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Tactical Medical Solutions, Inc. v. Karl

United States District Court, N.D. Illinois, Eastern Division

June 11, 2019



          John J. Tharp, Jr. Judge

         Plaintiff Tactical Medical Solutions, Inc. (“TMS”), a business that designs and sells emergency medical products, asserts an array of claims against defendants Dr. Ronald Karl and his sole proprietorship, Emergency Medical International a/k/a Emergency Medical Instruments (“EMI”). TMS alleges that EMI infringed on TMS's design and utility patents by selling a “knockoff” version of TMS's SOF tourniquet, and that EMI falsely advertised the knockoff by using images of the SOF tourniquet on its website and in its product catalogs. EMI, in turn, asserts counterclaims alleging that TMS infringed on EMI's TACMED trademark, and that TMS interfered with EMI's business relationships with its distributors by sending them threatening cease-and-desist letters. TMS moves for summary judgment on the bulk of the claims and counterclaims remaining in this case and certain of EMI's affirmative defenses. A genuine dispute of material fact exists as to the validity of TMS's patents, but only on one of the grounds EMI asserts in its affirmative defense as to the design patent (functionality under 35 U.S.C. § 171(a)) and one as to the utility patents (obviousness under 35 U.S.C. § 103). EMI has offered no support for two of its other affirmative defenses, but TMS has not established that no material fact dispute exists as to the other claims and counterclaims. TMS's motion for partial summary judgment, ECF No. 135, is therefore granted in part and denied in part.

         I. Background

         Defendant Karl has done business through EMI[1] and has sold emergency medical products under the TACMED mark since at least as early as 2002. Plaintiff TMS was co-founded in 2003 by Ross Johnson, who continues to serve as its president and CEO. TMS began selling similar emergency medical products under the TACMED mark around 2008. A few years later, EMI began selling its Tactical Application Tourniquet (the “T.A.T. tourniquet”), which TMS alleges is an inferior knockoff version of TMS's SOF tourniquet and infringes on TMS's design and utility patents. Shortly after filing this suit, but before serving the complaint on EMI, TMS sent letters to EMI's distributors informing them that TMS had filed a lawsuit alleging intellectual property violations against EMI and another distributor, and demanding that the distributors stop selling EMI's TACMED products and the T.A.T. tourniquet. TMS now moves for partial summary judgment regarding the validity and infringement of all three of its patents at issue in this case (Counts I-III; Counterclaims VIII, X, and XII[2]; and First and Second Affirmative Defenses); its false representation claim (Counts VIII, X, and XI[3]); EMF s trademark infringement counterclaims (Counterclaims I-IV and VII); and EMI's tortious interference counterclaims (Counterclaims V and VI). TMS also moves for summary judgment as to EMI's Third and Eleventh Affirmative Defenses asserting, respectively, that TMS is estopped from making certain arguments and that TMS's claims are barred by license. EMI does not oppose TMS's motion for summary judgment on EMI's Eleventh Affirmative Defense, see Resp. 2 n.l, ECF No. 143, and EMI has not pointed to evidence or made argument in support of its Third Affirmative Defense.[4]

         A. '642 Design Patent

          In 2011, TMS obtained United States Design Patent No. D649, 642 ("the '642 design patent") for the shape of the SOF tourniquet handle's beveled ends, as depicted by the unbroken lines in figures one through five below.

         (Image Omitted)

         TMS alleges in Count III of its complaint that EMI's T.A.T. tourniquet infringed on the '642 design patent. EMI asserts non-infringement[5] and invalidity of the '642 design patent in its First and Second Affirmative Defenses, respectively, and seeks a declaratory judgment through its Counterclaim X that it has not infringed on the '642 design patent. The T.A.T. tourniquet is depicted directly below, and the T.A.T. tourniquet handle removed from its base is depicted in the second image below.

         (Image Omitted)

         EMI does not dispute that its "T.A.T. tourniquet handle has relatively identically sized, spaced, and positioned opposed pyramidal/conical tapering endcaps corresponding to the design claimed in the '642 patent." EMI's LR 56.1(b) Resp. to TMS's LR 56.1(a) Statement of Material Facts ("DSOF") ¶ 22 Resp., ECF No. 144. EMI instead contends that TMS's '642 design patent is invalid because the truncated cone-shaped design of the handle ends is primarily functional rather than ornamental, see 35 U.S.C. § 171(a), and because the design was anticipated by prior art, see 35 U.S.C. § 102.


         As to the functionality grounds for invalidity pursuant to 35 U.S.C. 171(a), EMI asserts that the beveled ends of the SOF tourniquet are primarily functional because they "allow for easy insertion of the handle ends in the locking rings to lock the handle in place when the tourniquet has been deployed.” DSOF ¶ 35; Karl Decl. ¶ 44, ECF No. 145. Indeed, two of TMS's utility patents for the SOF tourniquet describe the functionality of the beveled handle ends. For example, TMS's U.S. Patent No. 7, 776, 064 (the ‘064 patent) states that “Handle G is beveled and notched on the surface area at each end of handle G to facilitate the securing of handle G into the locking rings, ” ECF No. 1-1 at col. 3:34-36 (emphasis added), and TMS's U.S. Patent No. 8, 303, 620 patent (the ‘620 patent) identically states that “Handle G includes bevels and notches mm on the surface area at each end of handle G to facilitate the securing of handle G into the locking rings, ” ECF No. 1-3 at col. 3:49-52 (emphasis added).[6] TMS co-founder and CEO Ross Johnson himself said that, at the time the patent application was filed, he believed the truncated cones at the ends of the handle “would make [the tourniquet] easier to use.” DSOF ¶ 37; Patras Decl., Ex. 10, Johnson Dep. at 97:14-98:11 and 173:12-177:2, ECF No. 146-10. Patents issued for other products have also generally described the utility of beveled ends to facilitate insertion. For example, U.S. Patent No. 4, 995, 591, which describes fence slats designed to be inserted into a channel, states that the “purpose of beveling the end is to facilitate insertion of the slat perpendicularly into the channel, ” Karl Decl., Ex. 3 at col. 2:7, ECF No. 145-3, and U.S. Patent No. 5, 979, 276 states that special tools used to trim the inner surface of a hose end typically have “a beveled end for easy insertion into the hose end, ” Karl Decl., Ex. 4 at col. 2:42, ECF No. 145-4.

         TMS contends that it has not advertised any functional aspects of the handle ends, that Johnson eventually realized that the shape of the handle-ends did not make the tourniquet easier to use, and that other tourniquets have similar handles but different handle-end designs. EMI responds that none of the other handle end designs TMS cites are to be used with the locking rings that were disclosed in TMS's patents-in-suit.

         2. Prior Art

         EMI also argues that the '642 design patent is invalid pursuant to 35 U.S.C. § 102 because it was anticipated by prior art: U.S. Patent No. 1, 360, 946 titled "Spark Plug" and U.S. Patent No. 1, 855, 482 titled "Knob for Drawers or the Like." EMI argues that "[e]ach of these two patents have an identical or at least substantially similar design to the ends of the handle of the tourniquet claimed in the []'642 patent." DSOF ¶ 39; Karl Decl. ¶ 49. Representative figures of the spark plug (left) and drawer knob (right) are reproduced below.

         (Image Omitted)

         B. ' 064 and ' 620 Utility Patents

         TMS also owns U.S. Patent Nos. 7, 776, 064 and 8, 303, 620 ("the '064 and '620 utility patents") for a tourniquet article. TMS alleges in Counts I and II of its complaint that EMI infringed those patents. EMI asserts non-infringement and invalidity of the '064 and '620 utility patents in its First and Second Affirmative Defenses and seeks declaratory judgment through its Counterclaims VIII and XII that it did not infringe on those patents. EMI argues that the '064 and '620 utility patents are invalid because they were anticipated pursuant to 35 U.S.C. § 102 or obvious pursuant to 35 U.S.C. § 103 based on prior art. It also asserts that even if the patents are valid, its T.A.T. tourniquet does not infringe upon the “substantially rigid base” claim limitation of those patents.

         1. Prior Art

         EMI contends that the ‘064 and ‘620 utility patents are invalid because they were anticipated pursuant to 35 U.S.C. § 102 or obvious pursuant to 35 U.S.C. § 103 based on prior art. The prior art references EMI cites are both for tourniquets: One is the “Norman W. Brothers” tourniquet, Karl Decl., Ex. 1, ECF No. 145-1, and the other is the “McMillan” tourniquet, Karl Decl., Ex. 2, ECF No. 145-2. EMI asserts that “claims 1, 14, 15, and 17 of the ‘064 patent are anticipated by Brothers under 35 U.S.C. § 102” and that “[a]ll of the asserted claims (1-5, 7-12 and 14-19 of the ‘064 patent and 1-4, 6-8, 10-11 and 13 of the ‘620 patent) are obvious over Brothers alone or in combination with U.S. Patent No. 6, 899, 720 to McMillan issued May 31, 2005.” DSOF ¶ 34; Karl Decl. ¶ 43; Resp. 30, ECF No. 143. Karl's declaration includes claim charts explaining why Brothers, McMillan, or some combination of those prior art references renders the claims anticipated or obvious. See Karl Decl., “The ‘064 Patent” and “The ‘620 Patent” charts following ¶ 43 at 9-18, ECF No. 145 (stating that Brothers discloses much of what is described in the ‘064 and ‘620 patent claims and stating, e.g., as to claim 9 of the ‘064 patent that “McMillan discloses a tourniquet 10 with a handle lock (24 or 28) attached to a base 12 and positioned to receive an end of a handle 20. It would have been obvious to one of ordinary skill in the art at the time of the alleged invention to modify Brothers as taught by McMillan in order to secure the handle to the base.”).

         2. Substantially Rigid Base

         EMI also contends that even if the ‘064 and ‘620 utility patents are valid, EMI did not infringe on them because its T.A.T. tourniquet did not have a “substantially rigid base” as that element of the relevant patent claims has been construed by this Court. This Court previously construed “substantially rigid base” as “a base that provides sufficient rigidity to avoid binding and crushing while being flexible enough for use on a limb and facilitating storage and carriage.” Mem. Op. and Order dated Sept. 26, 2017 at 14, ECF No. 126. In support of TMS's infringement claim, TMS president and CEO Ross Johnson testified that “the base of the T.A.T. tourniquet is flexible enough to apply to a limb but is rigid enough that it does not bind and crush when the handle is twisted, ” Johnson Decl. ¶ 58, ECF No. 137, and TMS Vice President Richard Hester testified that “when the T.A.T. tourniquet is properly applied and the handle is twisted, the base does not bind the skin and generally maintains its form, that is, it is not crushed.” Hester Decl. ¶ 13, ECF No. 139. TMS also submitted a video demonstration of Hester applying the T.A.T. tourniquet to his own arm. Hester Decl. ¶¶ 12-13, Ex. 1/A, ECF No. 139.

         EMI, however, contends that the base of its T.A.T. tourniquet is more flexible than the base of the Brothers prior art reference and that it is “certain” that the Brothers prior art reference base is more flexible than “substantially rigid.” DSOF ¶ 29; Karl Decl. ¶ 35; Resp. 29, ECF No. 143. The base of the Brothers tourniquet is described in its patent as “preferably formed of relatively thick leather and of such stiffness as to eliminate free bending.” DSOF ¶ 32; Karl Decl. ¶ 36, Ex. 1, Norman W. Brothers Tourniquet No. 2, 387, 428 at col. 2:11-12, ECF No. 145-1. Karl asserts that “what TMS contends was the ‘base' of the T.A.T. tourniquet is more flexible than a strap of relatively thick leather of such stiffness as to eliminate free bending. For example, I can readily bend what TMS contends was the ‘base' of the T.A.T. tourniquet 180° with minimal effort.” Karl Decl. ¶ 36. EMI contends, therefore, that the T. AT. tourniquet base is more flexible than even the Brothers base and hence does not have a "substantially rigid base" as would be required to infringe on the '064 and '620 utility patents.

         C. EMI's Use of Tourniquet Image

          TMS contends that EMI used an image of the SOF tourniquet on its website and in its product catalogs to market the T. AT. tourniquet. TMS asserts in counts VIII, X, and XI that the use of the images amounts to false advertising and unfair competition. The ...

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