Surgical Trainer Patent Case Headed for Trial in October

Simulab Corp. will get a jury this fall to decide claims for infringement of U.S. Patent No. 6,780,016, a patent for a "Human Surgical Trainer and Methods for Training." Infringement claims are being asserted against Synbone AG, a Swiss company. My previous posts here and here, discussed Judge Zilly's summary judgment rulings, expressing skepticism that "Simulab can demonstrate the requisite layer properties and relationships" claimed in the patent.

Simulab was asked to present an offer of proof setting forth how it intended to prove infringement. Simulab's offer of proof was supported by the 15 page declaration of the inventor, Christopher C. Toly (PDF link below). Evaluating Simulab's offer and the declaration of Mr. Toly, Judge Zilly initially ruled as follows:

"The Court is not satisfied that Mr. Toly’s most recent declaration addresses in any meaningful way the fundamental question whether the adhesive layers of Sites 4 and 5 and the film layer of Site 7 are more difficult to dissect that the simulated skin layers at those sites of the SYNMAN. Mr. Toly, however, has provided the relevant density figures, tending to show the density relationships required by Claim 43 of the ’016 Patent, and the Court is persuaded that any further briefing from defendant would simply demonstrate an issue of material fact precluding summary judgment. Thus, the Court will set a trial date concerning the sole remaining allegation that Sites 4, 5, and 7 of the SYNMAN infringe Claim 43 of the ’016 Patent."

Defendants moved to reconsider, citing as error, the Court's conclusion that "further briefing from defendant would simply demonstrate an issue of material fact precluding summary judgment"

After requesting a response to the motion to reconsider, the Court denied the motion, and set trial for October 26, 2009. Judge Zilly's order states as follows:


"Although the Court remains skeptical that plaintiff will be able to establish the relative ease or difficulty of dissection relationships required in connection with Claim 43 of the ’016 Patent, see Minute Order at ¶ 2 (docket no. 43); Order at 12 n.5 (docket no. 40), the Court is reluctant to rule as a matter of law on the merits of plaintiff’s remaining claim of infringement. In its offer of proof, plaintiff presented evidence of density relationships consistent with the language of Claim 43. For pretrial purposes, defendant does not dispute plaintiff’s density figures. See Motion for Reconsideration at 2 (docket no. 44). Instead, in its motion for reconsideration, defendant for the first time asserts that density bears no consistent relationship with the relative ease or difficulty of dissection. Id. Defendant, however, has offered no expert or other testimony to support this proposition, and has not suggested any alternative means of quantifying the relative ease or difficulty of dissection of the materials at issue."

An interesting side comment from the Court in this order says "In reaching its conclusions, the Court has also considered the timing of defendant’s motion for summary judgment, which was filed more than two months before the close of discovery, and which was the basis for the Court’s subsequent stay of discovery."

To me, this is an indication that Defendant should have waited until discovery closed to file its motion, or it should have made a case why early SJ was appropriate.

Waiting is hard (and expensive) for any litigant, but it is especially hard for defendants who think a plaintiff's case lacks merit. One practice tip for SJ motions filed before the close of discovery, especially in Judge Zilly's court and I speak from experience, is to explain (preferably in your opening brief) why further discovery will not lead to a genuine issue of material fact. Arguments as to why early SJ is in the interest of justice and judicial efficiency are also a good thing to include.

In other words, don't just file your motion early because Rule 56 says you can. (saying motions for SJ can be filed "after 20 days have passed from commencement of the action"). Rather, explain why the timing is appropriate. This way, you might have a shot at obtaining an early, more cost-effective victory for your client

simulabtollydeclaration.pdf

K2 Wins Partial Summary Judgment in Wide Short Ski Case

Inventor Paul Nelson sued K2 for infringement of his US Patent No. 5,603,522 covering a "Wide Short Ski." The specification was drawn to a shaped ski having a range of dimensions in length, side-cut radius, shovel width, and tail width. The claims at issue (added in a CIP) were for much narrower ranges than what was disclosed in the parent application's specification. K2 moved for partial summary judgment, arguing that these claims (the ones added in a CIP) were not supported by the parent application, an argument setting up a motion for summary judgment of invalidity under 35 USC Section 102, because the claims at issue were not entitled to priority filing for failure to satisfy the written description requirement.

From Judge Lasnik's order:

The narrowing of the length and width ranges is significant: more than half of the combinations described in the parent application are excluded from the claimed invention. It is not clear how one skilled in the art of ski design could identify the measurements that were of special interest to the inventor. The 1992 application does not disclose the precise ranges later claimed, nor does it contain descriptive terms that would lead to the claimed ranges.

In a footnote, the Order states that the written description bar has potentially been raised "to a height that may be insurmountable for many inventors." In support of this gloomy outlook for the future, Judge Lasnik cites Judge Learned Hand's decision in Eng'g Dev. Labs v. Radio Corp. of Am., 153 F.2d 523, 526-27 (2nd Cir. 1946), where the distinguished jurist said that meeting the written description requirement was "an impossible task" encouraging "that surfeit of verbiage [in patent claims] which has for long been the curse of patent practice and has done much to discredit it."

Let's see what happens next. Perhaps an appeal? Settlement? My personal view is that the viability of this decision on appeal depends greatly on the make up of the reviewing panel at the CAFC. Decisions on the written description requirement from the CAFC have been rightly criticized as "opaque to the point of obscuring other areas of . . . [patent] law."


K2%20Nelson%20Order%20Granting%20MPSJ.pdf

Seattle Patent Litigation News

Note to self: don't file an early summary judgment motion in Judge Pechman's court where said motion implicates claim construction issues. In an earlier post here, I discussed Wizkids Inc. v. Wizards of the Coast, a dispute involving US Patent No. 7,201,374 for a Method and Article of Manufacture for a Collectible Game. The DJ Plaintiff, Wizkids, Inc., had filed a motion for leave of court to have Judge Pechman hear early summary judgment arguments of invalidity. Judge Pechman denied the motion, citing the fact that it implicated claims construction issues, and that those issues should be briefed and heard in a proper Markman hearing. Recently, Wizkids filed another early motion for summary judgment on an issue concerning the scope of potential damages. In an interesting twist, Judge Pechman ordered the parties to use the joint brief submission procedures of Local Rule 37 to brief arguments on Wizkids latest motion for summary judgment. Under that rule, the motion would be noted for consideration on the day it is filed, and the briefing would take about a week's time total. Here is her order on Wizkids' latest motion for summary judgment. PEchmanoerderjointSJsubmission.pdf Also, it should be noted that Judge Pechman now has a standing order for all patent cases, where she makes it quite clear that she will not entertain any dispositive motion implicating claims construction issues until the claims have been interpreted under Markman. Pechman%27sStanding%20OrderPatentCases.pdf

In other news, the dispute between CRS, LLC and IGN Entertainment, Inc, involving US Patent No. 6,073,124 for a Method and System for Securely incorporating Electronic Information Into Online Purchasing Application has settled. Details of the settlement remain confidential. Judge Zilly's order dismissing the case is attached. CRSORderofDismissal.pdf