SonoSite’s legal move against Zonare prompts question, Why now?

Editor's Note: This is the second in a two-part series examining the significance and reasons behind the intensifying legal battle between hand-carried ultrasound developers SonoSite and Zonare Medical Systems.

Zone Sonography had been on the market for nearly two years before SonoSite formally charged its developer, Zonare Medical Systems, with patent infringement. In its lawsuit, filed in late February, SonoSite alleged that Zonare's z.one, which converts from a midtier cart-based system to a compact hand-carried unit, violates its "412 patent," described generally as covering a portable ultrasound system weighing less than 10 pounds.

Why SonoSite chose to act last month was due at least partly to a patent battle the company had been waging for five years against a Texas firm called Neutrino Development. In this case, the Texas firm claimed in the U.S. District Court on July 24, 2001, that SonoSite's hand-carried ultrasound products infringed its patent, entitled "Method and Apparatus for Penile Hemodynamic Stimulation, Monitoring and Drug Delivery Acceleration."

The U.S. District Court for the Southern District of Texas, Houston Division, found in March 2006 that Neutrino improperly amended the patent in question (U.S. Patent No. 6,221,021) to include the claim that a component was "handheld," when this claim did not appear in the original patent application. The court declared the claims asserted against SonoSite invalid and set aside its earlier ruling on infringement, dismissing Neutrino's claims and causes of action "with prejudice." The U.S. Court of Appeals for the Federal Circuit affirmed the lower court's decision in November.

"This gave us the opportunity to redeploy our resources in a proactive approach to our intellectual property assets," said Kathy Surace-Smith, SonoSite vice president and general counsel, in an exclusive interview with DI SCAN.

How this latest litigation will unfold is difficult to predict. She acknowledged that arguments involving alleged infringement by medical device companies are sometimes settled through cross-licensing agreements. Whether that would be the outcome of this case, however, is a long way from being known.

"I can't comment on the specifics of this case as to what we hope would or would not happen," she said. "What I can say is that we do not take litigation lightly. We only move when we feel that it is the right remedy for us."

Being on the receiving end of SonoSite's litigation, Zonare had little choice but to respond as it did with a countersuit, according to Zonare president and CEO Don Southard, although he wishes litigation hadn't been necessary.

"I don't find this very productive," he told DI SCAN in an exclusive interview. "It deflects everybody from the objective of building great companies, and it is also very expensive and time consuming for lawyers and company management. If I had my druthers, I would have preferred that none of this happened. But we have to defend our patents against competitors, and we have to defend ourselves against what we believe is a meritless claim."