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

Claims Construction Order on Alliance Packaging v. Smurfit-Stone Container Corp.

In this case, Plaintiff Alliance Packaging asserts infringement of U.S. Patent No. 7,156,287 against Altivity Packaging LLC. The patent-in-suit is for a container with a spout. Judge Zilly recently held a Markman hearing and construed the following terms of the '287 patent claims: "lower side" "acute angle" and "cover the concavity." The order is attached below.


Alliance%20Packaging%20Claims%20Constrution%20Zilly.pdf

Scheduling Orders in Patent Cases (WD of Wash.)

Yesterday, a reader asked me whether Judge Zilly has a standing order for patent cases similar to that of Judge Robart. The answer is no, but his scheduling orders in patent cases can be more detailed than other cases and establish deadlines for Markman hearings and briefing on claims construction. Below is a link to a recent scheduling order from a patent case currently pending in Judge Zilly's court.
ZillyMinuteOrderPatentCase.pdf

Licensing Activities in Washington State Held Sufficient to Support Allegations of Personal Jurisdiction in a Patent Case

Tien Hsin Indus. v. Cane Creek Cycling Components, Co7-1272Z, (W.D. Wash. 2007).


Plaintiff Tien Hsin Industries, a Taiwanese maker of cycling components sold in the US under the brand Full Speed Ahead sued Cane Creek Cycling Components and inventor Homer John Rader III for inter alia a declaratory judgment of non infringement and invalidity of U.S. Patent No. 5,095,770, entitled "steering bearing assembly for wheeled vehicle." Defendants moved to dismiss inventor Rader, claiming he had no contacts with the state of Washington sufficient to support specific personal jurisdiction. At first glance, Defendant Rader's motion has some legs. Rader doesn't live in Washington, he has no offices or other presence here, he owns no property here, he never sent threats of infringement here, he has no web-presence or other contacts with Washington, nor did he ever contact plaintiffs in connection with the patent-in-suit. On the surface, Defendant Rader has fewer contacts than some other defendants recently dismissed on personal jurisdiction grounds from W.D. of Washington patent cases. See here and here for my posts on those cases. Why then were plaintiffs successful in defeating a motion to dismiss Rader for lack of personal jurisdiction? The answer comes from looking closely at his licensing activities. Under Federal Circuit law (remember, in patent cases, especially DJ cases, the law of the Federal Circuit applies to determinations of personal jurisdiction because "personal jurisdiction in a declaratory action for non-infringement is 'intimately related to patent law' and thus governed by Federal Circuit law regarding due process," see Silent Drive, Inc. v. Strong Indus., Inc., 326 F.3d 1194, 1201 (Fed. Cir. 2003)), licensing activities by a non-resident defendant may give rise to personal jurisdiction where the defendants' exclusive licensee conducts business in the forum state and where the defendant exercises some modicum of control over that activity beyond the mere collection of royalty income. Breckenridge Pharm. v. Metabolite, 444 F.3d 1356, 1366 (Fed. Cir. 2006). In this case, Defendant Rader licensed Cane Creek, who admittedly conducts business in Washington. Further, Defendant Rader was obligated under his license to Cane Creek to supply consulting services and he had control over sub licenses and rights in the products sold. He also had control over trademark usage and quality. While Judge Zilly's order does not specifically reference these factors, it does cite the Federal Circuit's opinion in Breckenridge in denying the motion.

Here are links to the order, the complaint, the patent-in-suit, the motion to dismiss, and the response.
CaneCreekcomplaint.pdf
canecreekorder.pdf
canecreekmotion.pdf
canecreekresponse.pdf