DCT
8:22-cv-01971
Wayne Calco v. Ossur Americas Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Wayne Calco (Individual)
- Defendant: Össur Americas, Inc. (California); ÖSSUR hf (Iceland)
- Plaintiff’s Counsel: George B. Piggott, A Professional Corp
- Case Identification: 8:22-cv-01971, C.D. Cal., 12/16/2022
- Venue Allegations: Venue is alleged as proper in the Central District of California because Defendant Össur Americas, Inc. is headquartered there and a substantial part of the events giving rise to the claims allegedly occurred there.
- Core Dispute: Plaintiff, an inventor, alleges that Defendant, a medical device company, breached a services agreement by incorporating his inventive concepts for an adjustable cervical collar into its product without paying royalties and by failing to name him as an inventor on a related patent.
- Technical Context: The technology concerns adjustable cervical collars used for medical immobilization of the neck and cervical spine, a field where proper fit and comfort are critical to clinical outcomes.
- Key Procedural History: The complaint references a "Services Agreement" dated October 29, 2015, which governs the parties' relationship regarding the development of the technology at issue. It also notes a prior state court action between the parties that was stayed in favor of the current federal case. The dispute is framed not as a direct patent infringement claim by a patent owner, but as a series of contract, fraud, and inventorship claims, including a request for a declaratory judgment that Defendant's own patent covers its own product, which would trigger a contractual royalty obligation to the Plaintiff.
Case Timeline
| Date | Event |
|---|---|
| 2015-10-29 | Services Agreement executed between Calco and Össur Americas, Inc. |
| 2016-02-25 | Priority date for U.S. Patent Nos. 10,512,559 and 11,478,374 |
| 2016-09-19 | Priority date for U.S. Patent No. 11,452,633 |
| 2017-01-31 | Services Agreement term expired |
| 2019-06-01 | Össur allegedly introduced the Miami J Select product to the marketplace (approx.) |
| 2019-12-24 | U.S. Patent No. 10,512,559 issued |
| 2021-05-24 | Original complaint in State Court Action filed |
| 2022-09-27 | U.S. Patent No. 11,452,633 issued |
| 2022-10-25 | U.S. Patent No. 11,478,374 issued |
| 2022-12-16 | First Amended Complaint filed in federal court |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 11,478,374: "Cervical Collar Having Height Adjustment" (Issued 10/25/2022)
The Invention Explained
- Problem Addressed: The patent's background section describes the challenge of designing cervical collars that balance immobilization with user comfort, noting that poorly fitting collars can lead to pressure sores, or decubitus ulcers, a serious complication of spinal immobilization (’374 Patent, col. 1:38-58). A key issue is accommodating different patient anatomies and changes in swelling during treatment (’374 Patent, col. 3:1-6).
- The Patented Solution: The invention is an improved cervical collar with an anterior component comprising a main support and a lower, sternum-facing support that are hingedly connected. This hinged connection, controlled by a lock mechanism, allows the angle between the two supports to be adjusted, thereby changing the effective height of the collar to customize the fit for individual patients (’374 Patent, Abstract; col. 3:7-16). This mechanism corresponds to what the complaint refers to as the "Sternum Adjustment" concept (Compl. ¶10).
- Technical Importance: This approach allows a single device to be adjusted for a variety of patient sizes and conditions, potentially improving clinical efficacy and reducing the need for multiple sizes of inventory (’374 Patent, col. 3:25-29).
Key Claims at a Glance
- The complaint asserts that at least claims 12 and 13 cover the accused product (Compl. ¶¶ 21, 28). Independent claim 12 is analyzed below.
- Claim 12 (Independent):
- A cervical collar with an anterior component, a main support, a lower support hingedly connected to the main support, and a sternum pad.
- An adjustment mechanism is located on the lower support, and the sternum pad is connected to it, making the pad movable relative to the lower support.
- The adjustment mechanism is specifically located on a ball joint and includes an "adjustment dial" and an "extension element" for adjusting the pad relative to the lower support.
- The complaint does not explicitly reserve the right to assert other dependent claims related to this patent.
U.S. Patent No. 11,452,633: "Cervical Collar" (Issued 09/27/2022)
The Invention Explained
- Problem Addressed: The patent identifies challenges with existing cervical collars, including inconvenient strap systems, clumsy adjustment mechanisms, and inadequate posterior components that can lead to poor fit, discomfort, and pressure points on the user's occiput (’633 Patent, col. 4:8-23).
- The Patented Solution: The patent describes a cervical collar with an anterior component that includes a main support and a pivoting intermediate support, which allows for height adjustment of a frontal opening (’633 Patent, Abstract). A key feature identified in the complaint is a "grip" on the intermediate support that facilitates this adjustment (’633 Patent, col. 12:25-38). The patent also details an improved posterior component for better occipital support and an improved strap system (’633 Patent, Abstract).
- Technical Importance: The invention seeks to provide a more convenient, secure, and anatomically supportive cervical collar through integrated improvements to its adjustment mechanism, posterior support structure, and strapping system (’633 Patent, col. 4:36-44).
Key Claims at a Glance
- The complaint alleges Plaintiff conceived the subject matter of dependent claim 5 and should have been named as an inventor (Compl. ¶¶ 38, 54).
- Claim 1 (Independent):
- A cervical collar with an anterior component comprising a main support and an intermediate support forming a frontal opening.
- The intermediate support has flanks that are pivotally attached to flanks of the main support.
- An adjustment mechanism connects the main and intermediate supports, including traction elements, a lock element, and a connector.
- Claim 5 (Dependent):
- The cervical collar of claim 1, wherein the intermediate support defines a "grip" located along the inner periphery of its front portion.
- The grip protrudes "outwardly obliquely relative to the central axis" from the inner periphery of the intermediate support.
III. The Accused Instrumentality
Product Identification
- The accused instrumentality is the Össur "Miami J Select" cervical collar, referred to as "Miami JS" (Compl. ¶11).
Functionality and Market Context
- The complaint alleges the Miami JS product incorporates two key features based on Plaintiff's concepts: the "Sternum Adjustment," which Össur markets as the "Sternal-Relief Dial," and the "Repeatable Fit Tabs" (Compl. ¶11). The Sternal-Relief Dial is described as providing "Simplified comfort adjustments" (Compl. ¶11).
- Additionally, the complaint alleges the Miami JS has a chin support assembly with a "grip," described as a "solid tab-like structure... protruding from the center of the front portion of the intermediate support," which allows a user to adjust the height of the chin support (Compl. ¶55).
- The complaint alleges that Össur has advertised these features as "patented" to induce consumers to purchase its product over competitors' products (Compl. ¶¶ 21, 28).
IV. Analysis of Infringement Allegations
The complaint does not allege direct infringement in a conventional manner. Instead, it seeks a declaratory judgment that Defendant’s ’374 Patent covers its own Miami JS product, which would allegedly trigger a contractual royalty obligation. For the ’633 Patent, the allegation is one of incorrect inventorship, based on the assertion that the Miami JS product embodies the inventive concept of claim 5, which Plaintiff alleges he conceived.
No probative visual evidence provided in complaint.
'374 Patent Coverage Allegations
| Claim Element (from Independent Claim 12) | Alleged Covering Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a cervical collar having... a lower support hingedly connected to the main support; a sternum pad; | The accused Miami JS product is a cervical collar that includes a "Sternum Adjustment" feature. | ¶21 | col. 12:51-54 |
| an adjustment mechanism located on the lower support and the sternum pad is connected thereto such that the sternum pad is movable relative to the lower support; | The Miami JS product incorporates a feature marketed as the "Sternal-Relief Dial" for making "comfort adjustments." | ¶11 | col. 12:55-59 |
| wherein the adjustment mechanism... has an adjustment dial and an extension element arranged for adjustably extending relative to the lower support. | The complaint identifies the accused feature as the "Sternal-Relief Dial," which maps to the "adjustment dial" limitation. The complaint does not provide sufficient detail for analysis of an "extension element." | ¶11 | col. 12:60-63 |
'633 Patent Inventorship-Related Allegations
| Claim Element (from Dependent Claim 5) | Alleged Embodied Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| The cervical collar of claim 1... | The accused product is the Miami JS cervical collar. | ¶11 | col. 24:2 |
| wherein the intermediate support defines a grip located along the inner periphery of the front portion of the intermediate support... | The Miami JS allegedly has a "solid tab-like structure that is an obvious touch point built into and protruding from the center of the front portion of the intermediate support," which functions as a grip for adjustment. | ¶55 | col. 24:3-5 |
| the grip protruding outwardly obliquely relative to the central axis from the inner periphery of the intermediate support. | The complaint describes the grip as "protruding from the center," but does not provide sufficient detail for analysis of whether it protrudes "outwardly obliquely." | ¶55 | col. 24:5-7 |
- Identified Points of Contention:
- Scope Questions: A central question for the ’374 Patent is one of evidence: what technical proof will be offered to demonstrate that the commercial "Sternal-Relief Dial" meets every limitation of claim 12, including the specific requirements of a "ball joint" and an "extension element," which are not detailed in the complaint? For the ’633 Patent, a question may arise regarding the scope of "outwardly obliquely," and whether the product's grip meets this specific directional and orientational requirement.
- Technical Questions: The primary technical question for the ’633 Patent claim is one of inventorship, not infringement: does the evidence show that Plaintiff's communication to an Össur employee (Compl. ¶55) constituted conception of the specific invention as recited in claim 5, meeting the legal standard for co-inventorship?
V. Key Claim Terms for Construction
The Term: "adjustment mechanism" (from ’374 Patent, claim 12)
Context and Importance: Plaintiff’s contract claim for royalties hinges on proving that the Miami JS product's "Sternal-Relief Dial" is an embodiment of the "adjustment mechanism" claimed in the ’374 Patent. The construction of this term will be central to that determination.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification discloses multiple distinct embodiments of an adjustment mechanism, including one using a dial and screw thread (’374 Patent, FIGS. 20-22B) and another using a rack and pinion system (’374 Patent, FIGS. 3A-4). This may support a construction that is not limited to any single embodiment.
- Evidence for a Narrower Interpretation: The language of claim 12 is specific, requiring the mechanism to be "located on a ball joint" and have both an "adjustment dial" and an "extension element." An argument could be made that the term must be construed to include all of these specific structural components, as detailed in the embodiment of Figures 20-22B (’374 Patent, col. 16:51-68).
The Term: "grip" (from ’633 Patent, claim 5)
Context and Importance: Plaintiff’s inventorship claim is tied directly to his alleged conception of this feature. The definition of "grip" will be critical in determining whether his alleged contribution corresponds to the patented invention.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification describes the grip functionally as a feature that "may protrude outwardly from the periphery of the intermediate support... to offer a relief portion for placing a finger or thumb for raising the intermediate support" (’633 Patent, col. 12:31-35). This functional description could support a broader meaning.
- Evidence for a Narrower Interpretation: Claim 5 itself adds specific structural and positional limitations, requiring the grip to be on the "inner periphery" and to protrude "outwardly obliquely." (’633 Patent, col. 24:3-7). This explicit language from the claim itself may support a narrower construction that requires this specific location and orientation.
VI. Other Allegations
- Indirect Infringement: While not a formal count, the complaint alleges that Defendant induces the public to purchase the Miami JS collar by representing that the "Sternum Adjustment and Repeatable Fit Tabs features are patented" (Compl. ¶¶ 21, 28). This allegation supports the complaint's broader claims of fraud and breach of contract.
- Willful Infringement: Willful infringement is not formally alleged. However, the complaint pleads allegations that involve a similar state of mind. The claim for fraud alleges Defendant's actions were "willful, intentional and committed in conscious disregard of CALCO’S rights" (Compl. ¶50). The claim for correction of inventorship alleges that Defendant "intentionally omitted CALCO as a named co-inventor" on the ’633 Patent to avoid paying royalties (Compl. ¶¶ 59-60).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of contractual obligation and patent coverage: Can Plaintiff compel royalty payments under the Services Agreement by obtaining a declaratory judgment that Defendant’s own ’374 Patent covers its Miami JS product, particularly if Defendant contests that coverage? This presents a hybrid question of contract law and claim construction.
- A key legal and factual question will be one of inventorship contribution: Does the evidence of Plaintiff’s communications regarding a "grip" concept meet the high legal bar for co-inventorship of claim 5 of the ’633 Patent, which requires proof of conception of the claimed subject matter?
- A central evidentiary question will be one of technical mapping: What evidence will be presented to prove that the commercial "Sternal-Relief Dial" of the Miami JS product embodies every specific limitation of claim 12 of the ’374 Patent, including elements such as a "ball joint" that are not described in the complaint?