DCT
1:19-cv-03164
Xodus Medical Inc. v
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Xodus Medical Inc. (Pennsylvania), Alessio Pigazzi (California), and Glenn Keilar (California)
- Defendant: U.S. Surgitech, Inc. (Illinois)
- Plaintiff’s Counsel: The Webb Law Firm; Hunter Masalski LLC
- Case Identification: 1:19-cv-03164, N.D. Ill., 10/15/2019
- Venue Allegations: Venue is alleged to be proper as Defendant resides in the Northern District of Illinois, maintains a regular and established place of business in the district, and has committed alleged acts of infringement there.
- Core Dispute: Plaintiffs allege that Defendant’s SurgyPad patient positioner infringes three patents related to patient support arrangements used to secure patients on tiltable medical procedure tables.
- Technical Context: The technology concerns specialized viscoelastic foam pads designed to prevent patients from sliding and to minimize pressure-related injuries during surgical procedures where the operating table is steeply inclined, such as in the Trendelenburg position.
- Key Procedural History: This filing is a First Amended Complaint. The complaint alleges that Defendant’s principal, Maaz Meah, was a former contractor for one of Plaintiff Xodus’s distributors, sold commercial embodiments of the patents-in-suit, and therefore had actual knowledge of the patents, forming a basis for the willfulness allegations.
Case Timeline
| Date | Event |
|---|---|
| 2012-01-10 | Earliest Priority Date for ’720, ’314, and ’876 Patents |
| 2013-06-18 | U.S. Patent No. 8,464,720 Issues |
| 2013-08-20 | U.S. Patent No. 8,511,314 Issues |
| 2015-10-20 | U.S. Patent No. 9,161,876 Issues |
| 2019-10-15 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,511,314 - "Method of Securing a Patient Onto an Operating Table When the Patient is in the Trendelenburg Position and Apparatus Therefor Including a Kit"
The Invention Explained
- Problem Addressed: The patent describes the challenge of securing a patient on an operating table when it is inclined for medical procedures, such as in the Trendelenburg position. Such tilting can cause the patient to slide, disrupting the procedure, and can create concentrated pressure points that lead to nerve damage, such as brachial plexopathy (’314 Patent, col. 1:40-51; col. 2:7-13).
- The Patented Solution: The invention is a patient support arrangement featuring a pad made of a deformable, viscoelastic material. When a patient lies on the pad, their body weight creates an impression or depression in the material. This depression, combined with the material’s specific properties like a slow rate of recovery, provides holding forces that secure the patient against sliding, while also distributing pressure across the body to reduce the risk of injury (’314 Patent, Abstract; col. 2:1-7; Fig. 5).
- Technical Importance: This approach provided a way to secure patients on steeply angled tables using the patient's own body shape, as an alternative to conventional restraints which could themselves cause pressure injuries (’314 Patent, col. 7:34-42).
Key Claims at a Glance
- The complaint asserts independent claims 1 (an apparatus claim) and 23 (a method claim) (Compl. ¶¶41-42).
- Essential elements of independent claim 1 include:
- A pad configured for a tiltable medical table, long enough to support a patient's torso from thighs to shoulders.
- The pad comprises a deformable material that forms a depression under the patient's torso.
- This depression provides a "substantial portion of the holding forces" when the table is tilted.
- The material has a "rate of recovery sufficiently slow to maintain a depression."
- The pad is configured to distribute pressure forces to minimize injuries.
- The complaint also asserts dependent claims 2-4, 9-10, 12-14, 17-20, 24, and 26 (Compl. ¶20).
U.S. Patent No. 8,464,720 - "Method of Securing a Patient Onto an Operating Table When the Patient is in the Trendelenburg Position and Apparatus Therefor Including a Kit"
The Invention Explained
- Problem Addressed: In addition to preventing patient sliding and pressure injuries, surgical procedures require managing contamination risks and efficiently positioning and repositioning the patient. This necessitates a more integrated system than just a pad alone (’720 Patent, col. 10:55-64).
- The Patented Solution: The patent claims a method using a "single-use Trendelenburg patient support system." This system comprises not only the viscoelastic pad but also integrated components including a lift sheet for repositioning, body straps, and securing straps to attach the entire apparatus to the surgical table's rails. The claims describe the multi-step process of setting up the system, positioning the patient, and performing the procedure (’720 Patent, col. 17:15-26; Fig. 4).
- Technical Importance: The invention bundles multiple functions—patient security, pressure distribution, sterile handling, and repositioning—into a single, disposable kit, addressing a range of clinical workflow and safety needs simultaneously (’720 Patent, col. 17:15-26).
Key Claims at a Glance
- The complaint asserts independent method claims 1, 6, and 10 (Compl. ¶¶71-73).
- Essential steps of independent claim 6 include:
- Using a system with a viscoelastic pad and securing straps.
- A) Positioning the pad on the medical table.
- B) Attaching the securing straps from the pad to the table.
- C) Positioning a patient on the pad, thereby deforming it.
- D) Adjusting the table to an inclined position.
- E) Assisting in holding the patient using the deformed viscoelastic pad.
- The complaint also asserts dependent claims 2, 4, 7-8, and 11-12 (Compl. ¶23).
U.S. Patent No. 9,161,876 - "Method of Securing a Patient Onto an Operating Table When the Patient is in the Trendelenburg Position and Apparatus Therefor Including a Kit"
Technology Synopsis
This patent covers technology very similar to the ’314 Patent, describing a patient support arrangement with a deformable pad that forms a depression to hold a patient on a tilted table (’876 Patent, Abstract). The claims explicitly recite the arrangement is configured to support a patient’s body comprising specific parts including thighs, shoulders, a torso, a head, a right side, and a left side (’876 Patent, col. 17:10-15).
Asserted Claims
The complaint asserts independent claims 1 (apparatus) and 17 (method) (Compl. ¶¶102-103).
Accused Features
The complaint accuses the SurgyPad’s deformable foam material and its use in creating a depression to hold a patient on a tilted table (Compl. ¶¶104-105).
III. The Accused Instrumentality
Product Identification
- The accused product is the "SurgyPad," which Defendant U.S. Surgitech markets as a "Trendelenburg Patient Positioner" (Compl. ¶¶18-19).
Functionality and Market Context
- The complaint alleges the SurgyPad is a patient support system designed for use on tiltable medical tables to hold a patient in place during procedures (Compl. ¶¶37, 43). It is alleged to be constructed from a "high-density, water-wicking foam pad" that functions as a deformable, viscoelastic material (Compl. ¶¶36, 44). According to the complaint, this foam deforms under a patient's weight to create a depression that secures the patient when the table is tilted (Compl. ¶44). The complaint alleges the SurgyPad system also includes components like a lift sheet and securing straps (Compl. ¶74). An image from Defendant's marketing video shows the SurgyPad configured with body straps to hold a patient on an operating table (Compl. p. 29).
IV. Analysis of Infringement Allegations
’314 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a pad configured to be placed on a tiltable medical procedure table; | The SurgyPad is a patient support arrangement comprising a pad intended for placement on a tiltable medical table. | ¶43 | col. 4:40-47 |
| said pad having a length sufficient to extend from about at least the thighs of a patient to about at least the shoulders of a patient to support the torso... | The SurgyPad is alleged to have a length sufficient to extend from a patient's thighs to their shoulders. This is illustrated in an annotated photo from Defendant's website. (Compl. p. 10). | ¶43 | col. 4:34-39 |
| said deformable material being configured to be deformable by the torso of a patient to form a depression in said pad, which depression provides a substantial portion of the holding forces... | The SurgyPad's foam pad is alleged to deform under a patient’s torso to create a depression that provides a substantial portion of the holding forces. An image shows the product in use on a tilted table where this function is required. (Compl. p. 11). | ¶44 | col. 5:4-10 |
| said deformable material has a rate of recovery sufficiently slow to maintain a depression in said pad for a desired period of time... | The complaint alleges on information and belief that the SurgyPad’s "high-density, water-wicking foam pad" has a rate of recovery slow enough to maintain a depression. | ¶45 | col. 2:25-36 |
| said pad is configured to distribute pressure forces across a substantial portion of the torso of a patient... to minimize injuries... | The SurgyPad is alleged to distribute pressure to minimize injuries, with the complaint citing Defendant's marketing that it provides "extra comfort and prevent unwanted contact." | ¶45 | col. 2:5-7 |
’720 Patent Infringement Allegations
| Claim Element (from Independent Claim 6) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A method of minimizing injuries... using a patient support system comprising a viscoelastic pad and securing straps... | The complaint alleges the SurgyPad is used as a system with a pad and securing straps for minimizing injuries. An image shows the SurgyPad securing a patient with straps. (Compl. p. 37). | ¶81 | col. 24:20-24 |
| A) positioning said viscoelastic pad in a position on said medical procedure table where the body of a patient will be lying; | Defendant allegedly sells the SurgyPad for a use that includes positioning the pad on a medical table. | ¶82 | col. 4:15-17 |
| B) attaching said securing straps, connected to said viscoelastic pad, to said medical procedure table; | Defendant allegedly sells the SurgyPad for a use that includes attaching its securing straps to the medical procedure table. | ¶82 | col. 4:26-28 |
| C) positioning a patient on said viscoelastic pad and thereby deforming said viscoelastic pad... | Defendant allegedly sells the SurgyPad for a use that includes positioning a patient on the pad, causing the foam to deform. | ¶82 | col. 4:29-32 |
| D) adjusting the angle of inclination of said medical procedure table to orient said patient at an angle... | The SurgyPad is allegedly used on a medical table whose angle is adjusted to an inclined position. | ¶84 | col. 4:39-41 |
| E) assisting in substantially holding the body of said patient on said medical procedure table using said viscoelastic pad... | The SurgyPad is allegedly used to hold the patient in place by means of the deformed viscoelastic pad. | ¶85 | col. 4:42-45 |
Identified Points of Contention
- Scope Questions: A central question may be whether the term "substantial portion of the holding forces" (’314 Patent, Claim 1) requires the depression to be the primary holding mechanism, or merely a non-trivial contributor alongside friction. The complaint's reliance on marketing imagery may not resolve this quantitative technical question (Compl. ¶44).
- Technical Questions: The complaint alleges on "information and belief" that the SurgyPad’s foam meets functional requirements like having a "rate of recovery sufficiently slow" (’314 Patent, Claim 1) and specific physical properties recited in dependent claims (Compl. ¶¶45, 54-55). A key question for the court will be what technical evidence, such as material testing data, exists to support these allegations beyond conclusory statements.
V. Key Claim Terms for Construction
The Term: "a rate of recovery sufficiently slow to maintain a depression" (’314 Patent, Claim 1; ’876 Patent, Claim 1)
- Context and Importance: This is a functional limitation that defines a required performance characteristic of the deformable material. The infringement analysis may depend on whether the accused SurgyPad's foam recovers at a rate that falls within the scope of this term. Practitioners may focus on this term because its boundary is not explicitly defined by a single numerical value in the claim itself.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification provides numerical examples, stating the rate of recovery is in the range of "approximately 2-10 seconds for approximately 50 percent to 80 percent recovery" (’314 Patent, col. 2:27-30). A party could argue that any material meeting this described range satisfies the "sufficiently slow" requirement.
- Evidence for a Narrower Interpretation: A party could argue the term is defined by its stated purpose: to be slow enough to "assist in holding the patient in a desired position on an inclined support table" (’314 Patent, col. 1:64-66). This suggests the rate must achieve a specific functional outcome, potentially narrowing the scope to materials that demonstrably prevent patient sliding under clinical conditions.
The Term: "depression provides a substantial portion of the holding forces" (’314 Patent, Claim 1; ’876 Patent, Claim 1)
- Context and Importance: This term of degree is critical for distinguishing the invention from pads that might rely primarily on surface friction. The case may turn on the evidentiary threshold required to prove the depression's contribution is "substantial."
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent states the pad "assists in holding the patient" and the depression "helps to hold the body," which could suggest the depression's contribution need only be significant, not necessarily a majority (’314 Patent, col. 1:65-66; col. 5:1-2).
- Evidence for a Narrower Interpretation: The patent emphasizes the holding ability of the impression itself as a key feature (’314 Patent, col. 5:4-10). A party could argue that to be "substantial," this depression-based force must be the primary mechanism responsible for preventing sliding, as opposed to a minor supplement to the material's coefficient of friction.
VI. Other Allegations
- Indirect Infringement: The complaint alleges both induced and contributory infringement for all three patents. The inducement theory is based on allegations that Defendant markets and sells the SurgyPad for infringing uses, such as positioning patients in the Trendelenburg position, and that its website and marketing materials instruct medical professionals on how to perform the patented methods (Compl. ¶¶22, 25, 28, 37).
- Willful Infringement: Willfulness is alleged for all three patents. The claims are premised on alleged pre-suit knowledge. The complaint alleges that Defendant’s principal had "actual knowledge" of the patents-in-suit because he previously worked as a contractor for a distributor of Plaintiff Xodus’s products and sold the commercial embodiments of those patents (Compl. ¶¶30-35, 64, 95, 125).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of evidentiary proof: What technical evidence will be presented to demonstrate that the accused SurgyPad's foam material possesses the specific functional properties—such as a "sufficiently slow" rate of recovery and the ability for its depression to provide a "substantial portion" of holding forces—as required by the claims, beyond the conclusory allegations in the complaint?
- A second key question will be one of claim scope: How will the court construe the term of degree "substantial portion"? The resolution of this issue will likely determine whether the primary holding mechanism of the accused device must be the depression itself, or whether a combination of friction and a less significant depression-based force falls within the scope of the claims.
- Finally, a central question for the willfulness and indirect infringement claims will be one of intent: What evidence demonstrates that Defendant, particularly given its principal's alleged history with Plaintiffs' products, knew of the patents and either intended for its customers to infringe the method claims or was willfully blind to its own direct infringement?