The motion follows Medtronic’s September win, when a California jury awarded the med-tech titan $101 million after deciding that San Diego-based NuVasive wilfully infringed on Medtronic’s patents.
After Judge Michael Anello of the U.S. District Court for Southern California shut down Medtronic’s request for a permanent injunction, the company responded by asking for a percentage of NuVasive’s ongoing sales and requesting $19.8 million in interest on the verdict already granted.
"Anything less would reward NuVasive’s ongoing infringement and would encourage NuVasive to continue to infringe rather than to develop its own technology," Medtronic argued in court documents. "NuVasive has the ability to pay these rates and should not be permitted to earn a substantial profit from its ongoing infringement."
Minneapolis, Minn.-based Medtronic wants 36% in royalties on 1 infringed patent, 11% on another and 7% on the 3rd, higher rates than the jury suggested.
NuVasive asked the court to refrain from setting rates to give the companies more time to negotiate on their own, or otherwise set royalties at 10% for the 1st patent, 3% for the 2nd and 2% for the 3rd, consistent with the jury’s suggestion.
The Twin Cities colossus argued that when the lawsuit was first filed in 2008, NuVasive was "a start-up company without substantial ongoing business" that lacked "significant market presence."
"In the post-verdict world, by contrast, NuVasive is a successful public company that has built a significant part of its business on the back of sales of the infringing products," Medtronic’s lawyers argued. "Further, NuVasive’s expanded portfolio of spinal products and 90% market share in the direct lateral segment of the market makes it a much more serious competitive threat to [Medtronic] in the post-verdict world."
The 2 companies are still embroiled in another patent battle in which Medtronic was ordered to pay $10 million in back royalties for guidance catheters that an Oklahoma jury decided willfully infringed on NuVasive’s patents.