation. (Dkt. 648, pp. 46-56.) Medtronic argues that Dr. Braun failed to present
evidence of damages, that its purchase of Dr. Braun’s invention precludes the misappropriation
claim, and that there was insufficient evidence at trial to support a conclusion that “active
correction” for the treatment of pediatric scoliosis was a trade secret. These arguments fail.
Medtronic has not provided any basis for questioning the sufficiency of the evidence on
which the jury relied. Dr. Braun’s expert, Mr. Collins, testified concerning his damages
calculations based on valuation, a legally permissible basis for an award. Given the nature of the
Verdict Form, which did not separate out damages for individual trade secrets, “Medtronic
simply cannot show that the jury awarded trade secret damages for a non-trade secret.” (Dkt.
675, p. 47.) For the reasons Dr. Braun articulates in his opposition memorandum (Dkt. 675, p.
50), Medtronic’s argument that its acquisition of the invention precludes a successful
misappropriation claim is likewise unconvincing.
As it did at trial, Medtronic makes a strong argument in its papers that the concept of
“active correction” was not a trade secret at the relevant time. (Dkt. 648, pp. 54-56.) Another
jury might agree with Medtronic. After considering the competing evidence provided at trial by
both parties, this jury did not. Medtronic has failed to show, as it must at this stage, that no
reasonable jury could conclude that active correction was a trade secret. Medtronic’s briefing
establishes only that this was a question on which reasonable minds could disagree—precisely
the zone of discretion reserved to the jury. The jury had a sufficient basis, weighing all the
evidence, to support its conclusion. Medtronic’s motion for judgment as a matter of law on trade
secret misappropriation is denied.
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4. Punitive Damages
Finally, Medtronic moves for judgment as a matter of law on the jury’s punitive damages
award, arguing a lack of sufficient evidence. (Dkt. 648, pp. 56-60.)5
The jury’s award of punitive damages was based on the underlying claim of fraudulent
inducement, on which Dr. Braun prevailed.6 The court’s instructions charged the jury with
determining whether the elements of fraudulent inducement were met. (Dkt. 573, p. 5.) The jury
concluded Dr. Braun proved his claim and awarded compensatory damages.
Where compensatory damages are awarded, Utah, by statute, allows for punitive
damages, but only where certain specific factual findings are first made. Utah Code Ann. § 78B8-201. Because the jury found for Dr. Braun on his fraudulent inducement claim, the Verdict
Form asked (in language taken directly from the relevant Utah statute) whether the jury found
“by clear and convincing evidence, that Medtronic’s conduct was the result of willful and
malicious conduct, OR conduct that manifested a knowing and reckless indifference toward, and
a disregard of, the rights of others.” (Dkt. 573, p. 7.) The jury indicated that it made these
findings. In separate deliberations following receipt of additional argument by the parties, the
jury later elected to award punitive damages. Id.
Medtronic argues that the jury’s findings relating to the willfulness, maliciousness, or
recklessness of Medtronic’s conduct were insufficient to support an award of punitive damages

5

Medtronic also argues that the punitive damages award should be vacated on the ground that Medtronic is
entitled to judgment as a matter of law on the underlying claim of fraudulent inducement. (Dkt. 648, p. 57 n.59.)
For the reasons stated above, Medtronic is not entitled to judgment as a matter of law on that claim.
6

Under Utah law, a claim for fraudulent inducement requires finding by clear and convincing evidence:
“(1) that a representation was made (2) concerning a presently existing material fact (3) which was false and (4)
which the representor either (a) knew to be false or (b) made recklessly, knowing that there was insufficient
knowledge upon which to base such a representation, (5) for the purpose of inducing the other party to act upon it
and (6) that the other party, acting reasonably and in ignorance of its falsity, (7) did in fact rely upon it (8) and was
thereby induced to act (9) to that party's injury and damage.” Daines v. Vincent, 190 P.3d 1269, 1279 (Utah 2008)
(internal quotations omitted).

16

because the jury already made a similar finding when it decided in Dr. Braun’s favor on his
fraudulent inducement claim. Specifically, Medtronic argues that where an underlying claim
(such as fraudulent inducement in this case) “includes willful, malicious, or fraudulent intent as
an element,” this same element cannot also serve as the aggravating circumstances that permit
the jury to award punitive damages. Instead, Medtronic argues, Utah law requires finding “clear
and convincing evidence of additional aggravating circumstances in order to obtain punitive
damages.” (Dkt. 648, p. 58) (citing ProMax Dev. Corp. v. Mattson, 943 P.2d 247, 260 (Utah Ct.
App. 1997)).
Medtronic is correct that prevailing on a predicate claim does not automatically give rise
to an award of punitive damages. See Nelson v. Jacobsen, 669 P.2d 1207, 1219 (Utah 1983).7
But Medtronic’s argument that the jury was required to find “additional” aggravating
circumstances beyond the statutory prerequisites is unconvincing. Medtronic cites to the Tenth
Circuit’s Farm Bureau decision, applying Utah law, and its instruction that there “must be some
‘additional aggravating circumstances’ that warrant the award of punitive, as opposed to merely
compensatory, damages.” Farm Bureau Life Ins. Co. v. Am. Nat. Ins. Co., 2011 WL 223731
(10th Cir. Jan. 26, 2011). Yet it seems clear that the Utah statute identifies those “additional
aggravating circumstances,” and the court does not read Farm Bureau to suggest otherwise.
At best, Medtronic seems to suggest that in the specific case of fraud, the punitive
damages statute itself provides an insufficient definition of “additional aggravating
circumstances,” because the statutory language might allow a jury to conclude that if the
elements of fraud are met, then punitive damages are appropriate. But the jury’s conclusion that

7

Dr. Braun appears to concede that the jury might “not [be] automatically required to award punitive
damages on claims that include a showing of willful and malicious conduct as an element.” (Dkt. 675, p. 62.)

17

the elements of fraud were proven does not compel a finding that punitive damages were
appropriate—indeed, the statute identifies only when punitive damages “may be awarded,” not
when they must be. Utah Code Ann. § 78B-8-201. The Verdict Form here separated the
question of the legal requirements for awarding punitive damages from the question whether to
award punitive damages. (Dkt. 573, pp. 7-8.) And both of these questions were separated from
the question concerning liability on the underlying fraudulent inducement claim. Having
independently found the statutory elements present, it was in the jury’s discretion to award
punitive damages.
Finally, under Utah law courts interpreting state statutes must look first to their plain
meaning. E.g., Marion Energy, Inc. v. KFJ Ranch P’ship, 267 P.3d 863, 866 (Utah 2011). The
statute provides what a jury must find to award punitive damages, and those findings were made.
Medtronic has not persuaded the court to look beyond the plain language of the statute and create
an exception in the case of fraud. For these reasons, Medtronic’s motion for judgment as a
matter of law on punitive damages is denied.
III. Motion for New Trial
A. Medtronic’s Request to Expand Its Motion for New Trial
In addition to seeking judgment as a matter of law, Medtronic simultaneously filed a Rule
59 motion for a new trial. Preliminarily, the court must resolve a dispute between the parties
about the proper scope of that motion. As discussed above, Dr. Braun objected to Medtronic’s
Rule 50(b) motion, arguing that Medtronic had failed to preserve many of the arguments when it
failed to include them in its Rule 50(a) motion at trial. In its memorandum in opposition to Dr.
Braun’s motion to limit scope, Medtronic requested that “any argument the Court deems not to
have been preserved under Rule 50 should be converted to grounds for a new trial pursuant to
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Rule 59 and heard in that context.” (Dkt. 662, pp vi, 19-20.) The court declines Medtronic’s
invitation to consider those excluded Rule 50(b) arguments under the Rule 59 standard.
First, Medtronic’s Rule 50(b) motion nowhere asks for consideration in the alternative as
a Rule 59 motion, and its Rule 59 motion does not incorporate by reference the arguments
separately made in its Rule 50(b) motion. Parties may evaluate the relevant burdens and
standards of review and logically conclude that certain arguments are more appropriate under
Rule 50 or under Rule 59. All the posttrial arguments raised should not automatically be
considered under both standards.
Medtronic’s proposed authority for automatic conversion does not suggest otherwise. In
M.D. Mark, Inc. v. Kerr–McGee Corp., the Tenth Circuit heard from an appellant who raised
detailed arguments in its Rule 50(b) motion, but gave only cursory treatment to the same in its
Rule 59 motion. 565 F.3d 753, 762 (10th Cir. 2009). Finding the arguments were not preserved
for purposes of Rule 50(b), the Tenth Circuit “out of an abundance of caution,” treated the
summary argument as incorporating, by reference, the more detailed argument contained in the
Rule 50(b) portion of its motion. Id. But here there is no suggestion in Medtronic’s Rule 59
motion that Medtronic sought to incorporate by reference its more detailed Rule 50(b)
arguments.
Second, the requested conversion risks prejudicing Dr. Braun significantly. Dr. Braun
responded to each of Medtronic’s motions as they were filed, addressing the arguments asserted
in each under the governing standards. Because Medtronic made its conversion request in
opposition to Dr. Braun’s motion to limit the scope of Medtronic’s Rule 50(b) motion, Dr. Braun
had no reasonable opportunity to separately brief under the different Rule 59 standard those

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issues he correctly asked the court to exclude from consideration in Medtronic’s Rule 50(b)
motion.
Moreover, Medtronic’s request is improper under the court’s local rules, which require
that affirmative relief requested by a party be sought in a separate motion detailing the specific
relief sought and the basis for that relief. DUCivR 7-1(b)(1)(A). Among other things, the local
rules promote the orderly presentation of issues and assist the court and parties by avoiding
moving targets in the papers. Medtronic’s failure to comply with the court’s local rules
implicates both of these concerns. Medtronic essentially invites the court to order a new trial on
the basis of arguments raised only in its Rule 50(b) motion and not briefed by Dr. Braun under
the applicable Rule 59 standards. The court declines to do so. Prevailing parties are entitled to
fair notice of the issues they must confront posttrial and the standards that will govern the
resolution of those issues.
For all these reasons, the court will not consider as part of Medtronic’s Rule 59 motion
the arguments it failed to preserve in its Rule 50(a) motion at trial, but nevertheless asserted in its
Rule 50(b) motion. The court will limit its consideration of the Rule 59 motion to the grounds
set forth in the motion itself. (Dkt. 647.)
B. Standard of Review
“The standard for granting a motion for a new trial is less stringent than the standard
applied” to a Rule 50 motion for judgment as a matter of law. Megadyne Med. Prods., Inc. v.
Aspen Labs., Inc., 864 F. Supp. 1099, 1102 (D. Utah 1994) aff’d, 52 F.3d 344 (Fed. Cir. 1995);
see Henning v. Union Pac. R. Co., 530 F.3d 1206, 1217 (10th Cir. 2008). The decision to grant a
Rule 59 motion embraces not just the sufficiency of the evidence, but “all the reasons which
inhere in the integrity of the jury system itself.” Weese v. Schukman, 98 F.3d 542, 549 (10th Cir.
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1996) (internal quotations omitted). “A new trial may be appropriate where the jury verdict is
against the weight of the evidence, the damages are excessive, a party was prejudiced by
erroneous evidentiary rulings, or the trial was not fair to the moving party.” Megadyne, 864 F.
Supp. at 1102.
Though the grounds for granting a new trial are potentially broad, motions of this kind
“are generally disfavored, and should only be granted with great caution.” Klein-Becker USA,
LLC v. Englert, 2011 WL 4079225 (D. Utah Sept. 13, 2011) aff’d, 711 F.3d 1153 (10th Cir. 2013)
(internal quotations omitted). Federal Rule of Civil Procedure 61 counsels that “[u]nless justice
requires otherwise, no error in admitting or excluding evidence—or any other error by the court
or a party—is ground for granting a new trial . . . . At every stage of the proceeding, the court
must disregard all errors and defects that do not affect any party’s substantial rights.” Fed. R.
Civ. P. 61. The work, effort, and expense involved in trial cut against liberally granting such
motions. To give rise to a new trial, claimed error must be clear, prejudicial to the moving party,
and must affect substantive rights. Guidance Endodontics, LLC v. Dentsply Int’l, Inc., 749 F.
Supp. 2d 1235, 1256 (D.N.M. 2010).
C. Analysis
Medtronic moves for a new trial on both liability and damages, and in the alternative for
remittitur of damages. In support of its motion, Medtronic argues:
(1) liability was found against the clear weight of the evidence (Dkt. 647, pp. 2-9);
(2) its Collins Daubert Motion should have been granted (id. pp. 9-11);
(3) fraudulent inducement damages of $25 million were excessive (id. pp. 11-15);
(4) jury instructions failed to adequately identify the elements necessary to award
punitive damages (id. pp. 15-18);
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(5) allowing Dr. Braun to amend his trade secret misappropriation claim on the eve of
trial introduced prejudice (id. pp. 18-20); and
(6) Dr. Braun’s self-recorded deposition videos prejudiced Medtronic before the jury (id.
pp. 20-23).
Medtronic’s second argument relies on its Collins Daubert Motion, which was waived by
its failure to timely object at trial. Medtronic’s third argument, directed to the amount of
damages awarded by the jury, depends in all crucial respects on the same Collins Daubert
Motion that Medtronic failed to preserve at trial, rather than on the jury failing to make
reasonable findings based on that evidence. This argument is waived, with the possible
exception of the jury’s actual calculation of the award. On this narrow point, given the lenient
standard for the jury’s calculation of damages, there is no appropriate basis for either striking the
award or reducing it via remittitur. See Aspen Highlands Skiing Corp. v. Aspen Skiing Co., 738
F.2d 1509, 1526 (10th Cir. 1984) aff’d, 472 U.S. 585 (1985). Medtronic’s fourth argument, to
the extent it was adequately preserved by timely objection to the court’s instructions, is denied
for the reasons provided by the court at the time the court considered and rejected Medtronic’s
arguments when finalizing the instructions. (Dkt. 603-2, p. 11.)
This leaves Medtronic’s first, fifth, and sixth arguments. On the jury’s finding of liability,
Medtronic argues: (1) that the jury could not have awarded lost profits under either a contract or
fraud theory because there was no evidence the FDA would have approved Dr. Braun’s device;
(2) that the clear weight of the evidence showed that Medtronic intended to perform at the time
of signing the License Agreement; and (3) that Dr. Braun produced no evidence that another
company would have licensed the bone anchor.

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The court finds that Dr. Braun produced evidence sufficient for the jury to find liability,
and that the jury’s damages award is adequately supported by the evidence. The issues presented
at trial were classic jury questions, with a sufficient basis for the jury to find either in favor of or
against Dr. Braun. The Verdict Form delivered by the jury was coherent and internally
consistent. (Dkt. 573.) A new trial is not necessary to correct its considered judgment.
Worthy of more discussion is Medtronic’s fifth argument. Shortly before trial began, on
January 31, 2014, the court granted Dr. Braun leave to amend his trade misappropriation claim.
(Dkt. 522). Medtronic argues this late amendment was prejudicial and allowed for the
introduction of evidence “that was irrelevant to the real issues in the case.” (Dkt. 647, p. 19.)
Medtronic seeks a new trial on only the contract and fraudulent inducement claims—the “real
issues”—with the trade misappropriation claim, and its associated evidence, excluded. Id. p. 20.
The court has previously considered and rejected Medtronic’s argument against allowing
amendment of the trade misappropriation claim. The amendment was simply a technical
correction. Medtronic correctly argued before trial that the UUTSA precludes common law
recovery for trade secret misappropriation, and the court allowed Dr. Braun to amend his
Complaint to clarify that he was bringing the claim under the statute. The clarification changed
neither the nature nor the substance of the claim, and did not alter its essential elements.
Accordingly, the amendment did not allow Dr. Braun to surprise Medtronic with a previously
unknown claim for relief, which might have prejudiced Medtronic’s ability to bring a defense.
The claim itself was adequately pled, and Medtronic enjoyed adequate notice of the contours of
that claim. The claim could therefore be brought to trial, even on a late technical amendment.

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Absent finding the amendment prejudicial, which the court again declines to do,
Medtronic’s argument for a new trial is unconvincing.8 The evidence at issue was clearly
relevant to the trade misappropriation claim, and the claim was a “real issue” at trial. Medtronic
simply speculates that the jury improperly considered this evidence in its findings on the contract
and fraudulent inducement claims. There is simply no evidence that the trial as a whole was
“infected” or “contaminated” by the jury’s consideration of the trade misappropriation claim. A
new trial is unnecessary on this theory. (Dkt. 647, pp. 19-20.)
Medtronic’s sixth and final argument involves Dr. Braun’s use of self-recorded deposition
videos. Medtronic’s objection to this evidence has been consistent: it raised concerns about
these videos before they were recorded (Dkt. 226) and subsequently moved in limine to exclude
them. (Dkt. 393.) The court allowed recording to proceed in discovery and denied a motion in
limine to exclude them. (Dkt. 647, p. 20.)9
Medtronic continues to insist that the videos were “unfavorable” and contributed to an
adverse result. But Medtronic has not convinced the court that it was necessary to exclude this
evidence. The video deposition testimony was clear, understandable, and appeared to accurately
portray the testimony of the witnesses. In resolving the motion in limine, the court could discern
no prejudice to Medtronic by allowing Plaintiff to present this evidence—and no prejudice was
apparent at trial. The court’s admission of this evidence does not justify a new trial.
Considering Medtronic’s Rule 59 motion as a whole, the court is not left with a definite
and firm conviction that a mistake has been committed by the jury or that a new trial would serve

8

Medtronic’s allegations concerning a claimed lack of specificity in describing the trade secrets at issue
addresses the merits of the trade misappropriation claim, not its amendment. (Dkt. 698, p. 70) (incorporated by
reference, Dkt. 699, p. 19.)
9

Medtronic did not offer any contemporaneous objection at trial to the admission of these videos. (Dkt.
699, pp. 19-21) (not disputing Dr. Braun’s assertion, Dkt. 676, p. 63, that no contemporaneous objection was made).

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the interests of justice. Motions for a new trial direct a court to look to considerations of
fairness, accuracy, soundness, and the potential for any events at trial to have undermined
confidence in the determination of the jury. Here, the court finds no basis to conclude that any of
these considerations are implicated. Medtronic’s Rule 59 motion is denied.
IV. Motion for Sanctions
Finally, the court turns to Dr. Braun’s motion for sanctions. (Dkt. 678.) The relief sought
by Dr. Braun is either moot or beyond the power of this court to grant.
Dr. Braun seeks in his motion equitable relief, rather than the imposition of monetary
sanctions. Specifically, he seeks a “terminating sanction denying Medtronic’s posttrial motions
and its appeal rights related to trial.” (Dkt. 678, p. 2.) It would be an extraordinary step to
preclude Medtronic’s rights to appellate review of this court’s rulings and one which the court
likely lacks authority to take. In all other relevant respects, Dr. Braun’s requested relief has
already been granted on the merits: the court has denied both of Medtronic’s posttrial motions in
their entirety. Dr. Braun seeks a sanction “in the alternative”—estopping Medtronic from certain
arguments either to this court or on appeal—but this alternative request is likewise either
improper or unnecessary in light of the court’s rulings on Medtronic’s posttrial motions.
Having denied Medtronic’s motions for a new trial and for judgment as a matter of law,
Dr. Braun’s relief has already been afforded, to the extent the court can provide it. His motion
for sanctions is denied as moot.

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CONCLUSION
Dr. Braun’s Motion to Limit Scope is GRANTED. (Dkt. 657.) Dr. Braun’s Motion for
Sanctions is DENIED. (Dkt. 678.) Medtronic’s Motions for a New Trial and for Judgment as a
Matter of Law are hereby DENIED. (Dkt. Nos. 647, 648.)
SO ORDERED this 21st day of October, 2015.
BY THE COURT:

__________________________
ROBERT J. SHELBY
United States District Judge

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