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

Simulab Survives Summary Judgment (Barely) In Surgical Trainer Patent Case

Following up on my recent post about this case involving a patent owned by Simulab Corp. for a surgical trainer (U.S. Patent No. 6,780,016 "Human Surgical Trainer and Methods for Training"), Judge Zilly granted in-part and denied in-part Defendant's motion for summary judgment. In denying part of the motion, Judge Zilly asked for a proffer from Simulab to see if there was a need to go to trial.

Infringement claims based on claim 43 are the only claims that survived summary judgment for now, but these claims face an uncertain future as explained in the Court's order

From Judge Zilly's order:

"Because the Court, however, remains skeptical that Simulab can demonstrate the requisite layer properties and relationships, the Court DIRECTS Simulab to submit an offer of proof within twenty (20) days of the date of this Order. If such offer of proof fails to include admissible evidence that the adhesive layers of Sites 4 and 5 and the film layer of Site 7 are denser and more difficult to dissect than the relevant simulated skin layer, as those relationships have been defined in this Order, the Court will grant partial or full summary judgment in favor of Synbone as to Claim 43."

Simulab%20Order%20on%20MSJ.pdf

Court Hears Arguments for Summary Judgment in Surgical Trainer Patent Case

Judge Zilly heard arguments recently on a pending motion for summary judgment in a case brought by Simulab Corp. involving U.S. Patent No. 6,780,016 for a Human Surgical Trainer and Methods for Training. The accused infringer is Synbone AG, a Swiss company.

A claims construction order was issued by the court back in September after the parties agreed no Markman hearing was necessary. The claims asserted by Simulab are 1, 2, 3, 4, 37, and 43. The three independent claims are 1, 37, and 43. Eight claim terms for the three independent claims were in dispute in the briefing leading up to the court's construction. All but one of these terms appear in claim 37.

Two claim terms in particular will play a major role in the pending motion for summary judgment, which was filed by the Defendant, those terms are "composite layer" and "elastomeric layer,"

From Judge Zilly's claims construction:

Despite having suggested specific elastomers as preferred materials, plaintiff seeks to escape the limitations of the technical definition by pointing to the inventor’s use of the adjective form “elastomeric” rather than the noun “elastomer.” Plaintiff contends that the suffix “ic” is expansive, resulting in a meaning of “like elastomers.” Although the suffix “ic” does transform a noun into an adjective with a general meaning of “having the character or form of” or “being,” as in “panoramic” or “rhombic,” see Webster’s at 1119, plaintiff’s argument is essentially circular. Plaintiff’s interpretation merely informs that the material must be similar to an elastomer; it does not define the properties necessary for a material to be considered elastomeric. As lexicographer, the patentee had the unfettered ability to choose among a variety of terms to express the invention and, in this case, the inventor could have used alternative adjectives like “polymeric” or “thermoplastic,” which appear in other portions of the specification. See Col. 9 at 46-47, Col. 10 at 21-22, Col. 10 at 55-56, Exh. 1 to Prehearing Statement (docket no. 16-3). “Polymeric” has a fairly generic definition, namely “made of repeating subunits,” while the related word “polymer” means a substance “made of giant molecules formed by the union of simple molecules.” McGraw-Hill at 1635. A “thermoplastic” is a “polymeric material with a linear macromolecular structure that will repeatedly soften when heated and harden when cooled; for example, styrene, acrylics, polyethylenes, vinyls, nylons, and fluorocarbons.” McGraw-Hill at 2137.

***

In contrast, plaintiff argues that the elastic property of the material is not relevant because the elastomeric layer is combined with a fibrous layer to form a composite layer, which is not required to stretch. Plaintiff’s contention lacks merit. As indicated in the prosecution history, a necessary feature of the surgical trainer invention is mimicking the resistance to cutting exhibited by actual human tissue. See Amendment & Request for Reconsideration at 15 (docket no. 16-5). Thus, the Court must ascribe significant importance to the patentee’s selection of the
term “elastomeric” as describing a class of materials uniquely suited to the task of providing a realistic response to incision or dissection. Because plaintiff has offered no evidence to the contrary, the Court assumes that this realistic response is due in substantial part to the material’s capacity to expand linearly and retract to its original size. Whether the realistic response can be achieved, however, with a substance that stretches less or rebounds slower than a material meeting the specialized definition of an elastomer remains unclear. The Court therefore declines
at this time to impose the technical requirements proposed by defendant, and instead interprets the term “elastomeric layer” to mean “a layer formed of a material that is capable of recovering size and shape after deformation.” See Webster’s at 730.

The Court struck all pre-trial dates until a decision could be reached with respect to Defendant's motion. The trial and related pre-trial dates will be reinstated "if appropriate" following a decision on this motion.

Simulab%20Claims%20Construction.pdf