DCT
2:19-cv-06470
O2cure Ltd v. CVD Equipment Corp
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: O2Cure Ltd. (Israel)
- Defendant: CVD Equipment Corporation (New York)
- Plaintiff’s Counsel: Hogan Lovells US LLP
- Case Identification: [O2Cure Ltd.](https://ai-lab.exparte.com/party/o2cure-ltd) v. [CVD Equipment Corporation](https://ai-lab.exparte.com/party/cvd-equipment-corp), 2:19-cv-06470, E.D.N.Y., 11/15/2019
- Venue Allegations: Venue is based on Defendant being incorporated in New York, residing in the district, committing alleged infringing acts in the district, and having a regular and established place of business in the district.
- Core Dispute: Plaintiff alleges that Defendant’s carbon nanotube-based fluid reactors and Extracorporeal Membrane Oxygenation (ECMO) devices infringe patents related to artificial lung technology.
- Technical Context: The technology concerns devices for gas exchange (e.g., oxygenating blood), a critical function in medical treatments such as ECMO for patients with respiratory failure.
- Key Procedural History: The complaint alleges that the parties had a prior business relationship where Defendant manufactured carbon nanotube structures for Plaintiff according to Plaintiff's technical specifications. Plaintiff alleges this relationship was governed by confidentiality agreements and that Defendant is now using the patented technology without authorization.
Case Timeline
| Date | Event |
|---|---|
| 2013-07-16 | Priority Date for ’522 and ’534 Patents |
| 2015-09-22 | ’522 Patent Issued |
| 2017-11-28 | ’534 Patent Issued |
| 2019-06-18 | Defendant markets VACNT RCEs at TechConnect World Conference |
| 2019-11-15 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,138,522 - Gas Exchanger and Artificial Lung, Issued September 22, 2015
The Invention Explained
- Problem Addressed: The patent’s background section notes that natural lungs achieve gas exchange over an extremely large surface area (50-100 m²) with high blood flow, a difficult combination to replicate in artificial devices using traditional biological membranes (Compl. ¶10; ’522 Patent, col. 1:11-25).
- The Patented Solution: The invention proposes a gas exchanger that uses a matrix of nanotubes to form a plurality of fluid flow channels. A liquid (like blood) passes through the channels, while a gas (like oxygen) flows through the spaces between the individual nanotubes. The key inventive concept is that the nanotubes are spaced closely enough together that surface tension contains the liquid within the channels without a physical membrane, creating a "virtual boundary" that allows for direct, efficient gas-liquid interaction (’522 Patent, Abstract; col. 8:52-60).
- Technical Importance: This membrane-less design could enable the creation of more efficient and compact artificial lungs or ECMO devices by overcoming limitations associated with traditional membrane-based gas exchangers (’522 Patent, col. 9:40-49).
Key Claims at a Glance
- The complaint asserts exemplary independent method claim 27 (Compl. ¶27).
- Essential elements of Claim 27:
- providing a plurality of fluid flow channels that are surrounded by nanotubes, each having an inflow and outflow end, being wide enough for fluid flow, and wherein the nanotubes are spaced close enough to retain the fluid within the channels during flow;
- passing fluid through the channels;
- passing a gas through the spaces between the nanotubes outside the fluid flow channels;
- wherein the gas interacts with the fluid in the channels.
- The complaint does not explicitly reserve the right to assert dependent claims.
U.S. Patent No. 9,827,534 - Gas Exchanger and Artificial Lung, Issued November 28, 2017
The Invention Explained
- Problem Addressed: As a continuation-in-part, the ’534 Patent addresses the same technical problem of creating an efficient artificial gas exchanger as the ’522 Patent (’534 Patent, col. 1:12-28).
- The Patented Solution: The ’534 Patent refines the core concept by claiming "hydrophobic pillar-shaped structures" with specific diameters (1-100 nm) instead of the broader term "nanotubes." This added specificity regarding the structures' shape, size, and hydrophobic properties is intended to enhance the device's ability to contain the liquid within the channels via surface tension forces (’534 Patent, col. 7:1-10; col. 12:10-18).
- Technical Importance: By defining the structural and material properties more precisely, the invention aims to provide a more robust and reliable membrane-less gas exchange system.
Key Claims at a Glance
- The complaint asserts exemplary independent method claim 16 (Compl. ¶44).
- Essential elements of Claim 16:
- providing a plurality of fluid flow channels surrounded by hydrophobic pillar-shaped structures with diameters between 1 and 100nm;
- the channels having inflow and outflow ends, being wide enough for fluid flow, and the pillar-shaped structures being spaced close enough to retain the fluid;
- passing fluid through the channels;
- passing a gas through the spaces between the pillar-shaped structures;
- wherein the gas interacts with the fluid in the channels.
- The complaint does not explicitly reserve the right to assert dependent claims.
III. The Accused Instrumentality
Product Identification
Defendant’s "c-VACNT™" materials, "reactor core elements" (RCEs) made from these materials, and fluid reactor or ECMO devices that incorporate the RCEs (Compl. ¶¶14, 16, 26).
Functionality and Market Context
The complaint, citing Defendant's own technical publications, alleges the accused RCEs consist of vertically aligned carbon nanotubes that form fluid channels (Compl. ¶¶14, 17). A primary liquid is passed through these channels while a secondary gas passes through the porous nanotube material surrounding the channels, facilitating interaction between the liquid and gas (Compl. ¶¶16, 19). The complaint provides an annotated image from Defendant's materials showing the alleged fluid channels and surrounding carbon nanotubes (Compl. ¶17; Ex. 3, Fig. 7). The complaint alleges Defendant has tested these RCEs in "ECMO prototype devices" and has marketed them for use in artificial lungs, promoting their potential to improve upon traditional ECMO technology (Compl. ¶¶15, 21-22).
IV. Analysis of Infringement Allegations
’522 Patent Infringement Allegations
| Claim Element (from Independent Claim 27) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| providing a plurality of fluid flow channels that are surrounded by nanotubes... | Defendant’s c-VACNT RCEs contain multiple fluid channels that are surrounded by carbon nanotubes. The complaint references an annotated micrograph from Defendant's publication to illustrate this structure. (Ex. 3, Fig. 7) | ¶29 | col. 5:61-65 |
| ...wherein the nanotubes are spaced close enough to each other to retain the fluid within the channels when the fluid is flowing through the channels; | The "porous c-VACNT material" forming the channel sidewalls is alleged to function as a membrane that "spatially isolates the primary and secondary fluid pathways," thereby retaining the primary fluid. | ¶32 | col. 8:52-60 |
| passing fluid [...] through the channels; | Defendant allegedly tested its ECMO prototype devices by passing water as a primary fluid through the fluid channels. A diagram from Defendant’s materials depicts the test setup. (Ex. 6, Fig. 2) | ¶¶28, 33 | col. 3:31-34 |
| passing a gas through the spaces between the nanotubes outside the fluid flow channels... | Defendant allegedly passed oxygen or air as a "test sweep gas" through the porous spaces between the nanotubes surrounding the fluid channels during testing. | ¶¶28, 33 | col. 3:32-34 |
| wherein the gas interacts with the fluid in the channels. | Defendant’s tests allegedly monitored the "change in oxygenation and de-oxygenation rate over time," which is alleged to demonstrate the interaction between the gas and the water in the channels. | ¶35 | col. 3:34-36 |
- Identified Points of Contention:
- Scope Question: A central issue may be the construction of the functional limitation "retain the fluid." The dispute could turn on the degree of retention required by the claim (e.g., perfect containment vs. substantial containment) and whether the accused devices meet that standard.
- Technical Question: What evidence demonstrates that the spacing of the nanotubes in the accused RCEs is the operative mechanism for fluid retention, as opposed to other physical or dynamic effects?
’534 Patent Infringement Allegations
| Claim Element (from Independent Claim 16) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| providing a plurality of fluid flow channels that are surrounded by hydrophobic pillar-shaped structures with diameters between 1 and 100nm... | The c-VACNT carbon nanotubes are alleged to be "pillar-shaped." The complaint uses an annotated micrograph from Defendant's materials with a 100 nm scale bar to allege their diameters are within the claimed range. (Ex. 3, Fig. 2) The complaint also alleges Defendant adds a "hydrophobic coating." | ¶¶47-49 | col. 12:10-18 |
| ...wherein the pillar-shaped structures are spaced close enough to each other to retain the fluid within the channels... | As with the ’522 Patent, the complaint alleges the porous nanotube material isolates the fluid and gas pathways, thereby retaining the fluid in the channels. | ¶52 | col.2:8-11 |
| passing fluid [...] through the channels; | Defendant allegedly passed water through the channels when testing its ECMO prototype. | ¶53 | col. 4:50-57 |
| passing a gas through the spaces between the pillar-shaped structures outside the fluid flow channels... | Defendant allegedly passed oxygen and air through the spaces between the nanotubes during testing. | ¶54 | col. 4:58-60 |
| wherein the gas interacts with the fluid in the channels. | Defendant's testing allegedly demonstrated the interaction by measuring changes in oxygenation. | ¶55 | col. 4:60-61 |
- Identified Points of Contention:
- Scope Question: The primary dispute will likely concern the term "pillar-shaped structures." Does this term read on Defendant’s vertically aligned but potentially tortuous or entangled carbon nanotubes? The complaint presents a magnified, annotated image to support its position that the structures are pillar-like (Compl. ¶16; Ex. 3, Fig. 2).
- Technical Question: Can Plaintiff prove that the accused structures are consistently "hydrophobic" and have diameters that fall "between 1 and 100nm" as required by the claim?
V. Key Claim Terms for Construction
For the ’522 Patent
- The Term: "nanotubes are spaced close enough to each other to retain the fluid"
- Context and Importance: This functional limitation is the core of the invention, defining how the membrane-less barrier works. Its construction will determine whether infringement is found, as the degree of "retention" is not numerically defined and is open to interpretation.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification describes the nanotubes as forming a "virtual boundary for the liquid flow," which could suggest that perfect, leak-proof containment is not required (’522 Patent, col. 8:59-60).
- Evidence for a Narrower Interpretation: The specification also states that when a water-based fluid flows in the channel, "it will not leak out," language that suggests a very high or complete level of retention (’522 Patent, col. 8:56-58).
For the ’534 Patent
- The Term: "hydrophobic pillar-shaped structures"
- Context and Importance: This term is the key structural limitation that distinguishes the ’534 Patent from its parent ’522 Patent. The infringement analysis for this patent hinges on whether Defendant’s carbon nanotubes meet this more specific definition. Practitioners may focus on this term because the complaint relies on annotated micrographs to equate nanotubes with "pillar-shaped structures," a characterization the defendant may contest.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: Dependent claim 10 of the patent recites, "The gas exchanger apparatus of claim 1, wherein the pillar-shaped structures are nanotubes," which provides a strong indication that the patentee considered nanotubes to be a species of "pillar-shaped structures" (’534 Patent, col. 13:55-56).
- Evidence for a Narrower Interpretation: A defendant could argue that the term implies a specific, regular, columnar geometry distinct from more common, potentially entangled nanotube formations. They might argue that if the inventor meant any nanotube, the independent claim would have used that broader term, as was done in the parent ’522 patent.
VI. Other Allegations
- Indirect Infringement: The complaint alleges that Defendant induces infringement by directing customers and research partners, including at least one university, to test and use the accused ECMO devices in an infringing manner (Compl. ¶¶36-37, 56-57).
- Willful Infringement: The complaint alleges willful infringement based on the parties' prior business relationship, during which Defendant allegedly manufactured products to Plaintiff's specifications, and on knowledge gained at least upon service of the complaint (Compl. ¶¶13-14, 36, 41, 56, 61).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of claim construction and scope: For the ’522 Patent, how much fluid leakage, if any, is permitted by the functional term "retain the fluid"? For the ’534 Patent, can the structural term "pillar-shaped structures" be construed to read on the accused vertically-aligned carbon nanotube arrays, which may have tortuous or irregular features?
- A key evidentiary question will be one of factual proof and characterization: Can Plaintiff prove that the accused products, as actually made and used, meet the specific structural ("pillar-shaped," "diameters between 1 and 100nm") and functional ("hydrophobic," "retain the fluid") limitations of the asserted claims? The outcome may depend on whether the court finds that Defendant’s marketing materials and test data, cited heavily in the complaint, accurately represent the products' operation from the perspective of patent infringement.
- The allegation of a prior business relationship where Defendant manufactured products to Plaintiff's specifications will be a critical contextual factor: This history may influence the analysis of equitable issues and allegations of willful infringement, raising the question of whether Defendant had pre-suit knowledge of the technology and, potentially, the patents.