In Major Victory, Judge Awards $18.3 Million, Issues Permanent Injunction, Invalidates Patents in IMD Penile Implant Trade Secrets Theft Case

On March 28, 2024, a California federal judge awarded more than $18.3 million in implied royalties and exemplary damages to Waymaker’s plaintiff clients, International Medical Devices (IMD), Menova Inc. and Beverly Hills urologist Dr. James Elist. This award follows the unanimous jury trial verdict the firm secured last year related to a competitor’s theft of penile implant trade secrets. In addition to the damages award, the court also issued a permanent injunction and invalidated two of defendants’ patents.

Dr. Elist and his two companies won a sweeping 8-0 jury trial verdict in June, with jurors finding that Houston-based urologist Dr. Robert Cornell and others associated with him stole Elist’s trademark secrets related to a cosmetic penile implant.

On March 28, U.S. District Judge Consuelo B. Marshall ordered the $18.3 million award and found that Dr. James Elist’s claims against Cornell demonstrated an irreparable injury in the high-profile trade secrets case covered by Daily Journal and Law360. In a separate order, Judge Marshall stated that “the evidence supports the factors favoring a permanent injunction.” Based on the jury’s finding by clear and convincing evidence that defendants’ patents are invalid, Judge Marshall stated that “the Court will enter judgment consistent with the jury’s finding.”

Lead attorney Ryan Baker told Law360, “The court’s ruling, consistent with the unanimous jury verdict on liability, recognizes the importance and value [of] an inventor’s intellectual property.”

“The defendants in this case have been rightfully punished for trying to claim Dr. Elist’s lifelong work as their own,” he said. “Today is a good day for inventors and innovation.”

Baker added, “The totality of the relief here sends a clear message to would-be infringers – not only will you have to pay for the damages you cause, but you will also not be able to benefit from your theft of intellectual property in any way.”

The Waymaker team proved that Cornell unlawfully claimed inventorship of Elist’s penile enhancement concepts that led to Penuma®, the first FDA-cleared cosmetic penile implant, one with significant commercial possibilities.

The Waymaker trial team also included Scott Malzahn, Donald Pepperman, Sam Meehan and Emily Stierwalt. Waymaker staff also contributed significantly. “This was a total team effort,” Baker stated.