A Delaware federal jury was wrong when it determined that Johnson & Johnson subsidiary DePuy Synthes should pay RSB Spine $12 million for infringing spinal fusion patents under the doctrine of equivalents, DePuy said Monday.

Both DePuy and RSB Spine filed post-trial motions Monday, with DePuy arguing there was no infringement, and RSB Spine saying it was entitled to additional damages for infringement that took place after the trial.

RSB Spine had won over a jury in December 2022. But before judgment could be entered, U.S. District Judge Richard G. Andrews held a bench trial to consider DePuy's argument that it invented the surgical technology first. Judge Andrews ruled against DePuy in August.

The jury had found DePuy did not directly infringe either of the patents at issue, but that it infringed both under the doctrine of equivalents. Monday's briefs only discussed one of the patents.

DePuy's main argument is based on prosecution history estoppel, which holds that anything narrowed by the patent owner to get its application approved could not be reclaimed. In particular, it cannot be considered equivalent to the patent.

RSB Spine altered its patent application to overcome a finding that it was anticipated by prior art by limiting how a screw hole in the invention is oriented, according to DePuy.

"By amending claim 1 to overcome the prior art, it is presumed that RSB surrendered claim scope that includes bone screw holes with the same orientations as the prior art, or in which no screw holes are directed at all toward a lip osteophyte," DePuy says, adding that its products fall under that surrendered territory.

Other parts of equivalence were surrendered based on positions RSB Spine took at the PTAB, DePuy added.

The Johnson & Johnson unit also argued that how an equivalence was determined "vitiated" the patents' requirements.

In one example, DePuy said: "Non-lip-osteophyte bone (bone that is not a bony outgrowth, or not at the lip, or both) is the opposite of lip-osteophyte bone (bony outgrowth at the lip). Being primarily or entirely between structures that are not lip osteophytes cannot be the equivalent of structures that are 'primarily between … lip osteophytes,' without vitiating the limitation altogether."

RSB Spine's request for supplemental damages is largely based on terms that aren't being disputed.

The patent owner's expert testified on damages based on sales data available at the time of trial, including some estimations. However, that number was to be recalculated once actual sales data was produced.

Much of the motion asks the court to clear that accounting to take place, noting that DePuy has already agreed to provide its sales data.

The parties have likewise agreed on how to handle pre- and post-judgment interest.

RSB Spine is also asking for damages for sales that took place after trial, based on the same 6% royalty rate used by the jury.

"Plaintiff is entitled to post-verdict damages through the expiration of the patent to ensure it is fully compensated for defendants' post-verdict sales of the accused products," the brief states.

Counsel for RSB Spine declined to comment. Attorneys for DePuy didn't respond to a request for comment Tuesday evening.

The patents-in-suit are U.S. Patent Nos. 9,713,537; and 7,846,207.

RSB Spine is represented by Dustin M. Knight, Cole G. Merritt, Reuben H. Chen, Juan Pablo González and Brianna Patterson of Cooley LLP, and David A. Bilson and John C. Phillips Jr. of Phillips McLaughlin & Hall PA.

DePuy is represented by Robert Breetz, T. Kaitlin Crowder, Calvin P. Griffith, Kenneth S. Luchesi, Patrick J. Norton, Jesse T. Wynn, Thomas S. Koglman and Gregory A. Castanias of Jones Day, and John G. Day and Andrew C. Mayo of Ashby & Geddes.

The case is RSB Spine LLC v. DePuy Synthes Sales Inc., et al., case number 1:19-cv-01515, in the U.S. District Court for the District of Delaware.