DCT
8:19-cv-02157
Vincent Systems GmbH v. Ossur Americas Inc
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Vincent Systems GmbH (Germany)
- Defendant: Össur Americas, Inc. (California)
- Plaintiff’s Counsel: Turner Boyd LLP
- Case Identification: 8:19-cv-02157, C.D. Cal., 11/08/2019
- Venue Allegations: Venue is alleged to be proper as Defendant is a California corporation with its principal place of business in the district, where it has also committed acts of infringement and maintains a regular and established place of business.
- Core Dispute: Plaintiff alleges that Defendant’s "i-Digits" and "i-Limb" prosthetic hand and finger products infringe a patent related to the mechanical design of an independently functioning prosthetic finger element.
- Technical Context: The lawsuit concerns advanced myoelectric prosthetics, specifically the design of compact, durable, and life-like articulating finger elements for upper-extremity prostheses.
- Key Procedural History: The complaint alleges that Defendant had notice of the patent family since at least 2016 due to prior litigation in Germany involving a corresponding European patent (EP '129 Patent) asserted against Touch Bionics, a company later acquired by Defendant's parent. The complaint also notes that the European patent's validity was unsuccessfully challenged before the European Patent Office. This history is cited to support claims of knowledge and willfulness.
Case Timeline
| Date | Event |
|---|---|
| 2008-11-08 | '666 Patent Priority Date |
| 2013-07-23 | U.S. Patent No. 8,491,666 Issues |
| 2016-01-01 | Defendant allegedly has notice of patent family via German litigation (date cited as "since at least 2016") |
| 2019-11-08 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,491,666 - “Finger Element,” issued July 23, 2013
The Invention Explained
- Problem Addressed: The patent describes a challenge in prosthetics: creating an active, motorized finger element that is compact enough to mimic the dimensions of a natural finger (especially smaller fingers) and durable enough for a long lifetime, while being "autarkic," or self-contained, for use as a single-finger prosthesis (Compl. ¶12; ’666 Patent, col. 1:66-2:5). Prior designs were often too large, with drive mechanisms placed in the hand or arm, or had durability issues where the motor was directly exposed to operational loads (’666 Patent, col. 2:27-44).
- The Patented Solution: The invention is a self-contained finger element featuring a specific drive mechanism. A motor inside the first phalanx drives a threaded screw (worm), which engages a cog segment to move the finger joint (’666 Patent, Fig. 2). Crucially, the design decouples the threaded screw from the motor's drive shaft in the axial direction, allowing it to be "axially movable" and guided by separate components (’666 Patent, col. 2:27-38). This arrangement aims to isolate the motor from direct mechanical stress, improving durability and allowing for a more compact and resilient design.
- Technical Importance: This design sought to enable the creation of more realistic, independently powered, and robust prosthetic fingers that could be modularly incorporated into a range of prosthetic hands or used individually (’666 Patent, col. 2:1-5).
Key Claims at a Glance
- The complaint asserts infringement of at least independent Claim 1 (Compl. ¶18).
- The essential elements of Claim 1 include:
- A carrier component.
- A first phalanx connected to the carrier by a first hinge.
- A second phalanx connected to the first phalanx by a second hinge.
- A servo drive for the first hinge, which includes a motor, a drive shaft, and a worm gearing (with a threaded screw and a cog segment).
- A coupling mechanism between the first and second hinges.
- The threaded screw is "supported on the drive shaft form fittingly and axially movable as well as guided in axial direction by separate guidances."
- The complaint does not explicitly reserve the right to assert dependent claims but prays for relief for infringement of "one or more claims of the '666 Patent" (Compl. ¶9:7).
III. The Accused Instrumentality
Product Identification
Defendant’s “i-Digits” and “i-Limb” product lines (Compl. ¶16). This includes the i-Digits, i-Digits Quantum, i-Digits Access, i-Limb, i-Limb Quantum, and i-Limb Access products (Compl. ¶¶17, 19).
Functionality and Market Context
- The i-Digits products are described as "partial hand, including single finger, prostheses" (Compl. ¶17). An image from product literature shows various individual prosthetic digit options with different sizes and mounting plates (Compl. p. 6).
- The i-Limb products are described as "complete hand prostheses" that incorporate the disputed finger technology (Compl. ¶19). An image from product literature shows several fully assembled prosthetic hands of different sizes (Compl. p. 7).
- The complaint alleges that both product lines are prosthetic devices that provide articulated, motorized finger function, thereby competing directly with Plaintiff's technology (Compl. ¶¶7-9).
IV. Analysis of Infringement Allegations
The complaint alleges that the accused i-Digits and i-Limb products meet every element of at least Claim 1 of the '666 Patent, but it does not provide an element-by-element breakdown of its infringement theory (Compl. ¶¶18, 20). The following chart maps the claim elements to the general functionality of the accused products as described in the complaint.
'666 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a) a carrier component | The accused products are alleged to be finger elements that include a base or mounting structure for attachment. | ¶¶17, 19 | col. 4:38-43 |
| b) a first phalanx with a first hinge connection to the carrier component | The accused products are articulated prosthetic fingers alleged to have a first segment (phalanx) connected to a base via a hinge. | ¶¶17, 19 | col. 4:44-47 |
| c) a second phalanx with a second hinge connection to the first phalanx | The accused products are articulated prosthetic fingers alleged to have a second segment connected to the first segment via a hinge. | ¶¶17, 19 | col. 4:47-50 |
| d) a servo drive for the first hinge connection with a motor with a drive shaft and a worm gearing with a threaded screw and a cog segment that engages to the threaded screw | The complaint alleges the accused products contain a self-contained motorized drive mechanism to articulate the finger joints. | ¶¶13, 18, 20 | col. 4:61-64 |
| e) a coupling mechanism between the first hinge connection and the second hinge connection | The accused products are alleged to have a mechanism that coordinates the movement of the two phalanges. | ¶¶13, 18, 20 | col. 4:51-59 |
| f) the threaded screw is supported on the drive shaft form fittingly and axially movable as well as guided in axial direction by separate guidances | The complaint’s infringement allegation rests on the assertion that the accused products' internal drive mechanism operates in the manner claimed by the patent. | ¶¶13, 18, 20 | col. 2:27-38 |
Identified Points of Contention
- Technical Questions: A central question will be whether the internal drive mechanism of the i-Digits and i-Limb products actually functions as claimed. The complaint does not provide schematics or a technical teardown of the accused products. The key dispute will likely focus on whether the accused drive mechanism includes a threaded screw that is "axially movable" relative to the drive shaft and is guided by "separate guidances," as required by limitation (f) of Claim 1.
- Scope Questions: The complaint alleges infringement by a broad range of products, from single-digit prostheses to full hands (Compl. ¶¶17, 19). Discovery may reveal design variations among these products, raising the question of whether every accused model contains the specific drive assembly recited in Claim 1.
V. Key Claim Terms for Construction
- The Term: "axially movable"
- Context and Importance: This term, appearing in the final limitation of Claim 1, is central to the patent's purported inventive concept of decoupling the drive motor from axial loads (’666 Patent, col. 2:27-38). The infringement analysis will depend heavily on whether the accused device's threaded screw has this specific type of "axially movable" relationship with its drive shaft. Practitioners may focus on this term because it defines the core mechanical distinction the patent asserts over the prior art.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification does not strictly limit the mechanism, stating the screw is "pushed onto the drive shaft" and connected via a "key-slot-connection" which could suggest that any non-rigid axial connection meets the limitation (’666 Patent, col. 4:61-67).
- Evidence for a Narrower Interpretation: The patent repeatedly emphasizes the purpose is to ensure the "motor does not serve via the drive shaft as axial guidance of the threaded screw," and instead relies on "separate guidances" (’666 Patent, col. 2:35-38). An embodiment describes "sliding guidances at both front edges of the threaded screw" (’666 Patent, col. 2:38-39). This could support a narrower construction requiring a distinct and separate guiding structure that fully manages the screw's axial position.
VI. Other Allegations
- Indirect Infringement: The complaint does not contain a specific count for indirect infringement, but it does reference product manuals for the accused devices (e.g., "A Clinician Manual for the i-Digits and i-Digits Quantum product is attached as Exhibit D") (Compl. ¶¶20-21, 23). This could form the basis for a later claim of induced infringement.
- Willful Infringement: Willfulness is alleged based on Defendant’s purported knowledge of the patent family since at least 2016. This knowledge is attributed to prior German litigation over a corresponding European patent involving companies that Defendant’s parent, Össur Hf, later acquired (Compl. ¶¶21-24, 30). The complaint also alleges that the validity of the European counterpart was upheld against a challenge, further supporting the allegation of knowing infringement (Compl. ¶25).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of technical fact-finding: does the internal drive mechanism of the accused Össur products, particularly the relationship between the threaded screw and drive shaft, practice the specific "axially movable" and "separate guidances" architecture required by Claim 1? The complaint's lack of technical detail on the accused products makes this the primary open question.
- A second key issue will be one of claim construction: how much, if any, axial play is required to meet the "axially movable" limitation? The court's interpretation of this term—whether it requires complete axial independence or allows for some degree of shared support—will likely determine the outcome of the infringement analysis.
- The history of foreign litigation will be a key factor in the willfulness inquiry. A critical question will be whether knowledge of a European counterpart patent and related litigation can be imputed to the U.S. defendant to establish the requisite knowledge and intent for willful infringement of the asserted U.S. patent.