DCT

1:23-cv-10079

Tamabo Inc v. Mass General Brigham Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:23-cv-10079, D. Mass., 01/18/2023
  • Venue Allegations: Venue is asserted based on Defendants being incorporated in Massachusetts and having a regular and established place of business within the district.
  • Core Dispute: Plaintiffs allege that Defendants' medical imaging analysis software infringes a patent related to methods for creating interactive teaching or diagnostic sessions by synchronizing user gestures and commentary with video or image sequences.
  • Technical Context: The technology addresses the capture and organization of expert knowledge during the review of visual data, such as medical scans, to make interpretive insights accessible for later use.
  • Key Procedural History: The complaint alleges a prior business relationship between the inventor and Defendants beginning in 2013, including a Mutual Confidentiality Agreement and licensing discussions. It also states that the patent-in-suit was previously litigated in a case that settled before claim construction occurred, suggesting that the meaning of key patent terms has not yet been judicially determined.

Case Timeline

Date Event
2001-02-02 U.S. Patent No. 6,599,130 Priority Date
2003-07-29 U.S. Patent No. 6,599,130 Issued
2004 Defendant Tumor Imaging Metrics Core (TIMC) founded
2013-03 First Mutual Confidentiality Agreement executed between inventor and GHC
2014 Open Health Imaging Foundation (OHIF) founded by inventor
2014-09 Mutual Confidentiality Agreement amended
2014-11 Vendor Agreement executed between inventor's company and MGB
2016-Early Infringement and licensing discussions allegedly began
2016-09 Second amendment to Mutual Confidentiality Agreement
2017 Prior litigation involving the patent-in-suit filed in E.D. Tex.
2019 Defendant YUNU established
2023-01-18 Complaint Filed

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

U.S. Patent No. 6,599,130 - “ITERATIVE VIDEO TEACHING AID WITH RECORDABLE COMMENTARY AND INDEXING”

The Invention Explained

  • Problem Addressed: The patent identifies a deficiency in prior art teaching and diagnostic environments where "experiential knowledge" is shared informally. Specifically, knowledge conveyed through gestures (e.g., pointing at a screen) and simultaneous verbal commentary during the review of visual media was "largely unrecorded and unavailable for future use" (’130 Patent, col. 1:50-55; Compl. ¶16).
  • The Patented Solution: The invention proposes a method and system where a software "interpretation layer" is overlaid on a visual image or video layer. This allows a user to make "deictic gestures" to select areas of interest on the image, and to have those gestures and any associated commentary recorded and synchronized with the underlying video's time code ('130 Patent, col. 2:36-47). This creates a replayable "session" that captures not just the what (the image) but the where (the gesture) and the why (the commentary) of the original analysis (Compl. ¶17).
  • Technical Importance: The technology aimed to formalize and preserve transient expert analysis, transforming it into a structured, indexable, and reusable asset for education, collaborative review, and research (Compl. ¶18, ¶23).

Key Claims at a Glance

  • The complaint asserts infringement of claims 19-25, with Claim 19 being an independent method claim (Compl. ¶33, ¶45).
  • The essential elements of independent Claim 19 are:
    • displaying frames or inserted frames of full motion image data;
    • selecting and recording subframe portions of the image data;
    • appending comments to the selected subframe portions of the image data;
    • these steps making a session;
    • recording the session; and
    • indexing the session.
  • The complaint reserves the right to assert additional claims ('130 Patent, col. 8:1-11; Compl. ¶45).

III. The Accused Instrumentality

Product Identification

The complaint names the "Metrics Manager Imaging Measurement Tools," "LesionTracker," and "Yunu software" as the Accused Instrumentalities (Compl. ¶43).

Functionality and Market Context

The Accused Instrumentalities are alleged to be software products and services used for medical image analysis (Compl. ¶35). The complaint alleges these tools provide a workflow for the "direct annotation of digital images and added recordable indexing" (Compl. ¶24). They are marketed for use in clinical trials, with the complaint noting they are built upon experience from analyzing tens of thousands of scans (Compl. ¶35). The software is allegedly owned by Defendant MGB and provided to healthcare providers directly or through Defendants PIM and YUNU (Compl. ¶37).

IV. Analysis of Infringement Allegations

The complaint alleges that the Accused Instrumentalities directly infringe by practicing the patented method for creating a teaching session with recordable commentary and indexing (Compl. ¶43, ¶55). The core of the infringement theory is that Defendants' software, such as "LesionTracker," allows users to perform the claimed steps of displaying medical images, selecting portions of those images, adding commentary, and creating an indexed record of this activity (Compl. ¶24, ¶43). For a detailed, element-by-element analysis of infringement of claims 19-25, the complaint repeatedly refers to an "Exhibit A-2" (Compl. ¶45, ¶57). However, this exhibit was not filed with the public complaint, precluding a tabular analysis at this stage.

No probative visual evidence provided in complaint.

  • Identified Points of Contention:
    • Scope Questions: A potential dispute may arise over whether the "clinical trial analysis" and "commercialization" context of the Accused Instrumentalities (Compl. ¶35) falls within the scope of a "teaching session" as contemplated by the patent, which emphasizes diagnostic and educational environments ('130 Patent, col. 1:11-13).
    • Technical Questions: The complaint asserts that the Accused Instrumentalities perform "indexing" (Compl. ¶24), but provides limited technical detail on how this function operates. A central question may be whether the Defendants' method of storing annotations constitutes "recording a session" and "indexing the session" as those phrases are used in the claims and described in the patent's specification, which details creating replayable sequences and linking them to concept maps ('130 Patent, col. 5:1-13).

V. Key Claim Terms for Construction

  • The Term: "teaching session" (Claim 19)

  • Context and Importance: The applicability of the patent hinges on this term. The defense may argue that the Accused Instrumentalities, used for managing clinical trial data, do not create a "teaching session." Practitioners may focus on this term because its construction could either limit the patent to formal educational settings or broaden it to cover any system that records and conveys interpretive knowledge.

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: The patent title includes "teaching aid," and the specification broadly refers to a "teaching or diagnostic aid" and recording "experiential knowledge" ('130 Patent, col. 1:11, 2:27-28). This language could support a construction that includes any session where analysis is recorded for another's review.
    • Evidence for a Narrower Interpretation: The background section frames the problem in the context of a "teacher," "learners," and "medical school" ('130 Patent, col. 1:22-24). Embodiments describe a "teacher" pointing to an image for "students," which could support a narrower construction tied to a formal instructional relationship (col. 3:45-59).

  • The Term: "indexing the session" (Claim 19)

  • Context and Importance: This term defines a key functional step. The dispute will likely concern what level of organization and retrievability is required to meet this limitation. Its construction will determine whether simple metadata tagging infringes or if a more complex, structured indexing system is required.

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: The claim language itself is simple: "indexing the session" ('130 Patent, col. 8:11). This could be argued to encompass any method that makes the session findable, such as by keyword.
    • Evidence for a Narrower Interpretation: The specification describes a more sophisticated system where comments are "indexed and linked to a database of similar topics" and where a "concept map" can be built and used for retrieval ('130 Patent, Abstract; col. 5:1-13). This may support a narrower construction requiring a structured, relational database or concept-based indexing.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges induced infringement, asserting that Defendants had actual knowledge of the '130 patent since at least "early 2016" from extensive discussions, meetings, and a license offer involving the inventor (Compl. ¶47, ¶59). The complaint alleges Defendants acted with specific intent by distributing the Accused Instrumentalities and providing materials and services that encourage and instruct customers and partners to perform the infringing methods (Compl. ¶49, ¶61).
  • Willful Infringement: Willfulness is predicated on alleged pre-suit knowledge. The complaint details a multi-year history of interactions between the inventor and various Defendants, including a confidentiality agreement and discussions about integrating the patented technology into Defendants' software, which allegedly began in 2013 (Compl. ¶29, ¶31-32). Plaintiffs allege this deep involvement means Defendants "could not have formed a good faith belief of non-infringement or invalidity" (Compl. ¶50, ¶62).

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

  • A core issue will be one of definitional scope: can the term "teaching session," which is described in the patent with examples from educational and diagnostic training, be construed to cover the use of the Accused Instrumentalities for managing and analyzing clinical trial data?
  • A key evidentiary question will be one of technical implementation: does the accused software’s function for adding annotations to images meet the claim requirements of "recording a session" and "indexing the session," which the patent specification links to replayable sequences and structured concept maps, or is there a fundamental mismatch in technical operation?
  • The case may also turn on the narrative of the parties' prior relationship: how will the detailed allegations of a confidential business relationship, licensing negotiations, and the alleged incorporation of the inventor's technology into an open-source project by a Defendant employee influence the analyses of induced and willful infringement?