Endobotics LLC v. Fujifilm Healthcare Americas Corp

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Endobotics, LLC (Delaware)
  • Defendant: FUJIFILM Healthcare Americas Corporation (New York)
  • Plaintiff’s Counsel: Bochner PLLC
• Case Identification: 7:24-cv-02266, S.D.N.Y., 03/26/2024
• Venue Allegations: Venue is alleged to be proper as Defendant resides in the district, has committed alleged acts of infringement in the district, and maintains a regular and established place of business there.
• Core Dispute: Plaintiff alleges that Defendant’s TRACMOTION line of surgical instruments infringes two patents related to manually operated, articulating instruments for minimally invasive surgery.
• Technical Context: The technology addresses the need for enhanced dexterity in endoscopic and laparoscopic instruments, aiming to overcome the "fulcrum effect" at the incision site to give surgeons more intuitive control.
• Key Procedural History: The asserted U.S. Patent No. 7,364,582 is a continuation of the application that issued as the co-asserted U.S. Patent No. 7,147,650, indicating a close technical and prosecution relationship between the patents-in-suit.

Case Timeline

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

U.S. Patent No. 7,147,650 - "Surgical Instrument"

Issued December 12, 2006

The Invention Explained

• Problem Addressed: The patent’s background describes conventional laparoscopic instruments as "extremely difficult to learn to operate and use, mainly due to a lack of dexterity." It notes that the "fulcrum effect," where the instrument pivots at the incision point, makes complex tasks like suturing and fine dissection challenging. (’650 Patent, col. 1:9-17).
• The Patented Solution: The invention is a surgical instrument featuring a proximal handle and a distal tool coupled to an elongated shaft via "bendable motion members." These proximal and distal members are linked by an actuation mechanism (e.g., cables), such that movement of the handle is replicated by the tool at the shaft's distal end. This design is intended to provide the surgeon with more intuitive, dexterous control over the tool tip inside the patient's body. (’650 Patent, Abstract; Fig. 1; col. 2:30-46).
• Technical Importance: This mechanical approach sought to provide surgeons with more intuitive, wrist-like articulation, a key advancement for performing complex procedures through minimally invasive techniques. (’650 Patent, col. 1:25-28).

Key Claims at a Glance

• The complaint asserts independent claim 111. (Compl. ¶14).
• The essential elements of claim 111 are:
  • A surgical instrument with an elongated shaft, a tool at its distal end, and a control handle at its proximal end.
  • A distal "bendable member" coupling the shaft to the tool.
  • A proximal "bendable member" coupling the shaft to the handle.
  • The proximal bendable member has a "diameter that is different than the diameter of said distal bendable member."
  • An "actuation means" extending between the two bendable members to couple the motion of the proximal member to the distal member to control the tool's position.
• The complaint reserves the right to assert additional claims. (Compl. ¶14).

U.S. Patent No. 7,364,582 - "Surgical Instrument"

Issued April 29, 2008

The Invention Explained

• Problem Addressed: As a continuation of the application for the ’650 Patent, the ’582 Patent addresses the same problem of limited dexterity in minimally invasive surgical instruments caused by the fulcrum effect. (’582 Patent, col. 1:15-28).
• The Patented Solution: The invention also describes a surgical instrument with proximal and distal "bendable motion members" connected by an actuation mechanism to replicate handle motion at the tool tip. This patent claims variations on the core technology, securing rights to alternative configurations of the instrument's components. (’582 Patent, Abstract; Fig. 1; col. 2:40-54).
• Technical Importance: This patent family represents an effort to comprehensively protect an apparatus that provides surgeons with more intuitive control, aiming to make complex minimally invasive procedures easier to master and perform. (’582 Patent, col. 1:29-33).

Key Claims at a Glance

• The complaint asserts independent claim 41. (Compl. ¶34).
• The essential elements of claim 41 are:
  • A surgical instrument with an elongated shaft, a tool, and a control handle.
  • A distal "bendable member" coupling the shaft to the tool.
  • A proximal "bendable member" coupling the shaft to the handle.
  • The proximal bendable member has a "maximum transverse cross-sectional dimension that is different than that of said distal bendable member."
  • An "actuation means" extending between the bendable members to couple their motion and control the tool's position.
• The complaint reserves the right to assert additional claims. (Compl. ¶34).

III. The Accused Instrumentality

Product Identification

The complaint identifies FUJIFILM’s "TRACMOTION" product line, including model number GF3612RT, as the Accused Products. (Compl. ¶12).

Functionality and Market Context

The Accused Products are described as surgical instruments for minimally invasive procedures. (Compl. ¶2). The complaint alleges, supported by visual evidence, that the TRACMOTION instruments consist of a control handle, an elongated shaft, and an articulating tool end. (Compl. ¶¶17-19). One image shows the full instrument assembly, including the handle, a flexible shaft, and the tool tip. (Compl. p. 3). The complaint alleges that manipulating the handle directly controls the orientation of the tool, a feature central to the infringement allegations. (Compl. ¶22). No specific allegations regarding the product's market share or commercial success are made, beyond a general assertion of substantial revenue in New York. (Compl. ¶6).

IV. Analysis of Infringement Allegations

’650 Patent Infringement Allegations

’582 Patent Infringement Allegations

Identified Points of Contention

• Scope Questions: A central question will be the scope of the term "bendable member." The patents distinguish this element from traditional pivotal or ball-and-socket joints, describing it as a unitary structure with "inherent stiffness" that is "capable of being constrained...to deviate from a straight line to a curved configuration without any sharp breaks or angularity." (’650 Patent, col. 15:36-40; col. 5:1-7). The infringement analysis may turn on whether the segmented articulating sections of the TRACMOTION device (Compl. p. 5, bottom image) fall within this definition or constitute a series of discrete, non-unitary joints that fall outside the claim scope.
• Technical Questions: The "actuation means" limitation is a means-plus-function element, whose scope is defined by the structures disclosed in the specification—primarily a system of control cables and push rods. (’650 Patent, col. 5:20-55; Fig. 4). A key evidentiary question will be whether the internal mechanism of the TRACMOTION device, once revealed in discovery, employs this structure or its legal equivalent to achieve the claimed function of coupling motion between the handle and the tool.

V. Key Claim Terms for Construction

• The Term: "bendable member"

  • Context and Importance: This term is at the heart of the invention and the dispute. The patents’ specification repeatedly contrasts "bendable members" with conventional pivotal joints, emphasizing properties like uniform bending and inherent stiffness. Practitioners may focus on this term because its construction will determine whether the segmented articulating components of the accused device meet the claim limitation.
  • Intrinsic Evidence for a Broader Interpretation: A party may argue that the claims do not require a specific internal construction, only that the member be "controllably bendable." (’650 Patent, col. 4:62). The focus could be on the functional outcome of bending in any direction "without any singularity." (’650 Patent, col. 4:41-42).
  • Intrinsic Evidence for a Narrower Interpretation: A party may argue the term is limited by the patent's explicit distinction from pivotal joints and its description of preferred embodiments like the "ribbed construction" or "bellows construction" as being of a "single unitary structure." (’650 Patent, col. 5:1-2; col. 15:36-44). This suggests the term may not cover an assembly of discrete, pivoting links.

• The Term: "diameter" (in claim 111 of the ’650 Patent) vs. "maximum transverse cross-sectional dimension" (in claim 41 of the ’582 Patent)

  • Context and Importance: This pair of terms distinguishes the asserted claims from each other and relates to a specific physical characteristic of the proximal bendable member. The difference in wording may be significant if the accused device's proximal member has a non-circular shape, making "diameter" potentially inapplicable while "maximum transverse cross-sectional dimension" would still apply. Practitioners may focus on this distinction to argue that one patent is infringed while the other is not, or to challenge the validity of the later claim as being indistinct from the earlier one.
  • Intrinsic Evidence for Interpretation: The specification and figures generally depict members with circular cross-sections (e.g., ’650 Patent, Fig. 5C), which may support interpreting "diameter" in its plain geometric sense. The use of the broader term "maximum transverse cross-sectional dimension" in the later ’582 Patent suggests a deliberate choice to capture non-circular geometries, which could be used to argue the terms have distinct meanings.

VI. Other Allegations

• Indirect Infringement: The complaint alleges both induced and contributory infringement. Inducement is based on FUJIFILM allegedly providing instructions, promotional materials, and website videos that instruct users on how to use the Accused Products in an infringing manner. (Compl. ¶¶26, 46). Contributory infringement is alleged based on the sale of the products as a material component of the invention, not suitable for substantial non-infringing use. (Compl. ¶¶27, 47).
• Willful Infringement: Willfulness is alleged based on FUJIFILM’s knowledge of the patents "at least as of the filing of this Complaint" and its continued infringing activity thereafter. (Compl. ¶¶32, 52).

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

1. A core issue will be one of definitional scope: Can the term "bendable member," which the patents characterize as a unitary structure with inherent stiffness that bends uniformly, be construed to cover the segmented, jointed construction of the accused TRACMOTION instrument's articulating sections?
2. A key evidentiary question will be one of structural equivalence: Do the internal mechanics of the TRACMOTION device, which are responsible for transmitting motion from the handle to the tool, constitute the same or an equivalent structure to the specific cable-and-rod system disclosed in the patents for the "actuation means" limitation?
3. A third question will relate to the distinction between the asserted patents: The case may explore whether the different language used to describe the size of the proximal member—"diameter" in the ’650 Patent versus "maximum transverse cross-sectional dimension" in the ’582 Patent—creates a meaningful difference in claim scope that affects the infringement analysis for each patent.