In patent infringement litigation, there can be few things as frustrating to a prevailing patentee as to see a generous damages award struck down “as a matter of law” because the judge decided that “a reasonable jury would not have a legally sufficient evidentiary basis” to support it.
Imagine then, the frustration felt by Medtronic Inc. (Medtronic Vascular, Inc. et al. v. Boston Scientific Corp. et al.) when the trial judge overturned its newly won damages award with respect to each accused product for which it had not introduced into evidence test data establishing infringement of that specific product.
The patents-in-suit relate to balloon dilation catheters. Nine models of defendant’s catheters were alleged to infringe. Each model was offered in between 26 and 50 different sizes. Medtronic tested about 5 sizes of each of the models. (In its appeal brief, Medtronic argued that testing of each size of each model of catheter would have cost approximately $2 million.) The judge, nevertheless, held that a patentee “cannot simply assume that all of [the accused] products are like the one [plaintiff’s expert] tested and thereby shift to [the accused infringer] the burden to show that is not the case.” Goodbye big judgment.
The lesson to be learned here: it pays to do all of your homework. Don’t expect to collect damages in respect of any product for which no evidence of infringement has been introduced.