United States District Court, E.D. Texas, Marshall Division
MEMORANDUM OPINION AND ORDER
WILLIAM C. BRYSON, UNITED STATES CIRCUIT JUDGE.
plaintiff in this case, Sabatino Bianco, M.D., has moved to
have the defendant, Globus Medical, Inc., held in civil
contempt for failing to comply with a portion of the
Court's judgment. This order is entered in connection
with an upcoming hearing in the civil contempt proceeding.
Before the Court is Dr. Bianco's motion in limine seeking
to exclude evidence disputing the existence of Dr.
Bianco's trade secret and its misappropriation. Dkt. No.
384. The Court GRANTS the motion in part and DENIES the
motion in part.
Bianco's motion is directed to a report prepared by Dr.
John Peloza, an expert for Globus, and the testimony that Dr.
Bianco expects Dr. Peloza will offer at the contempt hearing.
Dr. Bianco complains that a significant portion of Dr.
Peloza's report (and thus his expected testimony)
addresses issues that were previously resolved in this
litigation and are not properly before the Court in the
Bianco, a spinal surgeon, filed suit against Globus in 2012.
In his complaint, Dr. Bianco raised a number of claims
stemming from his dealings with Globus in connection with Dr.
Bianco's idea regarding a device that could be used in
spinal surgery. The idea was directed to a continuously and
reversibly expandable spacer, or implant, that could be
placed between adjacent vertebrae in a patient's spine
after diseased disc material had been removed from the
inter-vertebral space. The height of the device, according to
Dr. Bianco's idea, could be manipulated so that it could
be lowered during insertion and then raised to the desired
height after placement, thereby maintaining the proper
distance between the two adjacent vertebrae. Dr. Bianco's
idea included various other features of the inter-vertebral
spacer as well.
a five-day trial, the jury returned a verdict in Dr.
Bianco's favor on his claim of trade secret
misappropriation. The jury entered a verdict for $4, 295, 760
in damages, and the Court entered judgment on that verdict.
In addition, the Court entered an order respecting ongoing
royalties, since the jury's verdict assessed liability
only up to the date of trial. The Court's judgment
imposed an ongoing royalty of 5% of the net sales of the
three products that were at issue-Globus's Caliber,
Caliber-L, and Rise devices. The judgment required Globus to
make royalty payments on those products for a period of 15
years from June 30, 2007. In addition, the judgment provided
that the 5% ongoing royalty obligation would apply to
“products that are not colorably different from those
products.” Dkt. No. 315, at 2.
Court subsequently denied Globus's motion for judgment as
a matter of law. Dkt. No. 338. On Globus's appeal, the
Federal Circuit affirmed the judgment without opinion. 610 F.
App'x 1032 (2015). Globus petitioned for a writ of
certiorari, and the Supreme Court denied the petition. 136
S.Ct. 2489 (2016).
parties arranged to make the requisite royalty payments on a
quarterly basis beginning as of October 1, 2014. In 2016,
however, a dispute arose as to whether Globus was liable for
royalty payments on the sales of two of its other products,
the Rise-L spacer and the Altera spacer. When counsel for Dr.
Bianco protested to Globus regarding the failure of payment
for those products, Globus filed suit in the United States
District Court for the Eastern District of Pennsylvania,
seeking a declaratory judgment that it was not liable for
those payments under this Court's judgment. Dr. Bianco
then filed a motion with this Court seeking an order to show
cause why Globus should not be held in civil contempt for
failing to abide by the terms of this Court's judgment.
Meanwhile, the Pennsylvania court requested briefing from the
parties as to why it should not transfer the declaratory
judgment suit to the Eastern District of Texas. Following
briefing of the transfer issue, the Pennsylvania court stayed
the declaratory judgment action pending resolution of the
contempt proceeding before this Court. An evidentiary hearing
in the contempt proceeding is now scheduled for September 11,
parties have recently informed the Court that they have
resolved their dispute regarding the Rise-L device. Thus,
only the royalties relating to the Altera device remain in
motion in limine, Dr. Bianco seeks to exclude any evidence,
including testimony from Dr. Peloza, that is related to the
existence or misappropriation of Dr. Bianco's trade
secret. Those issues, Dr. Bianco argues, have already been
conclusively decided, and the contempt proceeding is not an
appropriate forum in which to seek to relitigate those
issues. In response, Globus contends that it is not seeking
to relitigate issues settled by the judgment in this case,
but that it intends to offer evidence, including testimony
from Dr. Peloza, that is relevant to the issue of contempt.
In particular, Globus argues that the evidence in question,
including “state of the art” evidence, is
admissible for three reasons: (1) it will provide context to
identify “colorable differences” in technology;
(2) it will bear on the question whether Dr. Bianco's
trade secret remained protected and protectable at the time
of a subsequent use; and (3) it is relevant to equitable
issues such as mitigating circumstances, Globus's good
faith, and the appropriate remedy if contempt is found. Dkt.
No. 395, at 1.
the contempt proceeding will be held before the Court and
without a jury, the Court will be liberal in allowing the
parties to introduce evidence, subject to the Court's
later determining whether that evidence is relevant and
helpful in resolving the issue before the Court, which is
whether the Altera device is or is not more than colorably
different from the Caliber, Caliber-L, and Rise devices that
were adjudicated during the trial. With that said, and for the
guidance of the parties, however, the Court will make the
following observations regarding the proper uses for which
the evidence at the contempt hearing may be offered.
first argues that Dr. Peloza's evidence regarding the
state of the art will be useful in providing the context for
deciding whether the Altera device is merely a colorable
imitation of the Caliber, Caliber-L, and Rise products. Dkt.
No. 395, at 7-8. The Court will ...