PainTEQ, LLC v. Omnia Medical, LLC

UNITED STATES DISTRICT COURT

MIDDLE DISTRICT OF FLORIDA

TAMPA DIVISION

PAINTEQ, LLC,

Plaintiff,

v. Case No. 8:20-cv-2805-VMC-AAS

OMNIA MEDICAL, LLC,

Defendant.

/

ORDER

This matter comes before the Court upon Plaintiff and

Counterclaim-Defendant PainTEQ, LLC’s Motion for Summary

Judgement, filed on May 6, 2024. (Doc. # 174). Defendant and

Counterclaimant Omnia Medical, LLC responded in opposition on

June 6, 2024. (Doc. # 183). PainTEQ replied and filed two

notices of supplemental authority. (Doc. ## 180, 188, 209).

For the reasons set forth below, the Motion is granted in

part and denied in part.

I. Background

This matter is based upon two separate cases, the present

case and 8:22-cv-145-VMC-TGW, which has been consolidated

into the present case. (Doc. # 101; 8:22-cv-145 at Doc. #

102). The litigation between the parties has a long factual

and procedural history, all of which the Court has recounted

in its prior orders. Thus, the Court will only recite the

facts relevant to this Motion.

Omnia was founded by Troy Schifano and Steve Anderson in

2014. (Doc. # 183-3 at 9:20-21). PainTEQ was founded in 2013

by Sean LaNeve and Chris Girsch. (Doc. # 183-4 at 16:7-14).

Soon after its founding, Charles Girsch acquired an ownership

interest in and became involved with the operations of

PainTEQ. (Doc. # 183-5 at 11:24-13:13). Both Omnia and PainTEQ

are involved in the surgical device business, and they had a

business relationship which turned sour.

Non-party Orthocision Inc. was also founded by Mr.

Schifano and Mr. Anderson. (Doc. # 183-2 at 9:24-25).

Orthocision owns U.S. Design Patent No. D905,232 (“D232

Patent”), U.S. Design Patent No. D922,568 (“D568 Patent”),

U.S. Trademark Registration No. 4,646,387 (“‘387

Registration”), U.S. Trademark Registration No. 4,646,388

(“‘388 Registration”), Copyright Registration Number VA 2-

209-321 (“‘321 Registration”), and Copyright Registration

Number VA 2-212-904 (“‘904 Registration”). The D232 Patent

was filed on June 11, 2020 (Doc. # 174-6), and the D568 Patent

was filed on October 27, 2020. (Doc. # 174-7). However, both

the D232 Patent and the D568 Patent claim priority as a

continuation of the 879 Design Application, filed on December

30, 2019, which is a continuation-in-part of the U.S. Utility

Application No. 14/668,976, filed on March 25, 2015, which

issued as U.S. Patent No. 10,993,757 (“757 Patent”). (Doc. ##

174-6, 174-7).

Omnia is the exclusive licensee for each of these listed

Orthocision items. (Doc. # 174-27). In a prior order, the

Court determined that Omnia’s status as exclusive licensee

“establishes Omnia’s statutory standing under the Lanham

Act.” (Doc. # 203 at 14). The Court also determined that the

licensing agreement enabled Omnia to prosecute claims of

copyright infringement dating back to when Orthocision began

its ownership of the copyrights. (Id. at 19).

PainTEQ and Omnia began a business relationship around

December 2016, as the parties discussed an agreement whereby

PainTEQ would serve as the distributor of Omnia’s PsiF™

product. (Doc. ## 174-40, 174-45, 174-46). As part of these

discussions, Omnia sent PainTEQ, via email and package

delivery, several items. (Id.). These items included a PsiF™

brochure, a PsiF™ surgical technique guide, images of various

aspects of the product, and one of the PsiF™ cannulas. (Id.).

PainTEQ claims that Omnia also provided CAD images of the

canula, which Omnia disputes. (Doc. # 174 at 36-37; Doc. #

183 at 7-8).

After these initial discussions, the parties agreed to

form a relationship and signed a written contract called the

Stocking Agreement, which became effective on April 4, 2017.

(Doc. # 174-34). Pursuant to the Stocking Agreement, PainTEQ

served as the exclusive distributor for Omnia implants and

instrumentation for SI joint fusion procedures in the

interventional pain community. (Id.). The agreement contained

provisions related to pricing structures, confidentiality,

and non-circumvention. (Id.). The agreement also contained an

Ohio choice-of-law provision. (Id.). On February 19, 2019,

PainTEQ terminated the Stocking Agreement with Omnia. (Doc.

# 174-35).

Months later, in September 2019, Omnia learned that

PainTEQ had started to produce its own SI joint fusion

products. (Doc. # 183-3 at 17:22-18:14). In March 2020, Mr.

Anderson saw images of PainTEQ’s canula design on social media

and shared the images with Mr. Schifano. (Id. at 19:11-20:18).

After viewing the images, Mr. Anderson and Mr. Schifano

determined that the PainTEQ design copied its PsiF™ product.

(Id.).

The PainTEQ design in question was the LinQ™ procedure,

which PainTEQ created in 2019. (Doc. ## 174-1, 174-2, 174-3,

174-4, 174-5). The LinQ™ procedure is based upon U.S. Patent

No. 11,154,402 (“LaNeve Patent”), which PainTEQ owns. (Doc.

# 174-2). The LaNeve Patent claims priority to the U.S.

Provisional Patent Application No. 62/910, (“913

Provisional”) (Doc. # 174-2), which was filed on October 4,

2019. (Doc. # 174-1). The below images display the D232 and

D568 Patents next to PainTEQ’s LinQ™ surgical cannula, which

is accused of infringing each of Omnia’s patents.

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When first selling the LinQ™ procedure, PainTEQ created

a corresponding surgical guide which included a picture and

illustrations of the PsiF™ implant and referenced PsiF™ twice

on the last page of the guide. PainTEQ distributed this guide

to potential customers. (Doc. ## 174-33; 183-5 at 74:18-

75:25). The last time PainTEQ distributed a guide which

contained these PsiF™ images and references was February 24,

2020. (Doc. # 174-33). Nevertheless, some customers that

received these guides still display the materials as of 2024.

(Doc. # 183-3 at 270:10-272:1).

PainTEQ initiated this action against Omnia on April 8,

2020. (Doc. # 1 at 1). On December 4, 2020, PainTEQ filed its

operative complaint, the second amended complaint, including

the following claims against Omnia Medical: violation of the

Florida Uniform Trade Secrets Act (Count One), tortious

interference with a business relationship (Count Two),

tortious interference with a contractual relationship (Count

Three), and defamation (Count Four). (Doc. # 10). On December

18, 2020, Omnia Medical filed its answer and counterclaim.

(Doc. # 20). The counterclaim includes the following causes

of action against PainTEQ: patent infringement (Counts One

and Two), copyright infringement (Counts Three and Four),

trademark infringement (Counts Five and Six), breach of

contract (Count Seven), violations of the Ohio Deceptive

Trade Practices Act (Count Eight), the Florida Deceptive and

Unfair Trade Practices Act (Count Nine), and common law unfair

competition (Count Ten). (Id.).

On January 18, 2022, Omnia initiated an action against

PainTEQ and two of its agents, Sean LaNeve and Charles Girsch,

in 8:22-cv-145. (8:22-cv-145 at Doc. # 1-1). Omnia alleged

infringement of the D568 and ‘511 Patents (Counts Six and

Seven) and also asserted twelve non-patent claims related to

the Stocking Agreement. (Id.). The Court dismissed Counts One

through Five and Counts Eight through Fourteen of Omnia’s

complaint for improper claim-splitting, based on the still-

pending suit between the two parties in the present action.

(Doc. # 45). Thus, only Omnia’s patent claims remain.

For its part, PainTEQ answered Omnia’s complaint on

August 17, 2022, asserting four counterclaims, each for a

declaratory judgment. (Doc. # 48). Counts One and Two seek a

declaratory judgment of invalidity and non-infringement,

respectively, of the ‘511 Patent. (Id.). Counts Three and

Four seek a declaratory judgment of invalidity and non-

infringement, respectively, of the D568 Patent. (Id.).

On January 30, 2023, the Court held a Markman hearing,

where the parties discussed all matters related to claim

construction for each case. (8:20-cv-2805 at Doc. # 80; 8:22-

cv-145 at Doc. # 91). On June 30, 2023, the Court entered its

order on claim construction in each case. (8:20-cv-2805 at

Doc. # 88; 8:22-cv-145 at Doc. # 91). For the D232 Patent,

the Court identified “the dimensions of the barrel of the

cannula, as well as the circularity and dimensions of the

proximal end” as standing out from the underlying design as

properly ornamental. (Doc. # 88 at 25). For the D568 Patent,

the Court identified the “dimensions of the barrel of the

cannula” as standing out from the underlying design as

properly ornamental. (8:22-cv-145 at Doc. # 91 at 44).

On August 18, 2023, the Court held a joint Case

Management Hearing, in which the Court granted the joint oral

motion of the parties to consolidate the cases for trial

purposes only. (8:20-cv-2805 at Doc. # 101; 8:22-cv-145 at

Doc. # 102).

On August 27, 2024, the Court granted in part and denied

in part PainTEQ’s motion to dismiss, dismissing Count One of

Omnia’s counterclaim in the present case and Count Seven of

Omnia’s complaint in 8:22-cv-145, and dismissing with leave

to amend Counts Three and Four of Omnia’s counterclaim in the

present case. (Doc. # 203).

On September 10, 2024, Omnia filed its amended

counterclaim. (Doc. # 204). On September 24, 2024, PainTEQ

filed a motion to strike, or alternatively to dismiss, Omnia’s

amended counterclaim. (Doc. # 206). According to PainTEQ,

Omnia improperly pled an additional copyright claim by

arguing that the continued display of the infringing

copyrights by third parties is a violation. (Id.). Omnia

responded on October 15, 2024. (Doc # 210). The Court will

address the copyright claims on the merits in this order and

resolve the motion to strike in a separate order.

Now, PainTEQ moves for summary judgment on Counts Two

through Ten of Omnia’s counterclaim in the present case and

Count Six of Omnia’s complaint in 8:22-cv-145. (Doc. # 174 at

1). Omnia has responded in opposition. (Doc. # 183). PainTEQ

replied and filed two notices of supplemental authority.

(Doc. ## 180, 188, 209). The Motion is now ripe for review.

II. Legal Standard

Summary judgment is appropriate “if the movant shows

that there is no genuine dispute as to any material fact and

the movant is entitled to judgment as a matter of law.” Fed.

R. Civ. P. 56(a). A factual dispute alone is not enough to

defeat a properly pled motion for summary judgment; only the

existence of a genuine issue of material fact will preclude

a grant of summary judgment. Anderson v. Liberty Lobby, Inc.,

477 U.S. 242, 247-48 (1986).

An issue is genuine if the evidence is such that a

reasonable jury could return a verdict for the non-moving

party. Mize v. Jefferson City Bd. of Educ., 93 F.3d 739, 742

(11th Cir. 1996) (citing Hairston v. Gainesville Sun Publ’g

Co., 9 F.3d 913, 918 (11th Cir. 1993)). A fact is material if

it may affect the outcome of the suit under the governing

law. Allen v. Tyson Foods, Inc., 121 F.3d 642, 646 (11th Cir.

1997). The moving party bears the initial burden of showing

the court, by reference to materials on file, that there are

no genuine issues of material fact that should be decided at

trial. Hickson Corp. v. N. Crossarm Co., 357 F.3d 1256, 1260

(11th Cir. 2004) (citing Celotex Corp. v. Catrett, 477 U.S.

317, 323 (1986)). “When a moving party has discharged its

burden, the non-moving party must then ‘go beyond the

pleadings,’ and by its own affidavits, or by ‘depositions,

answers to interrogatories, and admissions on file,’

designate specific facts showing that there is a genuine issue

for trial.” Jeffery v. Sarasota White Sox, Inc., 64 F.3d 590,

593-94 (11th Cir. 1995) (quoting Celotex Corp., 477 U.S. at

324).

If there is a conflict between the parties’ allegations

or evidence, the non-moving party’s evidence is presumed to

be true, and all reasonable inferences must be drawn in the

non-moving party’s favor. Shotz v. City of Plantation, 344

F.3d 1161, 1164 (11th Cir. 2003). If a reasonable fact finder

evaluating the evidence could draw more than one inference

from the facts, and if that inference introduces a genuine

issue of material fact, the court should not grant summary

judgment. Samples ex rel. Samples v. City of Atlanta, 846

F.2d 1328, 1330 (11th Cir. 1988). But, if the non-movant’s

response consists of nothing “more than a repetition of his

conclusional allegations,” summary judgment is not only

proper, but required. Morris v. Ross, 663 F.2d 1032, 1034

(11th Cir. 1981).

III. Analysis

A. Patent Infringement Claims

PainTEQ raises a host of independent arguments for

summary judgment on Omnia’s two patent infringement claims:

Count Two of its counterclaim in the present case and Count

Six in 8:22-cv-145. The Court will organize its analysis by

each individual argument.

1. Prior Art

Painteq argues that the LaNeve Patent predates Omnia’s

Patents, such that it is prior art to the D232 and D568

Patents. Thus, Painteq reasons, both the D232 and D568 Patents

are invalid. (Doc. # 174 at 4). Alternatively, PainTEQ argues

that the LaNeve Patent’s status as prior art defeats any claim

of infringement, because the LaNeve Patent necessarily

anticipates the D232 and D568 Patents. (Id. at 9). Omnia

counters that the LaNeve Patent is not prior art, both because

Omnia’s patents are entitled to priority dating to 2015 and

because the LaNeve Patent’s subject matter was obtained from

Omnia. (Doc. # 183 at 17, 19).

“A person shall be entitled to a patent unless-- (1) the

claimed invention was patented, described in a printed

publication, or in public use, on sale, or otherwise available

to the public before the effective filing date of the claimed

invention; or (2) the claimed invention was described in a

patent issued under section 151, or in an application for

patent published or deemed published under section 122(b), in

which the patent or application, as the case may be, names

another inventor and was effectively filed before the

effective filing date of the claimed invention.” 35 U.S.C. §

102(a). However, “[a] disclosure shall not be prior art to a

claimed invention under subsection (a)(2) if . . . the subject

matter disclosed was obtained directly or indirectly from the

inventor or a joint inventor.” Id. § 102(b)(2)(A).

Furthermore, “[a]n application for patent for an

invention . . . previously filed in the United States . . .

shall have the same effect, as to such invention, as though

filed on the date of the prior application.” 35 U.S.C. § 120.

“Entitlement to priority under § 120 is a matter of law.” In

re Daniels, 144 F.3d 1452, 1454 (Fed. Cir. 1998). “In order

to gain the benefit of the filing date of an earlier

application under 35 U.S.C. § 120, each application in the

chain leading back to the earlier application must comply

with the written description requirement of 35 U.S.C. § 112.”

Martek Biosciences Corp. v. Nutrinova, Inc., 579 F.3d 1363,

1369 (Fed. Cir. 2009). “Whether the written description

requirement is met is a question of fact.” Id. “Design and

utility patents are each entitled to claim priority from the

other.” Id. In arguing that the later application is a

continuation of the earlier application, “the applicant does

not have to describe exactly the subject matter claimed, . .

. the description must clearly allow persons of ordinary skill

in the art to recognize that [the applicant] invented what is

claimed.” In re Daniels, 144 F.3d at 1454 (internal quotations

omitted).

The LaNeve Patent claims priority to the 913 Provisional

Patent(Doc. # 174-2), which was filed on October 4, 2019.

(Doc. # 174-1). The D232 Patent was filed on June 11, 2020

(Doc. # 174-6), and the D568 Patent was filed on October 27,

2020. (Doc. # 174-7). However, both the D232 Patent and the

D568 Patent claim priority as a continuation of the 879 Design

Application, filed on December 30, 2019, which is a

continuation-in-part of the U.S. Utility Application No.

14/668,976 filed on March 25, 2015, which issued as the 757

Patent. (Doc. ## 174-6, 174-7).

As an initial matter, the Court notes that PainTEQ does

not dispute that the D232 and D568 Patents may claim priority

to the 879 Design Application. See (Doc. # 174 at 8). Rather,

PainTEQ disputes that the Patents may claim priority to the

757 Patent, arguing first that “the surgical canula design

claimed in the D232 and D568 Patents is wholly absent from

the 125 figures of the 757 Patent” (Id.), and second, that

the Court should consider decisions by the USPTO as persuasive

authorities. (Doc. # 188 at 3). Omnia responds by pointing to

several figures and written descriptions contained within the

757 Patent to demonstrate the supposed similarities to the

D232 and D568 Patents. (Doc. # 183 at 20).

The Court agrees with Omnia that the D232 and D568

Patents may claim priority to the 757 Patent. Omnia need not

show that an exact replica of the surgical canula design

claimed in the D232 and D568 Patents is present in the 757

Patent. See In re Daniels, 144 F.3d at 1454 (“[T]he applicant

does not have to describe exactly the subject matter

claimed.”).

There are many similarities between the D232 and D568

Patents and the 757 Patent. The Court looks first to the

written description of the 757 Patent. “The surgical tool may

have a barrel or cannula through which the fusion implant is

passed into the SI joint.” (Doc. # 183-K at col. 12:15-18).

“The insertable end of the working channel may have a rounded

circular or oblong geometry.” (Id. at col. 15:3-4). “The

insertable end of the working channel may also include one or

more prongs or tangs that extend beyond the end of the hollow

barrel.” (Id. at col. 15:21-23). The tangs “are positioned

1800 relative to one other on the hollow end of the barrel.”

(Id. at col. 15:31-33). The D232 and D568 Patents each refer

to the subject matter as a “surgical cannula.” (Doc. ## 174-

6, 174-7). Figures 1 through 6 in both the D232 and D568

Patents show that the insertable end of the surgical cannula

is rounded and includes two prongs, positioned 1800 from one

another, which extend beyond the rest of the barrel. (Id.).

From these figures, a “person of ordinary skill” could

conclude that the D232 and D568 Patents derive from the

written description in the 757 Patent. In re Daniels, 144

F.3d at 1454 (internal quotations omitted). As whether the

written description requirement is met is a “question of fact”

that must be determined by a jury, Martek Biosciences Corp.,

579 F.3d at 1369, the Court concludes that, for the purposes

of this Motion, the D232 and D568 Patents may claim priority

to the 757 Patent.

The Court does not find the USPTO decisions cited by

PainTEQ to be persuasive. (Doc. # 180). These decisions

granted re-examination and did not render any final

judgments. (Id.). Accordingly, these decisions do not affect

the Court’s analysis.

As the D232 and D568 Patents validly claim priority to

the 757 Patent, their effective filing date is March 25, 2015.

(Doc. # 183-K). The LaNeve Patent claims priority to an

earlier patent, filed on October 4, 2019. (Doc. # 174-1).

Accordingly, the LaNeve Patent cannot be prior art to the

D232 and D568 Patents. See 35 U.S.C. § 102(a).

As the Court has reached this conclusion, the Court need

not address Omnia’s argument that the LaNeve Patent could not

be prior art because its subject matter was obtained from

Omnia. (Doc. # 183 at 17). Additionally, the Court need not

consider PainTEQ’s alternative argument that the LaNeve

Patent being prior art to the D232 and D568 Patents would

defeat Omnia’s claims of infringement. (Doc. # 174 at 9).

2. Whether the D232 and D568 Patents are Primarily

Functional

PainTEQ argues that the D232 and D568 Patents are invalid

because they are primarily functional. (Doc. # 174 at 11).

Omnia counters that the Court’s claim construction orders

already resolved this issue and argues that the Patents are

not primarily functional.

PainTEQ must prove the invalidity of the D232 and D568

Patents by “clear and convincing evidence.” Ethicon Endo-

Surgery, Inc. v. Covidien, Inc., 796 F.3d 1312, 1328 (Fed.

Cir. 2015). This standard is “stringent . . . as it applies

to invalidating the design patents on grounds of

functionality.” Id. “If a particular design is essential to

the use of an article, it cannot be the subject of a design

patent.” Id. “We have found designs to be essential to the

use of an article when the claimed design is dictated by the

use or purpose of the article.” Id. (internal quotations

omitted). “Design patents on such primarily functional rather

than ornamental designs are invalid.” Id.

“[T]he determination of whether the patented design is

dictated by the function of the article of manufacture must

ultimately rest on an analysis of its overall appearance.”

Berry Sterling Corp. v. Pescor Plastics, Inc., 122 F.3d 1452,

1455 (Fed. Cir. 1997). The Federal Circuit has “not mandated

applying any particular test for determining whether a

claimed design is dictated by its function and therefore

impermissibly functional. [The Federal Circuit has] often

focused, however, on the availability of alternative designs

as an important — if not dispositive — factor in evaluating

the legal functionality of a claimed design.” Ethicon, 796

F.3d at 1329-1330. “Other appropriate considerations might

include: whether the protected design represents the best

design; whether alternative designs would adversely affect

the utility of the specified article; whether there are any

concomitant utility patents; whether the advertising touts

particular features of the design as having specific utility;

and whether there are any elements in the design or an overall

appearance clearly not dictated by function.” Berry Sterling

Corp., 469 F.3d at 1456. This analysis “must also be performed

at a level of particularity commensurate with the scope of

the claims.” Ethicon, 796 F.3d at 1332. “If the patented

design is primarily functional rather than ornamental, the

patent is invalid. However, when the design also contains

ornamental aspects, it is entitled to a design patent whose

scope is limited to those aspects alone and does not extend

to any functional elements of the claimed article.”

Richardson v. Stanley Works, Inc., 597 F.3d 1288, 1293-94

(Fed. Cir. 2010) (internal citations omitted).

The Court finds that PainTEQ has failed to meet its

burden to prove invalidity. See Ethicon, 796 F.3d at 1328

(party challenging validity needs to show “clear and

convincing evidence”). To argue that the D232 and D568 Patents

are primarily functional, PainTEQ focuses mostly on the ratio

between the many aspects of the D232 and D568 Patents the

Court found to be functional and the many fewer aspects of

the Patents the Court found to be ornamental. (Doc. # 174 at

11). However, the Court must focus its analysis specifically

on what it determined to be the claimed design in its claim

construction orders. See Ethicon, 796 F.3d at 1315 (reversing

a district court’s ruling of invalidity based on

functionality because it “us[ed] too high a level of

abstraction, focusing on the unclaimed utilitarian aspects of

the underlying article instead of the claimed ornamental

designs of that underlying article”). The identified

ornamental elements are the proper focus of the Court’s

analysis, and the non-claimed elements of the Patents are

irrelevant to the Court’s determination of validity.

The only other argument raised by PainTEQ is that a

design patent’s validity cannot be based upon size or utility.

(Doc. # 174 at 11). Both of PainTEQ’s cited cases do not stand

for this proposition. See Application of Zonenstein, 172 F.2d

599, 600 (C.C.P.A. 1949) (holding that a subsequent patent

application was properly anticipated by an earlier patent

when the subsequent application merely changed the “size or

utility” of the earlier patent); Golden Eye Media USA, Inc.

v. Trolley Bags UK Ltd., 525 F. Supp. 3d 1145 (S.D. Cal.

2021), aff’d sub nom. Golden Eye Media USA, Inc. v. Evo

Lifestyle Prod. Ltd., No. 2021-2096, 2022 WL 2232517 (Fed.

Cir. June 22, 2022) (holding that the size and dimensions of

the claimed design were not ornamental because alternative

sizes and dimensions would negatively affect the utility of

the overall design).

Accordingly, PainTEQ has failed to present any evidence

or arguments that the Court may use to analyze validity. See

Ethicon, 796 F.3d at 1329-1330 (explaining various factors a

court may consider when evaluating challenges to patent

validity). Therefore, the Court rejects PainTEQ’s challenges

to the validity of the D232 and D568 Patents at this stage.

See Id. (party challenging validity needs to show “clear and

convincing evidence”).

3. Indefiniteness of the D568 Patent

PainTEQ claims that the D568 Patent is invalid as

indefinite, focusing upon alleged inconsistencies between

several of the figures included in the Patent. (Doc. # 174 at

14). Omnia responds that the figures are not inconsistent.

(Doc. # 183 at 26). The crux of the dispute is that Figures

5 and 7, which show side views of the second and fourth sides,

use solid lines to depict the front and back faces of the

barrel of the canula, while Figures 1 through 4, 6, 9, and 10

depict the front and back faces of the barrel of the canula

using dashed lines. (Doc. # 174-7 at figs. 1-7, 9, 10).

Whether the lines are solid or dashed is significant because

solid lines generally signify parts of the structure that are

being claimed, whereas dashed or broken lines signify parts

of the structure that are not part of the claimed design. See

In re Maatita, 900 F.3d 1369, 1372 (Fed. Cir. 2018) (“As is

customary, the solid lines of Figure 1 show the claimed

design, whereas the broken lines show structure that is not

part of the claimed design.”). PainTEQ claims that this

discrepancy makes it impossible to determine the contours and

dimensions of the front and back faces. (Doc. # 174 at 14,

17).

In its claim construction Order, the Court deferred

ruling on whether the D568 Patent is indefinite at the claim

construction stage. (8:22-cv-00145 at Doc. # 91 at 30).

“A claim is invalid for indefiniteness under 35 U.S.C.

§ 112 if its language, when read in light of the specification

and prosecution history, fails to inform skilled artisans

about the scope of the invention with reasonable certainty.”

Ethicon, 796 F.3d at 1317 (citing Nautilus, Inc. v. Biosig

Instruments, Inc., 572 U.S. 898, 910 (2014)). “A visual

disclosure may be inadequate — and its associated claim

indefinite — if it includes multiple, internally inconsistent

drawings.” In re Maatita, 900 F.3d at 1375. “Errors and

inconsistencies between drawings do not merit a § 112

rejection, however, if they do not preclude the overall

understanding of the drawing as a whole.” Id. at 1375-76

(internal quotations omitted). “Indefiniteness is a question

of law.” Teva Pharms. USA, Inc. v. Sandoz, Inc., 789 F.3d

1335, 1341 (Fed. Cir. 2015). Again, PainTEQ must prove the

invalidity of the D232 and D568 Patents by “clear and

convincing evidence.” Ethicon, 796 F.3d at 1328.

The Court finds that the alleged inconsistencies between

the two groups of figures do not render the Patent indefinite.

Figures 5 and 7 depict the barrel of the canula from a

different perspective than the perspective depicted in

Figures 1 through 4, 6, 9, and 10. (Doc. # 174-7 at figs. 1-

7, 9, 10). Figures 5 and 7 depict the second and fourth sides

of the barrel. (Id.). As the figures are depicted on a two-

dimensional surface, Figures 5 and 7 cannot depict a three-

dimensional view of the other two sides of the barrel. (Id.).

Thus, Figures 5 and 7 show a view of the barrel where the

other two sides of the barrel are obscured. (Id.). In

contrast, Figures 1 through 4, 6, 9, and 10 do not obscure

those other two sides. (Id.). These figures each depict those

sides with dashed lines. (Id.).

A skilled artisan who was seeking to understand the two

sides in dispute would not look to Figures 5 and 7 to

understand those sides because they obscure those sides. See

Deckers Outdoor Corp. v. Romeo & Juliette, Inc., No. 2:15-

CV-02812-ODW(CWX), 2016 WL 7017219 *4 (C.D. Cal. Dec. 1, 2016)

(“[A] reasonable boot designer, in deciding whether the

claimed design includes a notch, would look to the drawings

that provide the clearer — not the more obscured — view of

that part of the boot.”). Accordingly, the skilled artisan

would rely upon Figures 1 through 4, 6, 9, and 10 to

understand the two sides, and would be able to properly

understand the scope of the D568 Patent. See Ethicon, 796

F.3d at 1317 (“A claim is invalid for indefiniteness under 35

U.S.C. § 112 if its language, when read in light of the

specification and prosecution history, fails to inform

skilled artisans about the scope of the invention with

reasonable certainty.”). As such, the Court concludes that

the D568 Patent is not indefinite.

4. Infringement of the D232 and D568 Patents

PainTEQ argues that it is entitled to a summary judgment

finding of noninfringement with its cannula design upon

either the D232 or D568 Patents. (Doc. # 174 at 19). For its

part, Omnia argues that the issue of infringement of both

Patents must be resolved by a jury. (Doc. # 183 at 33). The

Court finds that PainTEQ is entitled to summary judgment

regarding the D568 Patent, but not for the D232 Patent.

“Design patent infringement is a question of fact, which

a patentee must prove by a preponderance of the evidence.”

Richardson, 597 F.3d at 1295. “Summary judgment of non-

infringement is appropriate when no reasonable fact-finder

could find the accused design substantially similar to the

claimed design.” High Point Design LLC v. Buyer’s Direct,

Inc., 621 F. App’x 632, 640-41 (Fed. Cir. 2015).

“The patentee must establish that an ordinary observer,

familiar with the prior art designs, would be deceived into

believing that the accused product is the same as the patented

design.” Id. “Where the claimed and accused designs are

sufficiently distinct and plainly dissimilar, the patentee

fails to meet its burden of proving infringement as a matter

of law.” Ethicon, 796 F.3d at 1335 (internal quotations

omitted). “If the claimed and accused designs are not plainly

dissimilar, the inquiry may benefit from comparing the

claimed and accused designs with prior art to identify

differences that are not noticeable in the abstract but would

be significant to the hypothetical ordinary observer familiar

with the prior art.” Id.

“The trial court is correct to factor out the functional

aspects of various design elements, but that discounting of

functional elements must not convert the overall infringement

test to an element-by-element comparison.” Amini Innovation

Corp. v. Anthony California, Inc., 439 F.3d 1365, 1372 (Fed.

Cir. 2006); see also Crocs, Inc. v. Int’l Trade Comm’n, 598

F.3d 1294, 1306 (Fed. Cir. 2010) (considering whether a shoe

design had been infringed based upon how the ornamental

elements changed the “overall effects of the design”); Lee v.

Dayton-Hudson Corp., 838 F.2d 1186, 1189 (Fed. Cir. 1988) (“A

device that copies the utilitarian or functional features of

a patented design is not an infringement unless the ornamental

aspects are also copied, such that the overall resemblance is

such as to deceive.” (internal quotations omitted)). “Minor

differences between a patented design and an accused

article’s design cannot, and shall not, prevent a finding of

infringement.” Crocs, 598 F.3d at 1303.

i. The D232 Patent

The Court concludes that the D232 Patent and the accused

design are neither “sufficiently distinct” nor “plainly

dissimilar.” Ethicon, 796 F.3d at 1335. The ornamental

features of the D232 Patent are the dimensions of the barrel

of the cannula, and the circularity and dimensions of the

proximal end. (Doc. # 88 at 25). Looking at the overall design

of the accused canula, a reasonable juror could infer that

the dimensions of the barrel, the circularity of the proximal

end, and the dimensions of the proximal end, are similar

enough to the D232 Patent that one could be deceived into

believing that they are the same. See Crocs, 598 F.3d at 1306

(requiring the Court to consider how the ornamental features

impact the overall design). Looking at the designs side-by-

side as is proper, Id. at 1303-04, there is no clear

difference between the two, such that a reasonable juror could

find the designs to be “substantially similar.” High Point

Design LLC, 621 F. App’x at 640-41. Each proximal end is

circular and appears to be of similar length and width. (Doc.

## 174-2, 174-6). The barrels appear to be of similar width

and length, and while not exact, the Court cannot say that

the dimensions are sufficiently different in their effect on

the overall design such that no reasonable juror could find

the designs to be the same. (Id.). Accordingly, the Court

finds that a reasonable juror could find substantial

similarities between the two designs and that summary

judgment is improper as to the D232 Patent. High Point Design

LLC, 621 F. App’x at 640-41.

PainTEQ directs the Court’s attention to prior art to

highlight how its accused design is dissimilar from the D232

Patent. (Doc. # 174 at 29-31). The Court notes that given its

finding that the D232 Patent has an effective filing date of

March 25, 2015, the “Compton” design is not prior art to the

D232 Patent. (Doc. # 174-10). Even if it were prior art, the

Compton design is quite different, as its barrel has numerous

groove-like indentations, and the design lacks a cap-like

proximal end. (Id.). Turning to the “Schmeirer” design, the

image placed by PainTEQ in its Motion (Doc. # 174 at 31) crops

out the bottom part of the figure contained within the Patent.

(Doc. # 174-11 at fig. 4). When viewing the figure in its

entirety, the Court finds that the overall effects of the

designs are quite different as the barrel of the Schmeirer

design appears significantly shorter. (Id.). While this

figure does contain a circular proximal end, that circular

proximal end is absent from the other 52 figures. (Id.). The

Court cannot say that such a small similarity to a prior art

design would help an ordinary observer notice differences

between the D232 Patent and the accused design. See Ethicon,

796 F.3d at 1335 (“If the claimed and accused designs are not

plainly dissimilar, the inquiry may benefit from comparing

the claimed and accused designs with prior art to identify

differences that are not noticeable in the abstract but would

be significant to the hypothetical ordinary observer familiar

with the prior art.”).

Furthermore, PainTEQ asks the Court to undertake an

element-by-element comparison to identify differences between

the accused design and the D232 Patent. (Doc. # 174 at 21-

29). However, the Court is expressly directed not to analyze

infringement through an “element-by-element comparison.”

Amini Innovation Corp. 439 F.3d at 1372. Thus, the Court will

not consider the differences asserted by PainTEQ which

require a hyper-isolated level of analysis. In so far as

PainTEQ has identified minor differences between the

dimensions of the barrels and proximal ends, the Court finds

that these differences are not readily apparent when

considering the overall designs. See Crocs, 598 F.3d at 1303

(“Minor differences between a patented design and an accused

article’s design cannot, and shall not, prevent a finding of

infringement.”).

In two supplemental filings, PainTEQ asks the Court to

consider two recent decisions by the USPTO. (Doc. ## 207,

209). The first filing relates to a recent USPTO decision

finding that the LaNeve Patent is patentable because it does

not infringe upon the D232 Patent. (Doc. # 207-1). However,

this decision focused upon the patentability of LaNeve,

rather than D232, and engaged in claim construction entirely

distinct from the present case. (Id. at 13-29). Accordingly,

the Court does not find any guidance from the USPTO’s

analysis.

The second supplemental filing is the USPTO’s decision

in its re-examination of the D232 Patent, concluding that the

LaNeve Patent does not anticipate or infringe upon the D232

Patent. (Doc. # 209-1). The decision held that “the designs

differ in regard to the forms of the tangs, the flat surfaces

on the barrel of the ‘232 design, the transition from the

flat surfaces to the distal end, and the visible guide slot

extending to the distal end on ‘402.” (Id. at 4). This

analysis does not address the elements of the D232 Patent

that the Court determined to be within the scope of the Patent

in its claim construction order. (Doc. # 88). Therefore, the

Court does not find any guidance from the USPTO’s decision.

As the Court has concluded that reasonable jurors could

find substantial similarities between the D232 Patent and the

accused design, the Court denies PainTEQ’s Motion as to the

D232 Patent.

ii. The D568 Patent

Turning to the D568 Patent, the Court’s analysis differs

from the D232 Patent. The scope of ornamental features for

the D568 Patent is narrower than the scope of the D232 Patent,

as it covers just the dimensions of the barrel of the cannula.

(8:22-cv-145 at Doc. # 91 at 44). As the Court already

explained, the dimensions of the barrel are not exact between

the D568 Patent and the accused design. (Doc. ## 174-2, 174-

7). Unlike with the D232 Patent, the dimensions of the canula

are the entire scope of the D568 Patent. (Id.). Thus, the

Court will focus upon the effect that the differing dimensions

of the barrels have on the overall designs, unlike with the

D232 Patent when the Court was considering multiple claimed

elements. See Amini Innovation Corp., 439 F.3d at 1372 (“The

trial court is correct to factor out the functional aspects

of various design elements, but that discounting of

functional elements must not convert the overall infringement

test to an element-by-element comparison.”).

The D568 Patent’s barrel is noticeably longer than the

accused design’s barrel, which differentiates the design of

the overall patents from one another. (Doc. ## 174-2, 174-

7). The entire scope of the D568 Patent is the dimensions of

the barrel, but the differing dimensions between the two

barrels creates two cannulas that are fully different in size.

(Id.). Accordingly, no reasonable juror could conclude that

the designs are “substantially similar.” High Point Design

LLC, 621 F. App’x at 640-41. Therefore, a finding of

noninfringement of the D568 Patent by the accused design is

appropriate. Id. The Court grants summary judgment for

PainTEQ on Count Six of Omnia’s complaint in 8:22-cv-145-VMC-

TGW.

5. Damages for Patent Infringement

PainTEQ argues that Omnia is legally precluded from

seeking PainTEQ’s profits from selling its canula because it

claims it has never sold the canula. (Doc. # 174 at 32-33).

Omnia responds that the canula is a necessary component of

products PainTEQ sells, and thus, it may recover damages for

those profits. (Doc. # 183 at 41-43). The Court agrees with

Omnia that it may recover damages for profits made by PainTEQ.

“Whoever during the term of a patent for a design,

without license of the owner, (1) applies the patented design,

or any colorable imitation thereof, to any article of

manufacture for the purpose of sale, or (2) sells or exposes

for sale any article of manufacture to which such design or

colorable imitation has been applied shall be liable to the

owner to the extent of his total profit, but not less than

$250, recoverable in any United States district court having

jurisdiction of the parties.” 35 U.S.C. § 289. “[T]he term

‘article of manufacture’ is broad enough to embrace both a

product sold to a consumer and a component of that product,

whether sold separately or not. Thus, reading ‘article of

manufacture’ in § 289 to cover only an end product sold to a

consumer gives too narrow a meaning to the phrase.” Samsung

Elecs. Co. v. Apple Inc., 580 U.S. 53, 62 (2016) (quoting 35

U.S.C. § 289).

The Court finds that the surgical cannula is an article

of manufacture within the LinQ™ surgical procedure. In Mr.

LaNeve’s deposition testimony, he was asked if PainTEQ “ever

commercialized any cannula design.” (Doc. # 183-4 at 100:13-

14). Mr. LaNeve responded: “[c]ommercialized a cannula

design? No. We would only include a cannula in an instrument

set.” (Id. at 100:15-16). Under Mr. LaNeve’s own account then,

PainTEQ was including the accused canula in an end-product

that it was selling. As such, the accused canula is

encompassed within § 289 and Omnia may recover damages for

PainTEQ’s profits. See Samsung, 580 U.S. at 62 (“Article of

manufacture is broad enough to embrace both a product sold to

a consumer and a component of that product” (internal

quotations omitted)).

B. Copyright Claims

1. Standing

PainTEQ first raises a number of arguments related to

Omnia’s standing to assert its copyright claims in Counts

Three and Four of its counterclaim. (Doc. # 174 at 38-40).

The Court already addressed these arguments in its order on

PainTEQ’s motion to dismiss. (Doc. # 203 at 14-20). In that

order, the Court concluded that “[b]y denoting the right to

sue for past infringements, the ELA empowered Omnia to assert

claims for infringements dating back to when Orthocision had

obtained the rights to the copyrights — July 3, 2020, and

July 11, 2020, for each copyright respectively.” (Id. at 19).

The arguments presented by PainTEQ in its Motion are largely

similar to those raised in its motion to dismiss. (Doc. #

160). In so far as the arguments are repeated, the Court

refers the parties to its order on the motion to dismiss (Doc.

# 203), and avoids a repetition of its rulings.

PainTEQ does raise one new argument in relation to

standing, asserting that the ELA contained a future promise

to provide Omnia with the right to sue for past infringements

rather than an immediately transferred assignment of that

right. (Doc. # 174 at 39-40). In support, PainTEQ points to

paragraph 6.1(a) of the ELA, which states: “Licensor shall

provide Licensee with the sole right, but not the obligation,

to Prosecute Intellectual Property applications and issued

Intellectual Property, in Licensee’s sole discretion.” (Doc.

# 174-22 at 4-5). PainTEQ claims this represented a future

intention to provide the right to sue for infringements. (Doc.

# 174 at 39-40). Omnia responds that PainTEQ both

misinterprets that paragraph of the ELA and fails to properly

give effect to the contract as a whole. (Doc. # 183 at 45-

47). The Court agrees with Omnia.

Under Ohio Law, “[t]he intent of each party is to be

gathered from a consideration of the contract as a whole. .

. . If the terms of the contract are clear and precise, the

contract is not ambiguous and the trial court is not permitted

to refer to any evidence outside of the contract itself.” DN

Reynoldsburg, LLC v. Maurices Inc., 225 N.E.3d 454, 459 (Ohio

Ct. App. 2023); see also (Doc. # 174-22 at 6) (containing

Ohio choice-of-law-provision).

Reading the ELA as a whole, the Court is persuaded that

the contract was intended to effectuate an immediate transfer

of the right to sue for past infringements. The Court reads

“shall provide” as signifying what Orthocision was

contracting to do immediately upon the “effective date” of

the contract. (Doc. # 174-22 at 4-5, 8). The contract contains

no other provisions which would explain when a future transfer

could occur. See Omni MedSci, Inc. v. Apple Inc., 7 F.4th

1148, 1152 (Fed. Cir. 2021) (holding that when an assignment

of rights deriving from “shall be the property of” was

accompanied by “conditions” that explained when the

assignment may occur, that assignment could be read as a

future intention to assign rights). A fair reading of the

whole ELA demonstrates that the assignment occurred

immediately upon the contract’s implementation.

Even if the terms of the ELA are ambiguous, the Court

finds that evidence beyond the contract demonstrates the

parties’ intent to immediately assign those rights. See DN

Reynoldsburg, LLC, 225 N.E.3d at 460 (“When the language of

a contract is unclear or ambiguous, or when the circumstances

surrounding the agreement give the plain language special

meaning, extrinsic evidence can be used to ascertain the

intent of the parties.”). In Mr. Schifano’s deposition, he

was asked whether “[the ELA] broadly assigns all of

Orthocision’s intellectual property that existed as of the

date of that assignment to Omnia.” (Doc. # 183-2 at 51). He

responded “[t]o my knowledge, yes,” and later added “being

that I was Orthocision and Omnia at the same time, the kind

of mental agreement was that it was always going to happen.”

(Id. at 51-52). Accordingly, even if the terms of the

contracts are ambiguous, the deposition of Mr. Schifano

persuades the Court that the parties intended the assignment

to be immediate.

2. Damages

PainTEQ puts forth several arguments that Omnia cannot

establish damages for the alleged copyright infringement.

(Doc. # 174 at 40-45). The Court agrees with PainTEQ and

grants summary judgment to PainTEQ on Counts Three and Four

of Omnia’s counterclaim.

“The initial burden placed on the copyright holder to

show some causal connection is low. However, a plaintiff may

not seek gross revenues based entirely on a speculative

connection to the plaintiff’s claim.” Yellow Pages Photos,

Inc. v. YP, LLC, 856 F. App’x 846, 865 (11th Cir. 2021)

(internal quotations and citations omitted). “To recover

actual damages, [the plaintiff] must demonstrate a ‘causal

connection’ between Defendants’ infringement and an injury to

the market value of the copyrighted [material] at the time of

the infringement.” Lorentz v. Sunshine Health Prod., Inc.,

No. 09-61529-CIV, 2010 WL 11492992, at *4 (S.D. Fla. Sept. 7,

2010), report and recommendation adopted, No. 09-61529-CIV,

2010 WL 11493070 (S.D. Fla. Nov. 15, 2010) (quoting Montgomery

v. Noga, 168 F.3d 1282, 1294 (11th Cir. 1999)). “Actual

damages are often measured by the revenue that the plaintiff

lost as a result of the infringement, including lost sales,

lost opportunities to license, or diminution in the value of

the copyright.” Thornton v. J Jargon Co., 580 F. Supp. 2d

1261, 1276 (M.D. Fla. 2008) (internal quotations and

citations omitted). In addition, “a claim for lost profits

may include a retroactive license fee measured by what the

plaintiff would have earned by licensing the infringing use

to the defendant.” Id.

In the Court’s order on PainTEQ’s motion to dismiss, the

Court held that “Omnia does not have statutory standing to

sue for infringements prior to July 3, 2020, for Count Three

and July 11, 2020, for Count Four.” (Doc. # 203 at 18).

PainTEQ has provided emails sent to potential customers on

February 24, 2020, which it claims is the last point that it

disseminated materials which contain infringed copyrights.

(Doc. # 174-33). And Mr. LaNeve testified that PainTEQ removed

the infringing copyrights from PainTEQ’s marketing materials

around February 2020. (Doc. # 183-4 at 154:19-25). Omnia does

not dispute any of these facts, but adds, through Mr.

Schifano’s deposition testimony, that some physicians and

surgery centers which received the infringing materials still

display the materials as of 2024. (Doc. # 183-3 at 270:10-

272:1).

The crux of the issue is that, based on all the evidence

in the record, PainTEQ had ceased disseminating the

copyrighted material by the time in which Omnia obtained the

right to sue for infringements of the copyrighted material.

Omnia thus cannot claim any damages from PainTEQ’s

dissemination of the copyrighted material. See Lorentz, No.

09-61529-CIV, 2010 WL 11492992, at *4 (“To recover actual

damages, [plaintiff] must demonstrate a causal connection

between Defendants’ infringement and an injury to the market

value of the copyrighted photographs at the time of the

infringement.” (emphasis added) (internal quotations

omitted)). Damages are tied to what occurred at the time of

the infringement, but Omnia cannot prosecute claims based on

the time of the infringement. See Id.

Omnia argues that there were and still are continuing

damages caused by the infringement through the continued

placement of the infringing material in doctor’s offices.

(Doc. # 183 at 50). However, this claim for damages is too

speculative. See Yellow Pages Photos, Inc., 856 F. App’x at

865 (“[A] plaintiff may not seek gross revenues based entirely

on a speculative connection to the plaintiff’s claim.”);

Thornton, 580 F.Supp.2d at 1276-77 (holding that copyright

owner whose copyright was used in a theater program could not

claim a royalty of the theater’s sales because the link was

too speculative); Andreas v. Volkswagen of Am., Inc., 336

F.3d 789, 797-99 (8th Cir. 2003) (holding that plaintiff whose

copyright was impermissibly included in a car commercial

could establish sufficient causal connection to sales of that

car during the period in which the commercial aired). Even if

PainTEQ is receiving continued notoriety from consumers

through the continued placement of the infringing materials,

that notoriety alone would be insufficient to establish a

causal connection. See Univ. of Colorado Found., Inc. v. Am.

Cyanamid Co., 196 F.3d 1366, 1375 (Fed. Cir. 1999) (holding

that plaintiff has burden to show how copyright infringement

leads to sales of the end product); Bus. Trends Analysts,

Inc. v. Freedonia Grp., Inc., 887 F.2d 399, 404 (2d Cir. 1989)

(holding that “some gain in market recognition” is

insufficient to establish a causal connection because “that

gain cannot be attributed to the [infringing material]

alone”).

Even though Omnia’s burden is “low,” it has failed to

put forth any non-speculative evidence of damages suffered

from PainTEQ’s infringement after July 3, 2020, for Count

Three and July 11, 2020, for Count Four. Yellow Pages Photos,

Inc., 856 F. App’x at 865. Accordingly, the Court grants

summary judgment for PainTEQ on Counts Three and Four of

Omnia’s counterclaims. See Jeffery v. Sarasota White Sox,

Inc., 64 F.3d at 593-94 (“When a moving party has discharged

its burden, the non-moving party must then ‘go beyond the

pleadings,’ and by its own affidavits, or by ‘depositions,

answers to interrogatories, and admissions on file,’

designate specific facts showing that there is a genuine issue

for trial.” (quoting Celotex Corp., 477 U.S. at 324)).

C. Trademark claims

1. Standing

PainTEQ raises a number of arguments that Omnia lacks

statutory standing to prosecute its trademark infringement

claims in Counts Five and Six of its counterclaim. (Doc. #

174 at 46-50). In the Court’s order on PainTEQ’s motion to

dismiss, the Court already addressed many of these arguments.

(Doc. # 203 at 11-14). In that order, the Court held that

Omnia possesses statutory standing under the Lanham Act to

prosecute its trademark infringement claims in Counts Five

and Six. (Id. at 14).

The only new argument raised by PainTEQ is the same

argument it made to challenge Omnia’s copyright standing -

that the language of the ELA only created a future intention

to assign intellectual property rights. (Doc. # 174 at 49).

The Court already analyzed this language above and concluded

that the language of the ELA provided for an immediate

transfer of the intellectual property rights.

2. Damages

PainTEQ asserts that it is entitled to summary judgment

on Omnia’s trademark-infringement claims because Omnia cannot

recover any damages for the supposed infringement. (Id. at

50-53). Specifically, PainTEQ asserts that Omnia cannot claim

actual damages or disgorgement of profits, and that its

infringement calculations are improperly speculative. (Id.).

The Court, however, agrees with Omnia that it can establish

damages, and thus, PainTEQ is not entitled to summary judgment

on Omnia’s trademark infringement claims.

“[A] plaintiff suing under § 1125(a) ordinarily must

show economic or reputational injury flowing directly from

the deception wrought by the defendant’s advertising; and

that that occurs when deception of consumers causes them to

withhold trade from the plaintiff.” Lexmark Int’l, Inc. v.

Static Control Components, Inc., 572 U.S. 118, 133 (2014).

“The law in this Circuit is well settled that a plaintiff

need not demonstrate actual damage to obtain an award

reflecting an infringer’s profits under § 35 of the Lanham

Act. A plaintiff shall be entitled to a defendant’s profits

if any of three circumstances exist: (1) the defendant’s

conduct was willful and deliberate, (2) the defendant was

unjustly enriched, or (3) it is necessary to deter future

conduct.” Tiramisu Int’l LLC v. Clever Imports LLC, 741 F.

Supp. 2d 1279, 1288 (S.D. Fla. 2010) (internal quotations and

citations omitted).

“[D]amages for trademark infringement may include (1)

the defendant’s profits, (2) any damages sustained by the

plaintiff, and (3) the cost of the action.” Ramada Inns, Inc.

v. Gadsden Motel Co., 804 F.2d 1562, 1564 (11th Cir. 1986).

“Where the wrong is of such a nature as to preclude exact

ascertainment of the amount of damages, plaintiff may recover

upon a showing of the extent of damages as a matter of just

and reasonable inference, although the result may be only an

approximation.” Id. at 1565 (quoting Bangor Punta Operations

v. Universal Marine Company, 543 F.2d 1107, 1110–11 (5th Cir.

1976)). “In making a damage assessment, the district court

may allow recovery for all elements of injury to the business

of the trademark owner proximately resulting from the

infringer’s wrongful acts.” Id. at 1565 (internal quotations

omitted).

Here, the parties do not dispute that PainTEQ

distributed a surgical guide to potential customers which

contained the PsiF trademark, which is the subject of the

‘387 and ‘388 trademark registrations. (Doc. # 174 at 35;

Doc. # 183 at 15). Indeed, a surgical guide disseminated from

PainTEQ to a potential customer on February 24, 2020, plainly

includes the term “PsiF” twice on the last page. (Doc # 174-

33). The guide instructs surgeons to “insert PsiF” as the

final step in the procedure, and then explains further that

the “PsiF allograft bone is loaded onto inserter . . . .”

(Id.). PainTEQ claims this was the last date on which the

infringing surgical guides were disseminated. (Doc. # 174 at

35). Omnia does not concede that PainTEQ is correct about the

exact date that the dissemination ceased, but does concede

that the dissemination ceased at some point in 2020. (Doc. #

183 at 15). Omnia claims that surgeons and medical groups

that received the infringing guide ultimately purchased the

LinQ™ procedure after receiving the guide, and these

purchases can be attributed to the inclusion of the PsiF

trademark. (Doc. # 183 at 15, 53-54).

The Court first concludes that there is no evidence in

the record that PainTEQ’s conduct was “willful and

deliberate.” Tiramisu Int’l LLC, 741 F. Supp. 2d at 1288. In

his deposition, Mr. LaNeve referred to the inclusion of the

trademarks as a “mistake.” (Doc. # 183-4 at 155:23-156:5).

There is no evidence in the record that the inclusion of the

trademarks was anything beyond an oversight. Accordingly, the

Court finds that PainTEQ’s conduct cannot be deemed willful

or deliberate.

Similarly, the Court concludes that there is no evidence

in the record that providing damages is “necessary to deter

future conduct.” Tiramisu Int’l LLC, 741 F. Supp. 2d at 1288.

As the parties have agreed, the dissemination of the

infringing guides ceased in 2020. Accordingly, there is

little risk that PainTEQ would again infringe upon the

trademarks.

However, the Court does conclude that Omnia can show

that PainTEQ was “unjustly enriched” through its infringement

upon Omnia’s trademarks. Id. A reasonable juror could find

that a customer receiving the infringing surgical guide would

view the last page’s inclusion of the PsiF trademark as

implying that Omnia’s products were included within PainTEQ’s

product. (Doc. # 174-33). PainTEQ’s attempted discounting of

the inclusion of the trademark as being “on the bottom of the

last page” is unpersuasive. (Doc. # 174 at 50). Rather, the

guide makes the inclusion of the Omnia product out to be the

ultimate step in the surgical process. A reader of the guide

would reasonably conclude that the Omnia product was an

integral element of PainTEQ’s product.

At this point, PainTEQ was attempting to break into the

SI-joint repair industry, as the guide accompanied PainTEQ’s

first generation of its LinQ™ product. (Id. at 35). By

including the Omnia trademarks in the guide, a recipient could

attribute Omnia’s reputation within the industry to this new

product created by PainTEQ. Such an attribution would result

in an unjust enrichment by PainTEQ. See Optimum Techs., Inc.,

217 F. App’x at 903 (“Unjust enrichment occurs when an

infringer has enriched themselves by tapping the reputation

and good will of the infringed.” (internal quotations

omitted)); Howard Johnson Co. v. Khimani, 892 F.2d 1512, 1520

(11th Cir. 1990) (“When an unaffiliated lodge imitates a

franchise name, it is exploiting the goodwill of that

chain.”). Accordingly, such unjust enrichment entitles Omnia

to claim damages from PainTEQ for its infringement of its

trademarks. Tiramisu Int’l LLC, 741 F. Supp. 2d at 1288.

PainTEQ’s arguments that any damages award would be

based upon improper speculation are unfounded. (Doc. # 174 at

53). Omnia does not need to prove exactly how many customers

bought the PainTEQ product as a direct result of the trademark

infringement in the accompanying surgical guide. See Ramada

Inns, Inc., 804 F.2d at 1564 (“[P]laintiff may recover upon

a showing of the extent of damages as a matter of just and

reasonable inference, although the result may be only an

approximation.”). Rather, Omnia just needs to show that the

infringement was a proximate cause of customers’ purchasing

of the PainTEQ product. See Id. at 1565 (holding that

plaintiffs need only show proximate cause to obtain damages

for trademark infringement). As discussed above, the Court

finds that reasonable jurors could conclude that customers

chose to purchase the PainTEQ product due to the mistaken

perception caused by the inclusion of the PsiF trademark that

Omnia was somehow involved with the PainTEQ product.

Accordingly, Omnia can establish a reasonable basis upon

which to estimate damages.

The Court is also unpersuaded by PainTEQ’s argument that

it is entitled to summary judgment on Omnia’s ability to claim

a disgorgement of PainTEQ’s profits. (Doc. # 174 at 53). “In

order to establish the amount of profits to be disgorged, a

plaintiff must establish the infringer’s gross sales of the

product; it is then up to the defendant to refute that amount,

and/or to proffer costs that should be deducted from the gross

sales.” Tiramisu Int’l LLC, 741 F. Supp. 2d at 1291. Here,

Omnia has put forth evidence of PainTEQ’s gross sales. (Doc.

# 174-25 at 97:13-98:17). In response, PainTEQ’s attempt to

refute that amount is based upon its general argument that

sales of the product were not tied to the inclusion of the

PsiF trademark in the surgical guide. (Doc. # 174 at 53). The

Court has already concluded that a factual dispute remains

regarding whether PainTEQ’s infringement proximately caused

its subsequent sales. Therefore, granting summary judgment

for PainTEQ on Omnia’s claim for a disgorgement of PainTEQ’s

profits would be improper. See Samples ex rel. Samples, 846

F.2d at 1330 (“If a reasonable fact finder evaluating the

evidence could draw more than one inference from the facts,

and if that inference introduces a genuine issue of material

fact, the court should not grant summary judgment.”).

As the Court has determined both that Omnia has standing

to pursue its trademark infringement claims in Counts Five

and Six of its counterclaim and that it can establish damages

for each, the Court denies summary judgment for PainTEQ on

these counts.

D. Unfair Competition Claims

PainTEQ asserts that it is entitled to summary judgment

on Omnia’s claims of unfair competition based upon Florida

and Ohio law, as well as common law. (Doc. # 174 at 53-57).

Its argument is that Omnia’s claims are preempted by its

claims of patent, copyright, and trademark infringement.

(Id.). Omnia counters that PainTEQ takes too narrow a view of

its unfair competition claims, such that PainTEQ ignores the

claims’ focus beyond the infringement of intellectual

property. (Doc. # 183 at 54-57).

An unfair competition claim is pre-empted when the claim

is based entirely on patent, copyright, or trademark

infringement. See Lanard Toys Ltd. v. Dolgencorp LLC, 958

F.3d 1337, 1347 (Fed. Cir. 2020) (“[T]he [state and common

law] unfair competition claims fail because they are based

entirely on [plaintiff’s design patent, copyright, and trade

dress] infringement claims.”); Tropical Paradise Resorts, LLC

v. JBSHBM, LLC, No. 18-CV-60912, 2018 WL 4932282, at *5 (S.D.

Fla. Oct. 10, 2018) (“If a plaintiff bases its tort action on

conduct that is protected or governed by federal patent law,

then the plaintiff may not invoke the state law remedy, which

must be preempted for conflict with federal patent law. If,

by contrast, the conduct is not so protected or governed,

then the remedy is not preempted.” (internal quotations and

citations omitted)); M.G.B. Homes, Inc. v. Ameron Homes,

Inc., 903 F.2d 1486, 1494 (11th Cir. 1990) (“A claim for

unfair competition based upon allegations of copying, and in

the absence of proof of any element of unfair competition

other than copying, is clearly pre-empted by the Act.”);

Custom Mfg. & Eng’g, Inc. v. Midway Servs., Inc., 508 F.3d

641, 652-53 (11th Cir. 2007) (holding that defendant was

entitled to summary judgment when the unfair competition

claim was based entirely on a trademark infringement claim

for which the district court was granting summary judgment

for the defendant).

The Court agrees with PainTEQ. Omnia bases its unfair

competition claims on two forms of conduct by PainTEQ: first,

the unauthorized usage of Omnia’s patents, copyrights, and

trademarks to create the misperception that the parties were

affiliated; and second, the publishing and disseminating of

false representations of fact by PainTEQ about Omnia. (Doc.

# 20 at 45-49). These false representations are allegedly

“statements that PainTEQ is not infringing, and has not

infringed, the intellectual property rights of Omnia Medical,

when, in truth and in fact, PainTEQ has done exactly that;

and . . . statements that Omnia Medical is infringing, and

has infringed, the intellectual property rights of PainTEQ,

when, in truth and in fact, Omnia Medical has done no such

thing.” (Id. at 46).

However, PainTEQ correctly notes that there is no

evidence in the record that PainTEQ has made either of these

statements. (Doc. # 174 at 57). Omnia does not refute this

point directly, but instead emphasizes that its claim

included the qualifier that PainTEQ’s false representations

“are not limited to the above-referenced statements.” (Doc.

# 20 at 46; Doc. # 183 at 57). While Omnia is correct that

its unfair competition claims did include this qualifier,

Omnia does not point to any evidence in the record of these

other false representations. (Doc. # 183 at 56-57).

Accordingly, there is no factual dispute that PainTEQ

did not make the identified statements in the claims, and

Omnia has not provided any evidence of other statements. See

Hickson Corp. 357 F.3d at 1260 (holding that the moving party

bears the initial burden of showing the court, by reference

to materials on file, that there are no genuine issues of

material fact that should be decided at trial). On such a

record, the Court concludes that PainTEQ is entitled to

summary judgment on this portion of Omnia’s state unfair

competition claims. See Jeffery v. Sarasota White Sox, Inc.,

64 F.3d at 593-94 (“When a moving party has discharged its

burden, the non-moving party must then go beyond the pleadings

. . . [to] designate specific facts showing that there is a

genuine issue for trial.” (internal quotations omitted)).

The only alleged conduct of Omnia’s state unfair

competition claims remaining then is PainTEQ’s unauthorized

usage of Omnia’s patents, copyrights, and trademarks. (Doc.

# 20 at 45-49). As such, the success of the claims depends

upon whether Omnia can prove its separately pleaded claims

for patent, copyright, and trademark infringement.

Accordingly, Omnia’s unfair competition claims are preempted.

The Court grants summary judgment for PainTEQ on Counts Eight,

Nine, and Ten of Omnia’s counterclaim.

E. Breach of Contract

PainTEQ asserts that it is entitled to summary judgment

on Omnia’s breach of contract claim both because it has not

breached the Stocking Agreement, and because Omnia cannot

establish any damages for the alleged breach. (Doc. # 174 at

57-61). Omnia responds that it can establish both that PainTEQ

breached the Stocking Agreement and that it suffered damages

from the breach. (Doc. # 183 at 57-63).

1. Alleged breaches

Omnia has pointed to multiple ways that PainTEQ breached

the contract: by misrepresenting to Omnia the amount it

charged for the PsiF™ procedure; by stealing confidential

information from Omnia; and by violating the non-

circumvention provision of the agreement. (Id.). The Court

will evaluate each of these alleged breaches in turn.

I. Misrepresentation of prices

PainTEQ does not address Omnia’s argument that it

breached the Stocking Agreement by misrepresenting to Omnia

the amount it was charging, and then pocketing the difference.

(Doc. # 183 at 11-13, 57). Accordingly, PainTEQ is not

entitled to summary judgment on the entirety of Omnia’s breach

of contract claim. See Fed. R. Civ. P. 56(a) (summary judgment

is appropriate “if the movant shows that there is no genuine

dispute as to any material fact and the movant is entitled to

judgment as a matter of law”).

II. Confidential Information

PainTEQ argues that all of the supposedly confidential

information was already publicly available before the

agreement, and thus, was not confidential as defined by the

agreement. (Doc. # 174 at 57-60). Omnia counters that the

information was confidential as defined by the agreement.

(Doc. # 57 at 61).

The Stocking Agreement’s confidentiality provision

covered “[a]ll confidential or proprietary information

furnished by PAINTEQ to OMNIA . . . or by OMNIA to PAINTEQ .

. . during the term of the agreement.” (Doc. # 174-34 at 4).

However, excluded from the provision was information that “at

the time of disclosure is, or thereafter lawfully becomes,

part of the public domain through no fault, act, or omission

of the receiving party, its employees, officers or PAINTEQs;

or was otherwise in the receiving party’s lawful possession

prior to disclosure as shown by its written records . . . .”

(Id.). The Stocking Agreement was effective as of April 4,

2017. (Id. at 6). Prior to that date, PainTEQ claims that

Omnia provided PainTEQ with “a copy of the PsiF Surgical

Technical Guide, color photographs of the instruments, CAD

images of the instruments, post-operative imaging of the

implant, and an image and detailed description (including

dimensions) of the implant. (Doc. # 174 at 36-37). Omnia only

disputes that it sent PainTEQ CAD images of the instruments.

(Doc. # 183 at 7-8).

Omnia asserts that the parties had a confidential

relationship before the agreement was memorialized, such that

the information shared during that period was confidential.

(Doc. # 183 at 59-61). In support, Omnia cites only to

Biodynamic Techs., Inc. v. Chattanooga Corp., 644 F. Supp.

607, 612 (S.D. Fla. 1986), in which the parties had engaged

in licensing negotiations, during which one party exchanged

an entire patent application to the other. After the

negotiations broke down, the exchanging party discovered that

the receiving party was improperly using the information it

had obtained during the negotiations. Id. The court held that

“[t]here is no dispute that in the spirit of trust and

confidence, the contents of the entire patent application

were revealed. All of the information imparted was the direct

result of the license negotiations. These negotiations not

only created the confidential relationship, but also

restricted the right of the Defendant to use the disclosures

solely for the purposes for which they were made.” Id.

However, Biodynamics is distinguishable because there the

parties ended up not forming a business relationship, and the

plaintiff was alleging trade secret misappropriation and

unfair competition. Id.

In contrast, Omnia and PainTEQ’s negotiations led to the

Stocking Agreement. In the Stocking Agreement, the parties

agreed to a confidentiality provision, in which the parties

could have included the previously disclosed information.

Instead, the Stocking Agreement does the exact opposite,

specifically excepting previously disclosed information from

the provision’s protection. (Doc. # 174-34 at 4). On such a

record, the Court finds no basis to conclude that the

information exchanged by Omnia prior to the Stocking

Agreement was entitled to confidential status. Accordingly,

the Court grants summary judgment to PainTEQ on Omnia’s breach

of contract claim in so far as it is based upon the disclosure

of confidential information.

III. Non-circumvention

PainTEQ argues that Omnia may not assert a claim for a

breach of the non-circumvention provision because it never

pled this claim. (Doc. # 174 at 61). Omnia counters that

PainTEQ takes an “impermissibly narrow” interpretation of its

claim, as the claim alleges that PainTEQ improperly sold its

LinQ™ procedure, which should be interpreted as occurring

during the non-circumvention period. (Doc. # 183 at 61-62).

The Court agrees with PainTEQ.

Omnia identified several ways in its breach-of-contract

claim in which PainTEQ allegedly breached the Stocking

Agreement: “by misrepresenting to Omnia the sales price

actually charged its customers for PsiF products, and

continuing to use literature, marketing information, and

other confidential or proprietary information in a manner

inconsistent with the terms of the Stocking Agreement . . .

.” (Doc. # 20 at 45). The claim does not specifically refer

to any sales of the LinQ™ procedure, nor to the non-

circumvention provision. True, the claim does “incorporate

and reallege” the facts already stated in the counterclaim.

(Id. at 44). While the rest of the counterclaim does refer to

sales of the LinQ™ procedure at various points in time, the

non-circumvention provision of the Stocking Agreement is

never mentioned. (Id.). Therefore, Omnia has not pled a

violation of the non-circumvention provision as part of its

breach of contract claim, and the Court grants summary

judgment for PainTEQ on Omnia’s breach of contract claim in

so far as it is based upon this alleged violation.

2. Damages

As the Court has determined that Omnia may only pursue

its breach of contract claim in so far as it is based upon

PainTEQ’s misrepresentation of prices, the Court needs only

to determine if Omnia can establish damages for this breach.

As noted, PainTEQ entirely neglected this aspect of Omnia’s

breach of contract claim. Accordingly, the Court denies

summary judgement for PainTEQ on Omnia’s breach of contract

claim, as based upon PainTEQ’s alleged misrepresentation of

prices. See Fed. R. Civ. P. 56(a) (Summary judgment is

appropriate “if the movant shows that there is no genuine

dispute as to any material fact and the movant is entitled to

judgment as a matter of law”).

Accordingly, it is

ORDERED, ADJUDGED, and DECREED:

(1) Plaintiff PainTEQ, LLC’s Motion for Summary Judgment

(Doc. # 174) is GRANTED in part and DENIED in part.

(2) Summary judgment is granted in favor of PainTEQ on Counts

Three, Four, Eight, Nine, and Ten of Defendant Omnia

Medical, LLC’s counterclaim in this case, as well as on

Count Six of Omnia’s complaint in 8:22-cv-145-VMC-TGW.

(3) The case will proceed to trial on Counts Two, Five, Six,

and Seven of Omnia’s counterclaim.

DONE and ORDERED in Chambers in Tampa, Florida, this

21st day of October, 2024.

VIR TA M. HERNANDEZ*COVINGTON

UNITED STATES DISTRICT JUDGE

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