AcroMed Corp. v. Sofamor Danek Group, Inc.

Dr. Arthur Steffee developed a surgical spine-straightening system that hooked wired rods onto a patient’s spine. In Steffee’s early system, over time the rods would slip, decreasing the surgery’s efficacy. To prevent slippage, Steffee began to use a plate-and-screw system. Steffee conceived of different screw types to potentially use in the plates. Steffee asked Frank Janson, a machinist in a hospital-machine shop, to cut the heads off of regular bone screws. Thereafter, Steffee realized he would need a modified plate design so that the pins fastening the plate into the vertebrae would not slide. Steffee instructed Janson to design such a plate, which Janson did by inserting arcuate recesses into the plate slots. Steffee secured a patent for the device and founded AcroMed Corporation (plaintiff). Steffee assigned his patent rights to AcroMed. AcroMed requested that Janson sign a declaration naming Janson a co-inventor of the device and assigning his rights to AcroMed. Janson refused and instead assigned his rights to Sofamor Danek Group, Inc. (Danek) (defendant). AcroMed sued Danek for infringement. Danek contended that AcroMed’s patent was invalid for failure to name Janson as an inventor. At trial, Janson testified that he conceived of the arcuate recesses and slotted plate before Steffee described the slippage problems. However, Janson did not tell anyone else about these earlier conceptions. The district court granted Acromed’s motion for judgment as a matter of law, holding that the patent was not invalid for improper inventorship. The jury found that Danek had infringed the patent. Danek moved for judgment as a matter of law, and the district court denied the motion. Danek appealed.