MedScan Systems LLC v. Siemens Aktiengesellschaft AG

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: MedScan Systems, LLC (Delaware)
  • Defendant: Siemens Aktiengesellschaft (AG) (Germany) and Siemens Medical Solutions USA, Inc. (Delaware)
  • Plaintiff’s Counsel: Devlin Law Firm LLC
• Case Identification: 1:18-cv-00841, D. Del., 06/04/2018
• Venue Allegations: Venue is alleged to be proper for Siemens AG as a foreign non-resident entity and for Siemens Medical Solutions USA, Inc. based on its incorporation in Delaware and alleged acts of infringement within the district.
• Core Dispute: Plaintiff alleges that Defendant’s Biograph mMR, an integrated Positron Emission Tomography (PET) and Magnetic Resonance Imaging (MRI) system, infringes a patent related to the technology for combining nuclear and magnetic resonance imaging devices.
• Technical Context: The technology involves creating integrated medical imaging systems that can simultaneously capture high-resolution anatomical data from MRI and functional metabolic data from nuclear imaging (like PET), which poses technical challenges due to the interference of strong magnetic fields with nuclear detectors.
• Key Procedural History: The complaint does not allege any prior litigation, Inter Partes Review (IPR) proceedings, or specific licensing history concerning the patent-in-suit.

Case Timeline

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

U.S. Patent No. 6,946,841 - "Apparatus for Combined Nuclear Imaging and Magnetic Resonance Imaging, and Method Thereof"

The Invention Explained

• Problem Addressed: The patent's background section identifies a primary obstacle to combining MRI and nuclear imaging technologies: conventional photodetectors used in nuclear imaging devices, such as photomultipliers (PMTs), are highly sensitive to and cannot function properly within the strong magnetic fields produced by MRI systems (ʼ841 Patent, col. 1:50-61).
• The Patented Solution: The invention proposes a combined imaging apparatus where the nuclear detector can operate within the MRI's magnetic field. This is achieved by replacing the traditional PMT with a different type of photodetector, a "hybrid photodetector" (HPD), which the patent asserts is immune to magnetic fields under certain conditions (ʼ841 Patent, col. 4:28-33). The HPD, as described in the specification, is a multi-component device that converts photons from a scintillator into a measurable electrical current, enabling the two imaging modalities to be integrated into a single, compact system for simultaneous data acquisition (ʼ841 Patent, col. 4:52-64; Fig. 4).
• Technical Importance: This approach aimed to enable the creation of a single device that could acquire both high-resolution anatomical images (from MRI) and highly specific tissue-function images (from nuclear imaging) in the same session, potentially improving diagnostic accuracy and efficiency (ʼ841 Patent, col. 2:59-64).

Key Claims at a Glance

• The complaint asserts infringement of independent claim 1 and dependent claims 2-3 (Compl. ¶13).
• Independent Claim 1 requires:
  • A combined MR-nuclear imaging device
  • Comprising an MRI device with an associated magnetic field
  • And a nuclear imaging device disposed within that magnetic field
  • Where the nuclear imaging device includes a scintillator, a light guide, and at least one Hybrid Photodetector (HPD).
• The complaint reserves the right to assert additional claims.

III. The Accused Instrumentality

Product Identification

• The Siemens Biograph mMR System (Compl. ¶13).

Functionality and Market Context

• The complaint describes the Biograph mMR as a system that "fully integrates the MR and the PET imaging modality into one imaging system" (Compl. ¶21). It allegedly combines a 3 Tesla (3T) MRI magnet with an integrated PET detector, allowing for the simultaneous acquisition of both MRI and PET data (Compl. ¶16). The complaint identifies specific components of the accused system's PET detector, including Lutetium Oxyorthosilicate (LSO) crystals, which function as scintillators, and an array of Avalanche Photo Diodes (APDs), which are alleged to be the infringing photodetectors (Compl. ¶18). This integrated functionality is marketed as a "One whole body solution" where "MR and PET are one" (Compl. ¶15, Fig. 1). The complaint includes a diagram from a Siemens publication showing the layered components of the PET detector within the MRI system. (Compl. ¶17, Fig. 3).

IV. Analysis of Infringement Allegations

'841 Patent Infringement Allegations

• Identified Points of Contention:
  • Scope Questions: A primary question concerns the definition of "HPD." The complaint alleges that the accused system's "Avalanche Photo Diode (APD) array" satisfies the "HPD" limitation. This raises the question of whether the term "HPD" as used and defined in the patent can be construed to read on an APD array, or if it requires a more complex, multi-component structure as described in the specification.
  • Technical Questions: The complaint's allegation for the "light guide" element appears to be based on a visual interpretation of a diagram showing the detector assembly (Compl. ¶18, Fig. 4). This raises the evidentiary question of what specific structure in the accused device performs the function of "channeling the photons" from the scintillator to the photodetector, and whether that structure meets the claim's requirement for a "light guide."

V. Key Claim Terms for Construction

• The Term: "HPD" (hybrid photodetector)
• Context and Importance: The construction of "HPD" appears central to the infringement analysis. The complaint's theory hinges on equating the accused Avalanche Photo Diodes (APDs) with the claimed "HPD." If the court adopts a narrower definition of "HPD" consistent with the patent's specific disclosure, the Defendant may have a strong non-infringement argument. Practitioners may focus on this term because the patent provides an explicit, but potentially limiting, definition.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The complaint does not cite intrinsic evidence from the patent to support a broad interpretation where an APD alone is an HPD. Its infringement theory appears to rely on an argument that an APD-based system functions as an HPD in the context of the technology.
  • Evidence for a Narrower Interpretation: The patent specification provides a specific, multi-component definition: "The HPD comprises a photocathode 12, a vacuum electron tube 13, and an avalanche photocathode (APD) 14" (ʼ841 Patent, col. 4:57-59). This language suggests that an APD is merely one component of the claimed "HPD," not the HPD itself, which could support a narrower construction that excludes the accused device.

VI. Other Allegations

• Indirect Infringement: The complaint alleges induced infringement under 35 U.S.C. § 271(b), asserting that Defendants encourage infringement by "advertising and distributing the Accused Instrumentalities and providing instruction materials, training, and services" to end users (Compl. ¶¶26-27). It also alleges contributory infringement under § 271(c), stating the accused systems are a material component "especially made or adapted for use in an infringement" and are not a staple article of commerce (Compl. ¶28).
• Willful Infringement: Willfulness is alleged based on knowledge of the '841 patent "since at least the filling of this complaint," which frames the claim as one of post-suit willful infringement (Compl. ¶27).

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

• A core issue will be one of definitional scope: can the claim term "HPD" (hybrid photodetector), which the patent explicitly describes as a multi-component device containing a photocathode, a vacuum tube, and an APD, be construed to read on the accused product’s "Avalanche Photo Diode (APD) array" alone?
• A key evidentiary question will be one of component function: does the complaint, which relies heavily on high-level product diagrams like the one in Figure 6 depicting the "PET detector" (Compl. ¶23), provide sufficient factual support to demonstrate that the accused device contains a distinct "light guide" that performs the claimed function of "channeling" photons, or does it merely show adjacent components in a complex detector assembly?