Xodus Med. v. Prime Med.

• Decision Date: 22 December 2021
• Docket Number: 3:18-cv-415-JPM,3:18-cv-413-JPM,3:18-cv-414-JPM
• Court: U.S. District Court — Eastern District of Tennessee
• Parties: XODUS MEDICAL, INC., ALESSIO PIGAZZI, and GLENN KEILAR, Plaintiffs, v. PRIME MEDICAL, LLC., and SYMMETRY SURGICAL INC. Defendants. XODUS MEDICAL, INC., ALESSIO PIGAZZI, and GLENN KEILAR, Plaintiffs, v. PRIME MEDICAL, LLC., and SYMMETRY SURGICAL INC. Defendants. XODUS MEDICAL, INC., ALESSIO PIGAZZI, and GLENN KEILAR, Plaintiffs, v. G&T INDUSTRIES, INC. Defendant.

XODUS MEDICAL, INC., ALESSIO PIGAZZI, and GLENN KEILAR, Plaintiffs, v. PRIME MEDICAL, LLC., and SYMMETRY SURGICAL INC. Defendants.

XODUS MEDICAL, INC., ALESSIO PIGAZZI, and GLENN KEILAR, Plaintiffs, v. PRIME MEDICAL, LLC., and SYMMETRY SURGICAL INC. Defendants.

XODUS MEDICAL, INC., ALESSIO PIGAZZI, and GLENN KEILAR, Plaintiffs, v. G&T INDUSTRIES, INC. Defendant.

Nos. 3:18-cv-413-JPM, 3:18-cv-414-JPM, 3:18-cv-415-JPM

United States District Court, E.D. Tennessee, Northern Division

December 22, 2021

ORDER DENYING DEFENDANTS' MOTION FOR SUMMARY JUDGMENT UNDER THE ON-SALE BAR OF SECTION 102 AND DENYING DEFENDANTS' MOTION FOR SUMMARY JUDGMENT UNDER 35 U.S.C § 101

JON P McCALLA UNITED STATES DISTRICT JUDGE

Before the Court is Defendants Prime Medical LLC, Symmetry Surgical Inc. and G&T Industries, Inc.'s Motion for Summary Judgment Under the On-Sale Bar of Section 102, filed under seal on October 19, 2021. (ECF No. 260.)^[1] Plaintiffs filed a Response in Opposition on November 12, 2021. (ECF No. 286.) Defendants filed a Reply on November 22, 2021. (ECF No. 311.) For the reasons discussed below, Defendants' Motion for Summary Judgment Under the On-Sale Bar of Section 102 is DENIED.

Also before the Court is Defendants' Motion for Summary Judgment Under 35 U.S.C. § 101, filed under seal on October 19, 2021. (ECF No. 258.) Plaintiffs filed a Response in Opposition on November 19, 2021. (ECF No. 303.) Defendants filed a Reply on December 7, 2021. (ECF No. 331.) For the reasons discussed below, Defendants' Motion for Summary Judgment Under 35 U.S.C. § 101 is DENIED, and Summary Judgment is GRANTED for Plaintiffs as to the patents-in-suit's eligibility under 35 U.S.C. § 101.

I. BACKGROUND

The background of these three cases is provided in this Court's Claim Construction Order.

(ECF No. 138.) This background is quoted below:

This consolidated patent action concerns devices for positioning a patient at an angle during surgery. Three patents are at issue. (ECF No. 79 at PageID 878.) Defendants in each case filed counterclaims seeking declaratory judgment of noninfringement, invalidity, and unenforceability of the subject patents. (ECF Nos. 13, 14; Case No. 3:18-cv-414, ECF Nos. 14, 16; Case No. 3:18-cv-415, ECF No. 35.)

The Technology

Some surgical procedures require a patient to be tilted during surgery. (ECF No. 95 at PageID 1334.) The Trendelenburg position is the common clinical name for when the patient is tilted so that the patient's feet are elevated. When the patient is tilted in the opposite manner, so that the patient's head is elevated over the patient's feet, the position is called the “Reverse Trendelenburg position.” When the patient is tilted on the table, if insufficiently cushioned or otherwise secured, the patient may slide down the table during surgery. This can cause injury. (Id.)

The asserted patents are:

(1) U.S. Patent 8, 511, 314 (the “'314 patent”) entitled “Method of securing a patient onto an operating table when the patient is in the Trendelenburg position and apparatus therefor including a kit, ” which was filed on February 21, 2013, and issued on August 20, 2013.

(2) U.S. Patent 8, 464, 720 (the “'720 Patent”), entitled “Method of securing a patient onto an operating table when the patient is in the Trendelenburg position and apparatus therefor including a kit, ” which was filed on January 9, 2013, and issued on June 18, 2013.

(3) U.S. Patent 9, 161, 876 (the “'876 Patent”), entitled “Method of securing a patient onto an operating table when the patient is in the Trendelenburg position and apparatus therefor including a kit, ” which was filed on August 2, 2013, and issued on October 20, 2015.

All three patents contain both method and device claims. All three patents claim priority to the same U.S. Patent App. Serial No. 13/346, 852, filed January 10, 2012. (ECF No. 1-3 at PageID 33.) The '314 Patent (ECF No. 1-2) is a continuation of the '720 Patent, and the '876 Patent is a continuation of both the '314 Patent and the '720 Patent. (Case No. 3:18-cv-414, ECF No. 1-2 at PageID 11.) The specifications of the '314, '720, and '876 Patents are identical, but the claim language is not. (See, e.g., ECF No. 94 at PageID 1144.)

Xodus is a company that makes items for use in surgery, including patient positioning systems. (ECF No. 95 at PageID 1334.) Plaintiffs allege that they used their patented inventions to create and market the PINK PAD®, which is a kit that includes a set of foam materials and restraints for preventing a patient from sliding during surgery when the patient is in the Trendelenburg or Reverse-Trendelenburg position. (ECF No. 95 at PageID 1334; Declaration of Dr. Maheswari Senthil (“Senthil Decl.”), ECF No. 105-1 at PageID 1972.) Xodus asserts that the PINK PAD® met a long-felt need and had commercial success. (ECF No. 95 at PageID 1335.)

Prime and Symmetry market and sell the following models of Trendelenburg table pads: “STP100, STP100S, STP100S-WING, STP200/S, STP150 S, and STP100 PED Trendelenburg O.R. Table Pads.” (ECF No. 95 at PageID 1335.) Plaintiffs accuse these products of infringing their patents. The Defendants' pads are blue, and for the purposes of discussion, the Court refers to the allegedly infringing pads as “the Blue Pads.” These pads were produced to the Court during the Claim Construction Hearing and are maintained as Exhibit 4. (ECF No. 123.) Prime is a medical device brand and seller that advertises pads for positioning patients in the Trendelenburg position on its website. G&T manufactures the allegedly infringing pads for Prime, and then sells the blue pads to Prime. (Case No. 3:18-cv-415, ECF No. 38 at PageID 314.) G&T explains that it has an “exclusive manufacturer/distributor relationship” with Prime, and that “G&T manufactures the products accused of infringement in both actions and supplies the accused products exclusively to Prime Medical.” (Id.) It does not appear that Xodus and Prime had any commercial relationship prior to this litigation, and currently they are competing in the market for surgical foam pads.

(ECF No. 138 at PagelD 2880-83.)

II. LEGAL STANDARD

A party is entitled to summary judgment “if the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law.” Fed.R.Civ.P. 56(a). “A fact is ‘material' for purposes of summary judgment if proof of that fact would establish or refute an essential element of the cause of action or defense.” Bruederle v. Louisville Metro Gov't, 687 F.3d 771, 776 (6th Cir. 2012).

“In considering a motion for summary judgment, [the] court construes all reasonable inferences in favor of the nonmoving party.” Robertson v. Lucas, 753 F.3d 606, 614 (6th Cir. 2014) (citing Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 587 (1986)). “The moving party bears the initial burden of demonstrating the absence of any genuine issue of material fact.” Mosholder v. Barnhardt, 679 F.3d 443, 448 (6th Cir. 2012) (citing Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986)).

“Once the moving party satisfies its initial burden, the burden shifts to the nonmoving party to set forth specific facts showing a triable issue of material fact.” Mosholder, 679 F.3d at 448 49; see also Fed.R.Civ.P. 56(e); Matsushita, 475 U.S. at 587. “When the non-moving party fails to make a sufficient showing of an essential element of his case on which he bears the burden of proof, the moving parties are entitled to judgment as a matter of law and summary judgment is proper.” Martinez v. Cracker Barrel Old Country Store, Inc., 703 F.3d 911, 914 (6th Cir. 2013) (quoting Chapman v. UAW Local 1005, 670 F.3d 677, 680 (6th Cir. 2012) (en banc)); see also Kalich v. AT & T Mobility, LLC, 679 F.3d 464, 469 (6th Cir. 2012).

To “show that a fact is, or is not, genuinely disputed, ” both parties must do so by “citing to particular parts of materials in the record, ” “showing that the materials cited do not establish the absence or presence of a genuine dispute, ” or showing “that an adverse party cannot produce admissible evidence to support the fact.” Bruederle, 687 F.3d at 776 (quoting Fed.R.Civ.P. 56(c)(1)); see also Mosholder, 679 F.3d at 448 (“To support its motion, the moving party may show ‘that there is an absence of evidence to support the nonmoving party's case.'” (quoting Celotex Corp., 477 U.S. at 325)). “Credibility determinations, the weighing of the evidence, and the drawing of legitimate inferences from the facts are jury functions, not those of a judge[.]” Martinez, 703 F.3d at 914 (alteration in original) (quoting Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255 (1986)).

“The court need consider only the cited materials, but it may consider other materials in the record.” Fed.R.Civ.P. 56(c)(3). “[T]he district court has no ‘duty to search the entire record to establish that it is bereft of a genuine issue of material fact.'” Pharos Capital Partners, L.P. v. Deloitte & Touche, 535 Fed.Appx. 522, 523 (6th Cir. 2013) (per curiam) (quoting Tucker v. Tennessee, 539 F.3d 526, 531 (6th Cir. 2008), abrogation recognized by Anderson v. City of Blue Ash, 798 F.3d 338 (6th Cir. 2015)). “‘[J]udges are not like pigs, hunting for truffles' that might be buried in the record.” Emerson v. Novartis Pharm. Corp., 446 Fed.Appx. 733, 736 (6th Cir. 2011) (alteration in original) (quoting United States v. Dunkel, 927 F.2d 955, 956 (7th Cir. 1991)).

The decisive “question is whether ‘the evidence presents a sufficient disagreement to require submission to a jury or whether it is so one-sided that one party must prevail as a matter of law.'” Johnson v. Memphis Light Gas & Water Div., 777 F.3d 838, 843 (6th Cir. 2015) (quoting Anderson, 477 U.S. at 251-52).

Summary judgment “‘shall be...