DCT
5:22-cv-00331
Berall v. Teleflex Medical Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Jonathan Berall, M.D., M.P.H. (New York)
- Defendant: Teleflex Medical Inc. (California)
- Plaintiff’s Counsel: Kirkland & Ellis LLP
- Case Identification: 10-cv-5777, S.D.N.Y., 11/04/2021
- Venue Allegations: Venue is alleged to be proper based on the assertion that Defendant's predecessor-in-interest, LMA North America, Inc. ("LMA"), maintained a regular and established place of business in the district at the time the original complaint was filed. The complaint also alleges that Defendant has waived any venue objection by failing to raise it in prior pleadings.
- Core Dispute: Plaintiff alleges that Defendant’s McGrath and Airtraq lines of video laryngoscopes infringe a patent related to laryngoscope devices featuring a blade-mounted camera and a handle-mounted display.
- Technical Context: The technology pertains to medical devices for tracheal intubation, a critical procedure for establishing an airway in patients, particularly in emergency and anesthetic settings.
- Key Procedural History: The original complaint was filed in 2010. The case was stayed from 2011 to 2019 pending the outcome of three separate ex parte reexaminations of the patent-in-suit. In 2019, the USPTO issued a reexamination certificate confirming the patentability of claims 1–15 and cancelling claim 16. Defendant Teleflex was substituted for the original defendant, LMA, following a merger.
Case Timeline
| Date | Event |
|---|---|
| 1997-01-02 | ’178 Patent Priority Date |
| 1998-10-27 | ’178 Patent Issue Date |
| 2006-01-01 | Distribution of McGrath Series 5 began (at least as of this year) |
| 2007-03-15 | Plaintiff’s counsel allegedly sent pre-suit notice letter to LMA |
| 2010-07-30 | Original Complaint Filed |
| 2010-10-29 | First Ex Parte Reexamination Request Filed |
| 2010-12-10 | Second Ex Parte Reexamination Request Filed |
| 2011-05-11 | Action Stayed Pending Reexamination |
| 2012-06-06 | Third Ex Parte Reexamination Request Filed |
| 2015-01-01 | Distribution of Airtraq laryngoscopes began (at least as of this year) |
| 2019-07-16 | USPTO Issued Ex Parte Reexamination Certificate |
| 2021-11-04 | Second Amended Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 5,827,178 - "Laryngoscope for Use in Trachea Intubation," issued October 27, 1998
The Invention Explained
- Problem Addressed: The patent background describes a common failure point in tracheal intubation known as "blind intubation," where the patient's tongue slips over the laryngoscope blade and obstructs the physician's view of the tracheal opening ('178 Patent, col. 2:9-14). Existing devices with cameras on the intubation tube itself required significant head movement by the operator to view a separate screen, causing delay and potential misplacement of the tube (Compl. ¶42; ’178 Patent, col. 3:20-30).
- The Patented Solution: The invention is a laryngoscope that integrates a camera and a display screen onto the device itself. A camera is mounted "in the vicinity of the distal end" of the laryngoscope blade to capture a view of the trachea, and that view is transmitted to a screen mounted on the handle ('178 Patent, Abstract). This configuration allows the operator to simultaneously have a direct line of sight into the patient's mouth and a clear, steady, magnified view on the screen, all while keeping the more dexterous hand free to manipulate the intubation tube ('178 Patent, col. 2:54-65).
- Technical Importance: This approach aimed to provide a continuous and stable view of the intubation target area, reducing the need for the operator to refocus or move their head between direct and indirect views, thereby facilitating a faster and more reliable procedure ('178 Patent, col. 4:13-18).
Key Claims at a Glance
- The complaint asserts at least independent claims 1 and 15 (Compl. ¶87).
- Independent Claim 1 requires:
- A handle and a blade, with the blade having a proximal end connected to the handle and a distal end projecting laterally therefrom
- Camera means mounted on the blade in the vicinity of the distal end for observing a visual field
- Display means operatively connected to the camera means for displaying the visual field at a preselected location
- Independent Claim 15 requires:
- A handle for a professional intubator to grasp in a first hand, and a blade extending laterally for insertion into a patient's mouth
- Camera means mounted on the blade in the vicinity of the distal end for observing a visual field including the patient's trachea opening
- The camera means connected operatively to a portable lightweight display means arranged for the operator to see the field of view, whereby the operator's second hand is available to manipulate the intubating instrument
- The complaint does not explicitly reserve the right to assert dependent claims but states infringement of "numerous claims" (Compl. ¶87).
III. The Accused Instrumentality
- Product Identification: The accused instrumentalities are the McGrath Series 5, Airtraq Avant, and Airtraq SP video laryngoscopes (Compl. ¶¶18, 84).
- Functionality and Market Context: The complaint alleges these products are video laryngoscopes used for tracheal intubation (Compl. ¶¶13-14). They are described as including a handle, a blade, a camera, and a display (Compl. ¶¶47, 54). For the McGrath product, the complaint describes a "Handle Module" with a display and a "CameraStick Module" that constitutes a blade and contains a camera near its distal end (Compl. ¶¶48-49). The Airtraq products are similarly described as having a handle, a blade, a camera, and a display, sometimes in the form of a detachable "WiFi Camera Module" (Compl. ¶¶55, 60). The complaint presents an annotated figure comparing the "Teleflex AirTraq Scope" and the "LMA McGrath Scope," identifying the locations of the display, handle, blade, distal end, and camera for each (Compl. ¶46). The complaint alleges these are life-saving tools used in various medical settings (Compl. ¶34).
IV. Analysis of Infringement Allegations
'178 Patent Infringement Allegations (Claim 1)
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a handle and a blade, with the blade having a proximal end connected to the handle and a distal end projecting laterally therefrom | The accused products include a Handle Module and a blade, such as the CameraStick Module, which attaches to the handle and projects laterally. | ¶¶47-49 | col. 5:6-14 |
| camera means mounted on the blade in the vicinity of the distal end for observing a visual field | The CameraStick Module and Airtraq blades are alleged to contain a camera "in the vicinity of its distal end" to observe the visual field inside a patient's airway. An annotated image shows the camera's location on the blade (Compl. ¶60, Ex. 9). | ¶¶49, 51, 57, 61 | col. 5:15-19 |
| display means operatively connected to said camera means for displaying the visual field at a preselected location | The accused products include an LCD screen mounted on the handle or on a "WiFi Camera Module" that displays the image observed by the camera. | ¶¶48, 52, 58, 62 | col. 5:33-37 |
'178 Patent Infringement Allegations (Claim 15)
| Claim Element (from Independent Claim 15) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a handle for a Professional Intubator to grasp in a first hand, a blade with a proximal end connected to the handle and a distal end extending laterally therefrom for insertion into a patient's mouth | The accused products have a handle designed to be grasped by an operator, with an attached blade for insertion into a patient's mouth to facilitate intubation. | ¶¶48, 55, 59, 63 | col. 6:55-60 |
| camera means mounted on the blade in the vicinity of the distal end of the blade for observing a visual field that includes the patient's trachea opening | The camera is alleged to be mounted on the blade near the distal end, suitable for visualizing the patient's trachea. A photograph shows a user demonstrating this function on a mannequin (Compl. ¶97, Ex. 4). | ¶¶49, 51, 57, 61 | col. 6:61-64 |
| the camera means connected operatively to a portable lightweight display means arranged for the Professional Intubator to see the field of view on the display means, whereby the Professional Intubator's second hand is available to manipulate the intubating instrument | The handle-mounted display allows the operator to view the camera feed while keeping their other hand free to insert an endotracheal tube, as alleged in the complaint's description of use for the Airtraq SP (Compl. ¶59). A promotional image for the Airtraq SP is provided (Compl. ¶55, Ex. 7). | ¶¶52, 58, 59, 63 | col. 6:65-col. 7:4 |
- Identified Points of Contention:
- Scope Questions: A central question may be whether the term "display means," as understood in the context of the '178 Patent, reads on the allegedly detachable "Airtraq WiFi Camera Module" (Compl. ¶55). The analysis may focus on whether the claim requires a permanently integrated display or if a modular but functionally connected component falls within its scope.
- Technical Questions: The construction of the term "in the vicinity of the distal end" will likely be a key issue. The court may need to determine how close the camera must be to the blade's tip to meet this limitation and whether the placement on the accused devices satisfies that definition. The complaint's annotated visuals will be central to this factual dispute (Compl. ¶¶46, 60).
V. Key Claim Terms for Construction
The Term: "in the vicinity of the distal end" (Claims 1, 15)
- Context and Importance: This term defines the required location of the camera on the blade. Its interpretation will be dispositive for infringement, as the precise positioning of the camera on the accused products will be compared against this definition. Practitioners may focus on this term because it is not defined with geometric precision in the patent.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent does not provide a specific measurement, suggesting a functional definition. Language such as locating the camera "strategically best to see the trachea opening" could support a construction that covers any location on the distal portion of the blade that achieves the stated goal ('178 Patent, col. 5:27-29).
- Evidence for a Narrower Interpretation: The specification notes that placing the camera "at the tip... would be disadvantageous if the tip were to get involved in one soft tissue obstruction" ('178 Patent, col. 5:19-22). This could support an argument that "in the vicinity" means a specific region set back from the absolute tip, but not just anywhere on the blade.
The Term: "display means" (Claim 1) / "portable lightweight display means" (Claim 15)
- Context and Importance: This term's construction is critical for determining whether the accused Airtraq products, which allegedly use a "WiFi Camera Module" (Compl. ¶55), infringe. The dispute may turn on whether a detachable module constitutes "display means" that is part of the claimed laryngoscope.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim language "operatively connected" does not specify the method of connection (e.g., wired, wireless, permanent, detachable). The term "means" itself invokes means-plus-function analysis under 35 U.S.C. § 112(f), which would cover the corresponding structures in the specification and their equivalents.
- Evidence for a Narrower Interpretation: The preferred embodiment discloses a "television screen 34 mounted on the handle 21" which may be "arranged to swivel" ('178 Patent, col. 5:33-37). An argument could be made that the scope should be limited to displays physically and permanently mounted on the handle, potentially excluding the detachable module of the Airtraq devices.
VI. Other Allegations
- Indirect Infringement: The complaint alleges induced infringement, stating that Teleflex provides "advertisements, videos, demonstrations, user manuals, or other materials" that instruct and encourage customers to use the accused laryngoscopes in an infringing manner (Compl. ¶102). It further alleges contributory infringement by selling components such as the "McGrath CameraStick Module," disposable sterile blades, and the "Airtraq WiFi Camera Module" separately, asserting these components are a material part of the invention with no substantial non-infringing use (Compl. ¶¶104, 109, 111, 119).
- Willful Infringement: The complaint alleges a long history of pre- and post-suit knowledge. It claims Defendant’s predecessor LMA had pre-suit notice via a 2007 letter (Compl. ¶72), notice from a USPTO Office Action citing the '178 Patent in 2010 (Compl. ¶73), and notice from the filing of the original complaint in 2010 (Compl. ¶65). It is also alleged that Teleflex knew or should have known of the patent and litigation during its due diligence for the acquisition of LMA (Compl. ¶68). The complaint alleges that infringement continued despite this knowledge (Compl. ¶100).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: can the term "in the vicinity of the distal end," which lacks a precise geometric definition in the patent, be construed to read on the specific camera placements in the accused McGrath and Airtraq laryngoscopes? The outcome will depend heavily on the court's interpretation of this relative positional language.
- A second key issue will be one of technological evolution and equivalence: does the term "display means," described in the patent as a swiveling screen mounted on the handle, encompass the modern, allegedly detachable "WiFi Camera Module" used with the accused Airtraq products? This raises a fundamental question about whether a modular system falls within the scope of claims for an integrated device.
- Finally, a central question for damages will be willfulness: given the extensive procedural history, including a pre-suit notice letter, multiple reexaminations confirming the patent's validity, and over a decade of litigation, the court will need to determine whether the defendant's alleged continued infringement in the face of such knowledge was objectively reckless, potentially justifying an award of enhanced damages.