Luke L. Dauchot

A long-running patent squabble between Johnson & Johnson Medical Devices Group unit DePuy Orthopaedics Inc. and Los Angeles-based Orthopaedic Institute for Children has become something of a crusade for Dauchot, a Kirkland & Ellis partner whose practices focuses on resolving cases of unusual complexity.

In August, Dauchot successfully fought off four summary judgment motions DePuy brought against his client hospital, a nonprofit charitable institution formerly known as Orthopaedic Hospital.

That sets up a jury trial over DePuy’s suit seeking a declarative judgment that it need not pay royalties to the hospital pursuant to a license and research agreement over patented technology the parties developed together. The principal product at issue is called AOX Antioxidant Polyethylene, used in orthopedic implants.

“The story is that Kirkland represents the small player versus an orthopedic behemoth doing all in its power to get out from under an agreement,” Dauchot said.

One order he obtained from a Northern District of Indiana judge adopted the hospital’s position that DePuy’s patent prosecution lawyers could not assert attorney-client privilege against the hospital because the prosecution lawyers were working for both DePuy and the hospital.

The judge also denied DePuy’s noninfringement motion, noting, “The problem for DePuy is that it asks for summary judgment of non-infringement on the basis of a claim construction the Court already denied.” DePuy Orthopaedics Inc. v. Orthopaedic Hospital, 12-CV299 (N.D. Ind., filed June 11, 2012).

“They have put us through the wringer, but now we are looking for a trial date in Indiana, which DePuy considers a favorable forum because they are based there,” Dauchot said. “The stakes are in the tens of millions of dollars and we will be looking for punitives. The hospital is looking forward to vindicating its rights.”

“The not-for-profit hospital and the mission to which it is dedicated have endured six years of efforts on the part of the J&J subsidiary to keep from jury consideration its refusal to pay the hospital for highly successful orthopedic products to which the hospital made valuable contributions,” Dauchot said.

“Every case on which I and my valuable team members work is important,” he added. “This one carries particular significance because of its very real impact on the hospital’s mission to care for children with orthopedic disorders regardless of ability to pay.”

— John Roemer