DCT

3:23-cv-01158

Dutton v. Aseptiscope Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 3:23-cv-01158, S.D. Cal., 06/22/2023
  • Venue Allegations: Venue is alleged to be proper as the Defendant's principal place of business is in the district and a substantial part of the events giving rise to the claim allegedly occurred there.
  • Core Dispute: Plaintiff alleges he conceived of a key "peeler pin" mechanism for dispensing sterile instrument covers, which is claimed in Defendant's patent, and seeks to be added as a co-inventor on that patent.
  • Technical Context: The technology concerns automated, touch-free dispensers for single-use medical instrument covers, such as for stethoscopes, aiming to reduce hospital-acquired infections.
  • Key Procedural History: The complaint contrasts the patent-in-suit with a prior AseptiScope patent that allegedly lacks the disputed "peeler pin" technology. This is presented as circumstantial evidence that the Defendant did not possess the invention prior to the Plaintiff's alleged disclosures.

Case Timeline

Date Event
2016-12-22 '782 Patent Priority Date
2017-12-22 AseptiScope files application for prior '270 Patent
2018-09-08 Plaintiff Dutton and Defendant's co-founder allegedly discuss project
2018-09-17 Dutton allegedly texts co-founder about "peeling mechanism" solution
2019-11-17 Dutton allegedly suggests "two stainless steel pins" embodiment
2019-11-21 Defendant's co-founder allegedly texts "The peel mechanism is working great"
2020-06-09 U.S. Patent No. 10,676,270 issues to AseptiScope
2021-01-29 AseptiScope files '224 Application (leading to '782 Patent)
2022-06-14 U.S. Patent No. 11,358,782 issues to AseptiScope
2023-06-22 Amended Complaint for Correction of Inventorship filed

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 11,358,782 - Cartridges, Dispensers, and Kits for Dispensing Instrument Covers

  • Patent Identification: U.S. Patent No. 11,358,782, "Cartridges, Dispensers, and Kits for Dispensing Instrument Covers," issued June 14, 2022.

The Invention Explained

  • Problem Addressed: The patent background describes the significant risk of hospital-acquired infections (HAIs) transmitted via contaminated medical instruments like stethoscopes ('782 Patent, col. 1:22-42). It notes that existing methods for applying sterile covers are often manual and cumbersome, leading to poor compliance by clinicians ('782 Patent, col. 2:1-16).
  • The Patented Solution: The invention is a system for the automatic, touch-free dispensing of disposable instrument covers from a self-contained cartridge ('782 Patent, Abstract). The system uses a supply spool of covers on a backing tape and a take-up spool for the used tape. A key feature is a "peeler pin" that sharply changes the path of the backing tape, causing the disposable cover to partially separate from the tape, which "ease[s] the transfer" of the cover onto an instrument like a stethoscope head pressed against it ('782 Patent, col. 5:2-13; col. 21:19-22).
  • Technical Importance: By automating the process and making it touch-free, the invention aims to improve the ease and speed of applying sterile barriers, thereby increasing compliance and reducing a vector for disease transmission in clinical settings ('782 Patent, col. 2:38-41).

Key Claims at a Glance

  • The complaint asserts that Plaintiff contributed to independent claims 1 and 8 (Compl. ¶51).
  • Independent Claim 1 (a cassette) recites:
    • A supply spool holding a backing member with disposable instrument covers.
    • A tape spool to hold the spent backing member.
    • A "peeler pin positioned proximate to the supply spool to change direction of a path of the backing member to partially separate the disposable instrument covers from the backing member to ease the transfer of the disposable instrument cover onto the instrument."
    • Other structural features of the cassette, including a lid and spool structures.
  • Independent Claim 8 (a kit) recites:
    • A dispenser housing combined with the cassette of Claim 1.
  • The complaint alleges that all other claims in the patent depend from either Claim 1 or Claim 8 and thus also recite the "peeler pin" invention (Compl. ¶41).

III. Analysis of Inventorship Claim

The complaint does not allege patent infringement; rather, it seeks to correct inventorship of the '782 Patent under 35 U.S.C. § 256. The central allegation is that Plaintiff Christopher Dutton conceived of the "peeler pin" mechanism and disclosed it to Defendant AseptiScope, who then incorporated it into the '782 Patent without naming Dutton as an inventor (Compl. ¶¶ 49-52).

The complaint alleges that Dutton first proposed a "peeling mechanism" to AseptiScope's co-founder on September 8, 2018, analogizing it to a retail price gun (Compl. ¶12). Later, on November 17, 2019, Dutton allegedly proposed a specific embodiment that would work by "winding the tape through two stainless steel pins" to separate the covers (Compl. ¶26). The complaint alleges that just four days later, the co-founder sent a text message stating, "The peel mechanism is working great within a cassette!" (Compl. ¶30).

To support the claim that this concept was novel to AseptiScope at the time, the complaint points to AseptiScope's earlier U.S. Patent No. 10,676,270, which was filed before Dutton's alleged disclosures and which allegedly "lack[s] any peeler pin technology" (Compl. ¶¶ 42-45). The complaint argues that the introduction of the "peeler pin" into the application for the '782 Patent corresponds to the time period after which Dutton made his disclosures to AseptiScope (Compl. ¶46).

No probative visual evidence provided in complaint.

IV. Key Claim Terms for Construction

  • The Term: "a peeler pin"
  • Context and Importance: This term describes the core technology that Plaintiff claims to have conceived. The outcome of the case may depend on whether Plaintiff's alleged disclosures of a "peeling mechanism" or "stainless steel pins" are sufficient to establish conception of the "peeler pin" as claimed. Practitioners may focus on this term because its interpretation will define the scope of the inventive concept at the heart of the ownership dispute.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The claims define the "peeler pin" functionally as a structure "positioned proximate to the supply spool to change direction of a path of the backing member to partially separate the disposable instrument covers" ('782 Patent, col. 21:17-21). Plaintiff may argue this functional language is broad and not limited to a specific shape, thereby encompassing the general mechanisms he allegedly disclosed.
    • Evidence for a Narrower Interpretation: The specification illustrates a specific embodiment of the "peeler pin" (element 1012) in Figures 15 and 16C ('782 Patent, col. 20:17-22). Defendant may argue that the invention is properly limited to this or a structurally similar configuration, and that Plaintiff’s more general ideas did not amount to a complete conception of the claimed structure.

V. Other Allegations

  • Correction of Inventorship: The complaint's sole claim for relief is for correction of inventorship under 35 U.S.C. § 256 (Compl. ¶¶ 47-55). It alleges that Plaintiff is a joint inventor because he conceived of the subject matter recited in the "peeler pin" limitation of at least claims 1 and 8 (Compl. ¶¶ 50-51). The complaint further alleges that Plaintiff was erroneously omitted as an inventor and, on information and belief, that "one or more of the currently named inventors made no inventive contribution to any claim of the '782 Patent" (Compl. ¶¶ 52-53). The prayer for relief seeks a court order directing the USPTO to add Mr. Dutton as an inventor and remove any named inventor found not to have contributed (Compl., Prayer for Relief ¶D).

VI. Analyst’s Conclusion: Key Questions for the Case

This case centers on the question of who invented a specific, claimed feature of the '782 Patent. The resolution will likely depend on the following key questions:

  • Conception and Corroboration: A primary factual question will be whether the Plaintiff can produce sufficient corroborating evidence to prove that he conceived of the complete and definite "peeler pin" invention, as claimed in the patent, and communicated that conception to the Defendant’s named inventors.
  • Sufficiency of Contribution: A central legal and factual issue will be one of inventive contribution: does the Plaintiff's alleged disclosure of a general "peeling mechanism" or a "two stainless steel pins" concept constitute a legally sufficient contribution to the conception of the "peeler pin" as claimed, or was it merely an abstract idea that the named inventors had to reduce to practice?
  • Originality of Invention: The case will likely examine the development history of the patented device to determine whether the named inventors already possessed the concept of the "peeler pin" prior to the Plaintiff's alleged disclosures, or if they derived it from him as the complaint alleges.