DCT
5:21-cv-01129
Carl Zeiss X Ray Microscopy Inc v. Sigray Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Carl Zeiss X-Ray Microscopy, Inc. (Delaware)
- Defendant: Sigray, Inc. (Delaware)
- Plaintiff’s Counsel: Fish & Richardson P.C.
- Case Identification: 1:20-cv-01102, D. Del., 11/18/2020
- Venue Allegations: Plaintiff alleges venue is proper in the District of Delaware as Defendant is a Delaware corporation.
- Core Dispute: Plaintiff alleges that Defendant’s X-ray microscopy products infringe patents related to scintillator optical systems and high-resolution x-ray imaging.
- Technical Context: The dispute centers on high-resolution x-ray microscopy, a technology used for non-destructive, sub-micron level imaging of samples in industrial, research, and medical applications.
- Key Procedural History: The complaint alleges a unique history between the parties. Plaintiff Carl Zeiss acquired Xradia, the original assignee of the patents-in-suit, in 2013. Shortly thereafter, Defendant Sigray was founded by Dr. Wenbing Yun, a co-founder of Xradia and a named inventor on both asserted patents. The complaint further alleges that Defendant hired other key technical personnel and inventors from Xradia. These allegations form the basis for parallel trade secret misappropriation claims and are noted in support of willful patent infringement.
Case Timeline
| Date | Event |
|---|---|
| 2003-11-07 | Priority Date for U.S. Patent No. 7,057,187 |
| 2004-01-14 | Priority Date for U.S. Patent No. 7,400,704 |
| 2006-06-06 | U.S. Patent No. 7,057,187 Issued |
| 2008-07-15 | U.S. Patent No. 7,400,704 Issued |
| 2013-07-31 | Last day of employment for Dr. Yun (inventor) at Plaintiff |
| 2013-08-02 | Defendant Sigray, Inc. founded by Dr. Yun |
| 2018-02-01 | Defendant announces UltimaXRM product (approx. date) |
| 2018-06-01 | Defendant ships first accused XRM tool (approx. date) |
| 2020-06-01 | Defendant offers accused Prisma tool for sale (approx. date) |
| 2020-11-18 | Amended Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 7,057,187 - "Scintillator Optical System and Method of Manufacture," issued June 6, 2006
- The Invention Explained:
- Problem Addressed: The patent describes the challenge of creating high-resolution electronic x-ray detectors. Direct-imaging detectors can be damaged by x-rays, while other designs suffered from poor resolution, optical distortion, or low efficiency, creating a trade-off between performance and longevity (’187 Patent, col. 1:5-2:44).
- The Patented Solution: The invention proposes a system where x-rays first strike a scintillator material, which converts them into visible light. This light is then captured by a microscope-style lens system, comprising both an objective lens and a tube lens, and focused onto an electronic detector (e.g., a CCD camera). A central feature is the use of a rigid "substrate," or spacer, to precisely and stably maintain the distance between the scintillator and the objective lens, corresponding to the lens's designed working distance (’187 Patent, Fig. 1; col. 6:16-25, 6:60-65).
- Technical Importance: This architecture enables the construction of stable, high-resolution x-ray imaging systems that can use sensitive electronic detectors without exposing them to direct, damaging radiation, thereby combining high performance with durability (’187 Patent, col. 5:45-53).
- Key Claims at a Glance:
- The complaint asserts independent claim 1 (Compl. ¶66).
- Claim 1 requires:
- scintillator material;
- a lens system for collecting light generated in the scintillator material, wherein the lens system comprises an objective lens and a tube lens; and
- a substrate for spacing the scintillator material from the lens system.
- The complaint notes infringement of "one or more claims," reserving the right to assert others (Compl. ¶66).
U.S. Patent No. 7,400,704 - "High Resolution Direct-projection Type X-ray Microtomography System Using Synchrotron or Laboratory-based X-ray Source," issued July 15, 2008
- The Invention Explained:
- Problem Addressed: The patent explains that high-resolution x-ray projection microscopy traditionally demanded an x-ray source with a very small spot size to achieve sharp images. Creating such small, high-energy sources is technically challenging and limits system efficiency (’704 Patent, col. 1:40-2:9).
- The Patented Solution: The invention discloses a hybrid system that achieves high magnification through two distinct stages. First, a "projection x ray stage" provides geometric magnification based on the relative distances between the x-ray source, the sample, and a scintillator. Second, an "optical stage" uses a magnification lens to further enlarge the visible-light image produced by the scintillator before it reaches a detector (’704 Patent, Abstract; col. 2:46-51).
- Technical Importance: By distributing the total magnification between a geometric projection stage and a subsequent optical stage, the system can achieve high overall resolution without depending on an impractically small x-ray source, making advanced x-ray microtomography more feasible in a laboratory setting (’704 Patent, col. 2:46-51).
- Key Claims at a Glance:
- The complaint asserts independent claim 1 (Compl. ¶80).
- Claim 1 requires:
- a projection x ray stage (including an x-ray source and a scintillator);
- an optical stage (including a detector and a magnification lens);
- wherein the magnification of the projection x ray stage is between 1 and 10 times; and
- wherein the magnification of the optical stage is 5 or greater.
- The complaint notes infringement of "one or more claims," reserving the right to assert others (Compl. ¶80).
III. The Accused Instrumentality
- Product Identification: The complaint accuses two product families:
- The "TriLambda Accused Products," including the TriLambda NanoXRM, TriLambda-40, and TriLambda-Ultima, are accused of infringing the ’187 Patent (Compl. ¶65).
- The "Prisma Accused Products," specifically the PrismaXRM X-ray Microscope, are accused of infringing the ’704 Patent (Compl. ¶79).
- Functionality and Market Context:
- The complaint describes the accused products as high-performance, 3D X-ray microscopy (XRM) and micro-computed tomography (micro-CT) systems (Compl. ¶56, ¶81).
- The TriLambda products are alleged to operate using an x-ray source, a condenser, a scintillator, and a scintillator-coupled CCD detector (Compl. p. 13, Fig. 6). The complaint includes a schematic diagram from Defendant's materials illustrating this general architecture (Compl. p. 13, Fig. 6).
- The PrismaXRM product is alleged to employ a "two-stage magnification" system, a characterization drawn from a webinar presented by Defendant (Compl. p. 17). This webinar allegedly described an architecture including an x-ray source, scintillator, "Optical Mag," and a detector (Compl. ¶82-83).
IV. Analysis of Infringement Allegations
’187 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| scintillator material | The TriLambda products are alleged to include a scintillator, identified on information and belief as thallium-doped cesium iodide. The complaint provides a schematic from Defendant's white paper labeling a "Scintillator" component. (Compl. p. 13, Fig. 6). | ¶68 | col. 6:13-15 |
| a lens system for collecting light generated in the scintillator material, wherein the lens system comprises an objective lens and a tube lens | The products are alleged to use a lens system containing an "optical objective" and a "tube lens" to magnify the visible light from the scintillator. The complaint includes a photograph allegedly showing a tube lens inside the accused product. (Compl. p. 15). | ¶69-71 | col. 6:22-29 |
| and a substrate for spacing the scintillator material from the lens system | The complaint alleges, on information and belief, that the scintillator material is mounted on a substrate that provides the required spacing from the lens system. | ¶72 | col. 6:60-65 |
- Identified Points of Contention:
- Technical Question: The complaint alleges the presence of a "tube lens" based on information and belief, supported by a photograph from a social media post (Compl. ¶71, p. 15). A point of contention may be whether the component identified in the photograph is, in fact, a tube lens and whether it functions as part of the claimed "lens system" in conjunction with an objective lens.
- Scope Question: Infringement of the "substrate" element is pleaded on information and belief (Compl. ¶72). The patent specification describes this substrate as providing mechanical rigidity and precise, stable alignment (’187 Patent, col. 6:16-25). A dispute may arise over whether the structure on which the accused scintillator is mounted performs the functions described in the patent, which could be relevant to how the court construes the scope of the term.
’704 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a projection x ray stage including: an x ray source generating a diverging x ray beam; and a scintillator for converting the x ray beam... into an optical signal | The Prisma products are alleged to have a projection x-ray stage with an x-ray source, a scintillator, and a detector. A diagram from a Defendant's webinar is provided showing these components in a "Two-stage magnification XRM" setup (Compl. p. 17). | ¶82 | col. 10:25-30 |
| an optical stage including: a detector; and a magnification lens for imaging the optical signal... onto the detector | The webinar diagram shows a detector and a component labeled "Optical Mag," which the complaint alleges is a magnification lens for imaging the scintillator's signal onto the detector (Compl. p. 17). | ¶83 | col. 10:30-34 |
| wherein a magnification of the projection x ray stage is between 1 and 10 times | The complaint alleges on information and belief that the projection stage magnification of the Prisma products falls within this range. | ¶84 | col. 10:5-7 |
| and a magnification of the optical stage is 5 or greater | The complaint alleges this limitation is met based on a statement attributed to Defendant's founder during a webinar Q&A, where he allegedly stated that one of the lenses used was a "20x objective lens." | ¶85 | col. 10:7-8 |
- Identified Points of Contention:
- Evidentiary Question: The complaint's allegations for the specific numerical magnification ranges rely on "information and belief" for the projection stage and an alleged statement in a webinar Q&A for the optical stage (Compl. ¶84-85). A key factual dispute will likely be whether the accused PrismaXRM products, as sold, actually operate within these claimed numerical ranges.
- Technical Question: What evidence demonstrates that the component labeled "Optical Mag" in a high-level marketing diagram (Compl. p. 17) functions as "a magnification lens for imaging the optical signal of the scintillator onto the detector" as required by the claim? The functionality and structure of this component will be a focus of discovery.
V. Key Claim Terms for Construction
Term: "substrate for spacing" (’187 Patent, Claim 1)
- Context and Importance: This term defines the physical connection between the scintillator and the lens system. The infringement analysis for the ’187 Patent will depend on whether the mounting structure in the accused TriLambda products falls within the scope of this term. Practitioners may focus on this term because its construction will determine whether a simple mounting bracket infringes or if a more specialized, functionally-defined component is required.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The plain language of the claim recites "a substrate for spacing," which could be argued to encompass any structure that performs the function of spacing the scintillator from the lens.
- Evidence for a Narrower Interpretation: The specification describes the substrate as a "glass spacer" that provides "mechanical rigidity," "precisely control[s] the spacing," and ensures "stable alignment" (’187 Patent, col. 6:16-25, 7:17). A party could argue these described functions and material properties limit the scope of the term to structures that do more than merely space the components apart.
Term: "magnification of the projection x ray stage" (’704 Patent, Claim 1)
- Context and Importance: The claim requires this magnification to be "between 1 and 10 times." The method of calculating this value for the accused PrismaXRM system will be critical to determining infringement.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent defines this as "geometrical magnification" and provides a standard formula: M = (Ls + Ld) / Ls, where Ls is the source-to-sample distance and Ld is the sample-to-detector distance (’704 Patent, col. 1:47-54). A plaintiff would likely argue for a direct application of this formula to the physical layout of the accused device.
- Evidence for a Narrower Interpretation: While the patent provides a formula, a defendant could argue that in the context of the entire system, "magnification of the projection x ray stage" must be interpreted in a specific way that is not fully captured by the simple formula alone, although the specification's direct reference to the formula may make such an argument challenging. The dispute is more likely to be factual—what are the actual Ls and Ld values in the accused product—rather than purely legal.
VI. Other Allegations
- Indirect Infringement: The complaint alleges facts that may support induced infringement. It accuses Defendant of making, using, and selling the products and references Defendant's white papers and webinar presentations that describe how the products operate (Compl. ¶67, ¶82-83). These materials could be presented as evidence of instruction to customers on how to use the products in an infringing manner.
- Willful Infringement: Willfulness is explicitly alleged for both patents (Compl. ¶74, ¶87). The allegations are primarily based on pre-suit knowledge. The complaint asserts that Defendant's founder is a named inventor on both patents-in-suit and that Defendant hired other key personnel from Xradia (the original patent owner), including another inventor, suggesting direct and extensive knowledge of the patented technology prior to any infringing activity (Compl. ¶45-54).
VII. Analyst’s Conclusion: Key Questions for the Case
- 1. The Evidentiary Basis for Magnification: For the ’704 Patent, the infringement case hinges on specific numerical magnification ranges. The complaint supports these allegations with "information and belief" and a statement from a webinar Q&A (Compl. ¶84-85). A key evidentiary question will be whether discovery confirms that the accused PrismaXRM products actually operate with a projection stage magnification between 1x and 10x and an optical stage magnification of 5x or greater.
- 2. The Scope of "Substrate": For the ’187 Patent, a central issue will be one of definitional scope: can the term "substrate for spacing," which the patent specification describes as providing precise, stable alignment and mechanical rigidity, be construed to read on the scintillator mounting structure used in the accused TriLambda products?
- 3. The Role of Shared History: The background allegations that Defendant was founded by a lead inventor of the asserted patents and employs other key former personnel from the originator of the technology are pervasive (Compl. ¶45-54). A fundamental question for the court, which will influence issues from claim construction to willfulness and damages, will be to what extent Defendant's accused products were developed using knowledge covered by Plaintiff’s patent and trade secret rights.