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New invention spurs students in Detkin IP/Tech Clinic to master intricacies of patent law

July 13, 2015

From the Penn Law Journal Spring 2015 issue. By Ira Porter and Lindsay Podraza

Looking back at the last 20 years or so of Tiger Woods’ illustrious golf career, the injuries to his left knee have begun to compete in the larger narrative with the tournaments he has won. He has had benign tumors and scar tissue removed, damaged cartilage, and in 2007 ruptured his ACL during the PGA Tournament, which he won, only to reinjure the same knee a year later during the British Open, which he also won.

In recent years he has also suffered injuries to his neck, elbow, back, and Achilles. He used to win more than lose, but in January, at the Waste Management Phoenix Open in Scottsdale, Arizona, he shot an 82, which was his worst score in 1,267 rounds of golf. What if his performance was the consequence of coming back too early from his mounting injuries and the stress they incurred on his body? And what if there had been a medical tool to monitor his recovery and assess when it was safe to return to competitive golf?

A Penn husband and wife team, who have been receiving support from the Penn Center for Innovation and legal advice from Penn Law students in the Detkin Intellectual Property & Technology Legal Clinic, are working on just such a system with the potential to help golf pros, major league pitchers recovering from Tommy John elbow surgery, and the guy down the block who tore up his knee playing pickup basketball.

Introducing a start-up company named Animotion. The principals hope to bring to market a system and device that analyzes an animal’s gait following surgery, and then determines the effectiveness of treatment and estimates recovery time — functions that now require expensive and sophisticated equipment.

“We’re trying to make something that is affordable where you can get real time data and we hope eventually will extend to human patients,” said Feini (Sylvia) Qu GR’17, V’19, a dual degree candidate in the School of Veterinary Medicine and Engineering who identified the need and created the technology with her husband, Peter Gebhard GEN’16, a senior programmer in the PRECISE embedded research group in the School
of Engineering and Applied Science.

Qu, who conducts orthopaedic research at the Perelman School of Medicine, recruited her husband to write the software and build the circuits used for tracking. He built the first model for $200 with basic parts he bought off the Internet.

A one-inch by two-inch red sensor board is strapped to an animal’s leg. The board’s accelerometer measures acceleration, the gyroscope tracks an animal’s rotational movements as it turns, and the magnetometer records magnetic field strength. It is similar in operation to a jogger’s Smartphone armband or devices that track calories burned, steps taken, or hours slept.

Early trials have been promising. Qu said the devices were able to ascertain with certainty that the surgeries were a success, tracing the pigs’ rate of recovery and final range of motion with an exactitude that hasn’t previously been possible.

The Animotion project demonstrates the value of collaboration at Penn, spanning as it does the School of Engineering, Veterinary Medicine, Penn Law, and the Penn Center for Innovation (PCI). Both PCI and Detkin Clinic students provided Animotion with market data that could help the company with future business decisions.

Michael Poisel heads PCI Ventures, which is working with Animotion through its UPstart program. UPstart assists faculty and staff members in the formation of companies to commercialize the significant amount of intellectual property generated by researchers at Penn. To date, UPstart has helped establish sixty companies in fields including therapeutics, healthcare management, diagnostics, medical devices, materials and information technology.

Companies like Animotion are called start-ups for a reason. They need investment and a business plan to survive. PCI handles all the little and big things — securing a business manager, finding space, structuring payroll, and booking insurance. Most of all, PCI works to attract funding, whether individual investors or federal grants.

“It’s a tough process to start a company,” Poisel said. “Right now, we have half of the companies funded. Another third of them have managers and the remaining fifteen percent are still looking for managers.”

Certainly, budding companies benefit from the free legal service offered through the Detkin Clinic, which Cynthia Dahl and her colleagues at Penn Law describe as “a teaching law firm,” like a teaching hospital, only in this case teaching future lawyers instead of doctors.

“We could come up with the idea, but the patents and legal issues, those were things we had no experience with,” said Gebhard, one of the creators of the device. “I felt like we were interacting with actual patent lawyers. Even though they had no background in engineering they were quick to pick up on the technical stuff and they asked really good questions.”

Danielle Diggins and Yasaman Rahmani-Givi, both 3L students, were assigned to the project during the fall semester. Both approached the work with a mixture of enthusiasm and concern. Neither knew much at first about patent law.

“It was pretty daunting at first,” admitted Rahmani-Givi, who studied history at the University of California at Los Angeles before coming to Penn Law.

Diggins, who studied philosophy and government at Claremont McKenna College, agreed. “It was very technical… It was kind of a situation where you’re thrown in the deep end and you have to swim.”

For the Animotion project, the students culled through dozens of patents, and then pared those down to five patents, which they analyzed in depth. Their research revealed that the Animotion invention was in fact unique, and helped to define a path to commercializing the system and method for human subjects. The team also confirmed that the potential market for wearable health-tracking devices was both a crowded and burgeoning field, encompassing everything from sleep-observing dog collar instruments to human activity-tracking bracelets like Fitbit.

“The more we reviewed the patents, the more we understood,” Diggins said. “We got a crash course on ‘freedom to operate’ versus ‘patentability.’” Simply put, freedom to operate means that an inventor can commercialize a product without infringing on an existing patent. With that knowledge, the students recommended the principals at Animotion emphasize certain aspects of their invention.

Diggins and Rahmani-Givi said they overcame their early frustration and learned you don’t have to be a tech whiz to add value to a project like this.

“I had this vision of patent law being very niche, that you have to have a lot of expertise to do it,” said Rahmani-Givi. “By the end, we felt we had a cohesive piece of work to give them, and that felt really nice.”

Dahl, director of the Detkin Clinic, said she views the partnership between PCI and Penn Law as beneficial to both the spirit of innovation at Penn and her students. Law students who take her seven-credit, time-intensive course assume a level of responsibility and get client exposure that they wouldn’t experience for years in private practice.

“Clinical programs have a huge impact because a lot of law firms … can’t bill clients to train their first year associates,” Dahl said. “Providing an opportunity to run the case for a real client is something we can offer our students that gives them a leg up when they start practice. It also gives the firms new associates that already have valuable experience that in many cases the firms wouldn’t be able to offer for a few years.”

By working on intellectual property cases, she said, students get to make all the case decisions and do the work, but operate with a safety net of supervising attorneys. And for many students, it is the first time that they are having such a direct impact on a real business concern.

With the help of the Detkin Clinic, Animotion has information that can help them refine their patent coverage and prepare to move the device from the animal to human market. There is early interest in the device. A professor at the veterinary school would like to test the monitoring device on lab rabbits. (It has only been tested on pigs thus far.)

Feini Qu, one of the inventors, said she is brushing up on her presentation skills so she knows how to explain her work to other researchers and potential investors. She audited a class at Wharton for that purpose. She and Peter Gebhard will also be entering their invention in several competitions that offer cash prizes.

“Many of the projects we take are poised for major success,” Dahl said. “In the four semesters that we’ve had the clinic, our clients have gone on to earn venture funding, win cash prizes, or accolades from the mayor (of Philadelphia). We haven’t gotten
any multimillion dollar ones yet, but this could be the one,” Dahl said of Animotion.