April 1, 2013

After trial in January, the Honorable Gary A. Fenner, United States District Court for the Western District of Missouri, entered a judgment on March 26, 2013, in favor of the Sandra M. Jackson Trust, who had sued Mizuho Orthopedic Systems, Inc. The suit involved a dispute over non-payment of royalties under a 1990 Agreement regarding an operating room table used for spinal surgeries invented by Roger P. Jackson, M.D., Sandra Jackson’s husband. The Judgment entered was for $10,730,041 in damages with pre-judgment interest of $1,520,734 from the filing of suit, for a total judgment of $12,250,776.

The Agreement provided for the marketing and sale of the operating table by Mizuho in exchange for royalties on the sales of the table and its additions, modifications, enhancements and improvements. Dr. Jackson’s interest in the Agreement was assigned to his wife in 1995. The table was ultimately marketed and sold by Mizuho worldwide as the “Jackson Table,” and became the preferred choice of many physicians and hospitals for spinal surgery in the United States.

“We’re very pleased that we achieved a favorable result for our clients,” said lead counsel Dan Boulware of Polsinelli Shughart. “The biggest challenge for us was to simplify what would otherwise have become a very complex case. Another challenge was the defense argument that the Plaintiff had waived her right to recover damages because she should have known years ago she wasn’t being paid on the disputed products. The court rejected that argument.”

“It was not our preference to get involved in this court suit,” said Dr. Jackson. “I strongly preferred a continuing and mutually-beneficial business relationship with Mizuho. But we are pleased the Court agreed with us.”

Dr. Jackson specializes in spinal surgery. His medical practice has been based at North Kansas City Hospital since 1979. Dr. Jackson has served as a Clinical Assistant Professor in the Department of Orthopedic Surgery at KU Medical Center. He is also an accomplished inventor of medical equipment and devices, including patient positioning technologies, holding numerous domestic and foreign patents which he has licensed to medical device and equipment suppliers.

The Defendant, located near San Francisco, is a company formed in 1978, and since that time has manufactured and sold medical equipment, including specialty surgical tables, positioning devices and orthopedic products. The Defendant is a subsidiary of Mizuho Kakogyo in Tokyo, Japan.

Plaintiff filed suit on August 15, 2011. The suit sought construction of the parties’ Agreement, an accounting for royalties owed under the Agreement, and damages for breach of contract for royalties owed but not paid. Dr. Jackson secured two patents pertaining to the Jackson Table in 1992, which expired in 2011, and shortly thereafter Mizuho terminated the Agreement.

In summary proceedings, the Court ruled that the Agreement constituted a license of Dr. Jackson’s patents and that since the patents had expired, following termination of the Agreement by Mizuho, royalties were no longer due the Plaintiff for Defendant’s continued sale of the table without use of the Jackson name. The Court further ruled that issues respecting damages claimed by Plaintiff, including whether Plaintiff had waived her right to seek damages, remained for trial. During the discovery portion of the lawsuit, the Defendant accounted to the Plaintiff for sales of products for which no royalty was paid.

The Plaintiff was represented by R. Dan Boulware, Dennis D. Palmer and Sharon Kennedy of Polsinelli Shughart PC.

Sandra M. Jackson, Trustee of the Sandra M. Jackson Trust
vs. Mizuho Orthopedic Systems, Inc.
Case No. 4:11-CV-0799-GAF
United States District Court for the Western District of Missouri

About Polsinelli Shughart

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*Inc Magazine, September 2012