DCT
1:18-cv-00825
Beijing Choice Electronic Technology Co Ltd v. Contec Medical Systems USA Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Beijing Choice Electronic Technology Co., Ltd. (People's Republic of China)
- Defendant: Contec Medical Systems USA Inc. (Illinois) and Contec Medical Systems Co., Ltd. (People's Republic of China)
- Plaintiff’s Counsel: Mandell Menkes LLC; Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
- Case Identification: 1:18-cv-00825, N.D. Ill., 01/31/2018
- Venue Allegations: Venue is alleged to be proper because Defendant Contec U.S. is an Illinois corporation with a place of business in the district, and Defendant Contec China is a foreign corporation.
- Core Dispute: Plaintiff alleges that Defendant’s fingertip pulse oximeters infringe a patent related to methods and systems for updating the display orientation on such devices.
- Technical Context: The technology concerns the user interface of portable medical devices, specifically fingertip pulse oximeters used to measure blood oxygen saturation and pulse rate.
- Key Procedural History: The complaint alleges that Defendant had knowledge of the patent-in-suit’s family because the parent patent was cited by the U.S. Patent and Trademark Office as prior art against one of Defendant’s own patent applications.
Case Timeline
| Date | Event |
|---|---|
| 2006-08-07 | U.S. Patent No. 8,639,308 Priority Date |
| 2014-01-28 | U.S. Patent No. 8,639,308 Issue Date |
| 2015-07-29 | Prosecution of Contec's '477 patent: USPTO cites parent '179 patent |
| 2018-01-31 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,639,308 - Fingertip Oximeter and a Method for Observing a Measurement Result Thereon
The Invention Explained
- Problem Addressed: The patent describes that prior art fingertip oximeters display measurement results in a single, fixed orientation. This may require a user to bend their finger to read the display, which can cause "partial occlusion of arterial blood capillary," potentially degrading the signal and reducing the precision of the measurement (’308 Patent, col. 1:36-44).
- The Patented Solution: The invention is a fingertip oximeter that solves this problem by providing multiple display modes with different orientations that a user can cycle through by pressing a button (’308 Patent, Abstract). This allows the user to observe the measurement result from various directions without needing to bend their finger, thereby improving convenience and measurement accuracy (’308 Patent, col. 1:48-56). The system uses a central processing unit to detect a button press and update the screen to a new display mode, such as changing from a "landscape" to a "portrait" orientation (’308 Patent, col. 2:21-30; Figs. 1A-1D).
- Technical Importance: The invention provides a user interface improvement for a common medical device, intended to enhance both usability and the reliability of the collected data (’308 Patent, col. 1:54-56).
Key Claims at a Glance
- The complaint asserts independent claims 1 (a method) and 4 (an apparatus) ('308 Patent, Compl. ¶32).
- Independent Claim 1 (Method): The key elements include:
- Detecting a user instruction for updating a current display mode when a user presses a button, where the button also controls a power source.
- The current display mode shows measurement parameters in one of several specified orientations (e.g., upright, portrait right laying way).
- Generating, via a central processor, a new display mode that shows the measurement parameters in a different way than the current mode.
- Displaying the new display mode in place of the current one.
- Independent Claim 4 (Apparatus): The key elements include:
- A power source unit.
- A button that receives user instructions to update the display mode and also controls the power source.
- A central processor configured to detect the user instruction from the button press and generate a new display mode showing parameters in a different way.
- A display for showing the new display mode.
III. The Accused Instrumentality
Product Identification
- The accused instrumentalities are fingertip pulse oximeters, specifically model numbers CMS50D, CMS50D+, CMS50E, CMS50H, CMS50N, CMS50QB, and their OEM equivalents (collectively, the "Infringing Oximeters") (Compl. ¶26).
Functionality and Market Context
- The complaint alleges the Infringing Oximeters are used to measure and display blood oxygen saturation (SpO2) and pulse rate (PRbpm) (Compl. ¶33). The core accused functionality is the ability for a user to change the display orientation by pressing the device's power button while it is in use (Compl. ¶35). The complaint cites the user manual for the CMS50D model, which allegedly instructs: “Press the button shortly when the device is power on, the display mode will change . . . .” (Compl. ¶37). The complaint also alleges that Defendant's products mimic the design of Plaintiff's patented products to directly compete in the U.S. market (Compl. p. 15, ¶ preceding ¶50).
IV. Analysis of Infringement Allegations
U.S. Patent No. 8,639,308 Infringement Allegations
| Claim Element (from Independent Claim 4) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a power source unit for supplying power to the fingertip oximeter; | The accused CMS50D is a battery-powered device containing a power source and a button that controls the power. | ¶36 | col. 5:49-53 |
| a button for receiving a user instruction to update a current display mode, the button further controlling the power source; | The "power button" on the CMS50D is used to turn the device on and is also pressed by a user to update the display mode while the device is operating. | ¶¶35, 36 | col. 8:37-40 |
| a central processor for updating the current display mode...configured to: detect the user instruction...and generate a new display mode...displaying...in a different way... | The CMS50D contains a central processor that, upon detecting a press of the power button, generates a new display mode, changing the orientation of the parameters from a "portrait left laying way" to a "portrait right laying way." A photograph of the disassembled product purports to show this central processor. | ¶¶37, 38, 39 | col. 8:46-56 |
| a display for displaying the new display mode in place of the current display mode. | The CMS50D has a screen that displays measurement results and is updated to show the new display mode in place of the old one. A screenshot from an operation video shows the accused product's display illustrating a measurement result. | ¶33 | col. 5:18-24 |
- Identified Points of Contention:
- Scope Questions: A primary question may be whether the accused button's dual operation meets the claim limitation "button further controlling a power source." The defense may argue that the button's function to change display modes is a software-level instruction distinct from its electrical function of controlling power, potentially creating a scope mismatch with the claim language.
- Technical Questions: The complaint alleges a direct mapping between the display orientations of the accused product and the orientations described in the claims (e.g., "portrait left laying way") (Compl. ¶34). A technical question for the court will be whether the evidence demonstrates that the accused device's display modes fall within the specific orientations recited in the asserted claims.
V. Key Claim Terms for Construction
The Term: "button further controlling a power source" (from Claim 4)
Context and Importance: The infringement theory rests on a single button performing two distinct functions: updating the display and controlling power. The definition of "controlling a power source" and its required relationship to the display-update function will be critical. Practitioners may focus on this term to determine if a button that simply turns a device on, and is later used to trigger a separate software function, satisfies the integrated functionality implied by the claim.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification states that the button for inputting a display update instruction is "connected with the power supply unit for activating the power supply unit" (’308 Patent, col. 5:12-16). This language could support an interpretation where a single button that performs both functions sequentially, as alleged in the complaint, falls within the claim scope.
- Evidence for a Narrower Interpretation: The defense may point to claim language to argue that "controlling" implies a more integrated or continuous function than merely triggering the "on" state. They might argue that once the device is on, subsequent presses for display updates are commands to the processor and no longer "controlling" the power source in the manner contemplated by the patent.
The Term: "in a different way" (from Claim 4)
Context and Importance: Infringement requires the "new display mode" to display parameters "in a different way." The complaint alleges a change in screen orientation (e.g., from left-oriented to right-oriented portrait) satisfies this limitation (Compl. ¶39). The construction of this term will determine if a simple orientation change is sufficient.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent's figures explicitly show changes in orientation as distinct modes (e.g., Fig. 1A vs. 1B vs. 1C vs. 1D). This strongly suggests that reorienting the same numerical parameters constitutes displaying them "in a different way."
- Evidence for a Narrower Interpretation: A party could argue that "in a different way" requires a more substantive change, such as switching from displaying numerical parameters to displaying a graphical waveform (as shown in Figs. 1E and 1F). This interpretation would attempt to narrow the claim to exclude mere orientation changes.
VI. Other Allegations
- Indirect Infringement: The complaint alleges induced infringement based on Defendant's user manuals, which allegedly instruct end users on how to perform the claimed method of changing the display mode (Compl. ¶46). It also alleges contributory infringement, stating the accused products are especially adapted for infringement and have no substantial non-infringing uses (Compl. ¶47).
- Willful Infringement: The complaint alleges willfulness based on both pre-suit knowledge and deliberate copying. It asserts that Defendant knew or should have known of the patent family because the asserted patent's parent ('179 patent) was cited against Defendant's own patent application during prosecution (Compl. ¶¶41-43). The complaint further alleges that Defendant deliberately mimicked the design of Plaintiff's products, providing side-by-side photographic comparisons as evidence (Compl. p. 14).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of claim scope: can the limitation of a single "button further controlling a power source" be construed to read on the accused device's "power button," which is allegedly used first to turn the device on and subsequently to trigger a display-mode change via a software command?
- A key question for damages and potential enhancement will be one of intent: does the citation of the asserted patent's parent during the prosecution of Defendant's own patent, combined with allegations of product design mimicry, constitute sufficient evidence to establish pre-suit knowledge and willful infringement?