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