DCT
8:17-cv-00979
Joimax Inc v. Surgical Orthopedic Implants Inc
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Joimax, Inc. (Delaware)
- Defendant: Surgical Orthopedic Implants, Inc. d/b/a MaxSpine (Florida)
- Plaintiff’s Counsel: Kushner Carlson, A Professional Law Corporation
- Case Identification: 8:17-cv-00979, C.D. Cal., 06/07/2017
- Venue Allegations: Venue is asserted based on Defendant's alleged infringing acts, substantial and systematic business presence, and sales of accused products within the district, as well as the operation of an interactive commercial website accessible to consumers in the district.
- Core Dispute: Plaintiff alleges that its former distributor, Defendant, developed and sold unauthorized, reusable versions of Plaintiff's patented disposable surgical reamers, infringing four patents related to the design and manufacture of such tools for minimally invasive spinal surgery.
- Technical Context: The technology involves specialized surgical cutting tools, known as reamers or milling cutters, designed for precise bone removal in delicate endoscopic spinal procedures.
- Key Procedural History: The complaint alleges that the parties entered into a Distribution Agreement, which gave Defendant access to Plaintiff's products. Plaintiff alleges that Defendant used this access to create "counterfeit" versions of its reamers. Plaintiff states it sent a letter to Defendant on February 1, 2017, providing notice of the alleged infringement prior to filing the lawsuit.
Case Timeline
| Date | Event |
|---|---|
| 2005-10-26 | Earliest Priority Date for ’021 Patent |
| 2006-09-27 | Earliest Priority Date for ’937 Patent |
| 2006-11-27 | Earliest Priority Date for ’378 Patent |
| 2009-05-12 | Earliest Priority Date for ’546 Patent |
| 2012-09-18 | Issue Date for U.S. Patent No. 8,267,937 |
| 2013-05-28 | Issue Date for U.S. Patent No. 8,449,546 |
| 2014-01-07 | Issue Date for U.S. Patent No. 8,623,021 |
| 2014-09-02 | Issue Date for U.S. Patent No. 8,821,378 |
| 2016-06-24 | Parties enter into Distribution Agreement |
| 2017-02-01 | Plaintiff sends letter to Defendant regarding alleged infringement |
| 2017-06-07 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,267,937 - “Method for Determining a Tooth Period Length of a Bone Milling Cutter”, issued September 18, 2012
The Invention Explained
- Problem Addressed: The patent describes the challenge of manufacturing bone milling cutters for spinal surgery, which must be extremely precise and tough but are often produced in small, expensive batches. A key difficulty is dimensioning the cutter's teeth to balance stability (resisting blunting) with effective material removal. (Compl. Ex. C, ’937 Patent, col. 1:36-54).
- The Patented Solution: The invention is a method for manufacturing these cutters by first calculating optimal tooth dimensions. The method involves taking the cutter's diameter, a desired tooth height, and parameters from a predefined "tooth period pattern" to calculate the ideal tooth length and spacing. The number of teeth is then rounded to an even number, which ensures a point-symmetrical arrangement on the cutter head. This symmetry simplifies manufacturing and enhances the tool's stability during use. (Compl. Ex. C, ’937 Patent, Abstract; Fig. 2).
- Technical Importance: This calculation-based approach enables the automated and cost-effective production of dimensionally-optimized, high-performance bone milling cutters tailored to specific surgical applications. (Compl. Ex. C, ’937 Patent, col. 2:13-20).
Key Claims at a Glance
- The complaint asserts at least one unspecified claim of the ’937 Patent (Compl. ¶33). Independent claims 1 and 11 are directed to a method of manufacturing.
- The essential elements of independent claim 1 include:
- Providing a tubular milling cutter shaft.
- Determining the shaft's tube circumference.
- Ascertaining a desired average tooth height.
- Determining a desired tooth period length from the tooth height using given parameters of a tooth period pattern.
- Dividing the circumference by the desired tooth period length and rounding the result to an even number.
- Dividing the circumference by that even number to obtain an actual tooth period length.
- Mechanically forming a plurality of teeth on the shaft based on the calculated actual tooth period length.
U.S. Patent No. 8,449,546 - “Spine Cutter”, issued May 28, 2013
The Invention Explained
- Problem Addressed: The patent notes that prior art cutters for the delicate cervical spine may not be gentle enough, creating a risk of injuring surrounding delicate tissues. (Compl. Ex. D, ’546 Patent, col. 1:29-33).
- The Patented Solution: The patent discloses a spine cutter with teeth formed by grooves cut into the tool's cylindrical wall. These grooves are designed to become deeper and wider as they approach the distal (cutting) end. This geometry results in teeth that narrow towards their tips while increasing in height, a configuration intended to produce a gentler, more precise cutting action. (Compl. Ex. D, ’546 Patent, Abstract; col. 1:41-52).
- Technical Importance: This specific cutter geometry is designed to enhance surgical safety by enabling gentler cutting and reducing the risk of collateral tissue damage during spinal procedures. (Compl. Ex. D, ’546 Patent, col. 2:9-11).
Key Claims at a Glance
- The complaint asserts at least one unspecified claim of the ’546 Patent (Compl. ¶33). Independent claim 1 is directed to an apparatus, specifically a set of cutters.
- The essential elements of independent claim 1 include:
- A set of at least three cutters.
- Each cutter having a cylindrical shank with a wall defining grooves and teeth.
- The grooves' depth increases towards the distal end.
- The distance between the teeth (outer radial extents) increases towards the distal end.
- The cutters are sized such that the external diameter of a first cutter corresponds at most to the internal diameter of a second, larger cutter, allowing them to be nested.
Multi-Patent Capsule: U.S. Patent No. 8,623,021 - “Facet Joint Reamer”, issued January 7, 2014
- Technology Synopsis: This patent addresses the problem of inefficient removal of cut bone material during facet joint surgery (Compl. Ex. E, ’021 Patent, col. 1:25-30). The invention is a reamer with a distal cutting end that is wider than the main shank, a feature designed to improve the entry of cut material into the tool for subsequent removal. The patent also discloses an axially projecting lip on the reamer to protect nearby nerves from the cutting teeth (Compl. Ex. E, ’021 Patent, Abstract).
- Asserted Claims: At least one unspecified claim. Independent claims are 1 and 11. (Compl. ¶33).
- Accused Features: The "Infringing Reamers" are accused of infringing the patent, with the infringement theory appearing to focus on the overall structure, particularly any widening of the reamer's distal end. (Compl. ¶¶ 26, 33).
Multi-Patent Capsule: U.S. Patent No. 8,821,378 - “Device and Method for Minimally Invasive Spinal Intervention”, issued September 2, 2014
- Technology Synopsis: This patent addresses the challenge of removing bone that obstructs access during minimally invasive spinal procedures (Compl. Ex. F, ’378 Patent, col. 2:6-17). The invention is a device where the surgical cannula itself is constructed as a hollow cutting tool, with a cutting edge integrated into the wall of its distal end. This allows a surgeon to cut or file away bone while simultaneously maintaining observation through an endoscope placed within the cannula (Compl. Ex. F, ’378 Patent, Abstract).
- Asserted Claims: At least one unspecified claim. Independent claims include 1 (device), 29 (method), and 46 (device). (Compl. ¶33).
- Accused Features: The "Infringing Reamers" are accused of embodying the patented "hollow cutting tool." (Compl. ¶¶ 26, 33).
III. The Accused Instrumentality
- Product Identification: The complaint identifies the accused products as the "Infringing Reamers" (Compl. ¶26).
- Functionality and Market Context: The complaint alleges the Infringing Reamers are "all-metal, and purportedly re-usable counterfeit versions" of Plaintiff's own reamers (Compl. ¶26). The core functional allegation is that they are "identical copies of the Reamers, except that Defendant replaced the plastic connectors with identical metal connectors, so that they could be re-usable" (Compl. ¶26). A photograph in Exhibit J depicts three long, cylindrical metal tools, identified as the "Infringing Reamers" (Compl. ¶26, Ex. J). Defendant, a former distributor for Plaintiff, is alleged to have placed these reamers into Plaintiff's TESSYS System surgical trays and marketed them to surgeons and medical centers as if they were Plaintiff's products, but at an increased cost, thereby increasing its own profit margins (Compl. ¶¶ 27, 28).
IV. Analysis of Infringement Allegations
The complaint does not provide a detailed claim chart or map specific features of the Accused Instrumentality to the patent claims. The infringement theory is predicated on the allegation that the Infringing Reamers are "identical copies" of Plaintiff's commercial products, which are presumably covered by the patents-in-suit (Compl. ¶26).
- ’937 Patent Infringement Allegations
The complaint does not provide sufficient detail for a complete analysis of infringement for this method patent. The allegations are directed at the "Infringing Reamers" (an apparatus), while the patent claims a method of manufacturing. The analysis below is based on the inference that Defendant is accused of practicing the claimed method to produce the accused reamers.
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| determining a desired tooth period length of the milling cutter toothing from the desired tooth height at given parameters for a tooth period pattern... | The complaint does not allege specific facts about Defendant's design or calculation process. The infringement theory appears to rest on the assertion that the resulting dimensions of the Infringing Reamers are identical to those of Plaintiff's products, which are designed according to the patented method. | ¶26, ¶33 | col. 8:43-49 |
| dividing the tube circumference by the desired tooth period length to form a divided result and rounding said divided result to an even number value... | The complaint provides no evidence of Defendant's manufacturing process. Infringement of this step would need to be proven through discovery or inferred from the final product's characteristics, such as having an even number of symmetrically arranged teeth. | ¶26, ¶33 | col. 8:50-54 |
| mechanically removing or severing material to form a plurality of teeth... based on said actual tooth period length... | Defendant is accused of manufacturing the Infringing Reamers, which are alleged to be identical copies of Plaintiff's reamers and thus have a plurality of teeth formed with the dimensional relationships that result from the patented method. | ¶26, ¶33 | col. 9:55-61 |
Identified Points of Contention (’937 Patent):
- Evidentiary Questions: The central dispute will likely be evidentiary. Since Claim 1 is a method claim, Plaintiff must prove that Defendant actually performs the specific calculation, rounding, and manufacturing steps recited. The complaint provides no direct evidence of Defendant's manufacturing process, raising the question of how Plaintiff will prove these affirmative acts.
- Legal Questions: Can infringement of a method for manufacturing be proven solely by analyzing the resulting product? The court will have to consider whether the dimensions of the accused reamers are so unique that they could only have been produced by practicing the patented method.
’546 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A set of at least three cutters... | The complaint does not specify whether Defendant sells the Infringing Reamers as a "set." However, it alleges Defendant placed them into Plaintiff's "TESSYS System" surgical bins, which contain multiple instruments, and that Defendant developed "counterfeit versions of the Reamers" (plural). | ¶26, ¶27 | col. 5:29 |
| each of said grooves being located between one of said outer radial extents and another one of said outer radial extents... whereby a depth of said grooves increases towards the distal end... | The Infringing Reamers are alleged to be "identical copies" of Plaintiff's commercial products and are thus alleged to incorporate the claimed groove structure where the groove depth increases toward the cutting end of the tool. | ¶26, ¶33 | col. 5:39-56 |
| wherein a first cutter has an external diameter that corresponds at most to an internal diameter of a next larger second cutter... whereby the cutters can be pushed one into the other. | The complaint alleges Defendant made "versions of the Reamers" (plural). If these reamers are identical copies of Plaintiff's set, they would allegedly possess the claimed nesting-diameter relationship. | ¶26, ¶33 | col. 6:1-6 |
- Identified Points of Contention (’546 Patent):
- Scope Questions: A primary question will be the scope of the term "a set." The court may need to determine if infringement requires the accused reamers to be packaged and sold together as a single unit, or if selling them individually for use together in a surgical system constitutes infringement of the claimed "set."
- Technical Questions: A factual dispute may arise over whether the accused reamers, upon inspection and measurement, actually meet the specific geometric limitations of the claim, such as the requirement that the groove depth "increases towards the distal end" and that the cutters have the claimed nesting-diameter relationship.
V. Key Claim Terms for Construction
’937 Patent:
- The Term: "determining a ... tooth period length ... from ... given parameters for a tooth period pattern" (Claim 1)
- Context and Importance: This term recites the core calculation step of the method. Practitioners may focus on this term because the infringement analysis will depend on whether Defendant is found to have performed this specific act of "determining" based on "given parameters." The case may turn on whether simply copying a final product's dimensions constitutes performing this claimed step.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification describes the step in general terms as "ascertaining the desired tooth period length ... from the desired tooth height at given parameters of a tooth period pattern" (’937 Patent, col. 2:3-6), which might support a finding that any process that uses height to derive length according to a pattern meets the limitation.
- Evidence for a Narrower Interpretation: The specification provides highly specific mathematical relationships for different toothing types (e.g., length being 2/3 of height for one tooth and 1/3 for another) (’937 Patent, col. 6:15-20). A defendant could argue that the term is limited to these specific, explicitly disclosed "parameters."
’546 Patent:
- The Term: "A set of at least three cutters" (Claim 1)
- Context and Importance: The claimed invention is not a single cutter, but a "set." The definition of this term is critical because infringement hinges on whether Defendant makes, uses, or sells what the law considers to be a "set." If Defendant sells reamers only as individual, standalone items, it may not be directly infringing this claim.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent's specification repeatedly discusses cutters of different sizes being designed to work together, for instance, by being pushed "one into the other" (’546 Patent, col. 5:10-11). Plaintiff may argue this functional interrelationship defines the "set," regardless of packaging.
- Evidence for a Narrower Interpretation: The claim preamble explicitly claims "A set." Defendant may argue this requires the cutters to be aggregated and sold as a single commercial unit. The specification provides a table listing dimensions for a "set of cutters" with three distinct sizes, which could support the interpretation of a discrete, defined grouping. (’546 Patent, col. 4:55-65).
VI. Other Allegations
- Indirect Infringement: The complaint includes boilerplate allegations of induced and contributory infringement (Compl. ¶33). However, it does not plead specific facts to support these claims, such as alleging that Defendant instructed its customers to use the reamers in a manner that infringes a method claim. The primary theory of infringement appears to be direct.
- Willful Infringement: The complaint alleges willful infringement based on Defendant's alleged "actual and/or constructive knowledge" of the Asserted Patents (Compl. ¶34). This allegation is supported by specific factual assertions, including the prior Distribution Agreement between the parties and a pre-suit notice letter sent by Plaintiff to Defendant on February 1, 2017 (Compl. ¶¶ 9, 30, 34).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue for the ’937 patent will be one of evidentiary proof for a method claim: can Plaintiff demonstrate that Defendant actually practiced the specific calculation and rounding steps of the claimed manufacturing method, or will the analysis be limited to whether Defendant merely copied the physical embodiment of a product made by that method?
- A key legal question for the ’546 patent will be one of definitional scope: does the term "a set of at least three cutters" require the accused reamers to be packaged or sold as a single commercial unit, or can infringement be found if Defendant sells individual reamers intended for use together in a surgical system?
- A central factual question across all asserted patents will be one of technical identity: beyond the general allegation of being "identical copies," what is the specific technical evidence that the accused "Infringing Reamers" meet every geometric, dimensional, and relational limitation recited in the asserted claims?