USITC Docket - Mako Surgical Enforcement Action

United States International Trade Commission
Docket No: 2945
Document Type: 337 Complaint
Filed By: Alexander J. Hadjis
Firm/Org: Morrison & Foerster
Behalf Of: MAKO Surgical Corp.
Date Received: March 19, 2013
Confidential: Yes
Commodity: Computerized Orthopedic Surgical Devices, Software, and Implants
Country: none

Description: Letter to Lisa R. Barton, Acting Secretary, USITC; requesting that the Commission conduct an investigation under section 337 of the Tariff Act of 1930, as amended regarding Certain Computerized Orthopedic Surgical Devices, Software, Implants and components thereof. The proposed respondents are Stanmore Implants Worldwide, United Kingdom; and Stanmore Inc., Plymouth, MA.

Status: Pending Institution

 

"requests that the Commission issue a permanent limited exclusion order and a permanent cease and desist order directed at Stanmore and its affiliates, subsidiaries, successors, and assigns." - Mako Surgical, USA

 

Sounds like a US import ban coming in 60-90 days for Stanmore UK. Supposed to selectively launch mid-2013. Good timing.

"..Regarding domestic industry, MAKO states that it has researched, designed, developed, manufactured, assembled, tested, sold, distributed, serviced, and supported products that practice the asserted patents in the U.S. According to the complaint, the bulk of MAKO’s activities with respect to its RIO Platform—which practices the ‘180 and ‘292 patents—occur in the U.S. MAKO specifically refers to its headquarters in Fort Lauderdale, Florida..." ~Oblon, Spivak

 

If they're banned, Stanmore will just take a charge-off and continue to sell in the UK and try to move into Asia. Besides, they have lots of other products. It's not like they didn't know the risks and alluded to it in their 2012 statement:

"Patent infringement is a risk in the orthopaedics industry given the technology content in the
company's products, and could lead to claims for damages and possibly the removal of products from the market."

 

Not exactly. Respondents & others have 8 days to comment. Then at the 30 day mark, ITC will announce an investigation and set a target date, usually around 12 months for a final determination. An initial determination will come at the 75 day mark. This will hang over Stanmore and their launch for the next year. My initial opinion, based on the patents that Stanmore allegedly infringed upon, is that Mako has a strong case. They will not settle unless its to ban Stanmore's Sculptor from US entry for at least 5 years and limit their activities globally. This bot has actually been in use in the UK for years and is actually the ACROBOT which Stanmore Implants bought out, updated and sought to bring to the US. While the ITC case can take >12 months to see a Final Determination, MAKO will seek to get temporary injunctions through the two cases filed in the US District Courts while the cases are ongoing.

 

Um, actually the 60-90 days may still be somewhat correct. Don't forget Mako can get temporary relief through the USITC at the 90 day mark. This would be in the form of a temporary exclusion from import. Also, in a FD they can reach out and bar not only the Sculptor but any other similar products from US entry whether they were named by Mako or not.