DCT

1:24-cv-05922

AIM Mfg LLC v. Parasol Medical LLC

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:24-cv-05922, N.D. Ill., 07/12/2024
  • Venue Allegations: Venue is alleged to be proper as the primary corporate and individual defendants reside in the Northern District of Illinois, and a substantial part of the events giving rise to the claims allegedly occurred within the district.
  • Core Dispute: Plaintiffs seek a declaratory judgment that their specialized medical air mattress products do not infringe nine patents owned by Defendant Parasol Medical relating to electronic patient movement and incontinence notification systems.
  • Technical Context: The dispute involves two distinct technologies: the patents-in-suit cover electronic sensor-based systems for actively monitoring patient status, while the accused products are non-powered, pressure-relief air mattresses designed to prevent ulcers in clinical settings.
  • Key Procedural History: The complaint alleges this action arises from cease-and-desist letters sent by Defendants on or around March 7, 2024. It further alleges that Defendants obtained information about Plaintiffs’ business relationships through discovery in a separate, ongoing state court litigation between Defendant Medtec and Patrick Eddy, an inventor named on the patents-in-suit and a minority owner of Plaintiff Inspired Innovations.

Case Timeline

Date Event
2013-02-01 Priority Date for U.S. Patent No. 10,499,834
2016-02-17 Priority Date for U.S. Patent No. 10,388,143
2017-08-10 Priority Date for U.S. Patent Nos. 10,470,689; 10,674,940; 10,722,146; 10,799,153; 10,806,377; 10,997,847; 11,160,472
2018-01-01 AIM Products sales began "at least as early as 2018"
2019-08-20 U.S. Patent No. 10,388,143 Issued
2019-11-12 U.S. Patent No. 10,470,689 Issued
2019-12-10 U.S. Patent No. 10,499,834 Issued
2020-06-09 U.S. Patent No. 10,674,940 Issued
2020-07-28 U.S. Patent No. 10,722,146 Issued
2020-10-13 U.S. Patent No. 10,799,153 Issued
2020-10-20 U.S. Patent No. 10,806,377 Issued
2021-05-04 U.S. Patent No. 10,997,847 Issued
2021-11-02 U.S. Patent No. 11,160,472 Issued
2023-02-14 Related state court litigation filed
2023-02-01 Inspired began selling Wiggle Products in February 2023
2024-03-07 Defendants sent cease-and-desist letters to Plaintiffs and their distributors
2024-07-12 Complaint for Declaratory Judgment filed

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

U.S. Patent No. 10,388,143 - "Patient Movement and Incontinence Notification Devices", issued August 20, 2019

The Invention Explained

  • Problem Addressed: The patent background describes drawbacks of existing patient movement notification devices, including false alarms when a patient rolls over in bed and inaccurate operation when used on an air mattress ('143 Patent, col. 1:36-44).
  • The Patented Solution: The invention is a notification device that combines a pressure sensor for detecting patient movement with conductive tracings for detecting moisture from incontinence into a single sensor pad ('143 Patent, Abstract). An associated electronics module is communicatively coupled to the pad to generate notifications for either or both events, such as movement off the pad or the presence of urine ('143 Patent, col. 2:26-54).
  • Technical Importance: The technology aims to consolidate patient monitoring functions into a single device, thereby reducing the number of separate sensors and modules required at a patient's bedside ('143 Patent, col. 5:52-58).

Key Claims at a Glance

  • The complaint identifies Claim 1 as the sole independent claim of the ’143 Patent (Compl. ¶72).
  • Essential Elements of Claim 1:
    • A sensor pad for providing both patient movement and incontinence notification.
    • The pad comprises a sheet, a pressure sensor, and first and second contiguous conductive tracings on the sheet's upper surface for sensing moisture.
    • The pressure sensor is formed from conductive ink printed on a first surface of the sheet to create contacts, with a foam layer disposed between them.
    • The sheet is folded and sealed so the pressure sensor components are inside the pad.

U.S. Patent No. 10,470,689 - "Patient Movement and Incontinence Notification System", issued November 12, 2019

The Invention Explained

  • Problem Addressed: The patent notes that existing patient movement and incontinence notification systems are often separate, each requiring its own monitor, and that movement monitors can generate frequent nuisance alarms ('689 Patent, col. 1:52-62).
  • The Patented Solution: The invention is a unified notification system where a single monitor can receive wireless signals from a plurality of different types of sensor pads, such as a bed pad, a chair pad, or an incontinence pad ('689 Patent, Abstract). The wireless signals from each sensor include a "type code" that allows the monitor to identify the source and nature of the alert (e.g., movement from bed vs. movement from chair) ('689 Patent, col. 2:8-14). The monitor also includes a "hold input" to temporarily pause alarms, allowing a caregiver to reposition a patient without triggering a notification ('689 Patent, col. 2:62-65).
  • Technical Importance: This system architecture seeks to improve workflow in clinical settings by centralizing alerts from various patient sensors into a single monitor and providing features to reduce alarm fatigue for caregivers ('689 Patent, col. 1:42-52).

Key Claims at a Glance

  • The complaint identifies Claims 1, 8, 11, and 17 as the independent claims of the ’689 Patent (Compl. ¶76).
  • Essential Elements of Independent Claim 1:
    • A patient movement notification system.
    • The system comprises a sensor pad (with a pressure sensor and transmitter circuit) and a monitor (with a receiver).
    • The monitor generates a notification if the pressure signal indicates the patient is no longer applying pressure.
    • The monitor includes a "hold input" allowing a caregiver to prevent notifications for a predetermined time period to temporarily remove the patient from the pad.

U.S. Patent No. 10,499,834 - "Patient Movement Notification Device", issued December 10, 2019

  • Patent Identification: U.S. Patent No. 10,499,834, "Patient Movement Notification Device", issued December 10, 2019 (Compl. ¶78).
  • Technology Synopsis: The patent describes a disposable patient movement notification device. A key feature is an electronics module that permanently shuts down and becomes non-functional after a specified period (e.g., 15 days) to enforce its single-use design, and which can transmit an advance shutdown warning to a nursing station (Compl. ¶79; ’834 Patent, col. 2:1-13).
  • Asserted Claims: Claim 1 is the sole independent claim (Compl. ¶80).
  • Accused Features: The complaint alleges the accused products do not contain any sensor pads or electronics modules, let alone one that permanently shuts down after a specified time (Compl. ¶109).

U.S. Patent No. 10,674,940 - "Patient Movement and Incontinence Notification System", issued June 9, 2020

  • Patent Identification: U.S. Patent No. 10,674,940, "Patient Movement and Incontinence Notification System", issued June 9, 2020 (Compl. ¶82).
  • Technology Synopsis: This patent describes a patient notification system where a monitor can receive signals from multiple wireless sensor pads. The monitor includes an input that allows a user to "terminate responsiveness to all sensor pads," effectively unpairing them. One embodiment describes a sensor device with a removable "kill tab" that, when pulled, breaks an electrical circuit and terminates the sensor's functionality (Compl. ¶¶ 83, 20:5-21).
  • Asserted Claims: Independent claims 1, 7, and 16 are asserted (Compl. ¶84).
  • Accused Features: The complaint alleges the accused products do not contain monitors, sensors, or kill tabs (Compl. ¶109).

U.S. Patent No. 10,722,146 - "Patient Movement and Incontinence Notification System", issued July 28, 2020

  • Patent Identification: U.S. Patent No. 10,722,146, "Patient Movement and Incontinence Notification System", issued July 28, 2020 (Compl. ¶86).
  • Technology Synopsis: This patent describes a patient movement notification system where the monitor, upon detecting a patient is no longer applying pressure to a sensor pad, activates a light to illuminate the floor area near the patient. The system may also include a light strip to illuminate a path to a bathroom or a touchscreen display on the monitor (Compl. ¶¶ 87, 22:5-23).
  • Asserted Claims: Independent claims 1, 4, and 7 are asserted (Compl. ¶88).
  • Accused Features: The complaint alleges the accused products do not contain monitors, sensor pads, lights, or touchscreen displays (Compl. ¶109).

U.S. Patent No. 10,799,153 - "Patient Movement and Incontinence Notification System", issued October 13, 2020

  • Patent Identification: U.S. Patent No. 10,799,153, "Patient Movement and Incontinence Notification System", issued October 13, 2020 (Compl. ¶90).
  • Technology Synopsis: The patent describes a system using multiple sensor pads of different types, where wireless signals include a "type code" to identify the sensor type. The system can be configured to respond to signals from only one sensor pad of a particular type or from only one nurse call relay device, preventing signal confusion in a multi-patient environment (Compl. ¶¶ 91, 24:1-10).
  • Asserted Claims: Independent claims 1, 4, 8, and 9 are asserted (Compl. ¶92).
  • Accused Features: The complaint alleges the accused products do not contain sensor pads, monitors, or nurse call relays (Compl. ¶109).

U.S. Patent No. 10,806,377 - "Patient Movement Notification System", issued October 20, 2020

  • Patent Identification: U.S. Patent No. 10,806,377, "Patient Movement Notification System", issued October 20, 2020 (Compl. ¶94).
  • Technology Synopsis: This patent is directed to a method of monitoring patient movement from a toilet. The method involves using a toilet seat belt with a releasable clip and a clip sensor that generates an alarm signal if the clip is no longer connected, indicating the patient is attempting to get up (Compl. ¶95).
  • Asserted Claims: Claim 1 is the sole independent claim (Compl. ¶96).
  • Accused Features: The complaint alleges the accused products do not contain or use toilet seat belts or clip sensors (Compl. ¶109).

U.S. Patent No. 10,997,847 - "Patient Movement and Incontinence Notification Devices", issued May 4, 2021

  • Patent Identification: U.S. Patent No. 10,997,847, "Patient Movement and Incontinence Notification Devices", issued May 4, 2021 (Compl. ¶98).
  • Technology Synopsis: The invention is an absorbent sensing pad for incontinence detection. It combines a sensor pad with conductive tracings for moisture detection and an absorbent chuck (a disposable pad) that has an aperture to expose the sensor tracings to moisture (Compl. ¶99).
  • Asserted Claims: Claim 1 is the sole independent claim (Compl. ¶100).
  • Accused Features: The complaint alleges the accused products do not contain absorbent sensing pads or incontinence chucks (Compl. ¶109).

U.S. Patent No. 11,160,472 - "Patient Incontinence Notification System and Incontinence Pads", issued November 2, 2021

  • Patent Identification: U.S. Patent No. 11,160,472, "Patient Incontinence Notification System and Incontinence Pads", issued November 2, 2021 (Compl. ¶102).
  • Technology Synopsis: This patent describes an incontinence sensing system comprising an incontinence sensor pad with conductive tracings and a releasably attached electronic module. The module has electrical contacts that connect to the tracings on the pad to sense moisture and generate an alarm (Compl. ¶103).
  • Asserted Claims: Independent claims 1, 18, 32, and 35 are asserted (Compl. ¶104).
  • Accused Features: The complaint alleges the accused products do not contain incontinence sensor pads or electronic modules (Compl. ¶109).

III. The Accused Instrumentality

Product Identification

  • The accused instrumentalities are Plaintiffs' "AIM Products" and "Inspired Products" (which include the "Wiggle Products") (Compl. ¶¶ 15, 21). Specific products named include the AIM Mattress, AIM Hybrid Mattress, AIM Prevent Mattress, AIM Recliner Cushion, and the Wiggle Non-Powered Mattress and Overlay (Compl. ¶¶ 15, 21).

Functionality and Market Context

  • The complaint describes the accused products as "specialized air immersion mattresses" that are "non-powered, self-inflating, [and] pressure relief" devices (Compl. ¶15). Their stated function is to prevent and manage pressure ulcers, promote blood circulation, and assist with wound healing in medical care settings such as hospitals and nursing homes (Compl. ¶¶ 15, 19). The complaint provides an image showing a cutaway of the AIM Mattress, which depicts features such as a "multi-zone, auto self inflating...air fluid immersion bladder system" and a "hand pump" (Compl. ¶17). The complaint alleges that these products have been sold since at least 2018 through medical equipment distributors (Compl. ¶18).

IV. Analysis of Infringement Allegations

This is a declaratory judgment action for non-infringement. The infringement theory is therefore based on Defendants' assertions in cease-and-desist letters, which Plaintiffs seek to rebut. The complaint alleges that the accused products do not contain the claimed features (Compl. ¶¶ 109, 124).

10,388,143 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
a sensor pad for use in a notification device for providing patient movement notification and incontinence notification, said sensor pad comprising: a sheet; The accused products are non-powered mattresses and are alleged to lack any sensor pad or notification device functionality. ¶109 col. 11:46-51
a pressure sensor for sensing pressure applied by a patient and generating a pressure signal... The accused products are alleged to lack any kind of pressure sensor or other electronic sensor. ¶109 col. 11:52-55
first and second contiguous conductive tracings provided on an upper outer surface of said sheet... for sensing moisture due to incontinence... The accused products are alleged to lack any conductive tracings for sensing moisture. ¶109 col. 11:59-63

10,470,689 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
a sensor pad comprising a pressure sensor for sensing pressure applied by a patient, and a transmitter circuit for transmitting a pressure signal; The accused products are alleged to lack any sensor pad, pressure sensor, or transmitter circuit. ¶109 col. 26:52-55
a monitor having a receiver for receiving the pressure signal from the sensor pad, the monitor generating a notification of patient movement... The accused products are alleged to lack any monitor or receiver and do not generate notifications. ¶109 col. 26:56-59
wherein the monitor comprises a hold input for allowing a patient caregiver to prevent generation of a notification... The accused products are alleged to lack a monitor and therefore do not have a hold input. ¶109 col. 26:62-65

Identified Points of Contention

  • The analysis centers on a fundamental technological mismatch alleged by the Plaintiffs.
    • Scope Questions: A primary question for the court will be whether the term "sensor pad," as used in the context of an electronic monitoring system, can be construed to read on a non-powered, self-inflating pressure relief mattress.
    • Technical Questions: The complaint raises the evidentiary question of whether the accused mattresses perform any of the active functions—sensing, generating signals, transmitting, receiving, or monitoring—required by the independent claims. Plaintiffs allege their products are passive devices entirely lacking such electronic capabilities (Compl. ¶¶ 109-110, 124).

V. Key Claim Terms for Construction

  • The Term: "sensor pad" ('143 Patent, Claim 1; '689 Patent, Claim 1)

    • Context and Importance: This term is central to the dispute. Its construction may determine whether the accused non-powered mattresses can fall within the scope of the claims, which describe components of an electronic monitoring system. Practitioners may focus on this term because the complaint alleges a complete absence of any "sensor pad" in the accused products (Compl. ¶109).
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The claims themselves define the "sensor pad" by its components (e.g., comprising a pressure sensor and conductive tracings). Parties arguing for broader scope may contend that any structure containing these elements meets the definition, regardless of its primary purpose.
      • Evidence for a Narrower Interpretation: The specification consistently describes the "sensor pad" as a component of an electronic system that is "communicatively coupled" to an "electronics module" to generate alarms ('143 Patent, col. 5:47-52). Figures show the sensor pad as a distinct, thin mat with wires extending from it to a monitor-like device ('143 Patent, Fig. 1). This context suggests the term refers to an active electronic component, not a passive mattress.

  • The Term: "monitor" ('689 Patent, Claim 1)

    • Context and Importance: The claims require a "monitor" that receives signals and generates notifications. The complaint asserts that the accused products, being non-powered mattresses, do not have or interact with any "monitor" (Compl. ¶109). The construction of this term will be critical to establishing whether an essential element of the claimed system is present.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The claim language defines the monitor functionally as having a "receiver for receiving the pressure signal" and generating a notification. A party could argue that any device that performs these functions in concert with a sensor pad could qualify.
      • Evidence for a Narrower Interpretation: The specification and figures depict the "monitor" as a dedicated electronic housing containing a controller, memory, speaker, user input buttons (like a "HOLD" button), and a transceiver ('689 Patent, Figs. 3, 4; col. 10:15-46). This detailed description may support a narrower construction limited to a specific electronic device with these structural and functional features.

VI. Other Allegations

  • Indirect Infringement: The complaint seeks a declaratory judgment of non-infringement both directly and indirectly (Compl. ¶127). However, it does not provide specific facts from Defendants' infringement allegations that would form the basis for an analysis of inducement or contributory infringement.
  • Willful Infringement: The complaint does not address allegations of willfulness. It does, however, request a declaration that the case is exceptional under 35 U.S.C. § 285, alleging that Defendants' infringement accusations are "objectively false and baseless" and were made without a reasonable investigation (Compl. ¶¶ 111, 140, p. 43 ¶3).

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

  • A core issue will be one of technological divergence: can patent claims directed to active electronic monitoring systems—reciting components such as a "sensor pad," "transmitter," and "monitor"—be construed to cover passive, non-powered, self-inflating air mattresses whose stated purpose is therapeutic pressure relief?
  • A key evidentiary question will be one of functional existence: does the record contain any evidence that the accused mattresses perform the core functions recited in the independent claims, namely, electronically sensing patient status, generating and transmitting a corresponding signal, and generating a notification at a monitoring unit? The complaint's central premise is the complete absence of any such functionality.