Congratulations to the Dade County Bar Association's IP Committee

I am currently serving as the Hillsborough County Bar Association's representative to the 13th Judicial Circuit's pro bono committee. As such, I'm trying to figure out ways to get lawyers in our committee more involved and aware of pro bono opportunities (and any other way we can help). For starters, we should all be aware of the Florida Bar's One Campaign. If every Florida lawyer took ONE pro bono case...imagine where we'd be. If you haven't already, watch the video (it's embedded below).

Our neighbors and colleagues in southern Florida have found a good way to help. Gene Quinn writes of a great event put on by the Intellectual Property Committee of the Dade County Bar Association. Under the leadership of their president, Jamie Rich Vining, they selected a patent (a design patent directed to a toy catapult), gathered the parts, and then had a number of contestants build the device. First to finish and launch a penny across a marked line won. Read the article for details. They were able to raise $8,000 for the local Legal Aid Society. Congratulations to the Dade County Bar Association. What a great idea!

If you have ideas for how we can help, please email me (or drop a comment). And now, spend a few minutes and watch the ONE video. If you've seen it before, watch it again.

PriceWaterhouseCoopers 2010 Patent Litigation Study -- M.D. Fla. has been a successful place for plaintiffs...

I learned via The 271 Patent Blog that PriceWaterhouseCoopers published its annual 2010 Patent Litigation Study. An interesting read indeed. The Middle District of Florida featured prominently:

Success rates for patent infringement plaintiffs 1995-2009

1. M.D. Fla - 59.1%
2. E.D. Tx. - 55.3%
3. D. De. - 47.3 %

Success rates for patent infringement plaintiffs that survive summary judgment and go to trial 1995-2009

1. M.D. Fla - 80.0%
2. E.D. Tx. - 66.7%
3. D.De. - 64.5%

Median time-to-trial from 1995-2009

1. E.D. Va. - .93 years
2. W.D. Wi - 1.07 years
3. M.D. Fla. - 1.71 years
4. D. De. - 1.89 years
5. S.D. Tx. - 2.0 years

Some additional interesting observations:

• median damages of $2.4m to $10.5m between 1995 and 2009
• reasonable royalties continue to be predominant measure of damages
• non practicing entities (f/k/a patent trolls) have been successful 31% of the time, compared with a 40% success rate for practicing entities

Lots of other interesting stuff in the report. I'd encourage you to go read it.

Evidence of patent infringement settlement agreement in another case, for another patent, is not relevant.

Alps South is suing The Ohio Willow Wood Company for allegedly infringing U.S. Patents 6,552,109 and 6,867,253 each generally directed to gel products which are apparently used in prosthetic products. Ohio Willow is suing another company in Texas for infringing one of its patents -- U.S. Patent 7,291,182 directed to a cushion liner for enclosing an amputation stump.

Alps believes that Ohio Willow settled its litigation in Texas, and wanted a copy of the settlement agreement. Indeed, the Texas litigation had proceeded to the Federal Circuit on appeal, after the defendant there won summary judgment that the asserted claims of the '182 patent were obvious. Ohio Willow had filed its appeal brief, and Alps had filed an amicus brief in that appeal. But the defendant in that case did not file its answer brief, leading Alps to conclude that the case had settled. Additionally, Alps and Ohio Willow are fighting over the '182 patent in yet another case (but that case is stayed pending reexamination of the patent).

Ohio Willow did not concede that the other litigation had settled. It then argued that the sought after information (if it existed) was not relevant to the present dispute. The Court agreed with Ohio Willow:

Although Alps argues that the '182 patent at issue in the Texas case is "directly relevant" to the '109 and '253 patents at issue in this case, I find that Alps has only shown that the '182 patent is one of a myriad of patents owned by OWW relating to prosthetic products that use a gel and substrate liner issued by Bruce G. Kania....I find the relationship between the '182 patent at issue in the Texas case too tenuous to be considered relevant to this litigation, and that Alps has not demonstrated that the sought-after information is admissible at trial, or that it is likely to lead to the discovery of admissible information.

The Court also held that if such agreement existed, it would not be discoverable because of the strong federal policy favoring the confidentiality of settlement agreements.

Motion to compel denied.

Alps South, LLC v. The Ohio Willow Wood Co., Case No. 8:08-cv-01893, slip op. (Nov. 19, 2010) (Mag. Pizzo)

Selling a product that can be used in a patented method does not constitute infringement

Minsurg markets and sells to physicians the TruFUSE system for use in spinal fusion surgeries. Minsurg also owns U.S. Patent No. 7,708,761 protecting a method for performing spinal surgery. The method protected generally requires the following steps:

1. place a portal into a human patient through a minimally invasive opening
2. access a spinal joint through the portal
3. insert a drill bit into the portal
4. drill a hole into the spinal joint
5. remove the drill bit
6. insert a joint fusion plug into the hole drilled
7. insert a tamping instrument into the portal
8. tamp the fusion plug

(while not claimed in the patent, presumably the surgeon should also remove the tamping instrument.)

Minsurg sued a number of defendants who sell competing surgical systems. Minsurg sought a preliminary injunction. Magistrate Judge Jenkins conducted an evidentiary hearing recommended denial of Minsurg's motion. The decision turned on how important "minimally invasive" was.

First, to get a preliminary injunction, Minsurg needed to establish that it was: (1) likely to succeed on the merits; (2) likely to suffer irreparable harm without the injunction; (3) the balance of hardships favored Minsurg; and (4) the public interest would be best served by granting the injunction.

A problem for Minsurg was that the '761 Patent protects a method of performing surgery, but the defendants were not the surgeons who allegedly practice the method. The defendants sell products which can be used to practice the method. So Minsurg asserted three theories of liability: (1) Defendants directly infringed the patent; (2) Defendants actively induced their customers to practice the method; and (3) Defendants contributed to the infringement.

To have patent infringement (under any of the theories), there must be an act of direct infringement. And with a method patent, direct infringement happens "only by one practicing the patented method." Joy Techs., Inc. v. Flakt, Inc., 6 F. 3d 770, 775 (Fed. Cir. 1993).

Direct Infringement

Because the Defendants themselves do not perform the steps of the method, they are not direct infringers:

Defendants do not perform the steps of the process set forth in the '761 Patent because they do not perform spinal fusion surgeries. Rather, Defendants sell systems used by physicians to perform such surgeries. Consequently, Plaintiff is not likely to succeed on its claims of direct infringement.

(This does not seem to have been a tough part of the decision, and skimming Plaintiff's motion, it does not appear Plaintiff really pursued direct infringement as a grounds for preliminary injunction here.)

Indirect Infringement - Induced infringement and Contributory infringement

Even though a defendant does not directly infringe a patent, it can still be held liable if it actively induces others to infringe the patent or contributes to another's infringement of the patent (where the piece the defendant contributes has no alternative non-infringing uses). Minsurg's theory here was that Defendants sold their kits and instructed their customers (the surgeons) on how to use them. And using the kits required practicing the claimed method. The Court did not agree.

As a factual matter, the claimed method requires the portal to be placed into a patient through a "minimally invasive" opening. Defendants offered testimony that the vast majority of spinal surgeries are done through an "open incision," as opposed to through a "minimally invasive incision." Thus, none of the Defendants' systems necessarily infringe because they can be used in non-infringing ways -- specifically when they are used through an "open incision."

Because there is a substantial, non-infringing use, Minsurg's only hope was to show evidence of active and willful inducement. "Evidence of active steps taken to induce infringement, such as advertising an infringing use, can support a finding of an intention for the product to be used in an infringing manner." Lucent Techs., Inc. v. Gateway, Inc., 580 F.3d 1301, 1322 (Fed. Cir. 2009). Minsurg presented evidence of Defendants' advertising showing their systems being used in both open incisions and minimally invasive incisions. But Minsurg did not have any evidence of any physicians actually using the equipment in a minimally invasive procedure. And the advertising evidence did not appear to be sent out after the '761 Patent issued. (Thus, how could one market infringing steps before the patent laying out what infringement entailed issues. Presumably, there is an argument that whatever intervening rights attached to the '761 Patent during prosecution could help Minsurg here, but that is a topic for another post.)

Motion for preliminary injunction denied.

Minsurg International, Inc. v. Frontier Devices, Inc., Case No. 8:10-cv-1589, slip op. (Feb. 7, 2011) (J. Covington) adopting Report & Recommendation of Mag. Jenkins