Healthport Loses Patent Claims, Is Enjoined From False Advertising

Posted on | July 15, 2008 | No Comments

2008-1456 Healthport v. Tanita Corp.
D/OR cv-06-419
Judge Ancer L. Haggerty

Counterclaim plaintiff Tanita appeals from the summary judgment of Judge Ancer Haggerty (adopting the R&R of Mag. Judge Paul Papak) denying part of the requested relief on its false advertising counterclaims.  While the court enjoined future acts of false advertising, it declined to require corrective advertising or to award any monetary relief. 

Tanita had previously been granted summary judgment on Healthport’s claims of infringement of 4,895,163 and 5,449,000, related to bioelectrical impedence body composition systems.

False Advertising.  The false advertising claims related to two statements on Healthport websites, one relating to the Healthport system and the other to the credentials of Healthport’s president.  On the former, the court summarized:

Both of the Healthport web sites contain descriptions of Healthport’s ElectroLipoGraph metabolic analyzer ("ELG"), a body composition monitor. Healthport touts the ELG as "the only metabolic analyzer patented in the United States and abroad for unequaled accuracy and validity in the prediction of human body composition." Healthport goes on to state that the "patented accuracy of the ELG is backed by the largest study on body composition analyzers ever conducted, including more than 750 subjects from a wide demographic population."

To substantiate its claims regarding the ELG, Healthport relies on two studies performed by the University of Southern California. Neither study provides a head-to-head comparison of the ELG with any other body composition monitors. In addition, neither study describes the ELG as having unequaled accuracy. Both studies describe the ELG as an accurate method of measuring body composition.

Healthport owns two patents related to the ELG. Healthport relies on these patents to substantiate the claims it makes in the ELG advertisement. However, neither patent suggests that Healthport’s ELG has unsurpassed accuracy or validity as compared to other body composition monitors.

On the latter representations, the websites claimed that Healthport’s president had undergraduate and graduate degrees.  In fact, Healthport and the president admitted that he did not have any such degrees.

The court found the former statements literally false, the former statements either literally false or unsubstantiated by the research.  Although there was no actual evidence of consumer deception or reliance, the court presumed such based on the nature of the presentation and Healthport’s obvious intent.

The court ordered all the accused statements removed, and entered a permanent injunction:

which forever prohibits Healthport from publishing any advertising or promotional material that contains representations to the effect that the ELG: (1) is the only patented body composition analyzer or metabolic analyzer in the United States or abroad; (2) is patented for unequaled accuracy and validity; (3) is the only body composition analyzer or metabolic analyzer patented for unequaled accuracy and validity; (4) is unequaled in accuracy and validity as compared to other body composition analyzers.

The court denied Tanita’s request for attorney’s fees, corrective advertising, and disgorgement of Healthport’s profits.  Here, the court found that the lack of any evidence of actual harm to Tanita or actual benefit to Healthport weighed heavily against the monetary and corrective relief.  As to attorney’s fees, the court concluded that there was no evidence that the ELG accuracy statements were "fraudulent, deliberate or willful" as to Healthport’s intent to deceive customers.  As to the credentials, the court found those statements only marginally material to customer purchasing decisions, and therefore not sufficiently deceitful to trigger an award of attorney’s fees.

Non-Infringement.  Although not (yet) appealed (could be a
Healthport cross-appeal), the non-infringement decision turned on
whether the claims required the patient to be in the prone
position–the claims themselves did not explicitly so state, and it was
undisputed that Tanita’s product operated with the patient standing.

The court followed a line of cases including SciMed Life Sys., Inc.
v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337 (Fed. Cir. 2001) and Astrazeneca v. Mutual Pharmaceutical Company, Inc., 384 F.3d 1333 (Fed. Cir. 2004) to find that the patent required the prone position and it is part of the invention.  The court wrote: 

Here, the patents-in-suit emphasize that the key aspect of the
"present invention" is to generate more accurate, valid measurements of
human body composition. As a result, the public is on notice that any
statements in the patents concerning how that invention achieves
accurate results limit the scope of the claims. See e.g. Aguayo v. Universal Instruments Corp.,
356 F. Supp. 2d 699, 727 (S.D. Tex. 2005) (Where the "specification
calls an embodiment the ‘invention’ or the ‘present invention,’ it is
appropriate to limit the claims to theat embodiment.") (citations
omitted). The patents-in-suit then go on to specify that the "patient
must be prone to minimize interference from muscle contractions," and
warn that the device will not measure accurately if the patient is
standing or sitting. I find that the specification expressly disavows
measurements taken of a standing or sitting patient, and that
limitation must be read onto the claim.2 Accordingly, I construe the
term "patient’s body" in the claims of the patents-in-suit to mean
"patient’s prone body."

More reading:

Summary judgment opinion on False Advertising (sorry, but the pdf is too big to upload.  Send me an email if you want it.)

Summary Judgment opinion on non-infringement

Counsel:

Healthport: Frisenda Quinton & Nicholson, Los Angeles (Frank Frisenda) and Hinshaw & Culbertson, Portland, Oregon (David J. Elkanich)
Tanita: McDermott, Will & Emory (Joel M. Freed, Kenneth L Cage, Michael A. Messina, Sudip K. Kundu, D. Michael Underhill) and Klarquist Sparkman, Portland, Oregon (Todd M. Siegel, J. Christopher Carraway)

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