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 (“the ’668 patent”) held by plaintiff Medisim, and granted a BestMed’s post-trial motion for JMOL on anticipation. The ’668 patent 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 the ’668 patent anticipates the ’668 patent because it calculates “deep tissue temperature.”

The ’668 patent incorporates by reference, an earlier patent held by Medisim, U.S. Patent No. 6,280,397 (“the ’397 patent”). 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 granted BestMed’s JMOL on anticipation.

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 because the only evidence advanced by Medisim was the conclusary testimony of the inventor of the ’668 patent and Medisim’s expert witness. The court held that the testimony of both these witness is unreliable because neither witness provided a convincing explanation of “intermediate temperature.” Additionally, Medisim’s expert’s testimony was solely prefaced on a test which this 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.

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