DCT
1:23-cv-03116
Osseo Imaging LLC v. Carestream Dental LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Osseo Imaging, LLC (Kansas)
- Defendant: Carestream Dental LLC (Georgia)
- Plaintiff’s Counsel: Advanced Technology Law; Meister Seelig & Fein PLLC
- Case Identification: 1:23-cv-03116, N.D. Ga., 04/19/2024
- Venue Allegations: Plaintiff alleges venue is proper because Defendant is incorporated in Georgia, has transacted business in the district, has committed acts of patent infringement in the district, and has a regular and established place of business there.
- Core Dispute: Plaintiff alleges that Defendant’s 3D dental scanners and associated imaging software infringe two expired patents related to systems for creating tomographic models of dental structures that include densitometric data.
- Technical Context: The technology involves using scanning X-ray systems to generate three-dimensional models of a patient's dental structures, where the models incorporate quantitative data on bone and tissue density to aid dentists in diagnosing pathologies and planning treatments.
- Key Procedural History: This First Amended Complaint was filed in response to Defendant’s motion to dismiss the original complaint. The patents-in-suit expired in December 2019, and this action seeks damages for alleged infringement that occurred prior to expiration. Plaintiff previously litigated the same patents against a third party, Planmeca USA, Inc., which resulted in an August 2022 jury verdict finding the patents valid and infringed, with a damages award of $2.3 million. Plaintiff also notes settlement agreements with three other companies, all entered into after the patents expired.
Case Timeline
| Date | Event |
|---|---|
| 1999-12-01 | '301 and '374 Patents Earliest Priority Date |
| 2002-04-30 | '301 Patent Issue Date |
| 2013-01-23 | Osseo Patents assigned to Plaintiff |
| 2013-07-30 | '374 Patent Issue Date |
| 2017-02-01 | Start of Alleged "Damages Period" |
| During 2017 | Plaintiff initiated litigation against Planmeca USA, Inc. |
| 2019-12-01 | '301 and '374 Patents Expired |
| August 2022 | Jury verdict in Plaintiff's litigation against Planmeca |
| 2024-04-19 | First Amended Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 6,381,301
- Patent Identification: U.S. Patent No. 6,381,301, "Dental and orthopedic densitometry modeling system and method," issued April 30, 2002.
- The Invention Explained:
- Problem Addressed: The patent’s background section describes the difficulty of detecting certain dental pathologies, such as incipient caries (cavities) under the enamel surface, small fractures, and early-stage root abscesses, using conventional X-ray equipment and procedures (’301 Patent, col. 1:21-58).
- The Patented Solution: The invention is a system that applies medical densitometry techniques to dentistry to create a "tomographical densitometry model" (’301 Patent, Abstract). It uses scanning X-ray equipment controlled by a microprocessor to capture image data, which is then processed to generate a model that visually represents variations in the density of tooth and bone structures, for example through color-coding, thereby revealing pathologies that might otherwise be invisible (’301 Patent, col. 4:36-55; Fig. 1).
- Technical Importance: The technology offered a method for quantitatively mapping bone and tissue density in a dental context, adapting techniques used for diagnosing osteoporosis to the specific challenges of identifying hidden dental decay and monitoring the integration of dental implants (’301 Patent, col. 2:1-35).
- Key Claims at a Glance:
- The complaint asserts independent claim 1 and dependent claims 2-8 (Compl. ¶24).
- The essential elements of independent claim 1 include:
- a controller with a microprocessor and memory, including "means for storing a pre-existing tomographical dental/orthopedic densitometry model";
- an input device;
- a positioning motor for the X-ray equipment;
- X-ray equipment (source and detector array);
- "conversion means" for converting the detector signal; and
- an output device for receiving the tomographical densitometry model.
U.S. Patent No. 8,498,374
- Patent Identification: U.S. Patent No. 8,498,374, "Dental and orthopedic densitometry modeling system and method," issued July 30, 2013.
- The Invention Explained:
- Problem Addressed: As a continuation sharing the same specification, the ’374 patent addresses the same problem as the ’301 Patent: the limitations of conventional dental X-rays in detecting subtle pathologies within dental structures (’374 Patent, col. 2:5-8).
- The Patented Solution: The solution is also a system for creating densitometry models. The claims of this patent, however, are directed toward a system adapted for "creating, storing, and comparing 3D digital tomographic models of a dental structure without the use of fiducial markers" (’374 Patent, col. 8:1-9). This indicates a focus on a particular implementation of the core technology that does not require physical reference markers for imaging. The system likewise consists of a controller, scanning X-ray equipment, and input/output devices to generate density-based models (’374 Patent, Fig. 1; col. 4:1-50).
- Technical Importance: This patent builds on the same technical foundation as its predecessor, with claims that suggest a system capable of generating and comparing 3D models without reliance on external physical guides, a potential refinement in clinical workflow (’374 Patent, col. 8:1-9).
- Key Claims at a Glance:
- The complaint asserts independent claims 1 and 21, as well as several dependent claims (Compl. ¶29).
- The essential elements of independent claim 1 are similar to claim 1 of the ’301 Patent but add a "restricted beam device" and do not include the "means for storing a pre-existing" model limitation.
- The essential elements of independent claim 21 are similar to claim 1 but specify the controller is adapted for creating, storing, and comparing 3D digital models "without the use of fiducial markers of said dental structure."
III. The Accused Instrumentality
Product Identification
- The "Accused Systems" include the Carestream CS 9600, CS 9300, CS 9000, CS 8200 3D, and CS 8100 3D scanners, along with associated CS Imaging and CS 3D Imaging Software running on a computerized device (Compl. ¶¶ 3, 19).
Functionality and Market Context
- The complaint alleges the Accused Systems are 3D dental imaging systems that use cone beam computed tomography (CBCT) to generate three-dimensional X-ray models of a patient's dental structures (Compl. ¶20).
- The systems are alleged to merge digital X-ray images into tomographic models that include "quantitatively calculated bone density values with the use of a microprocessor" (Compl. ¶20).
- The associated software reportedly allows a user to observe this data. For instance, the CS 3D Imaging Software is alleged to display a "relative density number" that changes as a user moves the cursor over a region of interest in the 3D model, enabling density comparisons (Compl. ¶21). These models are stored and displayed on an output device, such as a workstation monitor (Compl. ¶20).
IV. Analysis of Infringement Allegations
No probative visual evidence provided in complaint.
’301 Patent Infringement Allegations
The complaint references an external claim chart (Exhibit C) that was not provided. The following summary is synthesized from the complaint’s narrative allegations.
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a) a controller with a microprocessor and a memory device... said controller including means for storing a pre-existing tomographical dental/orthopedic densitometry model | The Accused Systems include a computerized device (e.g., laptop) with a microprocessor and software for processing and storing tomographic models. | ¶19, ¶20, ¶24 | col. 4:1-17 |
| b) an input device connected to the microprocessor | The keyboard and mouse of the computerized device used to operate the system. | ¶19 | col. 4:6-10 |
| c) a positioning motor connected to the microprocessor and movable in response to from said microprocessor | The internal motors within the Carestream 3D scanners that move the X-ray source and detector during a scan. | ¶19, ¶24 | col. 4:18-21 |
| d) X-ray equipment including an X-ray source and a detector array | The Carestream 3D X-Ray Family of scanners, which perform cone beam computed tomography. | ¶19, ¶20 | col. 4:22-32 |
| e) conversion means for converting a signal from said detector array... | The microprocessor and software within the Accused Systems that process raw X-ray data into a 3D tomographic model. | ¶20 | col. 4:33-41 |
| f) an output device connected to said microprocessor and adapted for receiving a tomographical densitometry model... | The monitor of the computerized device running the Carestream Software, which displays the 3D model. | ¶19, ¶20 | col. 4:39-42 |
- Identified Points of Contention:
- Scope Questions: Claim 1(a) is a means-plus-function limitation requiring "means for storing a pre-existing tomographical... model." The complaint alleges the accused systems create and store models (Compl. ¶20), but it does not specify that they store or use "pre-existing" models for comparison, as the patent specification suggests (’301 Patent, col. 4:12-17). Whether the accused functionality meets this specific function will likely be a central dispute.
- Technical Questions: What evidence will show that the "relative density number" displayed by the accused software (Compl. ¶21) constitutes a "tomographical densitometry model" as required by the claims? The court may need to determine if a point-value numerical readout is equivalent to the "color-coded graphical representation" described in the patent (’301 Patent, col. 4:42-46).
’374 Patent Infringement Allegations
The complaint references an external claim chart (Exhibit D) that was not provided. The analysis for claim 1 is substantially similar to the ’301 patent chart above, with the key difference that claim 1 of the ’374 patent does not require storing a "pre-existing" model but does require a "restricted beam device."
- Identified Points of Contention:
- Scope Questions: Claim 21 requires a system that creates, stores, and compares 3D models "without the use of fiducial markers" (’374 Patent, col. 8:7-9). The infringement analysis for this claim will turn on the construction of "fiducial markers" and factual evidence regarding how the Accused Systems operate, details not provided in the complaint.
- Technical Questions: As with the ’301 patent, a key question remains whether the "relative density number" (Compl. ¶21) generated by the accused software meets the definition of a "3D digital tomographic model."
V. Key Claim Terms for Construction
The Term: "means for storing a pre-existing tomographical dental/orthopedic densitometry model" (’301 Patent, Claim 1)
- Context and Importance: This means-plus-function limitation appears central to the infringement analysis for the ’301 patent. Practitioners may focus on this term because the complaint’s allegations center on the creation of models, raising the question of whether the accused systems perform the distinctly claimed function of storing and using pre-existing models as a baseline for comparison.
- Evidence for a Broader Interpretation: A party might argue the function is met by the general capability to save a patient scan and access it later, making any saved scan a "pre-existing" model.
- Evidence for a Narrower Interpretation: The specification suggests a comparative purpose, describing input data that includes "previous tomographical densitometry models" and "baseline tomographical densitometry models," which can be adjusted for factors like age and gender (’301 Patent, col. 4:12-17). This may support a narrower construction where the "pre-existing model" serves as a diagnostic benchmark.
The Term: "tomographical densitometry model" (’301 and ’374 Patents)
- Context and Importance: This term defines the core output of the patented system. The dispute may turn on whether the accused functionality—displaying a "relative density number"—is coextensive with the claimed "model."
- Evidence for a Broader Interpretation: The patent abstract describes the output as a "tomographical densitometry model" without mandating a specific format, potentially allowing a numerical representation to suffice (’301 Patent, Abstract).
- Evidence for a Narrower Interpretation: The specification repeatedly describes the output as a "visual image color-coded to depict varying dental and orthopedic structure densities" and a "color-coded graphical representation" (’301 Patent, col. 2:59-61; col. 4:42-46). This language may support an interpretation requiring a visual map rather than a single numerical value.
VI. Other Allegations
The complaint pleads only direct infringement under 35 U.S.C. § 271(a) (Compl. ¶¶ 25, 30). It does not contain allegations of indirect or willful infringement.
VII. Analyst’s Conclusion: Key Questions for the Case
This case appears to present several focused questions of claim interpretation and evidentiary proof. The outcome may depend on the court’s determination of the following:
- A central issue for the ’301 patent will be one of functional scope: Does the accused system’s capability to generate and save scans meet the specific means-plus-function requirement of "storing a pre-existing tomographical... model," or does the claim require a more specific comparative functionality against a baseline model that Plaintiff must prove?
- A key evidentiary and definitional question for both patents will be one of technical equivalence: Does the "relative density number" displayed by the accused software constitute a "tomographical densitometry model" as claimed, or is there a fundamental mismatch between a point-value readout and the graphical, color-coded maps described in the patents' specifications?
- A dispositive issue for claim 21 of the ’374 patent will be the interpretation of a negative limitation: What is the scope of the term "fiducial markers," and can Plaintiff prove that the accused systems operate "without the use" of them, a point on which the complaint currently provides no factual allegations?