Arthroscopic Innovations LLC v. NCS America Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Arthroscopic Innovations LLC (Massachusetts)
  • Defendant: NCS America Inc. (Delaware)
  • Plaintiff’s Counsel: Bayard, P.A.; Meister Seelig & Fein LLP
• Case Identification: 1:20-cv-01688, D. Del., 12/11/2020
• Venue Allegations: Venue is alleged to be proper based on Defendant’s incorporation in Delaware, its business contacts within the district, and the commission of infringing acts that have consequences in the district.
• Core Dispute: Plaintiff alleges that Defendant’s surgical repair systems infringe a patent related to methods and apparatuses for arthroscopic surgery, particularly for rotator cuff repair.
• Technical Context: The technology concerns instruments and methods for securing soft tissue, like a tendon, to bone using sutures passed through a channel created in the bone.
• Key Procedural History: Plaintiff alleges it provided Defendant with pre-suit notice of infringement via a letter dated March 25, 2020, followed by a second letter on November 13, 2020. This alleged notice forms the basis for the willfulness claim.

Case Timeline

Date	Event
2005-04-20	U.S. Patent No. 7,569,059 Priority Date
2009-08-04	U.S. Patent No. 7,569,059 Issued
2020-03-25	Plaintiff allegedly sent first notice of infringement letter to Defendant
2020-11-13	Plaintiff allegedly sent follow-up letter to Defendant
2020-12-11	Complaint Filed

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

U.S. Patent No. 7,569,059 - "Method and Apparatus for Surgical Repair"

• Patent Identification: U.S. Patent No. 7,569,059, "Method and Apparatus for Surgical Repair," issued August 4, 2009 (the "’059 Patent").

The Invention Explained

• Problem Addressed: The patent's background section describes surgical techniques for reattaching a torn rotator cuff tendon to the humerus bone. It notes a prior art method involves placing a suture anchor at the margin between the bone's articulating surface and its greater tuberosity, which can be a point of stress. (Compl., Ex. A, ’059 Patent, col. 1:11-35).
• The Patented Solution: The invention proposes an alternative method where a passageway is formed directly through the bone (transosseous) by creating two separate, intersecting holes. A suture is then passed through this bony tunnel to secure the tendon. This allows the fixation point to be located on the more stable lateral side of the humerus, away from the joint margin. A key aspect is the use of a guide apparatus to precisely control the location and orientation of the two intersecting holes. (’059 Patent, col. 2:37-45, Fig. 10).
• Technical Importance: This approach provides a method for creating a transosseous repair arthroscopically, potentially offering surgeons a more robust fixation construct compared to traditional suture anchors placed at the joint margin. (’059 Patent, col. 1:39-45).

Key Claims at a Glance

• The complaint asserts claims 1-19 of the ’059 Patent. (Compl. ¶12). Independent claim 1 is excerpted below.
• Independent Claim 1 elements:
  • A method for performing a surgical repair, comprising:
  • providing a first hole in a body portion;
  • positioning a first portion of a guide relative to the first hole, the first portion extending at least partially into the first hole;
  • forming a second hole transverse to the first hole using a second portion of the guide so that the second hole...intersects with the first hole and forms a passageway...;
  • using the first and second portions of the guide, while the first and second portions of the guide remain fixed in place relative to each other..., to provide a suture through the passageway...;
  • securing a repair suture to a material to be secured...;
  • positioning at least a portion of the repair suture in the passageway; and
  • securing the material relative to the body portion using the repair suture.
• The complaint reserves the right to assert all claims from 1-19, which includes multiple dependent claims. (Compl. ¶12).

III. The Accused Instrumentality

Product Identification

• The complaint identifies NCS’s "Sharc-FT and Taylor Stitcher systems" as the "Accused Systems." (Compl. ¶10).

Functionality and Market Context

• The complaint alleges that surgeons use the Accused Systems for surgical repair. (Compl. ¶11).
• The relevant functionality is described as including "a first and second portion of a guide, which remain fixed in place relative to each other." This guide is allegedly used to retrieve a suture by "providing the suture through the passage extending along a length of the first or second portion of the guide and into the passageway and retrieving the suture using the other of the first or second portion." (Compl. ¶11).
• The complaint alleges these systems are marketed and sold to medical professionals, hospitals, and medical centers. (Compl. ¶13).

IV. Analysis of Infringement Allegations

The complaint references an Exhibit B containing a "general description" of infringement but does not attach it. (Compl. ¶12). The narrative infringement theory presented in the body of the complaint is summarized below.

The core of the infringement allegation is that the Accused Systems perform the method of Claim 1 of the ’059 Patent. The complaint alleges the Accused Systems provide "a first and second portion of a guide, which remain fixed in place relative to each other" and are used to retrieve a suture through a "passageway." (Compl. ¶11). This language appears to map to the claim elements requiring "a first and second portion of the guide" that "remain fixed in place" and are used "to provide a suture through the passageway." (’059 Patent, col. 15:15-26).

No probative visual evidence provided in complaint.

• Identified Points of Contention:
  • Technical Questions: A central question will be whether the Accused Systems are used to perform the claimed step of "forming a second hole transverse to the first hole using a second portion of the guide." The complaint alleges the guide is used for suture retrieval (Compl. ¶11), but is silent on whether the guide is also used to create the transosseous passageway itself, which is a foundational step of the claimed method.
  • Scope Questions: The dispute may turn on whether the term "passageway" as used in the patent requires a specific tunnel created by two intersecting holes formed in bone, or if it can be read more broadly to cover any path through which a suture is passed. The complaint does not specify the nature of the "passageway" in which the Accused Systems operate.

V. Key Claim Terms for Construction

"a guide"

• Context and Importance: This term is central to the claimed method, as the guide is used for both forming the intersecting holes and passing the suture. Its construction will be critical to determining infringement. Practitioners may focus on whether "a guide" is limited to an apparatus capable of creating a transosseous tunnel, as depicted in the patent’s figures (e.g., Fig. 10), or if it can cover a simpler device that only facilitates suture passing.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The claims use the general term "a guide" without reciting the specific structural details of the embodiments. This may support a construction covering any device with first and second portions that remain fixed and guide a suture. (’059 Patent, col. 15:15-26).
  • Evidence for a Narrower Interpretation: The specification repeatedly describes the guide as an apparatus for forming intersecting holes in bone. (e.g., ’059 Patent, col. 8:50-67, Fig. 10). The detailed description shows a specific apparatus with arc-shaped reference structures and guide members for drilling, which could be argued to define the scope of the invention.

"forming a second hole transverse to the first hole"

• Context and Importance: This step defines the creation of the unique transosseous passageway. The infringement analysis depends on whether the Accused Systems are used to perform this specific bone-drilling or punching step.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The patent states that the first and second holes may be arranged at "any suitable angle," not just a perpendicular one, which may support a broader definition of "transverse." (’059 Patent, col. 11:57-60).
  • Evidence for a Narrower Interpretation: The summary of the invention and the primary embodiments consistently describe a method where two distinct holes are formed that "intersect" to create the passageway. (’059 Patent, col. 2:10-12). This suggests the step requires active formation of two intersecting bores, not merely using a natural or pre-existing channel.

VI. Other Allegations

• Indirect Infringement: The complaint alleges inducement of infringement by asserting that NCS provides "instructions and guidance to its Customers regarding using the Accused Systems" via its website and customer support, allegedly in a manner that infringes. (Compl. ¶15). It further alleges contributory infringement, stating the Accused Systems are not staple articles of commerce and are "especially made or adapted for use in infringing the ’059 Patent." (Compl. ¶23).
• Willful Infringement: The willfulness claim is based on alleged pre-suit knowledge of the ’059 Patent. The complaint states that Plaintiff notified NCS of its infringement via a letter on March 25, 2020, and that NCS continued its allegedly infringing activities thereafter. (Compl. ¶16, ¶18).

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

This dispute will likely focus on the technical operation of the accused systems relative to the specific steps claimed in the ’059 Patent. The central questions for the court appear to be:

1. A key evidentiary question will be one of technical function: does the evidence show that the accused "Sharc-FT and Taylor Stitcher systems" are used to perform the claimed step of creating a transosseous passageway by forming two intersecting holes in bone, or are they used merely to pass sutures through a pre-existing pathway? The complaint’s allegations focus on suture retrieval, leaving the tunnel-creation step as a potential point of factual dispute.

2. The case will also involve a core issue of claim scope: can the term "a guide", as described in the context of an apparatus for creating bone tunnels, be construed to cover the guide included with the accused systems, whose function is described in the complaint solely as suture management? The outcome of this construction will significantly influence the infringement analysis.