Security Defense Systems Sues Athenahealth and ConnectiveRx
On April 26, 2023, Security Defense Systems, LLC sued Athenahealth, Inc. in the Western District of Texas. The lawsuit alleges that Athenahealth’s Epocrates application and epocrates.com website infringe U.S. Patent No. 8,155,887, titled “Computer Visualized Drug Interaction Information Retrieval,” which issued in 2012.
Athenahealth is a Delaware corporation. Security Defense Systems is based in Wyoming and is currently the sole and exclusive owner of the ’887 Patent, according to the complaint. The sole inventor of the ’887 Patent is Leigh M. Rothschild, who is also listed as the inventor for many other patents according to JUSTIA Patents. The docket for the Security Defense Systems v. Athenahealth case is available here.
The same patent was also asserted in two other district court cases. Six days prior to filing the case against Athenahealth, Security Defense Systems sued PSKW, LLC, d/b/a ConnectiveRx, for infringing the ’887 Patent in the District of New Jersey. The docket for the Security Defense Systems v. PSKW case is available here. In a case filed on June 4, 2020 in the District of Massachusetts, the ’887 Patent was asserted against Irody, Inc. by Drug Information Retrieval System, LLC (“DIRS”). DIRS voluntarily dismissed the Massachusetts complaint before Irody answered or filed motion for summary judgment. The docket for the Drug Information Retrieval System v. Irody case is available here.
Cranial Technologies Sues Ottobock for Infringement of Cranial Remodeling Patents
Cranial Technologies, Inc. sued Ottobock SE & Co. KGaA and Active Life LLC in the U.S. District Court for the Central District of California on March 29, 2023. The lawsuit alleges that Ottobock’s MyCRO Band and iFab system infringe U.S. Patent No. 7,242,798, titled “Automatic Selection of Cranial Remodeling Device Configuration,” which issued in 2007; and U.S. Patent No. 7,227,979, titled “Automatic Selection of Cranial Remodeling Device Trim Lines,” which issued in 2007. Below is an example figure from U.S. Patent No. 7,242,798:
Cranial Technologies also alleges that Ottobock’s MyCRO Band and iFab system infringe U.S. Patent No. 10,603,203, titled “Custom Cranial Remodeling Devices Manufactured By Additive Manufacture,” which issued in 2020; U.S. Patent No. 10,846,925 titled “Method of Manufacture of Custom Cranial Remodeling Devices By Additive Manufacture,” which issued in 2020; and U.S. Patent No. 10,726,617, titled “Method of Manufacture of Custom Headwear by Additive Manufacturing,” which issued in 2020. Below is an example figure from U.S. Patent No. 10,603,203:
Cranial Technologies is an Arizona corporation, Ottobock is a German corporation, and Active Life is a Delaware company. The lawsuit asserts that Ottobock sold the infringing products to Active Life, and that Active Life operates under Ottobock’s direction and control and for Ottobock’s direct benefit. Cranial Technologies has not previously filed any lawsuits against either Ottobock or Active Life. The case docket is available here.
Jury Verdict Against Boston Scientific for $42 Million For Infringement of Patent on Biodegradable Drug-Releasing Implant
On January 31st, 2023, a jury awarded $42 million to medical device company TissueGen in a patent infringement case against Boston Scientific for infringement of U.S. Patent No. 6,596,296, titled “Biodegradable Drug-Releasing Implant.” The ’296 patent relates to a drug releasing biodegradable fiber implant which allows for controlled delivery of therapeutic agents.
The verdict comes after a five-year long dispute between the parties. The Board of Regents of the University of Texas System and TissueGen sued Boston Scientific for infringement of the ’296 patent in November 2017. TissueGen received an exclusive license to the ’296 patent from the University of Texas in 2003.
TissueGen’s infringement case concerned Boston Scientific’s SYNERGY™ technology. Boston Scientific reportedly previously received FDA approval for its SYNERGY™ Bioabsorbable Polymer Drug-Eluting Stent System in 2015. The SYNERGY™ system is alleged to be absorbed shortly after drug elution is complete at three months to eliminate the long-term polymer exposure.
In the first phase of the trial, the jury found that the patent at issue was valid and that Boston Scientific had infringed the patent. In the second phase of the trial, the jury further found that Boston Scientific’s infringement was willful and awarded the plaintiffs $42 million in lost royalties.
Dr. Kevin Nelson, the founder of TissueGen, had allegedly met the Boston Scientific executives in a symposium in 2009 where he told them about the patented technology. Dr. Nelson is a named inventor on the ’296 patent and is reported to have invented the technology while he was an employee of the University of Texas.
TissueGen is a medical device company that reportedly has a portfolio of patents on drug delivery technology. It was founded in 2000. Boston Scientific is a worldwide medical device company founded in 1979. Boston Scientific recently announced that it generated net sales of $3.242 billion during the fourth quarter of 2022.
Niazi’s Patent Survives on Appeal: Federal Circuit Reverses In Part Lower Court’s Decision
On April 11, 2022, Niazi Licensing Corporation (“Niazi”) succeeded in part in its appeal at the Federal Circuit in Niazi Licensing Corporation v. St. Jude Medical S.C. Inc. Niazi’s lawsuit alleged that St. Jude Medical S.C. Inc.’s (“St. Jude”) CPS telescoping catheter system infringed U.S. Patent No. 6,638,268, entitled “Catheter to Cannulate the Coronary Sinus” (the “‘268 patent”).
The district court determined that the terms “resilient” and “pliable” in the claims rendered all but one claim of the ‘268 patent indefinite and, therefore, invalid. However, the Federal Circuit reversed the district court’s holding and instead found that, although the terms may be broad, they are not uncertain. The Federal Circuit held that intrinsic record and extrinsic evidence are sufficient to inform a skilled artisan of the meanings of the terms with reasonable certainty. The court sent the case back to the district court to resolve any outstanding questions of whether St. Jude infringed the claims and whether St. Jude’s remaining invalidity defenses are applicable.
The Federal Circuit’s complete decision is available here.
Becton Dickinson’s PureWick Wins Patent Infringement Suit Against Stryker’s Sage Products Related To Female External Catheters
PureWick Corp., a Becton Dickinson company, succeeded in its infringement lawsuit PureWick Corp. v. Sage Products LLC. PureWick’s lawsuit alleged that Sage Products infringed U.S. Patent Nos. 10,226,376; 10,390,989; 10,376,407, which relate to a female external catheter that purports to reduce catheter-associated infections and other issues with traditional medical equipment.
The Delaware jury determined that Sage Products, a Stryker company, infringed all of PureWick’s claims with its competing product, and rejected Sage’s non-infringement and invalidity counterclaims. The jury awarded PureWick $26.2 million in lost profits resulting from the infringement, and $1.8 million as a royalty for Sage Products’ sale of the infringing product. The jury also determined that Sage Products willfully infringed two of the three patents.
Intellectual Property Cases Dominate 2016 Verdict Awards
According to the annual Top 100 Verdicts report by ALM’s VerdictSearch, five jury verdicts for Intellectual Property cases cracked the top 10 with a sixth breaking into the top 25 verdicts of 2016. While the amounts do not account for judicial reductions, offsets or appeals, the report indicates that the more than $4.67 billion in total jury awards from the top 6 IP verdicts alone show that intellectual property cases dominated the Top 100 in terms of total dollars awarded.
The publication ranked Idenix‘s $2.54 billion royalty share of Gilead Sciences‘ profits from two blockbuster hepatitis C drugs as the #1 IP verdict and #3 overall on its list of “Top 100 Verdicts of 2016.” According to the report, Idenix successfully asserted that Gilead willfully infringed Idenix’s patents relating to an antiviral compound used in the treatment of hepatitis C, resulting what commentators have stated is the largest patent infringement verdict in U.S. history.
The second highest IP verdict in VerdictSearch’s 2016 list, $940 million (including $700 million in punitive damages), went to medical software company Epic Systems in what commentators have said is one of the largest trade-secrets verdicts on record. According to the report, Epic successfully asserted that Tata misappropriated information related to Epic’s health care software.
The #3 and #4 IP verdicts of 2016 according to VerdictSearch, $625 million and $302 million, respectively, went to technology patent-holder VirnetX for infringement of four of VirnetX’s internet security patents infringement by several Apple products, including iPhones and iPads.
Merck won the 5th largest IP verdict of the year according to VerdictSearch, a $200 million award against Gilead. The report noted that Gilead Sciences v. Merck & Co. involved infringement of different patents relating to the same drug compound as the Idenix case. The case was filed by Gilead as a declaratory judgment action, but Merck & Co. won on its counterclaim.
CardiAQ‘s $70 million win in CardiAQ Valve Technologies, Inc. v. Neovasc Inc. was listed in VerdictSearch as the #6 IP verdict and tied for #21 overall. As noted in a previous post here, according to the report, the jury found that Neovasc breached the non-disclosure agreement between the parties, misappropriated CardiAQ’s trade secrets, and breached its duty of honest performance to CardiAQ.
According to the report, the 11 IP verdicts in the top 100 totaled approximately $4.8 billion, more than a threefold increase from 2015, when the total was $1.43 billion.
Sportbrain Sues Smartwatch Manufacturers, PTAB institutes IPR against Patent-in-Suit
Sportbrain Holdings LLC (“Sportbrain”) is a company that was previously engaged in the business of selling fitness trackers. Sportbrain recently sued eight smartwatch manufacturers for alleged infringement of its U.S. Patent No. 7,454,002 (“the ’002 patent”), which describes a method of capturing and analyzing personal data of a user and providing feedback to the user based on the analysis. FIGS. 1B and 3 of the ’002 patent are reproduced below. These defendants included Jawbone, Frédérique Constant, Apple, Michael Kors, HP, BLOCKS Wearables, Razer, and New Balance. The complaint in each case identified a smartwatch or fitness tracker (having an accelerometer, motion sensor, pedometer, calorie counter, and/or gyroscope) and its companion app as the accused product.
A day after Sportbrain filed its most recent lawsuit, the Patent Trial and Appeal Board (PTAB) granted a petition for inter partes review (IPR) of the ’002 patent. The IPR petition had been filed on July 22, 2016 by Unified Patents. According to its website, Unified Patents is a member-based organization seeking to deter non-practicing entity activity in specific technology areas. Unified Patents argued in its petition that the claims of the ’002 patent were obvious over four different combinations of prior art references.
In instituting the IPR proceeding, the PTAB concluded that the petitioner’s evidence established a reasonable likelihood that the combinations of prior art references would render all of the claims of the ’002 patent obvious.
The ’002 patent is now the subject of over 40 active cases brought by Sportbrain.
Globus Argues Expert’s Faked Credentials Warrants New Trial
In 2011, DePuy-Synthes, a subsidiary of Johnson & Johnson Inc. sued Globus Medical, Inc. in the United States District Court for the District of Delaware. In that suit, Synthes alleged that Globus had infringed three Synthes patents (U.S. Patent Nos. 7,846,207; 7,862,616; and 7,875,076) all directed to intervertebral implants.
The jury found that Synthes’ patents were valid and that three of Globus’ intervertebral implant products infringed those patents. The jury awarded Synthes $16 million in damages, representing a 15% royalty on Globus’ sales of infringing products.
In December 2014, Synthes learned that its damages expert, Richard Gering, did not have a Ph.D., as he had testified under oath. Synthes notified the court and Globus the following day.
Globus argued in a brief, filed April 24th, 2015, that it should be granted a new trial because it is impossible to quantify how much the discredited expert’s testimony influenced the jury’s decision. Synthes responded that because Globus did not offer evidence that the expert’s testimony itself was factually incorrect, it could not establish that a new trial is warranted. Mr. Gering testified only on damages, and not on validity or infringement. Therefore, Synthes argued that there is no reason to grant a new trial.
Final Decision in NuVasive’s Inter Partes Review of Warsaw Orthopedic Patent
The Patent Trial and Appeals Board (the “Board”) recently issued Final Written Decisions disposing of two inter partes reviews that NuVasive filed in mid-2013 regarding U.S. patent number 8,444,696 (the ’696 Patent). The ’696 Patent is entitled “Anatomic spinal implant having anatomic bearing surfaces” and, according to its abstract, “is directed to an interbody spinal implant having a structural configuration that provides for maintaining the normal anatomic relationship of two adjacent vertebrae of the spine.” According to the USPTO Assignment Database, the patent application that later became the ’696 patent was assigned on May 17, 2005 by its inventor to SDGI Holdings, Inc., then was assigned on April 28, 2006 by SDGI Holdings, Inc. to Warsaw Orthopedic, Inc.
In its recent Final Written Decision disposing of IPR2013-00395, the Board determined that NuVasive showed by a preponderance of the evidence that claims 1–6 of the ’696 Patent are unpatentable under 35 U.S.C. § 103(a) as obvious over the combination of three references, Michelson, Wagner, and Brantigan. In its recent Final Written Decision disposing of IPR2013-00396, the Board determined that NuVasive showed by a preponderance of the evidence that claims 7-12 of the ’696 Patent are unpatentable under 35 U.S.C. § 103(a) as obvious over a different combination of three references, including Steffee, Michelson, and Kim.
On August 17, 2012, Warsaw Orthopedic, Medtronic Sofamor Danek, Medtronic Puerto Rico, and Osteotech filed a complaint against NuVasive alleging infringement of U.S. patents numbers 8,021,430 and 5,676,146. In its two petitions for inter partes review, NuVasive stated that Warsaw Orthopedic asked the Court for permission to add the ’696 patent to the lawsuit. On July 24, 2013 Warsaw’s request was granted.
Bonutti Skeletal Innovations Sues Globus Medical
Bonutti Skeletal Innovations, LLC brought a patent infringement suit against Globus Medical, Inc. in the Eastern District of Pennsylvania on November 19, 2014. The lawsuit alleges that several of Globus Medical’s spinal spacer products and related instruments infringe Bonutti Skeletal patents.
The asserted Bonutti Skeletal patents include U.S. Patent No. 6,099,531, entitled “Changing Relationships Between Bones,” which issued on August 8, 2000. The patent discusses the use of a wedge member in a joint to alter the relative positioning of a patient’s bones.
Specifically, Bonutti Skeletal alleges that Globus Medical’s CALIBER, CALIBER-L, COALITION, COLONIAL, CONTINENTAL, FORGE, FORTIFY, FORTIFY I PEEK, FORTIFY I-R, INDEPENDENCE, INTERCONTINENTAL, MONUMENT, NIKO, RISE, SIGNATURE, SUSTAIN ARCH, SUSTAIN LARGE, SUSTAIN MEDIUM, SUSTAIN-O, SUSTAIN SMALL, and TRANSCONTINENTAL spinal spacer products each infringe various Bonutti Skeletal patents.
According to the Complaint, Bonutti Skeletal has been built on the work of Dr. Peter M. Bonutti, an orthopedic surgeon that has performed over 20,000 orthopedic surgical procedures and been the inventor or co-inventor on over 150 U.S. patents.
Globus Medical’s website states that “Globus Medical, Inc. is a leading musculoskeletal implant manufacturer and is driving significant technological advancements across a complete suite of spinal products.”
The complaint and asserted patents are available here.
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