Fonar backs new MRI suit with more patents

Fonar launched a second effort to defend its MRI patent positionthis month, five years after losing a lengthy legal battle withJohnson & Johnson and its now-defunct Technicare medical imagingsubsidiary. Although Fonar claims widespread infringement of itstechnology by MRI suppliers, the firm centered its current caseagainst competitors Hitachi and GE. Charges were filed in theU.S. District Court for Eastern New York.

The Technicare suit, filed in 1982, involved only one patent:Fonar's first and most basic MRI patent, granted to founder andchairman Raymond V. Damadian in 1974 (see Diagnostic Imaging,April 1985;7:21-33). Fonar initially received a favorable juryverdict in that case. This verdict was overturned by the trialjudge, however, and Fonar lost subsequent appeals against that decision (SCAN 7/8/87).

The original patent (# 3789832, Apparatus and Method for DetectingCancer in Tissue) expired this year, according to Ronald J. Schutz,lead attorney on the Fonar case for Robins, Kaplan, Miller andCiresi of Minneapolis. Fonar can seek damages for infringementof this patent prior to its expiration. While Technicare was foundnot to infringe the patent in the previous suit, the patent itselfwas not invalidated in that case, he said.

More importantly, Fonar's chances in court this time aroundare enhanced by the addition of three patents issued after theTechnicare suit:

• # 4675609, Nuclear Magnetic Resonance Apparatus IncludingPermanent Magnet Configuration (issued 6/23/87);

• # 4871966, Apparatus and Method for Multiple AngleOblique Magnetic Resonance Imaging (issued 10/3/89); and

• # 4887038, Solenoidal Surface Coils for Magnetic ResonanceImaging (issued 12/12/89).

All told, there are eight defendants in Fonar's current suit.Infringement of all four patents is alleged against six unitsor partners of Hitachi: Hitachi Ltd., Hitachi Medical Corp., HitachiMedical Corp. of America, Hitachi Medical Systems America (HMSA),Summit World Trade, and Brookhaven Magnetic Resonance of Patchogue,NY.

Summit is the minority joint venture partner with Tokyo-basedHitachi in HMSA. HMSA has been the vehicle for Hitachi's successfulintroduction of low- to mid-field permanent magnet MRI scannersinto the U.S. over the past several years (SCAN 6/21/89). BrookhavenMR is an imaging center that utilizes Hitachi's scanner.

Fonar alleges that GE, along with the owners of South ShoreImaging Associates of Rockville Center, NY, are infringing onthe basic apparatus and method patent and the multiple angle oblique(MAO) patent, Schutz said. GE does not currently market a permanentmagnet MRI system.

MAO technology allows MRI scanners to acquire multiple nonparallelslices during a single acquisition and is in widespread use throughoutthe industry, Schutz said. MAO scanning is necessary for lumbarspine imaging, which makes up 40% or more of all MRI procedures,he said.

As alleged in Fonar's first amended complaint, "GeneralElectric has knowingly and falsely represented to purchasers andusers and prospective purchasers and users of MRI machines thatit developed the whole body MRI machine and that its MRI machinesare capable of a `unique' feature which can provide multi-angleoblique images in the course of a single scan. Further, GeneralElectric has knowingly and falsely represented that the abilityto perform this operation was a magnetic resonance imaging `advance'by General Electric."

REPRESENTATIVES OF BOTH GE AND HMSA expressed surprise at theFonar claims and maintained that the firms are not infringingany of the patents. As of early last week, GE had not receiveda copy of the Fonar complaint and was unable to respond directlyto the claims, a spokesperson said.

One successful licensing effort for a different set of MRIpatents was undertaken by the British Technology Group on behalfof British scientists and universities involved in early MRI work.BTG also sued Johnson & Johnson prior to the demise of Technicareand arrived at a settlement, said Derek Schafer, president andCEO of BTG's U.S. company in Gulph Mills, PA.

Although J&J exited the imaging business shortly thereafterand therefore did not need to license the BTG patents, the technologytransfer organization did subsequently license most of the remainingMRI suppliers, including Hitachi and GE (SCAN 3/30/88 and 6/08/88).

Fonar's law firm has successfully prosecuted major patent infringementcases in the past, most notably Honeywell's case against Minolta,relating to autofocus camera patents. To date, the firm has obtained$252 million in settlements for Honeywell following a $96 millionjury verdict in February 1991. Specific damage claim amounts havenot yet been determined in the Fonar case, Schutz said.

"We need to get information on their (Hitachi and GE)sales and profits and things of that nature before we can evenbegin to put together the numbers. They will be big, obviously,"he told SCAN.

Although permanent magnets have been around for many years,their market share in the U.S. was negligible until Hitachi'sintroduction using magnets was developed by Sumitomo of Japan.No effort has been made to charge Sumitomo, which does not havea significant direct presence in the U.S., Schutz said.