726 F.Supp.2d 604 (W.D.Va. 2010), 3:09-cv-00078, MicroAire Surgical Instruments, LLC v. Arthrex, Inc.

Docket Nº3:09-cv-00078.
Citation726 F.Supp.2d 604
Opinion JudgeNORMAN K. MOON, District Judge.
Party NameMICROAIRE SURGICAL INSTRUMENTS, LLC, Plaintiff, v. ARTHREX, INC., Defendant.
AttorneyMichael Edward Whitham, Philana Shell Handler, Robert Neal Cook, Whitham, Curtis & Christofferson & Cook, P.C., Reston, VA, for Plaintiff. Anthony P. Cho, Matthew L. Koziarz, Todd William Barrett, Carlson, Gaskey & Olds, P.C., Birmingham, MI, Thomas Marshall Wolf, Leclair Ryan, a Professional Cor...
Case DateJune 03, 2010
CourtUnited States District Courts, 4th Circuit, Western District of Virginia

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726 F.Supp.2d 604 (W.D.Va. 2010)

MICROAIRE SURGICAL INSTRUMENTS, LLC, Plaintiff,

v.

ARTHREX, INC., Defendant.

No. 3:09-cv-00078.

United States District Court, W.D. Virginia, Charlottesville Division.

June 3, 2010

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Michael Edward Whitham, Philana Shell Handler, Robert Neal Cook, Whitham, Curtis & Christofferson & Cook, P.C., Reston, VA, for Plaintiff.

Anthony P. Cho, Matthew L. Koziarz, Todd William Barrett, Carlson, Gaskey & Olds, P.C., Birmingham, MI, Thomas Marshall Wolf, Leclair Ryan, a Professional Corporation, Richmond, VA, for Defendant.

MEMORANDUM OPINION

NORMAN K. MOON, District Judge.

This matter is before the Court upon the Plaintiff MicroAire Surgical Instruments LLC's (" MicroAire" ) Motion for Preliminary Injunction and Memorandum of Points and Authorities in Support of Motion for Preliminary Injunction (docket nos. 6, 7), Defendant Arthrex, Inc.'s (" Arthrex" ) Opposition to MicroAire Surgical Instruments LLC's Motion for Preliminary Injunction (docket no. 18), MicroAire's Reply Brief on Motion for Preliminary Injunction (docket no. 23), and Arthrex's Notice of Filing certain declarations in response thereto (docket no. 28). After full consideration of the arguments set forth therein, and presented at oral argument in this matter, for the following reasons, the Court will DENY the Plaintiff's Motion for Preliminary Injunction, in an accompanying Order, to follow.

The Court concludes, infra, that MicroAire has not established that it is likely to succeed on the merits. In particular, the disputed term " actuating means" is properly construed as disclaiming any claim to " actuating means" by which the blade of the surgical instrument moves distally (forward) relative to the body of the instrument during its elevation. The disputed term " essentially perpendicular" is properly construed as only reciting that the blade follows a path which is in essence at a right angle to the longitudinal axis of the instrument, and not a path which necessarily forms a right angle with the longitudinal axis. As Arthrex's allegedly infringing surgical instrument employs " actuating means" by which the blade moves distally relative to its body during elevation (even though its blade follows a path which is in essence at a right angle to the instrument's longitudinal axis) MicroAire has not established a claim of literal infringement of its patent, or infringement under the doctrine of equivalents. Furthermore, the Court concludes that MicroAire has not established that it is likely to suffer irreparable harm in the absence of preliminary relief, whether such harm is based upon the threatened loss of goodwill, irreversible price erosion in the market for this type of surgical instrument, or general decline in reputation of the surgical procedure at issue. Either MicroAire's failure to establish a likelihood of success on the merits, or its failure to establish a likelihood of irreparable harm, by itself, would justify the Court's denial of a preliminary injunction. Consideration of the remaining two factors the Court must consider in determining whether to issue a preliminary injunction, being the balance of equities and whether the injunction is in the public interest, do not compel a contrary result.

Accordingly, the Court will DENY MicroAire's Motion for Preliminary Injunction, in an accompanying Order, to follow.

I. BACKGROUND

MicroAire is a Delaware limited liability company that has its principal place of business in Charlottesville, which has been

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engaged in the business of manufacturing power-operated instruments for orthopedic surgery since 1977. On December 29, 1998, MicroAire acquired United States Patent No. 5,306,284 (" the '284 Patent" ) in connection with the acquisition of a carpal tunnel release instrument from Minnesota Mining and Manufacturing Company (" 3M" ). This carpal tunnel release instrument is covered in the United States by the '284 Patent, and is currently being sold by MicroAire under its CTRS brand. The application for the '284 Patent was filed February 19, 1992, the Patent itself was issued April 26, 1994, and patent protection will expire February 19, 2012. The MicroAire CTRS product is a surgical instrument used for endoscopic carpal tunnel release surgery.

Carpal tunnel syndrome is a condition caused when the fibrous tissue surrounding one's wrist becomes inflamed, and places chronic pressure on the median nerve. The median nerve passes through a tight space, known as the carpal tunnel, between one band of tissue (the transverse carpal ligament) and the wrist bone. The symptoms of carpal tunnel syndrome may begin gradually, with frequent burning, tingling, or itching numbness in the palm and fingers, but without treatment, may develop into pain, weakness, and the wasting away of muscles in the hand. One course of treatment for carpal tunnel syndrome is through a procedure known as carpal tunnel release, which involves severing the transverse carpal ligament in order to relieve pressure on the median nerve. This procedure can be accomplished by use of a surgical device attached to an endoscope, which is essentially a small tube with a camera attached. There are different techniques for endoscopic carpal tunnel release surgery, either by making a small incision in the wrist (the " single-portal" technique), or by making small incisions in the wrist and palm (the " two-portal" technique). Like other endoscopic surgical procedures, carpal tunnel release can provide a patient numerous advantages over traditional surgical procedures, as the incision required in the hand is much smaller, and consequently, the possibility of visible scarring also likely decreased.

The '284 Patent relates to a surgical instrument for " probing body cavities and manipulating tissue contained therein under continuous observation." ' 284 Patent, col. 1, ll. 6-8. While the invention is susceptible to use in a variety of surgical procedures, it is " especially useful in surgical procedures for dividing the transverse carpal ligament (flexor retinaculum) in order to decompress the median nerve in the carpal tunnel," i.e., endoscopic carpal tunnel release surgery. Id. at col. 3, ll. 31-38. A graphical representation of the patented device, and specifically a side elevational cut-away view of one embodiment of its surgical probe, is set forth below. Id. at col. 2, ll. 36-37.

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The general operation of the surgical instrument claimed in the '284 Patent can be described in the following manner. The distal or forward end of this probe, identified as 12B in Figure 1, is inserted into the body cavity of the wrist of the patient undergoing endoscopic carpal tunnel release surgery, and this end is shaped so as to divert displaceable tissue it contacts away from the upper surface and lateral aperture, identified as 13, of said probe. Id. at col. 3, ll. 45-57. The cutting blade, identified as 14, is shown above in its retracted position, and so does not come into contact with body tissue when the instrument is inserted into the body cavity. The surgeon operating this instrument, by way of the optical viewing scope identified as 30 connected to a conventional video monitor (not shown) can position the probe precisely where desired before extending said cutting blade. Id. at col. 4, ll. 12-22. The probe housing and actuator arm 16 of this instrument are preferably made of durable plastic so it is economically disposable after use. Id. at col. 9, ll. 3-5.

In the " Background of the Invention" section of the '284 Patent, incorporated by reference are several previously-issued patents, or prior art, United States Patent Nos. 4,962,770, 5,089,000, and particularly 4,963,147 (" the '147 Patent" ), which describe an older model of surgical instrument used in endoscopic carpal tunnel release surgery. '284 Patent, col. 1, ll. 11-15. Both instruments were invented by John M. Agee and Francis King, although several additional persons were listed as inventors, and 3M listed as an additional assignee, of the '284 Patent. After this previous invention was inserted into the body cavity in the wrist during surgery, " the cutting blade is extended through a lateral aperture in the probe to a position adjacent the selected tissue." Id. at col. 1, ll. 16-19. When the cutting blade in that previous invention so extended, " the distal portion of the blade sweeps through an arc to reach a fully extended position. Initially the distal tip of the blade moves toward the distal end of the probe and then moves upwardly to its fully extended position." Id. at col. 1, ll. 24-28. The '284 Patent concludes its description of the previous invention by stating that " [t]his forward movement of the tip of the blade can be undesirable because the tip of the blade can encounter tissue which is not intended to be cut," and further, the " tip of the blade is not easily visible as it is being elevated." Id. at col. 1, ll. 28-32.

The trajectory of the cutting blade in the previous invention is depicted in Figures 8 and 10 of the '147 Patent. Figure 8 depicts a fragmentary view of the previous invention, showing the probe during extension of a cutting blade, and Figure 10 depicts an enlarged sectional view of the distal end of the probe, with the longitudinal axis of a cutting blade shown in positions

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respective to the actuation of the working tool extension shaft. '147 Patent, col. 4, ll. 21-22, 26-30.

(Image Omitted)

(Image Omitted)

The specification of the '147 Patent...

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16 practice notes
  • 790 F.Supp.2d 418 (D.S.C. 2011), C. A. 2:11-cv-428-RMG-JDA, Z-Man Fishing Products, Inc. v. Renosky
    • United States
    • Federal Cases United States District Courts 4th Circuit District of South Carolina
    • May 17, 2011
    ...on ten factors that indicated the plaintiff would be irreparably harmed); MicroAire Surgical Instruments, LLC v. Arthrex, Inc., 726 F.Supp.2d 604, 636-39 (W.D.Va.2010) (finding no irreparable harm to goodwill when it was " logically and factually unclear" how introduction of a com......
  • Text v. Box, Inc., 040914 CANDC, 5:13-CV-04910-EJD
    • United States
    • Federal Cases United States District Courts 9th Circuit Northern District of California
    • April 9, 2014
    ...a finding of irreparable harm and the issuance of a preliminary injunction. MicroAire Surgical Instruments, LLC v. Arthrex, Inc. , 726 F.Supp.2d 604, 635 (W.D. Va. 2010). Regardless of the extent to which Open Text may be injured by the sales of Box products, there is not a sufficient showi......
  • 36 F.Supp.3d 885 (N.D.Cal. 2014), 5:13-CV-04910-EJD, Open Text, S.A. v. Box, Inc.
    • United States
    • Federal Cases United States District Courts 9th Circuit Northern District of California
    • April 9, 2014
    ...a finding of irreparable harm and the issuance of a preliminary injunction. MicroAire Surgical Instruments, LLC v. Arthrex, Inc., 726 F.Supp.2d 604, 635 (W.D. Va. 2010). Regardless of the extent to which Open Text may be injured by the sales of Box products, there is not a sufficient showin......
  • Dynamic Aviation Group, Inc. v. Dynamic International Airways, LLC, 032416 VAWDC, 5:15-CV-00058
    • United States
    • Federal Cases United States District Courts 4th Circuit Western District of Virginia
    • March 24, 2016
    ...reputation "is a well-recognized basis for finding irreparable harm." MicroAire Surgical Instruments. LLC v. Arthrex. Inc., 726 F.Supp.2d 604, 635 (W.D. Va. 2010). Courts in the Fourth Circuit have held that "loss of clients' goodwill and future business . . . [is] difficult,......
  • Request a trial to view additional results
14 cases
  • 790 F.Supp.2d 418 (D.S.C. 2011), C. A. 2:11-cv-428-RMG-JDA, Z-Man Fishing Products, Inc. v. Renosky
    • United States
    • Federal Cases United States District Courts 4th Circuit District of South Carolina
    • May 17, 2011
    ...on ten factors that indicated the plaintiff would be irreparably harmed); MicroAire Surgical Instruments, LLC v. Arthrex, Inc., 726 F.Supp.2d 604, 636-39 (W.D.Va.2010) (finding no irreparable harm to goodwill when it was " logically and factually unclear" how introduction of a com......
  • Text v. Box, Inc., 040914 CANDC, 5:13-CV-04910-EJD
    • United States
    • Federal Cases United States District Courts 9th Circuit Northern District of California
    • April 9, 2014
    ...a finding of irreparable harm and the issuance of a preliminary injunction. MicroAire Surgical Instruments, LLC v. Arthrex, Inc. , 726 F.Supp.2d 604, 635 (W.D. Va. 2010). Regardless of the extent to which Open Text may be injured by the sales of Box products, there is not a sufficient showi......
  • 36 F.Supp.3d 885 (N.D.Cal. 2014), 5:13-CV-04910-EJD, Open Text, S.A. v. Box, Inc.
    • United States
    • Federal Cases United States District Courts 9th Circuit Northern District of California
    • April 9, 2014
    ...a finding of irreparable harm and the issuance of a preliminary injunction. MicroAire Surgical Instruments, LLC v. Arthrex, Inc., 726 F.Supp.2d 604, 635 (W.D. Va. 2010). Regardless of the extent to which Open Text may be injured by the sales of Box products, there is not a sufficient showin......
  • Dynamic Aviation Group, Inc. v. Dynamic International Airways, LLC, 032416 VAWDC, 5:15-CV-00058
    • United States
    • Federal Cases United States District Courts 4th Circuit Western District of Virginia
    • March 24, 2016
    ...reputation "is a well-recognized basis for finding irreparable harm." MicroAire Surgical Instruments. LLC v. Arthrex. Inc., 726 F.Supp.2d 604, 635 (W.D. Va. 2010). Courts in the Fourth Circuit have held that "loss of clients' goodwill and future business . . . [is] difficult,......
  • Request a trial to view additional results
2 books & journal articles
  • Permanent Injunctions in Patent Litigation After eBay: An Empirical Study
    • United States
    • Iowa Law Review Nbr. 101-5, July 2016
    • July 1, 2016
    ...technology” and was able to “undercut[ ] prices”). 276. Id. at 1344; see also MicroAire Surgical Instruments, LLC v. Arthrex, Inc., 726 F. Supp. 2d 604, 635 (W.D. Va. 2010) (“The loss of goodwill is a well-recognized basis for finding irreparable harm. . . .”). 277. See Coloplast A/S v. Gen......
  • Remedies
    • United States
    • ANDA litigation: strategies and tactics for pharmaceutical patent litigators
    • June 2, 2016
    ...Hybritech Inc. v. Abbott Labs., 849 F.2d 1446, 1456 (Fed. Cir. 1988); see also MicroAire Surgical Instruments, LLC v. Arthrex, Inc., 726 F. Supp. 2d 604, 636–39 (W.D. Va. 2010) (considering goodwill in the analysis); Bushnell, Inc. v. Brunton Co., 673 F. Supp. 2d 1241, 1262–63 (D. Kan. 2009......