DCT
3:18-cv-00468
CAO Group v. Biolase Technology
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: CAO Group, Inc. (Utah)
- Defendant: Biolase Technology, Inc. (Delaware)
- Plaintiff’s Counsel: Maschoff Brennan & PLLC
- Case Identification: 2:12-cv-00388, D. Utah, 04/24/2012
- Venue Allegations: Plaintiff alleges venue is proper in the District of Utah because Defendant has committed acts of patent infringement, regularly conducts business, directs advertising, and derives substantial revenue within the state.
- Core Dispute: Plaintiff alleges that Defendant’s Ezlase dental laser infringes a patent related to laser systems incorporating a removable fiber storage module.
- Technical Context: The technology relates to semiconductor-based laser systems for medical and dental applications, where managing disposable or consumable optical fibers is a key operational consideration.
- Key Procedural History: The complaint asserts U.S. Patent No. 7,485,116. Subsequent to the filing of this complaint, an inter partes reexamination of the patent was requested and concluded. According to the reexamination certificate issued on July 6, 2017, the asserted independent claim, Claim 1, was cancelled. This post-filing event is a critical development for the case, as the legal basis of the original complaint has been extinguished.
Case Timeline
| Date | Event |
|---|---|
| 2004-09-22 | U.S. Patent No. 7,485,116 Priority Date |
| 2009-02-03 | U.S. Patent No. 7,485,116 Issue Date |
| 2012-04-24 | Complaint Filing Date |
| 2012-09-14 | Inter Partes Reexamination of '116 Patent Requested |
| 2017-07-06 | Inter Partes Reexamination Certificate Issued (Claim 1 Cancelled) |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 7,485,116 - *"LASER SYSTEMS, WITH A FIBER STORAGE AND DISPENSING UNIT, USEFUL IN MEDICINE AND DENTISTRY"*
- Patent Identification: U.S. Patent No. 7,485,116, "LASER SYSTEMS, WITH A FIBER STORAGE AND DISPENSING UNIT, USEFUL IN MEDICINE AND DENTISTRY," issued February 3, 2009.
The Invention Explained
- Problem Addressed: While the patent's background section is brief, the overall disclosure addresses the operational challenges of managing delicate and often consumable optical fibers used in medical and dental laser systems, implying a need to avoid fiber damage and waste. (’116 Patent, Abstract; col. 1:11-13).
- The Patented Solution: The invention proposes a laser system that incorporates a self-contained, modular "fiber storage and dispensing unit." (’116 Patent, col. 3:11-12). This removable and replaceable cartridge is configured to store a length of "extra fiber" and dispense it as needed, simplifying fiber management for the user and protecting the fiber when not in use. (’116 Patent, col. 3:15-19, 24-26). Figure 2a depicts this modular cartridge (201) as a distinct component from the main laser system housing.
- Technical Importance: This modular approach aims to improve the convenience, portability, and cost-effectiveness of clinical laser systems by separating the consumable fiber component from the main laser-generating hardware. (’116 Patent, col. 2:1-4, col. 3:24-26).
Key Claims at a Glance
- The complaint asserts "at least claim one" of the ’116 Patent. (Compl. ¶13).
- Independent Claim 1 (since cancelled) requires:
- A housing
- A laser module within the housing for producing therapeutic laser light
- A fiber module with an outer casing that is attachable to and removable from the housing
- The fiber module is configured to store amounts of extra fiber
- The fiber module includes fiber therein with a proximal and distal end
- The fiber's proximal end is in light communication with the laser module to receive and transport laser light
- The prayer for relief seeks to enjoin infringement of "any of the claims" of the patent, suggesting a potential for other claims to be asserted. (Compl. p. 5, ¶B).
III. The Accused Instrumentality
Product Identification
The "Ezlase dental laser." (Compl. ¶10).
Functionality and Market Context
The complaint identifies the Accused Device as a "dental laser" that Defendant develops and markets worldwide. (Compl. ¶10). The complaint does not provide specific technical details regarding the operation of the Ezlase dental laser, its components, or how its fiber optic system is structured or managed.
No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
The complaint makes a general allegation that the Accused Device infringes at least Claim 1 but does not map specific product features to claim elements. The infringement theory is therefore inferred from the allegation that the product meets all limitations of the claim.
'116 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a housing | The complaint alleges the Ezlase dental laser includes a housing. | ¶13 | col. 1:62-63 |
| a laser module within said housing, said laser module being capable of producing laser light... | The complaint alleges the Ezlase dental laser contains a laser module within its housing for producing laser light. | ¶13 | col. 2:62-63 |
| a fiber module, said fiber module having an outer casing attachable to and removable from said housing | The complaint alleges the Ezlase dental laser includes a fiber module in an outer casing that is attachable to and removable from the main housing. | ¶13 | col. 3:13-15, 24-26 |
| and configured to store amounts of extra fiber, | The complaint alleges the fiber module of the Ezlase dental laser is configured to store extra fiber. | ¶13 | col. 3:15-17 |
| said fiber module including fiber therein, said fiber having a proximal end and a distal end, | The complaint alleges the fiber module of the Ezlase dental laser contains a fiber with a proximal and distal end. | ¶13 | col. 3:58-60 |
| and said fiber proximal end being in light communication with said laser module... | The complaint alleges the proximal end of the fiber in the Ezlase dental laser is in light communication with the laser module to receive and transport light. | ¶13 | col. 3:38-40 |
Identified Points of Contention
- Procedural Question: The central issue is procedural and likely dispositive. The asserted Claim 1 was cancelled during an inter partes reexamination that concluded after the complaint was filed. A claim that no longer exists cannot be infringed.
- Technical Questions: Should the case proceed on other, un-cancelled claims, a key evidentiary question would arise from the complaint's lack of detail. The court would need to determine if the Accused Device's fiber system meets the specific limitations of a "removable" and "attachable" "fiber module" that is "configured to store amounts of extra fiber" as required by the patent.
V. Key Claim Terms for Construction
The following terms from the now-cancelled Claim 1 would have been central to the dispute.
The Term: "fiber module"
- Context and Importance: This term defines the core structural element of the invention. Its construction would determine whether a wide range of fiber management systems fall within the claim scope or if the scope is limited to the specific cartridge-like embodiment shown. Practitioners may focus on this term to dispute whether the accused product's fiber system, which may be integrated differently, constitutes a "module."
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent uses the terms "fiber module," "fiber storage and dispensing unit," and "fiber cartridge" somewhat interchangeably, which may support a broader construction covering any separable component for managing fiber. (’116 Patent, col. 2:11; col. 3:11; col. 5:25).
- Evidence for a Narrower Interpretation: The specification's primary embodiment shows a self-contained, box-like cartridge (Fig. 2a, 201) containing a motor and wheels (209, 210) to actively dispense and retract fiber. (’116 Patent, col. 3:51-54). This could support a narrower construction limiting the term to a motorized, dispensing unit.
The Term: "configured to store amounts of extra fiber"
- Context and Importance: This limitation defines the function of the "fiber module." The meaning of "extra fiber" is critical to distinguishing the invention from systems that merely contain a fixed-length fiber optic cable with some operational slack.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim language itself does not quantify "extra," which could support a reading on any system that stores more fiber than is minimally necessary to connect the laser to the handpiece.
- Evidence for a Narrower Interpretation: The specification describes the purpose of storage is "to dispense the fiber to desired length when it is used," which suggests a supply of consumable fiber that is paid out over time, not simply a fixed-length cable coiled for storage. (’116 Patent, col. 3:17-19).
VI. Other Allegations
Indirect Infringement
The complaint alleges that Defendant contributes to and actively induces infringement but does not plead specific facts to support the requisite knowledge or intent, such as identifying specific instructions or marketing materials that encourage infringing acts. (Compl. ¶¶13-14).
Willful Infringement
Willfulness is alleged "upon information and belief," but the complaint does not state a factual basis, such as pre-suit notice or other evidence of Defendant's knowledge of the patent and its alleged infringement. (Compl. ¶18).
VII. Analyst’s Conclusion: Key Questions for the Case
- A foundational question is procedural and potentially dispositive: given that the asserted Claim 1 was cancelled in a subsequent inter partes reexamination, what legal basis, if any, remains for the complaint as originally filed?
- Should the litigation proceed on amended pleadings with different claims, a core issue will be one of definitional scope: can the term "fiber module," as described in the patent's specific embodiments (e.g., a motorized, dispensing cartridge), be construed to cover the design of the accused Ezlase laser's fiber management system? The complaint's lack of technical detail leaves this a central unknown.