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