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Surgery Tool Maker Sues Rival Over Drill Guide Patent

Wednesday, October 22, 2008

Clearwater, FL -- Clearwater-based Orthopedic Development Corporation (ODC), the maker of the TruFUSE spinal surgery system, has accused a rival of infringing both the patent and trade dress for a drill guide in one of the first patent design suits to be filed since the Federal Circuit handed down its standard-altering Egyptian Goddess ruling.

ODC lodged the suit, as well as a motion for a preliminary injunction, on Wednesday in the U.S. District Court for the Middle District of Florida, alleging that the design of NuTech Medical Inc.'s NuFix drill is substantially the same as its own.

The complaint describes the patented instrument as "an elongated hollow metal tube with a handle at one end and a number of teeth, including two large opposed teeth, as the opposite end."

The drill guide is part of a system used to treat facet joint disorders, or the degenerative conditions such as osteoarthritis, the complaint says. According to the suit, the drill guide allows the surgeon to maneuver the drill to the proper vertebrae area for treatment.

The U.S. Patent and Trademark Office issued the patent for the drill guide, U.S. Patent Number D574,495, on Aug. 8. ODC makes and markets the surgery system through minSURG, a wholly owned subsidiary, according to the suit.

In the complaint, ODC accuses NuTech of infringing the '495 patent both directly and contributorily by making, using and selling its NuFix drill guide and by distributing it to hospitals and surgeons.

The NuFix drill guide also infringes the trade dress of ODC's product, the suit contends, because "it is substantially similar, if not identical, to ODC's trade dress," the complaint says.

ODC seeks a preliminary and permanent injunction to enjoin NuTech from future infringement and from passing off its goods or services as ODC's.

The plaintiff also asks for a court order compelling NuTech to mail notice letters to all customers and distributors, informing them that the company committed patent infringement and has no connection to ODC. ODC also wants NuTech to offer its customers a refund in exchange for the return of the product.

ODC also seeks the destruction of all of NuTech's products, advertising and other materials related to the infringing product, as well as treble damages and attorneys' fees, the complaint says.

ODC's suit should pique the interest of IP lawyers because it is one of the first design patent suits filed since the U.S. Court of Appeals for the Federal Circuit handed down its landmark decision in Egyptian Goddess Inc. v. Swisa Inc. on Sept. 22, said Don J. Pelto of Sheppard, Mullin, Richter & Hampton LLP, who represents ODC.

In Egyptian Goddess, the Federal Circuit overhauled the test for proof of infringement in design patent cases by removing the "point of novelty" test and leaving the patent holder with only the burden of proving the "ordinary observer" test.

"The preliminary injunction motion should be the first decision by a district court in applying the new standards set forth in the Egyptian Goddess case," said Pelto, who also said the new precedent would create an advantage for ODC.

According to ODC's motion for preliminary injunction, ODC and NuTech have "a long and troubled history of interactions."

The companies allegedly entered into a distribution contract where NuTech would sell ODC's surgery systems in certain states. NuTech developed a version of ODC's patented allograft in violation of its contract with ODC, the motion says.

The day after the contract expired, NuTech started selling its own version of the allograft according to the motion.

A separate suit in the Middle District of Florida, filed by ODC in February, accuses NuTech of theft of trade secrets and breach of contract.

That suit is in the early stages of discovery, Pelto said.

"ODC and NuTech directly compete with each other for sales of their allografts and tool sets, including the infringing and patented drill guides," the motion said. "The competitive stakes in this market are particularly high given the market's nascent status, the manner in which hospitals make their purchasing decisions and because ODC does not currently sell other products."

A representative for NuTech did not immediately respond to a request for comment Friday.

ODC is represented in the matter by Holland & Knight LLP and Sheppard, Mullin, Richter & Hampton LLP. NuTech is represented by Burr & Forman LLP.

The case is Orthopedic Development Corporation v. NuFix Inc. et al,. case number 08-cv-02064, in the U.S. District Court for the Middle District of Florida.

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