Flexuspine, Inc. v. Globus Medical, Inc.

United States Court of Appeals
for the Federal Circuit
______________________
FLEXUSPINE, INC.,
Plaintiff-Cross-Appellant
v.
GLOBUS MEDICAL, INC.,
Defendant-Appellant
______________________
2017-1188, 2017-1189
______________________
Appeals from the United States District Court for the
Eastern District of Texas in No. 6:15-cv-00201-JRG-KNM,
Judge J. Rodney Gilstrap.
______________________
Decided: January 19, 2018
______________________
MARK STRACHAN, Sayles Werbner, P.C., Dallas, TX,
argued for plaintiff-cross-appellant. Also represented by
E. SAWYER NEELY, DARREN PATRICK NICHOLSON; TODD
BLUMENFELD, BRETT MICHAEL PINKUS, JONATHAN TAD
SUDER, Friedman, Suder & Cooke, Fort Worth, TX.
ARUN SUBRAMANIAN, Susman Godfrey LLP, New
York, NY, argued for defendant-appellant. Also repre-
sented by JACOB W. BUCHDAHL, MARK HOWARD HATCH-
MILLER; JOHN PIERRE LAHAD, Houston, TX.
______________________
2 FLEXUSPINE, INC. v. GLOBUS MEDICAL, INC.
Before PROST, Chief Judge, CLEVENGER and DYK,
Circuit Judges.
PROST, Chief Judge.
Globus Medical, Inc., appeals the district court’s deci-
sion denying its Rule 59(e) motion and denying as moot
its Rule 50(b) motion. Flexuspine, Inc., cross-appeals
from the district court’s grant of summary judgment of
noninfringement of its U.S. Patent No. 8,123,810 (“’810
patent”). We affirm the district court’s decisions
(1) denying Globus’s Rule 59(e) motion, (2) denying as
moot its Rule 50(b) motion, and (3) granting summary
judgment of noninfringement.
I
Flexuspine filed a complaint alleging Globus infringed
five patents. Globus denied Flexuspine’s allegations of
infringement and asserted affirmative defenses of non-
infringement and invalidity, among others. Globus also
filed declaratory judgment counterclaims of non-
infringement and invalidity for each patent and requested
a jury trial for its counterclaims. As a result of IPR
proceedings and claim construction, the parties then
jointly moved and the court dismissed a number of Flex-
uspine’s claims and Globus’s counterclaims. The magis-
trate judge also issued a report and recommendation
granting Globus’s motion for summary judgement of non-
infringement with respect to the ’810 patent, which the
district court subsequently adopted.
Over a month before trial on the remaining claims,
the parties submitted a joint proposed pre-trial order
along with proposed jury instructions and verdict forms
from each party. Flexuspine’s proposed verdict form
included a “stop instruction” which conditioned the sub-
mission of invalidity on an affirmative finding of in-
fringement. Globus’s proposed verdict form did not.
FLEXUSPINE, INC. v. GLOBUS MEDICAL, INC. 3
Flexuspine’s stop instruction read “ANSWER THIS NEXT
QUESTION ONLY AS TO THOSE CLAIMS YOU
ANSWERED “YES” TO IN QUESTION 1 [the infringe-
ment question] ABOVE—OTHERWISE DO NOT
ANSWER THIS QUESTION.” J.A. 2837. On the second
day of trial, the parties submitted proposed joint final jury
instructions but competing verdict forms. Again, Flex-
uspine’s amended proposed verdict form continued to
include the same stop instruction, while Globus’s amend-
ed proposed verdict form did not condition the invalidity
question on an infringement finding.
After the conclusion of evidence, the district court
held an in-chambers informal charge conference to discuss
the jury instructions and verdict form with the parties.
As a result of those discussions, the district court gener-
ated its intended final jury instructions and final verdict
form. The final jury instructions and verdict form were
adopted nearly word-for-word from Flexuspine’s proposed
instructions and verdict form. The final verdict form
included Flexuspine’s proposed stop instruction.
The next day, the district court afforded the parties
an opportunity to object to the final jury instructions and
verdict form on the record. During this formal charge
conference, the district court went page-by-page through
the final instructions and the verdict form asking the
parties if they had any objections. Neither party objected
to Question 2 concerning invalidity or the stop instruction
preceding Question 2. The district court specifically
inquired as to the propriety of the instruction: “[t]urning
to Page 3 wherein the Court has set forth Question 2, is
there any objection from either party?” J.A. 4912. Globus
answered “Nothing from the Defendant, Your Honor.” Id.At the conclusion of the formal charge conference, the
court again asked if there was “[a]nything further from
the Defendant with regard to the verdict form?” and
Globus answered: “No, Your Honor.” J.A. 4.
4 FLEXUSPINE, INC. v. GLOBUS MEDICAL, INC.
After deliberation, the jury reported that they had
reached a verdict. Upon reviewing the verdict form,
however, the district court determined that the jury had
not filled out the verdict form correctly. The jury an-
swered “no” to all parts of Question 1 regarding infringe-
ment but did not heed the verdict form’s stop instruction
and continued to answer Questions 2 and 3 (the questions
pertaining to invalidity and damages). The answer to
Question 2 indicated the claims were found invalid, and
in Question 3 the jury wrote in “0” for the damages
amount.
The district court instructed the jury to retire again
with a blank verdict form, review the verdict form, and
return a verdict consistent with both questions asked and
the district court’s written instructions on the verdict
form. The court then asked, “[d]oes either party object to
the Court having sent the jury back to re-execute the
verdict form consistent with each instruction included
therein?” In response, neither party lodged a formal
objection. Globus stated, “[y]our Honor, I was not present
at the charge conference but I—as I understand it, or as I
thought I understood it, a jury could still be allowed to
pass on the validity of patents even in the absence of a
finding of infringement.” J.A. 5014. The court responded
that it had reviewed the verdict form with the parties and
no formal objection had been made at the on-the-record
charge conference.
Shortly thereafter, the jury returned a verdict in ac-
cordance with the district court’s instructions. This
verdict found the claims not to be infringed and left the
other questions unanswered. It was only at this point,
after the jury returned its final verdict without answering
the validity or damages questions, that Globus lodged its
first formal objection. J.A. 5020 (“I do want to lodge a
formal objection over the verdict. I understand that we
did not make that at the appropriate time, but we do
object for the record.”).
FLEXUSPINE, INC. v. GLOBUS MEDICAL, INC. 5
The district court entered final judgment that Globus
did not infringe any of the asserted claims of the two
remaining patents. The court’s judgment did not address
invalidity of the patents-in-suit. Globus filed a Rule 59(e)
motion requesting that the judgment be amended to
include the jury’s invalidity verdict. Flexuspine opposed.
Globus then filed a Rule 50(b) motion for judgment as a
matter of law on invalidity. Globus argued in support of
the Rule 50(b) motion that given the overwhelming inva-
lidity evidence presented at trial, judgment as a matter of
law on invalidity was required even if the court denied
Globus’s Rule 59(e) motion. Flexuspine did not file a
response to the Rule 50(b) motion.
The district court denied Globus’s Rule 59(e) motion.
The court also dismissed Globus’s invalidity counter-
claims without prejudice and so denied as moot its Rule
50(b) motion. Globus appeals. Flexuspine cross-appeals
from the district court’s pre-trial order granting summary
judgment of no infringement on the ’810 patent. Flex-
uspine does not appeal the judgment of noninfringement
of the other two patents-in-suit.
We have jurisdiction under 28 U.S.C. § 1295(a)(1).
II
A
Globus appeals the district court’s order denying its
Rule 59(e) motion. This court applies regional circuit
law—here, the law of the Fifth Circuit—to review the
denial of a Rule 59(e) motion to alter or amend a judg-
ment. Minton v. Nat’l Ass’n of Sec. Dealers, Inc., 336 F.3d
1373, 1378 (Fed. Cir. 2003). The Fifth Circuit generally
reviews the denial of a Rule 59(e) motion for abuse of
discretion, except to the extent the ruling involved recon-
sideration of a question of law, in which case the review is
de novo. Potts v. Chesapeake Expl., LLC, 760 F.3d 470,
473 (5th Cir. 2014). Rule 59(e) motions to alter or amend
6 FLEXUSPINE, INC. v. GLOBUS MEDICAL, INC.
a judgment “serve the narrow purpose of allowing a party
to correct manifest errors of law or fact or to present
newly discovered evidence.” Waltman v. Int’l Paper Co.,
875 F.2d 468, 473 (5th Cir. 1989) (internal quotation
marks omitted).
Globus argues that, under Rule 59(e), the district
court’s judgement should be amended to add a judgment
of invalidity. This must be done, Globus argues, in order
to correct the manifest errors of law made by the district
court when it refused to enter judgment of invalidity and
when it retired the jury for further deliberations after the
jury initially returned its verdict. Because we perceive no
manifest error of law to support Globus’s Rule 59(e)
motion to alter or amend the judgment, we affirm the
district court’s order denying this motion.
First, Globus argues that the district court was not
authorized to direct the jury to further consider its an-
swers and verdict because the jury’s first answers were
not inconsistent with each other. Globus maintains that
the fact that the jury overlooked the stop instructions was
not sufficient to render the verdict internally inconsistent.
We disagree.
In White v. Grinfas, 809 F.2d 1157 (5th Cir. 1987),
like here, the problem with the verdict “was caused by the
jury’s failure to follow the court’s instructions.” 809 F.2d
at 1161. In that case, the jury was directed to answer
questions following question 3 only if it answered “yes” to
that question. The jury answered “no” to that question
but continued to answer further questions, ignoring the
court’s instructions. The Fifth Circuit observed that
“[b]ecause all the questions subsequent to question 3 were
predicated on an affirmative response to that question,
the subsequent answers had to conflict with the [“no”]
answer to question 3, regardless of whether they were
also in conflict with each other.” Id. (emphasis added).
Accordingly, under Fifth Circuit law, a jury answering
FLEXUSPINE, INC. v. GLOBUS MEDICAL, INC. 7
questions in violation of a stop instruction is sufficient to
render the verdict internally inconsistent.
Here, as in White, because, according to the verdict
form, answers to the validity and damages questions were
predicated on an affirmative response to the infringement
question, the jury’s answers to the validity and damages
questions “had to conflict” with the jury’s answer of no
infringement. Id. The district court was entitled to find
these answers inconsistent and was entitled to decline to
enter judgment on invalidity. Richard v. Firestone Tire &
Rubber Co., 853 F.2d 1258, 1260 (5th Cir. 1988) (citing
White, 809 F.2d at 1161) (recognizing the broad discretion
the district court enjoys to refuse to consider interrogato-
ries answered in violation of the court’s instructions). The
district court also acted within its discretion when it
retired the jury for further deliberations after the jury
initially returned its verdict. Id. at 1260–61. The district
court has discretion to determine when a series of an-
swers submitted by a jury is not clear and therefore
requires resubmission. Id. We decline to disturb the
district court’s proper exercise of its discretion.
Second, Globus argues that even if the jury’s answers
were inconsistent with the verdict form, they were not
inconsistent with the jury instructions. Globus submits
that the jury instructions did not condition that the jury
only determine invalidity if it found infringement, but
instead suggested that the jury should resolve both in-
fringement and invalidity. Globus maintains that the
verdict form’s stop instruction was, therefore, in conflict
with the jury instructions. According to Globus, the jury
properly resolved this conflict in favor of following the
jury instructions and so its answers to the verdict ques-
tions, following those instructions, were not inconsistent.
Under the Seventh Amendment and Fifth Circuit law,
Globus argues, the district court was therefore required to
adopt the jury’s verdict. Nance v. Gulf Oil Corp., 817 F.2d
1176, 1178 (5th Cir. 1987).
8 FLEXUSPINE, INC. v. GLOBUS MEDICAL, INC.
Globus acknowledges that there is no directly on-point
Fifth Circuit authority governing how to resolve a conflict
between jury instructions and a verdict form, but con-
tends that the district court got it wrong when it rejected
the jury’s verdict. We need not decide how to address
such a conflict because, to the extent there was any con-
flict, the district court clarified the jury instructions, and
Globus did not timely object.
Both here and before the district court, Globus cited
United States v. McKenna to support its view that any
conflict between jury instructions and the verdict form
should be resolved in favor of following the instructions.
327 F.3d 839 (9th Cir. 2003). In that case, a criminal
defendant argued that a special verdict form impermissi-
bly amended the indictment because it merely summa-
rized the charge without setting out the specific elements.
Because the district court had provided oral instructions
setting forth those elements and because the district court
specifically advised the jury the verdict form was only a
summary and that the oral instructions should control,
the Ninth Circuit held the verdict form did not impermis-
sibly amend the indictment. Id. at 843.
We agree with the district court that McKenna, if any-
thing, supports its conduct here. Like the defendant in
that case, Globus did not object to the verdict form.
Further, to the extent that there was any conflict between
the verdict form and jury instructions, the district court
here, as in McKenna, clearly instructed the jury on which
instructions should control when it asked the jury to
retire again with a blank verdict form and return a ver-
dict consistent with both the questions asked and the stop
instructions on the verdict form. 1
1 During oral argument before this court, Globus
cited Idaho Golf Partners v. TimberStone Management,
FLEXUSPINE, INC. v. GLOBUS MEDICAL, INC. 9
As discussed above, under Fifth Circuit law, the dis-
trict court clearly has discretion to determine when a
series of answers submitted by a jury is not clear and
therefore requires resubmission. Richard, 853 F.2d at1260–61. Because the verdict form unambiguously sub-
mitted the issue of validity to the jury only as an affirma-
tive defense, the district court was entitled to find that
the jury’s first answers on the verdict form were irrecon-
cilable because they were in conflict with the clear in-
structions on the face of the verdict form, whether or not
those answers may have been consistent with the oral
instructions. Id. at 1260. “The judge [was] in an excellent
position to evaluate whether the jury w[ould] likely be
able to resolve this uncertainty with proper guidance.” Id.at 1260–61. And the judge provided this guidance when
he asked the jury to return a new verdict consistent with
the stop instructions in the verdict form. “Removing any
uncertainty in the jury’s findings obviously solidifies any
judgment entered on the verdict.” Id. at 1260. We, there-
fore, decline to disturb the district court’s exercise of
discretion in determining that the series of answers
submitted by this jury required resubmission. Id. at
1260–61. And there is no Seventh Amendment violation
by the resubmission of the verdict form when the answers
in the first verdict are irreconcilable. Nance, 817 F.2d at
1178. Moreover, when specifically questioned, Globus did
which is similarly inapposite. No. 1:14-CV-00233-BLW,
2017 WL 3531481, at *1 (D. Idaho Aug. 17, 2017). That
decision simply dealt with reconciling apparent internal
inconsistencies within the special verdict form. The
district court looked to the oral instructions as an expla-
nation for the jury’s apparent inconsistent findings, but
Idaho Golf never decided that the oral instruction must
trump an unambiguous verdict form, nor did the jury in
that case disobey unambiguous verdict form instructions,
as it did here.
10 FLEXUSPINE, INC. v. GLOBUS MEDICAL, INC.
not object to the district court sending the jury back for
further deliberation and therefore waived any objection to
the district court’s conduct.
Finally, and in the alternative, Globus contends that
the district court improperly found waiver of Globus’s
right to a jury trial on its invalidity counterclaims based
on Globus’s lack of objection to the verdict form. The
district court’s decision to reject the jury’s invalidity
verdict, therefore, allegedly violated Globus’s Seventh
Amendment rights.
The district court did not deprive Globus of its right to
a jury trial outright, it merely declined to submit its
counterclaims to this jury. The district court properly
determined from Globus’s lack of objection to the verdict
form prior to the jury’s deliberations that Globus submit-
ted the issue of invalidity to the jury only as an affirma-
tive defense, not as a counterclaim. McDaniel v.
Anheuser-Busch, Inc., 987 F.2d 298, 306 (5th Cir. 1993)
(“[F]ailure to object to the wording of a special issue
prevents a party from objecting to such wording on ap-
peal.”). As discussed below, because the district court
dismissed Globus’s invalidity counterclaims without
prejudice, the claim survives for Globus to file another
day.
B
Globus also appeals the district court’s order denying
as moot its Rule 50(b) motion. This court applies regional
law to review the denial of a Rule 50(b) motion for judg-
ment as a matter of law. Apple Inc. v. Samsung Elecs.
Co., 839 F.3d 1034, 1040 (Fed. Cir. 2016). The Fifth
Circuit reviews the denial of a Rule 50(b) motion de novo.
Hoffman v. L & M Arts, 838 F.3d 568, 580 (5th Cir. 2016).
We review for abuse of discretion, however, a district
court’s decision to dismiss without prejudice an invalidity
counterclaim challenging a patent that it concludes was
FLEXUSPINE, INC. v. GLOBUS MEDICAL, INC. 11
not infringed. Liquid Dynamics Corp. v. Vaughan Co.,
355 F.3d 1361, 1371 (Fed. Cir. 2004).
We conclude that the district court was within its dis-
cretion to dismiss Globus’s invalidity counterclaims
without prejudice. This court has expressly held that “[a]
district court judge faced with an invalidity counterclaim
challenging a patent that it concludes was not infringed
may either hear the claim or dismiss it without preju-
dice.” Id. (citing Nystrom v. TREX Co., 339 F.3d 1347,
1351 (Fed. Cir. 2003)). Globus is correct that a district
court is typically faced with a live invalidity counterclaim
only after the court grants summary judgment of nonin-
fringement and that its discretion to dismiss invalidity
counterclaims at later stages in the proceedings may be
more limited. 2 Under the specific circumstances here,
however—where the district court clarified that Globus’s
invalidity counterclaims were not submitted to the jury
and Globus waived its right during the trial to have the
jury consider those claims—it was within the district
court’s discretion to dismiss Globus’s counterclaims
without prejudice.
Once the district court dismissed Globus’s invalidity
counterclaims without prejudice, invalidity was no longer
a live issue amenable to being decided as a matter of law.
The court properly denied as moot Globus’s Rule 50(b)
motion for judgment as a matter of law of invalidity.
2 The Supreme Court has “commented at length on
the wasteful consequences of relitigating the validity of a
patent after it has once been held invalid in a fair trial,
and [it has] noted the danger that the opportunity to
relitigate might, as a practical matter, grant monopoly
privileges to the holders of invalid patents.” Cardinal
Chem. Co. v. Morton Int’l, Inc., 508 U.S. 83, 100–01 (1993)
(citing Blonder Tongue Labs., Inc. v. Univ. of Ill. Found.,
402 U.S. 313, 329 (1971)).
12 FLEXUSPINE, INC. v. GLOBUS MEDICAL, INC.
III
Flexuspine cross-appeals from the district court’s
grant of summary judgment of noninfringement of the
’810 patent. We review a district court’s grant of sum-
mary judgment de novo, applying the same standard as
the district court. Potts, 760 F.3d at 473. Under that
standard, summary judgment is proper if the movant
shows that there is no genuine dispute as to any material
fact, and the movant is entitled to judgment as a matter
of law. Id.
Claim 17 of the ’810 patent requires an “upper body,”
a “lower body,” and an “expansion member.” Relevant
here is the following claim element:
an expansion member comprising an elongated
body having a substantially flat inferior surface,
a substantially flat superior surface, and a first
angled portion at an insertion end of the elon-
gated body, wherein the expansion member is
configured to be positioned between the upper
body and the lower body such that applying a
force to a trailing end of the elongated body op-
posite the insertion end of the elongated body is
configured to advance the first angled portion
and the substantially flat superior and inferior
surfaces of the expansion member in a substan-
tially linear direction between and at least par-
tially oblique to at least a portion of the inferior
surface of the upper body and at least a portion
of the superior surface of the lower body after in-
sertion of the upper and lower body in the spine
to increase a separation distance between the
superior surface of the upper body and the infe-
rior surface of the lower body.
’810 patent col. 36 ll. 13–29 (emphasis added).
FLEXUSPINE, INC. v. GLOBUS MEDICAL, INC. 13
The parties agreed to an interpretation of the term
“oblique,” as follows:
(1) the expansion member’s movement must be
oblique (in a slanting or sloping direction) to the
surfaces of the upper and lower bodies, and
(2) the first angled portion and the flat surfaces of
the expansion member must move obliquely with
respect to the same portion of the surface of the
upper and lower bodies.
J.A. 2918, 646–47, 735.
The magistrate judge’s report and recommendation
noted that “Flexuspine provide[d] no evidence to satisfy
th[e second] requirement” “of the parties’ agreed construc-
tion: that both the first angled portion and the flat surfac-
es of the expansion member move obliquely to the same
part of the superior and inferior surfaces of the upper and
lower bodies.” J.A. 2921–22. “Even further, Flexuspine’s
expert d[id] not mention this requirement in his in-
fringement analysis at all.” J.A. 2922. “Absent such
evidence,” the magistrate judge determined, “a reasonable
juror could not find Caliber infringes the asserted claim.”
Id. The district court reached the same conclusion.
J.A. 3528 (noting that, as the magistrate judge identified,
Flexuspine’s theory wholly fails to address the second
requirement of the interpretation agreed to by the parties
in claim construction).
On appeal, Flexuspine does not dispute this portion of
the district court’s order, nor does it affirmatively or
explicitly take issue with the district court’s statement
that its witness failed to address the second requirement
of the parties’ agreed upon interpretation of “oblique.”
Flexuspine does not cite to any evidence that might
satisfy the second requirement of the claim construction.
It even neglected to address this issue in its reply brief
after Globus expressly identified the deficit in Flex-
14 FLEXUSPINE, INC. v. GLOBUS MEDICAL, INC.
uspine’s opening cross-appeal brief. We therefore affirm
the district court’s order granting summary judgment. 3
AFFIRMED
COSTS
The parties shall bear their own costs.
3 Flexuspine also argues in its cross-appeal that the
district court abused its discretion by precluding Flex-
uspine’s reliance on an unrelated jury verdict. Because
Flexuspine does not appeal from the jury’s noninfringe-
ment verdict below, and we affirm the district court grant
of summary judgment of noninfringement of the ’810
patent, we need not reach this issue.