Traceless Biopsy LLC v. Jordan

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Traceless Biopsy, LLC (Georgia)
  • Defendant: Carolyn Jordan (Maryland)
  • Plaintiff’s Counsel: Perilla Knox & Hildebrandt LLP
• Case Identification: 1:25-cv-02365, N.D. Ga., 04/28/2025
• Venue Allegations: Venue is asserted based on a substantial part of the events or omissions giving rise to the claim having occurred in the Northern District of Georgia.
• Core Dispute: Plaintiff seeks the removal of Defendant as a named inventor on a U.S. patent, alleging that Defendant did not contribute to the conception of the subject matter recited in the patent's allowed claims.
• Technical Context: The technology concerns medical devices for ablating a biopsy tract after tissue removal to cauterize the site, thereby preventing bleeding and the spread of cancer cells (tumor seeding).
• Key Procedural History: The complaint alleges the patent originated from concepts by Dr. Charles Gilliland, who later collaborated with a university student group, including the Defendant, on a project related to his designs. Subsequently, Dr. Gilliland allegedly developed "new designs" with a professional engineering firm. The complaint states that the Defendant was named on the resulting patent application out of an "abundance of caution," but that the final allowed claims are directed only to the new designs to which she allegedly did not contribute.

Case Timeline

Date	Event
2016-11-30	Earliest Priority Date ('’776 Patent)
2016-11-30	First provisional application filed
2017-09-08	Second provisional application filed
2017-11-11	Non-provisional application leading to '776 Patent filed
2021-03-30	U.S. Patent No. 10,959,776 issues
2025-04-28	Complaint for Correction of Inventorship filed

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

• Patent Identification: U.S. Patent No. 10,959,776, "Biopsy Tract Ablation System for Tumor Seeding Prevention and Cauterization," issued March 30, 2021.

The Invention Explained

• Problem Addressed: Standard core needle biopsies create a risk that cancer cells can dislodge from a tumor, adhere to the biopsy needle, and "spread along the needle tract" upon withdrawal, potentially causing the cancer to metastasize ('776 Patent, col. 1:46-52). A secondary risk is bleeding from blood vessels injured during the procedure ('776 Patent, col. 1:35-37).
• The Patented Solution: The patent describes an ablation probe system designed to be inserted into the biopsy tract after a sample is taken but before the access cannula is removed ('776 Patent, col. 4:14-22). The probe's tip heats to a high temperature (e.g., at least 90° C) to cauterize the surrounding tissue, which simultaneously stops bleeding and kills any residual tumor cells along the tract, preventing them from spreading ('776 Patent, col. 9:1-14). The system is described as a portable, handheld unit, potentially with an onboard power source, making it compatible with standard biopsy workflows ('776 Patent, Claim 1).
• Technical Importance: The technology aims to mitigate a significant risk in oncological diagnosis, where the diagnostic procedure itself could inadvertently worsen a patient's prognosis ('776 Patent, col. 1:60-64).

Key Claims at a Glance

• The complaint alleges that all allowed claims of the '776 patent are directed to "new designs" to which the Defendant did not contribute (Compl. ¶23). Independent claim 1 is representative:
• Independent Claim 1:
  • A housing configured for hand-held use, comprising an onboard battery power source and a power actuator switch;
  • An elongate body extending from the housing;
  • The elongate body terminating in an ablation probe tip comprising an electrically-resistive material applied in a pattern onto an electrically non-conductive rod portion of the tip;
  • The pattern defining at least one conductive path for heating the tip to a "tumor-seeding prevention temperature"; and
  • The elongate body comprising a thermally non-conductive material such that only the ablation probe tip is heated upon activation.
• The complaint does not specify particular dependent claims.

III. The Accused Instrumentality

This section is not applicable, as the complaint is for correction of inventorship and does not allege infringement of the patent by a product or service.

IV. Analysis of Inventorship Allegations

The complaint does not allege infringement and instead presents a narrative to support the removal of Defendant Jordan from the '776 Patent. The core of the action is a factual dispute over who conceived of the claimed invention.

Plaintiff's theory of inventorship is based on a sequence of events:

1. Initial Conception: Dr. Gilliland, founder of Plaintiff Traceless Biopsy, is alleged to have conceived of "several concepts for an ablative biopsy tract system" to minimize tumor seeding (Compl. ¶10).
2. Student Project: In 2016, Dr. Gilliland worked with a group of Georgia Institute of Technology students, including Defendant Jordan, as part of a "Capstone" program. The students allegedly "produced a presentation outlining Dr. Gilliland's designs" (Compl. ¶14). Provisional patent applications were filed that named the students as inventors based on this work (Compl. ¶15-16).
3. New, Patentable Designs: In 2017, Dr. Gilliland began working with a professional engineering firm to develop "new biopsy tract ablation tools and systems that were substantially different" from the earlier designs (Compl. ¶21). The complaint alleges these new designs were invented by Dr. Gilliland, Kirk Charles, and Brian Vanheil (Compl. ¶21).
4. Disputed Patent Prosecution: A non-provisional application, which matured into the '776 patent, was filed claiming priority to the earlier provisionals. Plaintiff alleges that the students, including Defendant Jordan, were named as inventors "out of an abundance of caution" because the application "initially sought very broad claim coverage" (Compl. ¶22).
5. Core Allegation: Plaintiff asserts that during prosecution, the scope of the patent was narrowed such that "all of the allowable claims as found in the '776 Patent are directed only to the new designs" (Compl. ¶23). Therefore, Plaintiff claims Defendant Jordan "did not contribute to the new designs/ideas that were ultimately deemed patentable" and was "inadvertently named" as an inventor (Compl. ¶24, ¶28).

No probative visual evidence provided in complaint.

V. Key Distinctions for Inventorship Determination

The central issue is whether Defendant Jordan contributed to the conception of the invention as recited in the issued claims. The dispute will likely focus on specific claim limitations that Plaintiff argues are part of the "new designs" and not the earlier concepts shared with the students.

• The Term: "an electrically-resistive material applied in a pattern onto an electrically non-conductive rod portion of the ablation probe tip" (from Claim 1)
• Context and Importance: Practitioners may focus on this term because its specificity may be a key point of distinction between the general concept of an ablative probe and the particular embodiment that was ultimately patented. The case will require a factual determination of whether this specific structural configuration—a patterned resistive material on a non-conductive rod—was conceived by Dr. Gilliland and the professional engineers, or whether Defendant Jordan contributed to this concept during her work on the Capstone project.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The complaint itself does not provide evidence for a broader interpretation that would include Defendant's work. A defense argument might focus on the priority claim to the provisional applications on which Defendant was named, suggesting the subject matter was present in some form from the earlier stages (Compl. ¶22).
  • Evidence for a Narrower Interpretation: The complaint alleges the "new designs" were "substantially different" from the concepts presented to the students (Compl. ¶21). The detailed description and figures corresponding to this specific "patterned" tip design (e.g., '776 Patent, Figs. 5A-5B; col. 12:56-62) may be presented by Plaintiff as evidence of the later-developed, patentable invention to which Defendant allegedly did not contribute.

VI. Allegations Regarding Inventorship Correction

• Inadvertent Error: Plaintiff pleads that the inclusion of Defendant Jordan as a co-inventor "occurred without any deceptive intent on the part of Plaintiff Traceless" (Compl. ¶29). This allegation is a statutory prerequisite for a court to order correction of inventorship under 35 U.S.C. § 256.
• Exceptional Case: The complaint alleges that after being informed of the alleged inventorship error, Defendant Jordan "refused to cooperate" with Plaintiff's request to be removed from the patent unless she was "exorbitantly compensated" (Compl. ¶31). Plaintiff characterizes these demands as "reckless and unjustified" and the basis for seeking a finding that the case is "exceptional" under 35 U.S.C. § 285, which would entitle Plaintiff to an award of attorney fees (Compl. ¶32; Prayer for Relief ¶D).

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

The resolution of this case appears to depend on the answers to several core factual and evidentiary questions.

• A central factual question will be one of contribution and conception: What, precisely, was the technical contribution of Defendant Jordan during the Capstone project? The court will need to determine if her work rose to the level of conceiving at least one of the specific limitations present in the issued claims of the '776 patent.
• A key evidentiary question will be one of demarcation: Can Plaintiff produce sufficient evidence—such as lab notebooks, emails, or prototype designs—to establish a clear and convincing distinction between the "initial concepts" associated with the student project and the "new designs" that allegedly form the sole basis of the patented claims?
• Finally, the viability of the "exceptional case" allegation will depend on the nature of the parties' conduct: The court will examine the communications and negotiations between the parties regarding the inventorship correction to determine if Defendant's alleged refusal to cooperate and demands for compensation were objectively unreasonable.