X

Thank you for sharing!

Your article was successfully shared with the contacts you provided.
When confronted with Johnson & Johnson’s high-tech courtroom capabilities, Jack Scarola turned the clock back and cranked the techno-savvy of modern courtrooms down a few notches. In a patent infringement case last month in federal court, Johnson & Johnson subsidiary Ethicon Endo-Surgery showed the jury a massive video screen filled with images of the device at issue — a medical tool that removes tissue for biopsies. Scarola, worried that the oversized images would distort the jury’s view of the device, went back to his hotel room that night and constructed his own replica of the device using Post-it notes, paper clips and a little homegrown ingenuity. Call it low rent, but it worked. When the patent infringement trial ended Sept. 28 in federal court in Miami, Scarola had won $2 million for his client, an amount that he looks to triple by arguing the infringement was willful. Scarola and Bill King, partners of Searcy Denney Scarola Barnhart & Shipley in West Palm Beach, Fla., joined Joseph Beckman of the Intellect Law Group in Stuart, Fla., to take on Johnson & Johnson, which retained about two dozen attorneys for the case. Harry Roper, partner of Jenner & Block in Chicago, led the defense team. Roper did not return calls for comment on the case. Ethicon’s public relations office did not return a call before deadline. A company spokeswoman told the Associated Press immediately after the verdict that the company did not believe it had committed patent infringement and that it is considering an appeal. The jury delivered the verdict for Scarola’s clients after finding that Ethicon had violated the patent of Palm Beach County physician John Corbitt and his physicians assistant Lori Leonetti. The duo had developed a device that extracts breast tissue for biopsies, then replaces the removed tissue with a bio-absorbent material. The inserted material keeps the breast from dimpling due to removed tissue. Corbitt and Leonetti improved upon their device, by including a marker in it that would allow a physician to find the exact spot of the biopsy if more attention to the area was needed. They also included medicine in the marker that would allow the area to be directly targeted for radiation or chemotherapy if the lump turned out to be malignant. After forming a corporation called White Water Investments, Corbitt and Leonetti applied for a patent in 1998. It was granted about two years later. They approached Ethicon with the patent, and the company agreed to option the patent for $25,000 for two years, with the right to negotiate at the agreement’s expiration. After two years of working with Ethicon on the patent, the company told Corbitt and Leonetti that they had run into funding problems and were discontinuing the project. Corbitt and Leonetti began to search for a new backer and, while doing that in 2002, they were approached by California-based Artemis. The company said that it had been working on a brachotherapy implant that was similar to their implant device. Artemis asked if Corbitt and Leonetti could license their patent to Artemis for five years so that they could develop their implant. Corbitt and Leonetti did not immediately agree, and Artemis continued to press them. Then suddenly, Artemis stopped returning John and Laurie’s phone calls. “They couldn’t figure out why this company was so hot to go on this deal and suddenly turned cold on it,” Scarola said. In early 2004, Corbitt’s suspicions were aroused when an Artemis sales representative came into his office and tried to market him a product that was very similar to the device that Corbitt and Leonetti patented. That’s when Corbitt and Leonetti went to Scarola, looking for legal help. They learned that Johnson & Johnson had purchased Artemis for $18 million during the time that Artemis was wooing them for the rights to their patent. Ethicon later came out with a device similar to the implant developed by Corbitt and Leonetti. Scarola and his firm are known for plaintiff work. Scarola recently scored a huge victory over Morgan Stanley in a civil fraud suit in Palm Beach Circuit Court, winning $604.3 million in compensatory damages against the financial giant and $850 million in punitive damages. However, no one at Scarola’s firm had ever put on a patent infringement trial. But something about the story resonated with Scarola. Scarola’s good friend and classmate at Georgetown University, Mark Pouncey, also develops medical patents. Pouncey and his family owned and ran a company called Styrodine, which held about 14 patents. Scarola said that the Pounceys entered a contract with Johnson & Johnson to market and develop one of their products, but the relationship soured. “Johnson & Johnson, in colloquial terms, screwed over the Pouncey family,” Scarola said. “They were never able to get adequately compensated for what Johnson & Johnson did to them.” Remembering the story, Scarola decided to take a stab at the case and called Pouncey to bring him on board. Pouncey signed on as a paralegal in the case, put in hundreds of hours and, Scarola said, read all 200,000 pages of the documents produced by Johnson & Johnson in discovery. The document review proved to be key, Scarola said, since they told the story of how Ethicon’s product was designed to perform the same function as Corbitt’s device. The defense used sophisticated video presentations to convey to the jury that their product was different. One tack they took was claiming that the cavities formed in breast tissue by biopsies were much too large to be filled by Corbitt and Leonetti’s design. The defense hired a breast surgeon, Ian Grady, as an expert to testify about the site of the holes. As Grady testified, the defense projected renderings of the holes made in breast tissue during standard biopsies, showing them on a large 10 foot by 10 foot screen. The massive scale of the animation gave Scarola pause. The magnification made the holes look much larger than in real life, which could perhaps convince the jury that the cavities were indeed too large for Corbitt and Leonetti’s device to fill. Scarola, who was staying at the Four Seasons on Brickell Avenue in Miami during the trial, went back to his hotel room after Grady’s testimony and got to work. Using office supplies — the Post-it notes, paper clips and tape — he fashioned a smaller replica of the device. The next day, on cross-examination, Scarola presented the doctor with his makeshift medical tool and got the doctor to concede that the device was the scale of Corbitt and Leonetti’s product, and that it would be sufficient to fill the standard hole caused by a biopsy. “I had constructed what we considered was the standard size [of a biopsy hole],” Scarola said. “We proved to the jury that the size of the cavity was considerably less than half the size that he told the jury it was.” The eight-member jury agreed that Ethicon had infringed on the patent and came back with an award of $2 million, or 10 percent of what the company had earned selling the device. Since Corbitt and Leonetti allege the infringement was intentional, they intend to go after treble damages in court. In the meantime, they will likely continue to profit off of their invention. “The most significant aspect is the fact that this patent runs for 18 more years,” Scarola said. “For Johnson & Johnson to continue to use this product that’s earning millions a year, they’re going to have to get licensing or give up the market.”

This content has been archived. It is available exclusively through our partner LexisNexis®.

To view this content, please continue to Lexis Advance®.

Not a Lexis Advance® Subscriber? Subscribe Now

Why am I seeing this?

LexisNexis® is now the exclusive third party online distributor of the broad collection of current and archived versions of ALM's legal news publications. LexisNexis® customers will be able to access and use ALM's content by subscribing to the LexisNexis® services via Lexis Advance®. This includes content from the National Law Journal®, The American Lawyer®, Law Technology News®, The New York Law Journal® and Corporate Counsel®, as well as ALM's other newspapers, directories, legal treatises, published and unpublished court opinions, and other sources of legal information.

ALM's content plays a significant role in your work and research, and now through this alliance LexisNexis® will bring you access to an even more comprehensive collection of legal content.

For questions call 1-877-256-2472 or contact us at [email protected]

 
 

ALM Legal Publication Newsletters

Sign Up Today and Never Miss Another Story.

As part of your digital membership, you can sign up for an unlimited number of a wide range of complimentary newsletters. Visit your My Account page to make your selections. Get the timely legal news and critical analysis you cannot afford to miss. Tailored just for you. In your inbox. Every day.

Copyright © 2020 ALM Media Properties, LLC. All Rights Reserved.