# PainTEQ, LLC v. Omnia Medical, LLC

> District Court, M.D. Florida · October 21, 2024

URL: https://www.frixlaw.com/law-library/cases/10643317

## Case

- **Court:** District Court, M.D. Florida
- **Decided:** October 21, 2024
- **Opinion:** 100trialcourt
- **Cited by:** 0 later opinions in the Frix Law Library

## Citator (automated)

- No negative treatment found by the automated citator. That is not the same as a confirmation that the case is good law; read the citing cases.
- Full citator and citing cases: https://www.frixlaw.com/law-library/cases/10643317

## How later opinions describe it (automated extraction)

- 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

## Opinion text

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.

i Patent [Pain 0 SursicalCannula |
Carrey ,
nas 2

‘

|

‘D568 Patent PainTEQ Surgical Cannula
Fig. 6
L TT] #
| |
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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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Source: Frix Law Library, https://www.frixlaw.com/law-library/cases/10643317. Public record. Not legal advice.