DCT
8:18-cv-00133
CAO Group Inc v. Biolase Technology Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: CAO Group, Inc. (Utah)
- Defendant: Biolase Technology, Inc. (Delaware)
- Plaintiff’s Counsel: Shields Law Offices
- Case Identification: 8:18-cv-00133, C.D. Cal., 01/23/2018
- Venue Allegations: Plaintiff alleges venue is proper in the Central District of California because Defendant’s principal place of business is located in Irvine, California, within the district.
- Core Dispute: Plaintiff alleges that Defendant’s line of dental laser products infringes four patents related to modular surgical laser systems.
- Technical Context: The technology at issue involves portable and modular semiconductor laser systems used for dental and other soft-tissue surgical procedures, a market where usability and portability are key features.
- Key Procedural History: Plaintiff CAO Group, Inc. asserts it is the owner by assignment of all four patents-in-suit. The complaint alleges Defendant had actual notice of the patents-in-suit as of at least October 31, 2017, which forms the basis for the willfulness allegations.
Case Timeline
| Date | Event |
|---|---|
| 2007-02-21 | Earliest Priority Date for '097, '457, '040, and '883 Patents |
| 2012-12-25 | '097 Patent Issued |
| 2014-09-16 | '457 Patent Issued |
| 2015-02-24 | '040 Patent Issued |
| 2015-03-03 | '883 Patent Issued |
| 2017-10-31 | Alleged Date of Actual Notice to Defendant |
| 2018-01-23 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,337,097 - "MODULAR SURGICAL LASER SYSTEMS," issued December 25, 2012
The Invention Explained
- Problem Addressed: The patent seeks to improve upon existing semiconductor laser systems for medical and dental use, which required enhancement in areas like fiber management and the use of disposable tips to increase adoption by practitioners (ʼ097 Patent, col. 1:21-28).
- The Patented Solution: The invention describes a modular surgical laser system centered on a self-contained, portable console. This console integrates a laser generation module, control electronics, a battery pack for portability, and a touch screen for user interface, and is controlled by a wireless footswitch (ʼ097 Patent, col. 1:40-54; Abstract). The system is designed for use with a disposable laser application tip connected via a specific mechanical structure.
- Technical Importance: The invention aimed to increase the usability and portability of surgical lasers by integrating key components into a single, battery-operated console and enabling wireless control (ʼ097 Patent, col. 1:33-42).
Key Claims at a Glance
- The complaint asserts infringement of independent claim 1 (Compl. ¶46).
- Claim 1 requires a system comprising:
- A portable console that includes a laser generation module, control electronics, a screen, a battery pack, and a laser transmission fiber with a ferrule-encased end.
- A laser application tip that is attachable to the transmission fiber.
- A connection structure to join the tip and fiber, which itself comprises a fiber seating structure and an outer casing.
- A remote control foot switch in wireless communication with the laser generation module.
- The complaint reserves the right to assert other claims (Compl. ¶46).
U.S. Patent No. 8,834,457 - "MODULAR SURGICAL LASER SYSTEMS," issued September 16, 2014
The Invention Explained
- Problem Addressed: The patent addresses the need for an improved laser system that is easy to use, particularly regarding the connection and use of replaceable, sterile surgical tips (ʼ457 Patent, col. 1:36-42).
- The Patented Solution: The invention discloses a laser transmission system focused on the mechanical interface between a handpiece and a removable tip. The claimed tip has a specific multi-part structure: a casing with a "cannular portion" (a tube-like extension), a short fiber held within the cannular portion, and a connector that encases one end of this fiber. This assembly creates a space for the handpiece's attachment structure to connect, aligning the main laser fiber with the fiber in the tip ('457 Patent, col. 7:45-8:2).
- Technical Importance: This design allows for pre-angled, disposable tips that can be easily and securely attached to a handpiece, providing sterility and enabling precise application angles without stressing the delicate optical fibers ('457 Patent, col. 8:1-10).
Key Claims at a Glance
- The complaint asserts infringement of independent claim 1 and dependent claims 2-3 (Compl. ¶53).
- Claim 1 requires a system comprising:
- A laser generation module and a laser transmission fiber with a ferrule-encased free end.
- A handpiece configured for connection to the fiber's free end.
- A removable tip with a casing, a cannular portion, a channel, a short fiber within the channel, and a connector encasing the short fiber's end.
- A space between the casing and the connector for receiving the handpiece's tip attachment structure.
- The claim further requires that the ferrule and connector align for laser transmission and that the channel angles the short fiber between zero and ninety degrees.
- The complaint reserves the right to assert other claims (Compl. ¶53).
U.S. Patent No. 8,961,040 - "MODULAR SURGICAL LASER SYSTEMS," issued February 24, 2015
- Technology Synopsis: This patent claims a different system architecture from the ’097 Patent. The invention is a system comprising a wireless handheld laser generation module that contains the laser and its controls. This handheld module communicates wirelessly with a separate control console and a remote foot switch ('040 Patent, Claim 1).
- Asserted Claims: The complaint asserts infringement of at least claims 1 and 2 (Compl. ¶60).
- Accused Features: The complaint alleges that the Epic™ X device, as an example, infringes by having a handheld laser generation module, a separate control console (in connection with a foot switch), and a wireless foot switch (Compl. ¶¶ 32, 37-38).
U.S. Patent No. 8,967,883 - "MODULAR SURGICAL LASER SYSTEMS," issued March 3, 2015
- Technology Synopsis: This patent claims a system architecture similar to the '097 Patent but with more specific structural language. The invention is a system where a laser generation module and control electronics are explicitly housed within a portable console, which also has a touch screen GUI and connects to a laser application tip and a wireless foot switch ('883 Patent, Claim 1).
- Asserted Claims: The complaint asserts infringement of at least claim 1 (Compl. ¶67).
- Accused Features: The complaint alleges that the Epic and ezlase® devices infringe by having a portable console that houses the laser generation module and control electronics, along with a touch screen, fiber, tip, and wireless foot switch (Compl. ¶¶ 39-41).
III. The Accused Instrumentality
Product Identification
- The complaint names the "ezlase®, iLase™, Epic®, Epic™ Pro, Epic™ 10, Epic™ S, Epic™ T, Epic™ V, and Epic™ X" dental lasers, collectively referred to as the "Accused Devices" (Compl. ¶18).
Functionality and Market Context
- The complaint describes the Accused Devices as medical and dental laser systems marketed worldwide (Compl. ¶¶18, 43). Based on the allegations, the accused functionality includes a main console (either portable or separate) containing a laser generation module, a handpiece, a laser transmission fiber, and a removable/attachable application tip (Compl. ¶¶19, 23). The systems are allegedly controlled by a remote wireless foot switch (Compl. ¶¶22, 38).
- The complaint alleges that the various "Epic" and "ezlase" models are substantively similar with respect to the features recited in the patent claims (Compl. ¶42).
IV. Analysis of Infringement Allegations
No probative visual evidence provided in complaint.
’097 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A portable consol further comprising a laser generation module, control electronics, at least one screen, a battery pack, and a laser transmission fiber... | The Epic™ X device is a laser transmission system that includes a portable console having a laser generation module, control electronics, a screen, a battery pack, and a laser transmission fiber. | ¶19 | col. 2:59-66 |
| A laser application tip attachable to the laser transmission fiber through attachment structure | The Epic™ X device includes a laser application tip that is attachable to the laser transmission structure. | ¶20 | col. 3:1-3 |
| Connection structure to join the tip and laser transmission fiber, said structure further comprising: i. A fiber seating structure capable of receiving the ferrule; ii. An outer casing capable of receiving the seating structure and tip attachment structure | The Epic™ X device includes connection structure to join the tip to the fiber. This structure includes a fiber seating structure for receiving a ferrule and an outer casing for receiving the seating structure and tip attachment structure. | ¶21 | col. 8:11-14 |
| A remote control foot switch in wireless communication with the laser generation module and will control at least one function of the laser transmission system. | The Epic™ X device includes a remote control foot switch in wireless communication with the laser generation module, which controls whether the laser is generated. | ¶22 | col. 3:14-18 |
Identified Points of Contention (’097 Patent)
- Technical Questions: The infringement theory appears to map the complaint's description of the accused product directly onto the claim elements. A key factual question for the court will be whether the accused "connection structure" operates in the specific manner required by the two sub-elements of the claim, involving both a "fiber seating structure" and an "outer casing" that receives it.
’457 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a laser transmission fiber having a first end connected to the laser generation module and having a free end encased in a ferrule; | The laser transmission fiber of each of the Accused Devices includes a first end connected to the laser generation module and a free end encased in a ferrule. | ¶24 | col. 7:25-28 |
| a handpiece configured for connection to the free end of the laser transmission fiber and having a tip attachment structure; | The handpiece of each of the Accused Devices is configured for connection to the free end of the laser transmission fiber, and has a tip attachment structure. | ¶25 | col. 7:29-31 |
| a removable tip configured for attachment to the handpiece, the removable tip comprising: a casing from which a cannular portion extends... | The removable tip of each of the Accused Devices is configured for attachment to the handpiece, and includes a casing from which a cannular portion extends. | ¶26 | col. 7:32-35 |
| a connector that encases the second end of the fiber, the connector held within the casing and proximate to the channel; | The removable tip of each of the Accused Devices also includes a connector that encases an end of the fiber, with the connector held within the casing and proximate to the channel. | ¶28 | col. 7:40-43 |
| a space formed between the casing and the connector into which the tip attachment structure of the handpiece is connected; | The removable tip of each of the Accused Devices also includes a space formed between the casing and the connector into which the tip attachment structure of the handpiece is connected. | ¶29 | col. 7:44-47 |
| the ferrule encasing the laser transmission fiber and the connector encasing the short piece of fiber are aligned for laser transmission... | In each of the Accused Devices...the ferrule encasing the laser transmission fiber and the connector encasing the short piece of fiber are aligned for laser transmission... | ¶30 | col. 8:3-7 |
Identified Points of Contention (’457 Patent)
- Scope Questions: The infringement analysis for the ’457 Patent may focus on the precise meaning of structural terms like "cannular portion" and "connector." The dispute could turn on whether the physical components of the accused tips correspond to these claimed structures.
- Technical Questions: A central evidentiary question will be whether the accused removable tips contain the specific, multi-part connection mechanism as claimed. This includes the presence of a distinct "connector" held within a "casing" with a "space" between them for attachment, a detailed structural configuration that will require factual proof beyond the pleadings.
V. Key Claim Terms for Construction
'097 Patent, Claim 1
- The Term: "portable consol"
- Context and Importance: The definition of "portable" is fundamental to the scope of the claim. Defendant may argue for a narrow construction limited by the specification's embodiments, while Plaintiff may advocate for a broader, ordinary meaning.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The term itself suggests a primary characteristic of being easily movable, which could be argued as its plain and ordinary meaning.
- Evidence for a Narrower Interpretation: The specification consistently describes the console embodiment as having a "battery pack 105 to make the unit operable by battery" ('097 Patent, col. 2:62-64). A defendant could argue that true portability, as taught by the patent, requires battery operation, potentially excluding devices that must be plugged in.
'457 Patent, Claim 1
- The Term: "connector that encases the second end of the fiber"
- Context and Importance: This term is critical because it defines a specific component within the disposable tip that is separate from the "casing" and the "ferrule" on the main fiber. Practitioners may focus on this term because infringement depends on the accused tip having this distinct, claimed part.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim language itself does not specify the material or exact shape of the "connector," potentially allowing it to read on any structure that "encases" the fiber end within the tip.
- Evidence for a Narrower Interpretation: Figure 7a shows a "fiber connector 707" as a distinct part inside the tip's housing. Figure 7b shows "connector 713." A defendant may argue that the term is limited to a discrete component analogous to these figures, rather than an integral part of the tip's molding.
VI. Other Allegations
- Indirect Infringement: The complaint includes allegations of induced and contributory infringement for all four patents (e.g., Compl. ¶¶ 47, 54, 61, 68). The pleading states these allegations in a conclusory manner and does not specify the factual basis, such as citing instructional materials or user manuals that might encourage infringing acts.
- Willful Infringement: Willfulness is alleged for all patents-in-suit. The stated basis for this claim is Defendant's alleged actual notice of the patents since "at least October 31, 2017," and potentially as early as the issue date of each patent, followed by continued alleged infringement (Compl. ¶¶ 44, 51, 58, 65, 72).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of architectural scope: The asserted patents claim distinct system architectures—the '097 and '883 Patents cover systems with a laser generator inside a portable console, while the '040 Patent covers a system with a handheld laser generator separate from its control console. The case may turn on a detailed comparison of each accused product's architecture to determine which, if any, of the asserted patent claims it reads on.
- A key evidentiary question will be one of structural correspondence: For the '457 Patent in particular, the infringement analysis will depend on whether the accused disposable tips contain the specific, multi-part connection mechanism recited in the claims. The outcome will likely depend on a granular, component-by-component comparison of the accused tip to claim elements like the "casing," "connector," and the "space" formed between them.
- A third question will relate to claim differentiation: Given the overlapping subject matter and shared specification among the patents, the court will need to determine whether the asserted claims of the different patents are patentably distinct and whether the accused products, which are accused of infringing multiple patents, actually practice the specific combination of features required by each separate patent's claims.