Virgilant Tech Ltd v. ABC Assets Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Virgilant Technologies Limited (Taiwan)
  • Defendant: ABC Assets, Inc. (fka CoHero Health, Inc.) (Delaware); AptarGroup, Inc. (Delaware)
  • Plaintiff’s Counsel: Lewis Brisbois Bisgaard & Smith, LLP
• Case Identification: 1:21-cv-00181, D. Del., 02/10/2021
• Venue Allegations: Venue is alleged to be proper in the District of Delaware because both Defendants are corporations incorporated in Delaware and are therefore deemed to reside in the district.
• Core Dispute: Plaintiff alleges it is the rightful inventor and owner of a patent for tracking respiratory device usage, which Defendant CoHero allegedly misappropriated by filing a patent application on Plaintiff's technology in its own name.
• Technical Context: The dispute centers on connected medical device technology for monitoring and encouraging patient adherence to inhaler medication schedules for chronic respiratory conditions like asthma.
• Key Procedural History: The complaint alleges a multi-year business relationship where Plaintiff developed and manufactured a "HeroTracker Device" for Defendant CoHero. Plaintiff alleges that CoHero, after soliciting technical details from Plaintiff for a purported patent application, filed provisional and non-provisional applications listing its own personnel as inventors, which ultimately issued as the patent-in-suit. The dispute is not a typical infringement action but a challenge to inventorship and ownership under 35 U.S.C. § 256.

Case Timeline

Date	Event
2013-10-19	U.S. Patent No. 10,019,555 Priority Date (Provisional filed)
2016-12-08	CoHero and Presspart launch "eMDI" connected inhaler
2017-02-14	Purchase Order for 102,000 HeroTracker Devices
2018-07-10	U.S. Patent No. 10,019,555 Issued
2018-08-29	CoHero's last purchase of HeroTracker Devices
2018-10-22	Alleged completion of imitation PCBA by CoHero's third party
2020-10-16	AptarGroup purchases "all operating assets" from CoHero
2021-02-10	Complaint Filed

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

U.S. Patent No. 10,019,555 - "Interactive respiratory device usage tracking system"

• Patent Identification: U.S. Patent No. 10,019,555, “Interactive respiratory device usage tracking system,” issued July 10, 2018.

The Invention Explained

• Problem Addressed: The patent describes the significant problem of poor patient adherence to prescribed inhaler medication, which contributes to substantial medical costs and poor health outcomes, particularly for chronic conditions like asthma. The background notes that patients often have an "imprecise recollection of how often the inhaler has been used" (’555 Patent, col. 1:50-52).
• The Patented Solution: The invention is a system featuring a tracking module that attaches to a standard inhaler. This module includes a sensor to detect when a dose is administered, memory to store usage data, and a wireless component to send this data to a "local station" like a smartphone (’555 Patent, Abstract). The system is designed to interact with the patient through an application, providing reminders, incentives, and compliance data to encourage proper use and to correlate usage with other health data, such as lung function from a spirometer (’555 Patent, col. 2:36-56).
• Technical Importance: The technology provides a holistic system for improving medication adherence by not only passively tracking usage but also actively engaging the patient with feedback and motivational tools.

Key Claims at a Glance

• The complaint alleges invention of the "subject matter claimed in the ‘555 Patent" without specifying claims (Compl. ¶99). Independent claim 23 is representative of the disputed system.
• Essential elements of independent claim 23 include:
  • A "tracking module" with a "flexible shell" designed to be mounted on an inhaler body.
  • The module contains memory, a battery, and a communication component.
  • An "inhaler activation sensor" comprising a "pressure-activated switch" in a cap connected to the shell, which a user must press to signal a dose.
  • The sensor stores an "inhaler activation signal" in the module's memory.
  • A "processor located at a handheld local station" (e.g., a smartphone) that is separate from the module.
  • The processor stores the patient's usage plan, receives the activation data from the module, compares the data to the plan, and interacts with the patient.
• The complaint does not mention assertion of dependent claims.

III. The Accused Instrumentality

Product Identification

• The core technology at issue is embodied in the "HeroTracker Device," which Plaintiff alleges it designed, developed, engineered, and manufactured (Compl. ¶¶19, 22). The complaint also refers to "imitation HeroTracker Devices" and counterfeit Printed Circuit Board Assemblies ("PCBAs") allegedly created by Defendant CoHero through third parties (Compl. ¶¶2, 82). Further, the complaint discusses an "electronic metered dose inhaler (eMDI)" that Defendant CoHero launched in partnership with H&T Presspart, allegedly based on Plaintiff's development efforts (Compl. ¶¶45-46).

Functionality and Market Context

• The HeroTracker Device is described as a Bluetooth-enabled add-on for traditional inhalers, designed to provide medication notifications (Compl. ¶22). Plaintiff alleges it created 3D renderings and CAD designs for the device's physical form factor, as well as the internal firmware and electronics (Compl. ¶¶23, 26). A visual provided in the complaint shows 3D designs for modules fitting both standard L-shaped and diskus-style inhalers (Compl. p. 7).
• The complaint alleges Defendant CoHero created "imitation" devices by copying the PCBA, which is described as the "heart of the HeroTracker device" (Compl. ¶81). A side-by-side photograph purports to show the similarity between Plaintiff's PCBA and the alleged imitation (Compl. p. 21).
• The eMDI product is described in a marketing brochure as a "fully embedded and connected metered-dose inhaler" that tracks medication use and shares data with patients and physicians via a mobile app (Compl. p. 15).

IV. Analysis of Inventorship Allegations

The complaint does not allege patent infringement but rather seeks correction of inventorship of the ’555 Patent. The central allegation is that Plaintiff's personnel, not the named inventors, conceived of the claimed invention. The table below maps elements of a representative independent claim to Plaintiff’s alleged inventive contributions.

’555 Patent Inventorship Allegations (based on representative Claim 23)

Claim Element (from Independent Claim 23)	Plaintiff's Alleged Inventive Contribution	Complaint Citation	Patent Citation
A system for monitoring...a respiratory device by a patient, wherein the respiratory device comprises an inhaler...	Plaintiff alleges it conducted internal R&D on respiratory devices and developed "connected health products such as those designed to track inhaler usage" before being approached by CoHero.	¶20	col. 1:15-20
a tracking module comprising a flexible shell configured to be mounted around and in contact with the body of the inhaler...	Plaintiff alleges it "generated several 3D Renderings and 3D CAD for two form factors" for a device to couple to inhalers. Visuals of these designs are provided.	¶¶22-24, p. 7	col. 4:57-62
the flexible shell also comprising an inhaler activation sensor...comprising a pressure-activated switch...	CoHero allegedly requested Plaintiff's personnel provide a "technical description" for a "pressure activated sensor" for use in a patent application.	¶¶31, 34, p. 9	col. 5:15-21
the tracking module memory storing activation data relating to each detected activation of the inhaler as inhaler data...	Plaintiff alleges it "designed and created the firmware" for the HeroTracker Device and later provided this proprietary code to CoHero.	¶¶26, 74, 77	col. 5:11-14
a processor located at a handheld local station removed from the inhaler and tracking module...the processor storing the patient's inhaler usage plan and...interact[ing] with the patient...	Plaintiff alleges it shared a video demonstration of the product concept, and that a third party, DB Best, was responsible for the mobile app user interface, separate from Plaintiff's hardware and firmware work.	¶¶27, 29, 100	col. 4:5-13
the communication component configured to wirelessly transmit the stored inhaler data...	Plaintiff was allegedly asked to provide a technical description for a "BlueTooth Low Energy device" for the patent application. Plaintiff's design was a "Bluetooth® enabled device."	¶¶22, 31, p. 9	col. 5:7-9

• Identified Points of Contention:
  • Factual Question of Conception: The central dispute is factual: who conceived of the claimed invention? The court will need to determine whether Plaintiff's alleged contributions to the HeroTracker Device—including its physical design, electronics, and firmware—constitute conception of the specific combination of elements recited in the ’555 Patent's claims.
  • Scope Questions: The analysis will question whether the contributions of CoHero's personnel, who are the named inventors, rose to the level of joint invention or if their input was limited to "desired customer features" as the complaint alleges (Compl. ¶26). Conversely, Defendants may argue that Plaintiff acted as a contract designer merely reducing to practice an invention already conceived by CoHero.

V. Key Claim Terms for Construction

While this is an inventorship dispute, not an infringement case, the scope of key claim terms is relevant to determining whether a party's contribution was to the "claimed invention."

• The Term: "tracking module"
• Context and Importance: This term defines the core hardware component of the patented system. The court's understanding of what constitutes the "tracking module" is critical because Plaintiff's primary claim to inventorship rests on its alleged design and creation of the physical HeroTracker Device and its internal components (Compl. ¶¶19, 23, 26). Practitioners may focus on this term to determine if Plaintiff's contributions map to the essential character of the claimed module.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The specification introduces the invention as a "compact tracking module made of a flexible material (e.g., silicone)" that can be "wrapped around a conventional inhaler or otherwise easily secured to an inhaler" (’555 Patent, col. 2:23-27). This language suggests the term could encompass a wide variety of physical forms.
  • Evidence for a Narrower Interpretation: The patent discloses specific embodiments, such as the L-shaped inhaler module (FIG. 2) and the Diskus-style module (FIG. 5). The detailed description lists specific internal components as part of the module, including a "Bluetooth low energy device," "short-term memory," a "pressure activated sensor," a battery, and a PCB board (’555 Patent, col. 5:6-23). An argument could be made that the "tracking module" requires this specific collection of internal parts.

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

This case appears to be a complex business dispute where patent ownership is a central issue. The resolution will likely depend on the answers to the following questions:

1. A Core Question of Inventorship: The case will turn on a fact-intensive inquiry into conception. Can Plaintiff provide sufficient corroborating evidence to prove that its personnel conceived of the novel combination of elements recited in the ’555 patent claims, as opposed to merely executing on a design conceived by CoHero's personnel? The answer will determine whether inventorship must be corrected under 35 U.S.C. § 256.

2. An Evidentiary Question of Misappropriation: The patent ownership dispute is inextricably linked to allegations of trade secret theft and breach of contract. A key question will be whether CoHero's actions—specifically, using Plaintiff's alleged designs and technical specifications in its patent application and creating "imitation" devices—constituted misappropriation and a breach of the parties' agreements, thereby supporting Plaintiff's claim to rightful ownership of the resulting intellectual property.

3. A Question of Liability for the Successor: A final issue will be the extent of AptarGroup's liability. As the purchaser of CoHero's assets, including the ’555 Patent and contractual obligations, the court will need to determine whether Aptar is liable for the pre-acquisition conduct of CoHero and responsible for the remedies sought by Plaintiff, such as correction of inventorship and fulfillment of the purchase order.