Nicholas Malfitano Mar. 23, 2016, 8:39am


PHILADELPHIA – An Audubon-based medical device manufacturer will not be forced to provide documents or give deposition testimony in a patent infringement lawsuit originating in federal court in Texas.

In January, Globus Medical, Inc., a company that produces musculoskeletal implants to aid patients recovering from spinal injuries, received a subpoena from a Hawaii-based physician named Dr. Mark Barry, in his patent infringement litigation against Medtronic, Inc. of Dallas. Globus is not a direct party to that action.

Barry filed suit against Medtronic in February 2014, alleging the company’s products infringed on patents he licensed to competitor Biomet, Inc. to manufacture a spinal deformity treatment device, while Medtronic believes Barry’s patents are invalid.

Barry served Globus with a subpoena seeking more information on the company’s REVERE Deformity Vertebral Derotation System, and in February, Globus opposed this action. Globus said it attempted to resolve the discovery dispute with Barry before officially filing a motion to quash his subpoena.

“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,” Judge Harvey Bartle III of the U.S. District Court for the Eastern District of Pennsylvania, said.

But Bartle added, in the Court’s view, Barry “did not offer 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,” Bartle stated.

Bartle also termed the information Barry sought from Globus in the issued subpoena as “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,” Bartle said.

“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. Accordingly, we will grant the motion to Globus to quash the subpoenas served on it by Dr. Barry,” Bartle concluded.

The plaintiff is represented by Sean P. DeBruine, Dario Alexander Machleidt, David Clay Holloway, Erwin Lee Cena, Laura Kathryn Mullendore, in Menlo Park, Calif., Seattle, Atlanta, San Diego and Denver, respectively.

The defendant is represented by Scott J. Bornstein, Allan A. Kassenoff, Cassandra A. Adams, John Edward Handy, Julie P. Bookbinder, Richard Charles Pettus, Zahra Alexis Smith, Aimee Marie Housinger, and Mary-Olga Lovett of Greenberg Traurig, in New York City and Houston.

U.S. District Court for the Eastern District of Pennsylvania miscellaneous action 16-47

U.S. District Court for the Eastern District of Texas case 1:14-cv-00104

From the Pennsylvania Record: Reach Courts Reporter Nicholas Malfitano at nickpennrecord@gmail.com

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