Showing all posts written by Emily Sauter

Emily Sauter
Emily Sauter
Emily K. Sauter is an associate in our Orange County office. She specializes in representing and counseling clients during all stages of intellectual property disputes, from the development and execution of pre-dispute enforcement or defensive strategies through trial and appeal. Her practice involves all types of intellectual property, including patents, design patents, trade secrets, trademarks and trade dress, copyrights, false advertising, and unfair competition.
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Darco International Sues Medical Specialties

Darco International Sues Medical Specialties

On November 11, 2013, Darco International, Inc. filed a lawsuit against Medical Specialties, Inc. in the United States District Court for the Southern District of West Virginia. The lawsuit alleges that Medical Specialties’ PHANTOM Dorsal Night Splint infringes U.S. Patent No. 8,226,589.

The ’589 Patent is entitled “Night Splint with Digital Dorsiflexion.” The application for the ’589 Patent was filed on April 18, 2008, and the ’589 Patent issued on July 24, 2012. The ’589 Patent states that it generally relates to “a splint that can be worn while a user sleeps or rests; the splint holding the foot and ankle at a 90 [degree] angle to apply a mild stretch on the calf muscles and the plantar fascia.” Figure 3 from the ’589 Patent is shown below:

According to Darco’s website, Darco provides “post op, trauma and wound care solutions to the global foot and ankle community.” According to Medical Specialties’ website, Medical Specialties designs and produces orthopedic and sports medicine products.

Bolt MRI Technologies Files Lawsuit Against Fonar Corporation and Others

Bolt MRI Technologies Files Lawsuit Against Fonar Corporation and Others

On July 22, Bolt MRI Technologies LLC filed a lawsuit against Fonar Corporation, Health Management Corporation of America, Inc., and Health Diagnostics, LLC (collectively, the “Defendants”), alleging infringement of U.S. Patent No. 6,882,877. The ‘877 Patent is entitled “Magnetic Resonance Imaging System and Method,” and the specification states that the patent “relates to apparatus and method for positioning a patient and and/or a secondary imaging coil inside a primary imaging coil.” Figure 25 of the ‘877 Patent is shown below:

Bolt MRI Technologies’ lawsuit alleges that the Defendants’ Upright Multi-Position MRI and Stand-Up MRI products infringe claims 1-3, 7-8, 11-12, and 15-17 of the ‘877 Patent. In addition to direct infringement, the complaint alleges that the Defendants are liable for indirect infringement and contributory infringement, by providing and/or selling infringing products to customers and users of the allegedly infringing products.

In a related case, Bonutti Research Inc. filed a lawsuit against the Defendants for infringement of the ‘877 Patent. Bolt MRI Technologies’ complaint states that in the Bonutti Research lawsuit, the Defendants have asserted that Bonutti Research did not own the ‘877 patent when Bonutti Research filed its complaint against the Defendants. Accordingly, the Defendants have asserted in the Bonutti Research lawsuit that Bonutti Research had no standing to sue for alleged infringement of the ‘877 Patent.

Bolt MRI Technologies’ complaint states that after Bonutti Research filed its complaint, the ‘877 Patent was assigned to Bolt MRI Technologies. Bolt MRI Technologies’ complaint states that because the Defendants have asserted that Bonutti Research had no standing to sue the Defendants, Bolt MRI Technologies filed its complaint “in an abundance of caution…to preserve its rights to enforce the ‘877 Patent and to collect damages for the infringements of the ‘877 Patent.”

Federal Circuit Reverses BPAI Reexamination Decision; Finds Synthes Patent Invalid

Federal Circuit Reverses BPAI Reexamination Decision; Finds Synthes Patent Invalid

On July 9, 2013, the Federal Circuit reversed the Board of Patent Appeals and Interferences’ decision that certain claims of U.S. Patent No. 7,128,744 were not invalid due to obviousness. The ‘744 Patent, owned by Synthes, Inc., is entitled “Bone Plating System” and issued on October 31, 2006. Figure 7 of the ‘744 Patent is shown below:

Smith & Nephew PLC filed a request for inter partes reexamination of the ‘744 Patent in 2009. Smith & Nephew’s request for reexamination alleged that all 55 claims of the ‘744 Patent were obvious. The patent examiner agreed and rejected all 55 claims as obvious.

Synthes appealed the examiner’s decision to the BPAI. The BPAI upheld the rejection of claims 24-31 and 33-55, but reversed the rejections of claims 1-23 and 32. Smith & Nephew then appealed the BPAI’s decision that claims 1-23 and 32 were not invalid due to obviousness.

The Federal Circuit reversed, finding that claims 1-23 and 32 were obvious. The Federal Circuit explained:

While the ‘substantial evidence’ standard of review for the board’s factual findings makes Smith & Nephew’s burden on appeal a heavy one, we are satisfied, after careful review, that Smith & Nephew has met that burden and has shown that the claims at issue would have been obvious.

Knobbe Martens attorneys Joe ReChristy Lea, and Jared Gardner represented Smith & Nephew in the successful appeal.

Synthes and Smith & Nephew have been in litigation over Synthes’ bone plate technology since 2003, when Synthes filed a complaint against Smith & Nephew in the U.S. District Court for the Eastern District of Pennsylvania for infringement of U.S. Patent No. 5,053,036.

Smith & Nephew filed a request for reexamination of the ‘036 Patent in 2003, and that request was granted. During reexamination, Synthes amended four of the ‘036 Patent claims and added new claims. In 2007, the PTO issued a reexamination certificate, indicating that two of the original ‘036 Patent claims, the four amended claims, and the newly-added claims were patentable.

Synthes filed an amended complaint against Smith & Nephew in 2006, alleging infringement of the ‘744 Patent, the ‘036 Patent, and U.S. Patent No. 6,623,486.

In addition to Smith & Nephew’s request for reexamination of the ‘744 patent, Smith & Nephew also filed requests for inter partes and ex parte reexamination of the ‘486 Patent in 2009. Both of Smith & Nephew’s requests for reexamination of the ‘486 Patent were granted, and the two ‘486 Patent reexamination proceedings were consolidated on July 10,  2009.

The U.S. District Court for the Eastern District of Pennsylvania case was stayed on July 13, 2009, pending reexaminations of the ‘744 Patent and the ‘486 Patent. The ‘486 Patent reexamination is still pending.

 

NuVasive Files 2 Petitions for Inter Partes Review of Warsaw Orthopedic Patent

NuVasive Files 2 Petitions for Inter Partes Review of Warsaw Orthopedic Patent

San Diego-based NuVasive, Inc. filed two petitions last Friday with the Patent Trial and Appeal Board for inter partes review of Medtronic subsidiary Warsaw Orthopedic, Inc.’s U.S. Pat. No. 8,251,997. The sole listed inventor of the ‘997 patent is Dr. Gary Michelson.

The ‘997 patent is entitled “Method for Inserting an Artificial Implant Between Two Adjacent Vertebrae Along a Coronal Plane” and “relates generally to instrumentation and methods of performing surgical procedures on the human thoracic and lumbar spine along the lateral aspect of the spine and from a true lateral or anterolateral approach, and specifically to the surgical correction of thoracic and lumbar disc disease and spinal deformities where concomitant fusion is desired.” Figure 13 from the ‘997 patent is shown below:

NuVasive’s first and second petitions collectively seek review of all 30 of the claims of the ‘997 patent, asserting the claims are obvious over a number of references. The associated exhibits can be found by visiting the Board’s website, entering the patent number 8251997, and clicking on the Search button.

Medtronic and NuVasive have a history of spinal patent infringement litigation. In 2008, Medtronic filed a patent lawsuit against NuVasive relating to spinal implants, and NuVasive filed patent infringement counterclaims. The first phase of this litigation went to trial in 2011, where Medtronic won $101 million in damages and NuVasive won $660,000, and is still ongoing.

Of note, the ‘997 patent, among others, was asserted by Warsaw against NuVasive in another pending patent infringement lawsuit originally filed in the Northern District of Indiana. The case has since been transferred to the Southern District of California. Warsaw’s alleged infringement contentions against NuVasive with respect to the ‘997 patent can be found here.

Heart Failure Technologies Seeks Inter Partes Review of CardioKinetix Patent

Heart Failure Technologies Seeks Inter Partes Review of CardioKinetix Patent

Heart Failure Technologies, LLC filed a petition yesterday with the Patent Trial and Appeals Board for inter partes review of CardioKinetix, Inc.’s  U.S. Patent No. 7,582,051.  The ‘051 patent, entitled “Peripheral Seal For a Ventricular Partitioning Device,” issued on September 1, 2009.  According to the ‘051 patent, the patent “relates generally to the field of treating heart disease, particularly congestive heart failure, and more specifically, to a device and method for partitioning a patient’s heart chamber and a system for delivering the treatment device.”  Figure 11E from the ‘051 patent is shown below:

Although the petition is not yet publicly available, the titles of the exhibits to the petition reference U.S. Patent Nos. 6,152,144, 7,485,088, and 7,717,955, and U.S. Patent Publication Nos. 2003/0050685, 2002/0111647, and 2005/0137688.  The exhibit titles can be seen by visiting the Board’s website, searching for the ‘051 patent, and clicking on the Case Number link.

Altus Partners Sues Globus Medical

Altus Partners Sues Globus Medical

Altus Partners, LLC has sued Globus Medical, Inc. in the United States District Court for the Eastern District of Pennsylvania.  The lawsuit alleges that Globus Medical’s REVERE® pedicle screws and components infringe U.S. Patent No. 8,162,989, entitled “Orthopedic Rod System,” which issued in 2012.  A figure from the ‘989 Patent is shown below:

According to the ‘989 patent, “[t]he present invention relates to orthopedic implantable devices, related systems, and associated methods of use and, more particularly, to a pedicle screw and rod system and associated method for joining two or more bone segments, such as vertebrae.”  See ‘989 Patent at col. 1, lines 12-16.  The complaint, which also attaches a copy of the asserted patent, is available here.