June 10, 2014      

MAKO Surgical has filed a patent infringement complaint against Blue Belt Technologies, adding a new chapter in an ongoing saga involving the medical robotics rivals.

The complaint, filed in in the Southern District of Florida at the end of May 2014, alleges Blue Belt Technologies’ NavioPFS system, infringes U.S. Patent No. 7,346,417 –a patent MAKO claims exclusive license to. NavioPFS is a computer-assisted, orthopedic surgical navigation and burring system.

A spokesperson for MAKO tells Robotics Business Review it is against company policy to comment on legal matters.

Blue Belt issued the following statement: “We believe that Mako Surgical’s lawsuit is without merit. Blue Belt firmly believes that our unique and proprietary technology does not infringe upon the cited patent. We are confident in our position and will conduct a vigorous legal defense.”

This is going to be one of those big cases that goes on for years, says Andrew Keisner, an expert on intellectual property law and an associate in the Intellectual Property and Litigation Practice Groups at New York law firm Davis & Gilbert.

“The size of the market alone makes the outcome of this lawsuit all the more important for these companies and their bottom line,” explains Keisner. “When the amounts at stake are so large that they dwarf expensive attorney fees, the motivation to fight the lawsuit longer is higher and the costs incurred in the process are not as great of a deterrent as they might be in a dispute over a smaller amount. Gaining an inch in an important patent lawsuit could get you a mile on the negotiating table.

The complexity of the issues involved in patent litigation can sometimes lead opposing parties in a lawsuit to both genuinely believe that they will be victorious, says Keisner. As a result, he believes the lawsuit is more than a typical lawsuit to be fought till the very end.

“It is hard to determine at this point whether MAKO will be successful,” adds Keisner.

Revisiting 2013 Legal Battle

In 2013, the NavioPFS System was at the center of another legal tussle between the companies. MAKO sued Blue Belt and MAKO’s former sales manager for trade secret misappropriation and violating a non-compete agreement.

MAKO claimed its former sales manager, who left for a position working on the NavioPFS system at Blue Belt, took confidential information before he departed MAKO.

Blue Belt and MAKO eventually reached a settlement, which prevented that specific sales manager from performing certain client-facing tasks at Blue Belt for a certain period of time, says Keisner.

“That injunction, however, did not prevent Blue Belt from selling its product altogether, which is what MAKO is apparently seeking to do in [the May 2014] patent infringement lawsuit […] These lawsuits concern different types of claims and different underlying facts, but the reality on the business side is the same for Blue Belt–another lawsuit trying to slow down or stop Blue Belt’s progress with its robotics surgical system,” says Keisner.

Impact of Recent Patent Law Rulings

Separately, the U.S. Supreme Court has made two important decisions on patent law recently that could have a wide impact on robotics, if not necessarily on this particular patent case.

One of the decisions makes it easier to challenge vague patents, says Keisner.

“It is unclear at this point exactly how the supreme court’s decision will be interpreted by trial courts, and where the line will be drawn on what is considered ‘vague.’ The biggest impact that I see coming out of the supreme court’s decision on vague patents is its use in defense of lawsuits brought by patent trolls,” explains Keisner.

The second supreme court decision concerns the inability to assert an indirect infringement claim if there is no single entity that is directly infringing the patent.

“Basically, if I perform steps 1 through 5 of a method claim, and you perform steps 6 through 10, but neither of us perform all of the 10 steps ourselves, there is no direct infringement, and therefore, based on the supreme court’s decision, neither of us can be guilty of indirect infringement either.”