Medisim Ltd. v. BestMed LLC
959 F. Supp. 2d 396
S.D.N.Y.2013Background
- Medisim sues BestMed for patent infringement of the non-invasive thermometer patent '668 and for copyright infringement of the IFU, plus a NY unjust enrichment claim; a jury found willful infringement and damages.
- The court granted BestMed’s post-trial JMOL on anticipation, holding the FHT-1 device anticipates the '668 patent by deriving deep tissue temperature from the heat-flux algorithm.
- The court also granted JMOL on Medisim’s unjust enrichment claim, finding insufficient evidence to support damages.
- An injunction disposing of infringing copyright materials was granted in Medisim’s favor, with BestMed ordered to surrender infringing copies.
- The court rejected Medisim’s pending claims for willful infringement, permanent injunction, and various damages-related motions as moot or denied.
- The decision vacated the prior judgment and entered a new judgment consistent with the order.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Is the '668 patent anticipated by the FHT-1? | Medisim contends FHT-1 discloses deep tissue temp and core temp calculation. | BestMed argues FHT-1 meets deep tissue temp limitation via the '397 algorithm with multiple sensors. | Yes; the '668 patent was anticipated by the FHT-1. |
| Did BestMed infringe the '668 patent or its method claims? | Medisim asserts infringement by BestMed’s products and methods under the asserted claims. | BestMed contends no infringement given anticipation and non-infringing features. | Not addressed; JMOL on anticipation resolves the infringement question for the '668 patent. |
| Is Medisim entitled to unjust enrichment damages? | Medisim seeks damages based on unjust enrichment for post-PSA sales. | BestMed argues unjust enrichment is unsupported and preempted by patent law. | No; unjust enrichment damages are denied. |
| Is Medisim entitled to any post-trial equitable relief for copyright? | Medisim seeks injunctive relief to dispose of infringing materials. | BestMed opposes further equitable relief beyond patent remedies. | Yes; injunction disposing of infringing copyright materials is granted. |
| Should the court alter the judgment or grant a new trial on remaining issues? | Medisim requests post-trial relief and willful infringement findings. | BestMed seeks JMOL/new trial on multiple grounds. | Yes on JMOL; other post-trial motions denied as moot except for copyright disposition. |
Key Cases Cited
- Therasense, Inc. v. Becton, Dickinson and Co., 649 F.3d 1276 (Fed. Cir. 2011) (clear and convincing standard for inequitable conduct; materiality and intent)
- Whitserve, LLC v. Computer Packages, Inc., 694 F.3d 10 (Fed. Cir. 2012) (standards for post-trial Rule 50 motions and evidentiary sufficiency)
- Barbed-Wire Patent, 143 U.S. 275 (1892) (corroboration requirements in anticipation analysis)