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Medtronic, NuVasive Spinal Surgery IP Suit Continues

A Florida federal judge on Wednesday denied rival motions for summary judgment in a patent infringement suit brought by three Medtronic Inc. units against NuVasive Inc. over a spinal surgery device.

At a hearing in the U.S. District Court for the Southern District of Florida, Judge Michael M. Anello denied motions by both sides, according to a docket entry. In an order Monday he tentatively denied the motions in anticipation of the hearing.

Medtronic's spine unit Medtronic Sofamor Danek USA Inc. — along with two other units and patent owner Warsaw Orthopedic Inc. — launched the suit in August 2008, claiming a slew of NuVasive products for minimally invasive spinal surgeries infringed a dozen of its patents.

The accused products include NuVasive's MaXcess line, a system designed to give surgeons better access and visibility during procedures, as well as specialized implants under the SpheRx and CoRoent brands. The company's Gradient and Helix products are also targeted in the complaint.

NuVasive later hit back with counterclaims, seeking a declaration that it had not infringed, saying the patents were invalid and claiming that an alleged inventor committed inequitable conduct during prosecution of two patents.

NuVasive is seeking compensatory damages, costs and attorneys fees for an allegedly exceptional case and other relief.

"We're pleased that the court rejected NuVasive's efforts to deny Medtronic a trial on NuVasive's infringement of Medtronic's patents," said Luke L. Dauchot, of Kirkland & Ellis LLP, lead counsel for Medtronic.

Regarding the judge's rejection of Medtronic's motion for summary judgment, Dauchot said that the plaintiff respected the court's decision and was looking forward to trial, which is scheduled for Aug. 30.

An attorney for NuVasive did not immediately reply to requests for comment.

In 2010, Medtronic's spinal and biologics business accounted for $3.5 billion — more than a fifth of the company's overall $15.8 billion in revenue, according to its website.

Medtronic and NuVasive are competing in a $4.6 billion market for spine fusions in the U.S., according to NuVasive's website.

NuVasive, a publicly traded company based in San Diego, is focused on developing minimally invasive surgical products and procedures for the spine.

Medtronic asserts 12 patents in the complaint. Warsaw Orthopedic owns the patents-insuit by assignment, and Medtronic Sofamor Danek USA is the co-exclusive licensee, along with Medtronic Puerto Rico Operations Co. and Medtronic Sofamor Danek Deggendorf GmbH, according to the complaint. All are plaintiffs in the suit.

The patents-at-issue are U.S. Patent Numbers 5,860,973; 5,772,661; 6,936,051 B2; 6,936,050 B2; 6,916,320 B2; 6,945,933 B2; 7,008,422 B2; 6,530,929 B1; 6,235,028 B1; 6,969,390 B2; 6,428,542 B1; and 6,592,586 B1.

Dewey & LeBoeuf LLP, Kirkland & Ellis LLP and the San Diego IP Law Group LLP are representing Medtronic and Warsaw Orthopedic.

NuVasive is represented by Fish & Richardson PC.

The case is Medtronic Sofamor Danek USA Inc. et al. v. NuVasive Inc., case number 08-cv-01512, in the U.S. District Court for the Southern District of California.