4:23-cv-10033
Distribution Intelligence Systems LLC v. ConMed Corp
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Distribution Intelligence Systems, LLC (Wyoming)
- Defendant: ConMed Corporation (Delaware)
- Plaintiff’s Counsel: Law Offices of Barbra Stern PA
- Case Identification: 4:23-cv-10033, S.D. Fla., 05/15/2023
- Venue Allegations: Plaintiff alleges venue is proper because Defendant is a resident of the district and has a regular and established place of business in the Southern District of Florida.
- Core Dispute: Plaintiff alleges that Defendant’s TenoLok® Anchor product, a medical device, infringes a patent related to dynamic intramedullary hardware for bone fixation.
- Technical Context: The technology relates to orthopedic intramedullary nails, devices inserted into the marrow cavity of long bones to stabilize fractures during healing.
- Key Procedural History: The complaint does not mention any prior litigation, Inter Partes Review (IPR) proceedings, or licensing history related to the patent-in-suit.
Case Timeline
| Date | Event |
|---|---|
| 2010-03-09 | Priority Date for U.S. Patent No. 8,617,160 |
| 2013-12-31 | U.S. Patent No. 8,617,160 Issued |
| 2023-05-15 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,617,160 - "Dynamic Intramedullary Hardware"
- Patent Identification: U.S. Patent No. 8,617,160, “Dynamic Intramedullary Hardware,” issued December 31, 2013.
The Invention Explained
- Problem Addressed: The patent describes conventional intramedullary nails as being difficult to secure within a bone. This process often requires external guides, drilling through tissue and bone to insert screws, and repeated x-ray exposure, which is time-consuming and can lead to complications ('160 Patent, col. 2:16-49).
- The Patented Solution: The invention is an intramedullary nail with an integrated, internal anchoring mechanism. It comprises an outer tubular sheath containing a mobile rod and a driver element. By manipulating the rod (e.g., by pulling it), the driver is moved, which in turn pushes anchoring elements, formed from the nail's own wall, outward to engage the surrounding cortical bone, securing the nail without external screws or drilling at the distal end ('160 Patent, Abstract; col. 3:9-17). This mechanism is illustrated in the patent's figures, such as Figure 3, which shows the internal components before deployment ('160 Patent, Fig. 3).
- Technical Importance: This approach aims to reduce the labor, time, and radiological exposure associated with securing an intramedullary nail, potentially leading to reduced scarring and a more stable fixation ('160 Patent, col. 2:28-34).
Key Claims at a Glance
- The complaint asserts at least Claim 1 of the '160 Patent (Compl. ¶15).
- Independent Claim 1 recites the following essential elements:
- A device for implantation into osseous material to facilitate healing.
- An elongated tubular body containing:
- a mobile elongated rod;
- an anchoring element attached to the elongated tubular body; and
- a driver attached to the elongated rod.
- Wherein the driver can move substantially along the length of the elongated tubular body.
- And engages the anchoring element, causing it to protrude laterally and engage the surrounding osseous material.
- The complaint does not explicitly reserve the right to assert dependent claims but references infringement of the patent's "claims" generally (Compl. ¶15).
III. The Accused Instrumentality
Product Identification
- The accused instrumentality is Defendant’s "TenoLok® Anchor product" (Compl. ¶15).
Functionality and Market Context
- The complaint alleges that the TenoLok® Anchor product is a device made, used, sold, or imported by the Defendant that is covered by the claims of the '160 Patent (Compl. ¶15). The complaint does not provide specific details on the technical operation or market context of the TenoLok® Anchor product beyond the general allegation that it infringes. No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
The complaint references an "infringement analysis at Exhibit B" but does not include the exhibit (Compl. ¶15). The infringement theory must therefore be constructed from the narrative allegations. The complaint alleges that the TenoLok® Anchor product "employs the invention covered by Claim 1" (Compl. ¶15). Paragraph 14 of the complaint recites the elements of Claim 1, providing the basis for the following summary chart.
’160 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A device for the implantation into osseous material to facilitate healing, comprising: an elongated tubular body wherein the elongated tubular body contains | The complaint alleges the TenoLok® Anchor product is a device that employs the invention of Claim 1. | ¶15 | col. 6:25-28 |
| a) a mobile elongated rod; | The TenoLok® Anchor product allegedly contains a component corresponding to a mobile elongated rod. | ¶14-15 | col. 6:29 |
| b) an anchoring element attached to the elongated tubular body; and | The TenoLok® Anchor product allegedly contains a component corresponding to an anchoring element. | ¶14-15 | col. 6:30-31 |
| c) a driver attached to the elongated rod | The TenoLok® Anchor product allegedly contains a component corresponding to a driver. | ¶14-15 | col. 6:32 |
| wherein the driver can move substantially along the length of the elongated tubular body and engages the anchoring element thereby causing the anchoring element to protrude laterally through the elongated tubular body and engage the surrounding osseous material. | The TenoLok® Anchor product allegedly operates such that its driver moves and causes its anchor to deploy. | ¶14-15 | col. 6:33-37 |
Identified Points of Contention
- Scope Questions: A notable point of contention may arise from the complaint's description of the '160 Patent in paragraph 14, which initially states the claims are directed to "a 'system and method for interconnecting a computer with the physical structure of an amusement device'" before correctly quoting language from Claim 1 related to a medical implant (Compl. ¶14). While likely a clerical error, it raises the question of whether the Plaintiff's pre-suit investigation was thorough.
- Technical Questions: As the complaint lacks a detailed, element-by-element comparison to the accused product, a central question will be whether the TenoLok® Anchor product actually contains each of the claimed components—a "mobile elongated rod," an "anchoring element," and a "driver"—and whether they operate in the specific manner claimed. The complaint does not provide evidence to substantiate how the accused product's components map to these claim elements.
V. Key Claim Terms for Construction
The Term: "anchoring element"
Context and Importance: The nature of the "anchoring element" is central to the invention. The infringement analysis will depend on whether the corresponding feature in the TenoLok® product meets the definition of this term as understood from the patent. Practitioners may focus on this term because its structure and attachment method are key points of novelty.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim itself broadly requires only that the anchoring element be "attached to the elongated tubular body" (col. 6:30-31), suggesting it could be attached via various means, including pins or wires as described in the specification (col. 5:32-35).
- Evidence for a Narrower Interpretation: The preferred embodiment describes the anchoring elements as being "cut directly from the wall of the intramedullary nail so that they are integral to the intramedullary nail" and attached by a "living hinge" (col. 3:1-3; col. 5:30-31). A defendant may argue that the term should be limited to such an integral construction, distinguishing it from separate components that are later attached.
The Term: "driver"
Context and Importance: This term defines the component that actuates the anchor. The dispute will likely involve whether the TenoLok® product's deployment mechanism functions as the claimed "driver."
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claims require a "driver attached to the elongated rod" that "engages the anchoring element" (col. 6:32-35). The specification shows the driver as a distinct component that moves with the rod to push the anchors (col. 4:51-54).
- Evidence for a Narrower Interpretation: The specification describes specific structures for the driver, including a "body 114 and a conical top 116" ('160 Patent, col. 4:64-65). A defendant may argue that the term "driver" requires a structure with these specific features, or at least a structure that "moves between or amongst the anchors" as described ('160 Patent, col. 5:12-14), rather than a more general deployment mechanism.
VI. Other Allegations
- Indirect Infringement: The complaint alleges induced infringement, stating Defendant "caused, encouraged and/or aided" infringement by distributors and customers with "full knowledge" and "specific intent" (Compl. ¶17). It also alleges contributory infringement, asserting that Defendant provides devices that are "not staple articles or commodities of commerce suitable for a substantial noninfringing use" (Compl. ¶18).
- Willful Infringement: Willfulness is alleged based on the claim that Defendant's infringement continued "at least since Defendant first learned about the '160 patent" (Compl. ¶19).
VII. Analyst’s Conclusion: Key Questions for the Case
A primary evidentiary question will be one of technical mapping: given the complaint's conclusory allegations, what evidence will Plaintiff produce to demonstrate that the accused TenoLok® Anchor product contains structures corresponding to a "mobile elongated rod," a "driver," and an "anchoring element," and that these components interact as specifically required by Claim 1?
The case will likely involve a core issue of claim scope: will the term "anchoring element" be construed broadly to cover any attached anchor, or will it be narrowed to the preferred embodiment where the anchor is "integral" to the nail's body and connected by a "living hinge," a distinction that could be dispositive for infringement?
A further question will concern willfulness and knowledge: the complaint alleges willfulness from the time Defendant "first learned" of the patent. A key factual dispute will be determining when, and if, Defendant acquired pre-suit knowledge of the '160 Patent and its alleged infringement, which will be critical for any potential finding of enhanced damages.