DCT
1:10-cv-00652
Dermarite Industries LLC v. Euromed Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Dermarite Industries LLC (New Jersey)
- Defendant: Euromed, Inc. (New York)
- Plaintiff’s Counsel: Ostrolenk Faber Gerb & Soffen, LLP
- Case Identification: 1:10-cv-00652, S.D.N.Y., 01/28/2010
- Venue Allegations: Venue is asserted as proper based on Defendant’s principal place of business being located in the Southern District of New York.
- Core Dispute: Plaintiff seeks a declaratory judgment that its hydrocolloid wound dressing products do not infringe five of Defendant’s patents and/or that those patents are invalid, following an accusation of infringement from the Defendant.
- Technical Context: The patents relate to the composition, structure, and manufacturing of hydrocolloid wound dressings used in advanced wound care.
- Key Procedural History: The action was precipitated by a June 2009 letter from Defendant Euromed to Plaintiff Dermarite, asserting that Dermarite's products infringe the patents-in-suit. Plaintiff’s counsel responded with a detailed non-infringement letter in September 2009. The complaint also alleges that an executive of the Defendant subsequently threatened a major customer of the Plaintiff with litigation.
Case Timeline
| Date | Event |
|---|---|
| 1993-04-20 | U.S. Patent No. 5,571,080 Priority Date |
| 1995-06-30 | U.S. Patent No. 5,998,694 Priority Date |
| 1995-10-10 | U.S. Patent No. 5,704,905 Priority Date |
| 1996-11-05 | U.S. Patent No. 5571080 Issues |
| 1998-01-06 | U.S. Patent No. 5704905 Issues |
| 1998-11-02 | U.S. Patent No. 6,309,500 Priority Date |
| 1999-01-11 | U.S. Patent No. 6,143,798 Priority Date |
| 1999-12-07 | U.S. Patent No. 5998694 Issues |
| 2000-11-07 | U.S. Patent No. 6143798 Issues |
| 2001-10-30 | U.S. Patent No. 6309500 Issues |
| 2009-06-29 | Euromed sends letter to Dermarite alleging infringement |
| 2009-09-21 | Dermarite's counsel replies with non-infringement analysis |
| 2010-01-28 | Complaint for Declaratory Judgment filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 5,571,080 - Surgical Dressing and an Adhesive Composition Therefor
Issued November 5, 1996 (’080 Patent)
The Invention Explained
- Problem Addressed: The patent describes a problem with conventional hydrocolloid dressings where, upon absorbing fluid, they can lose cohesion and flexibility, potentially leaving adhesive residue in the wound upon removal (Compl. ¶19; ’080 Patent, col. 1:30-45).
- The Patented Solution: The invention is an adhesive composition that uses a "three-dimensional, open-mesh, randomly-oriented network of flexible, water-insoluble, polymeric filaments" to act as a structural scaffold. This network is coated with a tacky adhesive and holds hydrocolloid particles within its interstices. When the hydrocolloid absorbs fluid and swells, the filament network expands with it, maintaining the dressing's overall integrity and preventing disintegration (’080 Patent, Abstract; col. 2:50-61).
- Technical Importance: This approach aimed to improve the structural integrity of hydrocolloid dressings, allowing them to absorb significant amounts of fluid without breaking down, which was a limitation of prior art dressings (’080 Patent, col. 2:1-9).
Key Claims at a Glance
- The complaint asserts non-infringement of the patent generally but does not specify claims (Compl. ¶19). Independent claim 1 is representative.
- The essential elements of independent claim 1 include:
- A backing layer having first and second side surfaces.
- An adhesive composition applied to one of said surfaces, comprising:
- A three-dimensional, open cell mesh network of discrete polymeric filaments coated with a tacky water-insoluble adhesive material.
- A hydrocolloid material dispersed throughout the open cells of the network.
- The network is expandable for retaining the hydrocolloid material as it becomes hydrated.
- The filaments constitute no less than 3% by weight of the adhesive composition.
- The complaint reserves the right to identify additional claims (Compl. ¶19).
U.S. Patent No. 5,704,905 - Wound Dressing Having Film-Backed Hydrocolloid-Containing Adhesive Layer With Linear Depressions
Issued January 6, 1998 (’905 Patent)
The Invention Explained
- Problem Addressed: The patent notes the difficulty of assessing wounds through transparent dressings and the desire for improved flexibility and anatomical conformity. Using printed grids for measurement can be problematic if ink leaches into the wound (’905 Patent, col. 1:7-39).
- The Patented Solution: The invention is a wound dressing with one or more "linear depressions" formed in the hydrocolloid adhesive layer. These depressions are visible through the transparent backing film and can serve as ink-free measuring guides, as well as hinge or flex lines that allow the dressing to better conform to body contours (’905 Patent, Abstract; col. 2:13-25). The patent describes that the backing film "bridges" over these depressions, creating a visible effect (’905 Patent, col. 5:48-65).
- Technical Importance: This design provided a method for both wound assessment and enhanced flexibility without the use of potentially irritating inks or separate components (’905 Patent, col. 2:40-45).
Key Claims at a Glance
- The complaint does not specify claims asserted (Compl. ¶19). Independent claim 1 is representative.
- The essential elements of independent claim 1 include:
- A pliant, hydrocolloid containing adhesive layer.
- A flexible backing film secured to one side of the adhesive layer.
- A release sheet removably secured to the opposite side of the adhesive layer.
- The adhesive layer has "at least one linear depression visible through said backing film," with the adhesive being thinner in the depression than alongside it.
- The backing film is "spaced from said adhesive layer in said depression and bridging over at least a portion of said depression."
- The complaint reserves the right to identify additional claims (Compl. ¶19).
U.S. Patent No. 5,998,694 - Occlusive Dressing with Release Sheet Having Extended Tabs
Issued Dec. 7, 1999
- Technology Synopsis: The patent addresses the difficulty and potential for contamination when removing a dressing's protective release sheet. The solution is a release sheet with "extended tabs" that project beyond the perimeter of the adhesive barrier, providing a sterile, easy-to-grip area for removal (’694 Patent, Abstract).
- Asserted Claims: The complaint does not specify particular claims (Compl. ¶19).
- Accused Features: The complaint alleges non-infringement on the basis that the Dermarite wound dressings "do not possess" the claimed "extended tab" (Compl. Ex. A, p. 1).
U.S. Patent No. 6,143,798 - Wound Dressing
Issued Nov. 7, 2000
- Technology Synopsis: The patent describes an adhesive composition for wound dressings with a specific formulation intended to be conformable, flexible, and have high initial tack at room temperature. The composition comprises an elastomer, a hydrocarbon resin tackifier, a non-polar oily extender, a hydrocolloid, and a minimal amount of antioxidant (’798 Patent, Abstract; col. 2:51-60).
- Asserted Claims: The complaint does not specify particular claims (Compl. ¶19).
- Accused Features: The complaint alleges non-infringement because the Dermarite products do not contain the "specific compositions" claimed in the patent (Compl. Ex. A, p. 1).
U.S. Patent No. 6,309,500 - Method for Manufacturing Contoured and Laminated Materials
Issued Oct. 30, 2001
- Technology Synopsis: This patent claims a method for manufacturing laminated and contoured products, such as wound dressings, using a continuous in-line process. The method involves specific stations for contouring, delaminating a support layer, driving the material, and cutting the final products (’500 Patent, Abstract).
- Asserted Claims: The complaint does not specify particular claims (Compl. ¶19).
- Accused Features: The complaint alleges non-infringement on the basis that Dermarite, the plaintiff, "does not carry out the manufacturing steps in the claims of this patent" (Compl. Ex. A, p. 1).
III. The Accused Instrumentality
Product Identification
- The complaint identifies two accused products: Dermarite’s hydrocolloid wound dressing product number 00279E, a "Sacral with a Border," and product number 00259, a "Thin with a Border" (Compl. ¶6).
Functionality and Market Context
- The products are hydrocolloid wound dressings marketed for medical use (Compl. ¶2). The complaint provides limited technical detail on the products' construction, but asserts through an attached exhibit that they lack the specific features claimed in the patents-in-suit, such as an "extended tab," "linear depressions," or certain "specifically defined composition[s]" (Compl. Ex. A, p. 1). The complaint alleges that Dermarite has a "very substantial customer" for the products, suggesting they are commercially significant (Compl. ¶11).
No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
The complaint seeks a declaratory judgment of non-infringement. The following tables summarize the plaintiff's stated bases for these allegations, as detailed in the exhibit to the complaint.
'080 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a three-dimensional, open cell mesh network of discrete polymeric filaments coated with a tacky water-insoluble adhesive material having an adherence affinity for said filaments and joining the coated filaments together at their intersections to maintain the integrity of said said network | The complaint alleges that the accused products do not infringe because they lack the "specifically defined composition" required by the claims, which centers on this filament network structure (Compl. Ex. A, p. 1). The products are alleged to have a different composition and structure from that claimed (Compl. ¶19; Compl. Ex. A, p. 1). | ¶19; Ex. A | col. 9:51-58 |
'905 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| said one side of said adhesive layer covered by said backing film and having at least one linear depression visible through said backing film, the thickness of said adhesive layer in said depression being less than the thickness of said adhesive layer alongside said depression, said backing film spaced from said adhesive layer in said depression and bridging over at least a portion of said depression | The complaint alleges that the accused products do not have the claimed "linear depressions which are formed in the bodies of the wound dressing" (Compl. Ex. A, p. 1). The plaintiff’s examination of the products reportedly did not detect this feature (Compl. ¶7; Compl. Ex. A, p. 1). | ¶7; Ex. A | col. 7:40-46 |
Identified Points of Contention
- Scope and Factual Questions: The core of the dispute appears to be factual and technical rather than purely legal. For the ’080 patent, the question is whether the material composition of Dermarite's dressings includes a "three-dimensional, open cell mesh network of discrete polymeric filaments." For the ’905 patent, the question is whether the surface of the Dermarite dressings contains "linear depressions" over which the backing film "bridges." These disputes will likely depend on expert testimony and product teardowns.
- Ownership and Standing: The complaint raises a threshold legal issue by alleging that Defendant Euromed is not the record owner of the patents-in-suit at the USPTO (Compl. ¶14). If true, this could challenge Euromed's standing to assert the patents or demand royalties.
V. Key Claim Terms for Construction
The Term: "three-dimensional, open cell mesh network of discrete polymeric filaments" (’080 Patent, Claim 1)
- Context and Importance: This term defines the core structural innovation of the ’080 patent. The non-infringement defense for this patent hinges on showing that the accused products do not contain this specific structure. Practitioners may focus on this term because its construction will determine whether a broad range of porous materials or only a specific filament-based architecture falls within the claim scope.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification describes the resulting structure as having a "sponge-like appearance of a reticulated polymeric foam" (’080 Patent, col. 7:1-2), which might support an interpretation covering various porous or foam-like adhesive matrices.
- Evidence for a Narrower Interpretation: The patent describes producing the filaments by shredding a polymeric foil during mixing (’080 Patent, col. 3:46-54), and Example 1 details shredding a polyethylene foil into "filaments having a length of approx. 1-6 mm" (’080 Patent, col. 9:1-17). This could support a narrower construction limited to structures made of distinct, elongated filamentary components, as opposed to an integrally formed porous mass.
The Term: "linear depression" with a "bridging" backing film (’905 Patent, Claim 1)
- Context and Importance: This feature is the basis for the non-infringement allegation against the ’905 patent. The definition of what constitutes a "depression" and the functional requirement of "bridging" will be critical.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The term "depression" on its own could be argued to encompass any elongated area of reduced thickness or a simple groove on the adhesive surface.
- Evidence for a Narrower Interpretation: The claim requires that the backing film be "spaced from said adhesive layer in said depression and bridging over at least a portion of said depression" (’905 Patent, col. 7:43-46). Figure 3A visually depicts a distinct air gap between the backing film and the bottom of the depression. This language and figure may support a narrower construction requiring a tangible, spanned gap, not just a surface undulation where the backing film remains in contact with the adhesive.
VI. Other Allegations
The complaint includes counts for Lanham Act violations and tortious interference with business relationships (Compl. ¶¶ 20-38). These counts are based on allegations that Euromed falsely advertised to the trade that it is the exclusive owner of the technology and misrepresented to a customer of Dermarite that a lawsuit was already pending, allegedly to induce the customer to cease purchasing Dermarite’s products (Compl. ¶¶ 11-13, 22-23).
VII. Analyst’s Conclusion: Key Questions for the Case
- A threshold legal question will be one of standing: Does Defendant Euromed have the legal authority to enforce the patents-in-suit, given the plaintiff's allegation that it is not the record owner?
- A central evidentiary question will be one of structural composition: Does the material used in the Dermarite dressings incorporate the "three-dimensional, open cell mesh network of discrete polymeric filaments" as defined and claimed in the ’080 patent, or is it a fundamentally different hydrocolloid matrix?
- A second key evidentiary question will be one of physical construction: Do the Dermarite dressings feature "linear depressions" that are "bridged" by the backing film in the specific manner required by the claims of the ’905 patent, or does this feature not exist in the accused products?