Medisim convinces jury to issue $3 million in damages, but patent voided by judge hearing case

medisim

Medisim,  an Israeli medical device company producing non-invasive thermometers.  Medisim had brought a patent infringement suit against its former US distributor, Colorado-based BestMed. The distributor knowingly and willfully infringed an issued US patent by supplying a competing product. A jury found this to be the case and awarded $3,000,000 in damages. However, the judge overturned this ruling by finding the infringed patent invalid, since for a year prior to it being filed, Medisim was marketing a device that used the technology that was patented.

On May 15, 2013, District Judge Shira A. Scheindlin overturned a jury verdict finding defendant BestMed willfully infringed U.S. Patent No. 7,597,668 held by plaintiff Medisim, and granted a BestMed’s post-trial motion for judgement as a matter of law on grounds of anticipation.

US 7,597,668 relates to a non-invasive thermometer and the court found that the evidence presented at trial clearly and convincingly demonstrated that the prior art device, the FHT-1 thermometer, sold by Medisim more than one year prior the effective date of US 7,597,668 anticipates the patent because it calculates “deep tissue temperature.” US 7,597,668 incorporates by reference US 6,280,397, an earlier patent held by Medisim,

The Appendix of the ’668 patent states that the ’397 patent provides an algorithm to determine core body temperature based on heat flux through the thermometer when the thermometer is inserted into the body. However, the accuracy of the ’397 algorithm is diminished when the temperature used is an external measurement from a non-invasive thermometer. The ’668 patent details a formula to determine core body temperature, or deep tissue temperature, from an externally derived temperature reading.

The court held that intrinsic evidence shows the ’668 patent details that deep tissue temperature may be derived from the ’397 algorithm. The court found no dispute that the FHT-1’s source code implements the ’397 algorithm to arrive at an intermediate temperature used to calculate deep tissue temperature, and that it was compelling evidence of anticipation that Medisim knew that the FHT-1 was marked with the ’397 patent. Additionally, Medisim’s marketing documents corroborate anticipation by showing Medisim made pre-litigation representations to BestMed that its own technology implemented in the FHT-1 calculated temperature under the skin. Taking into account this intrinsic evidence and evidence presented at trial, the court ruled that the US 7,597,668 was anticipated by the earlier patent and granted BestMed judgement as a matter of law.

The court also found that the evidence offered by Medisim at trial did not disturb the court’s conclusion that a reasonable jury would have found anticipation, since the only evidence advanced by Medisim was the concluding testimony of the inventor of the ’668 patent and Medisim’s expert witness. The court held that the testimony of both these witnesses was unreliable because neither witness provided a convincing explanation of “intermediate temperature.” Additionally, Medisim’s expert’s testimony was solely prefaced on a test which the court expressly excluded in its Daubert ruling and the inventor’s unsupported testimony regarding the FHT-1 was purely subjective, and therefore irrelevant. The court also noted that the inventor’s testimony at trial was contradicted by his deposition testimony

The case: Medisim Ltd v BestMed, LLC, No. 10 Civ. 2463 (SAS), 2013 BL 129139 (S.D.N.Y. May 15, 2013)

COMMENTS

Is a device incorporating a chip which runs an algorithm really a publication ?

Why was the second patent allowed?

Why was this case brought to trial?

When negotiating with a distributor, perhaps one should establish contractual obligations in addition to patent rights so that if the sides fall out, one can sue under in personam rights in addition to in rem ones.

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