Executives and technology developers at Orthocare Innovations, Oklahoma City, Oklahoma, and WillowWood, Mt. Sterling, Ohio, had been enjoying collegial discussions on ways to improve prosthetic socket technology and patient comfort. However, as they discussed concepts on sub-atmospheric socket technology, they realized that both companies, unaware of the other’s efforts, were following very similar, and in some aspects, overlapping, product development tracks.
Events Unfold
Orthocare Innovations CEO and co-founder Doug McCormack describes the timeline of events in the independently developing technologies:
- Under the Defense Advanced Research Projects Agency (DARPA) Revolutionizing Prosthetics program, Martin Bionics, Oklahoma City, Oklahoma, a member of the team under Johns Hopkins University’s Applied Physics Laboratory, Baltimore, Maryland, was tasked with developing an augmented suspension system for the DEKA neurally controlled arm being developed under the program.
- Martin Bionics filed for intellectual property protection for the electric vacuum pump suspension system in September 2006.
- Unknown to Martin Bionics, Wilbur Haines, an independent inventor, filed a patent application with some similar designs in June 2006; the intellectual property was later assigned to WillowWood.
- In March 2008, Orthocare Innovations acquired the assets of Martin Bionics, including the vacuum system intellectual property.
- Once the respective Orthocare and WillowWood applications were published and, as a result, made public by the U.S. Patent and Trademark Office, the companies determined that there was some overlap between certain claims in the two applications.
Realizing that there a potential for conflict, “We decided to address this issue in a positive way,” McCormack says.
“Doug and I both expressed our interest early on in resolving our potential issues face-to-face rather than through legal counsel, and I couldn’t be happier with the result,” WillowWood President Ryan Arbogast says. “We got to know the staff at Orthocare Innovations well, and both sides shared a lot of information which we believe could lead to some great cooperative opportunities in the short- and long-term future.”
Key personnel from both companies met during the 2011 National Assembly of the American Orthotic and Prosthetic Association (AOPA) in Las Vegas, Nevada, to discuss a resolution of the issue, including Orthocare representatives McCormack, David Boone, PhD, MPH, CP, chief technology officer and co-founder, David Adams, COO; WillowWood representatives were Arbogast and Director of Engineering James Colvin, MS.
“We arrived at a mutual determination that rather than pursue an aggressive and costly dispute, it would be better to amicably resolve the issue in the interest of enabling these promising technologies to reach the market and ultimately enhance patient care,” McCormack says.
Successful Resolution, Future Cooperation
“Sometimes the best opportunities come from the toughest situations,” Arbogast says. “[Intellectual property] (IP) discussions can be tense because there is a lot on the line for everyone involved, and in this case it became apparent very early on that each company was more interested in bringing solutions to the market than in dominating by litigation. I believe this realization allowed both sides to see more value in future cooperation than in current IP, and helped us to get past the tough discussions quickly in order to focus on moving forward. We both hope that by putting our resources and focus on the latter, we can deliver better solutions to the market faster, thereby better serving distributors, practitioners, and amputees.”
Arbogast notes that the natural tendency for companies involved in IP/patent issues is to react defensively and withhold as much information as possible to protect their interests. However, he feels that a key to a successful resolution in this case was a “frank but respectful exchange of information.” He adds, “We both explained our perspectives and expectations clearly, and in that found the beginnings of a compromise.”
Reaching amicable agreement early on rather than tying up product development in lengthy litigation also creates a win-win for research and development companies and their funding and investment sources, McCormack points out. “This is especially true when investments are made in new technologies in categories where there is no dominant product or products on the market haven’t penetrated in a significant way,” he adds, noting that the Edison system was the first technology to emerge from the DARPA Revolutionizing Prosthetics program to become commercially available for patient care.
The collegial relationship and the amicable resolution of a potential conflict have laid the groundwork for possible future cooperative efforts, according to both Arbogast and McCormack.
Everyone Wins
In this case, cooperation and amicable conflict resolution created a win-win situation for everyone involved:
- Clinicians and patients have access to promising new technologies to improve care and quality of life.
- Orthocare and WillowWood have been able to move their technologies into the market in a timely way without the costs and delay of litigation.
- Investment and funding sources have seen positive results from their backing.
- Groundwork for mutually beneficial cooperative efforts has been laid for the future which would not only benefit the companies involved but also help advance the O&P profession overall, McCormack and Arbogast agree.
And as for sub-atmospheric socket technology, the path is cleared for further advances in the future. “This technology has so much potential, so much applicability,” says McCormack. “We’re excited about where this technology is heading; we’re eager to take it to the next level.”
