DCT
1:18-cv-01691
Karl Storz Endoscopy America Inc v. STERIS Corp
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Karl Storz Endoscopy-America, Inc. (California)
- Defendant: Steris Corporation (Ohio)
- Plaintiff’s Counsel: Kegler Brown Hill + Ritter Co., LPA; Whitmyer IP Group LLC
- Case Identification: 1:18-cv-01691, N.D. Ohio, 10/03/2018
- Venue Allegations: Venue is alleged to be proper in the Northern District of Ohio because Defendant is an Ohio corporation with its principal place of business in the district, has a regular and established place of business in the district, and has allegedly committed acts of infringement there.
- Core Dispute: Plaintiff alleges that Defendant’s surgical integration systems, which centralize control of operating room video and data, infringe a patent related to a touchscreen interface for routing medical imaging data.
- Technical Context: The technology concerns integrated digital operating rooms, where a centralized touchscreen allows medical staff to select video sources (like endoscopes or room cameras) and route them to various displays or recorders.
- Key Procedural History: The asserted patent, U.S. 8,069,420, was the subject of an Inter Partes Review (IPR) that concluded before this complaint was filed. An IPR Certificate issued on February 12, 2018, cancelled numerous claims, including claims 1 and 2. The complaint asserts claim 81, which survived the IPR, and dependent claim 3, which depends from the cancelled claim 2, raising a significant question about the viability of asserting claim 3. The complaint also alleges Defendant had notice of the patent as of August 10, 2017, predating the filing of the suit.
Case Timeline
| Date | Event |
|---|---|
| 2004-12-29 | U.S. Patent 8,069,420 Priority Date |
| 2011-11-29 | U.S. Patent 8,069,420 Issued |
| 2012-01-01 | Accused Harmony iQ Systems First Sold (on or before date) |
| 2016-01-01 | Accused BDV IDSS Systems First Sold (on or before date) |
| 2017-08-10 | Defendant Notified of '420 Patent (at least as early as) |
| 2018-02-12 | IPR Certificate Issued, Cancelling Claims of '420 Patent |
| 2018-10-03 | First Amended Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,069,420 - System for Controlling the Communication of Medical Imaging Data, issued November 29, 2011
The Invention Explained
- Problem Addressed: The patent describes that prior art systems for controlling numerous medical imaging devices within an operating room were often complex, relying on "detailed command inputs, such as by a keyboard, or hierarchies of menus and sub-menus," which were not simple or quick to use ('420 Patent, col. 1:56-62).
- The Patented Solution: The invention claims to solve this problem with a touchscreen-based system that "simultaneously" displays selectable icons for both imaging "sources" (e.g., cameras) and "destinations" (e.g., monitors) ('420 Patent, col. 2:57-67). This allows a user to intuitively route data by touching the desired icons. A central feature is a "display window" integrated into the same touchscreen interface, allowing the user to preview the video feed from the selected source before or during routing ('420 Patent, col. 2:67-col. 3:2). The patent's figures consistently depict this with a column of source icons on one side, a column of destination icons on the other, and the display window situated between them ('420 Patent, Fig. 2).
- Technical Importance: This user interface design aimed to simplify workflow and reduce complexity in a high-stakes environment by replacing cumbersome, multi-step controls with a direct, visual, and integrated routing system ('420 Patent, col. 1:56-67).
Key Claims at a Glance
- The complaint asserts independent claim 81 and dependent claim 3 ('420 Patent, col. 10:5-col. 14:60; Compl. ¶27).
- Independent Claim 81: This system claim recites:
- a computer, a plurality of sources, and a plurality of destinations for medical imaging data
- a touchscreen controlled by the computer
- software executing on the computer for displaying on the touchscreen a plurality of source icons
- software executing on the computer for displaying on the touchscreen a plurality of destination icons
- software executing on the computer for displaying medical images on the touchscreen, where "the medical images are displayed between the plurality of source icons and the plurality of destination icons"
- Dependent Claim 3: This claim depends from claim 2, which in turn depends from claim 1. It adds the specific limitation that "the display window is located between the plurality of source icons and the plurality of destination icons." As noted in Section I, claims 1 and 2 were cancelled in a prior IPR proceeding, raising questions about the enforceability of dependent claim 3.
- The complaint reserves the right to amend its infringement contentions as more information becomes available (Compl. ¶33).
III. The Accused Instrumentality
Product Identification
- The accused instrumentalities are the "Steris Harmony iQ Integration Systems" and the "BDV IDSS Integration Systems" (Compl. ¶¶ 15, 21).
Functionality and Market Context
- The complaint alleges these are integrated systems for use in operating rooms that provide centralized control over various connected devices (Compl. ¶¶ 16, 22). Their functionality is alleged to include a "touch panel" user interface for managing "HD and 4K video routing" from sources like cameras and computers to various monitors and displays (Compl. ¶¶ 16, 22). The complaint provides a screenshot of the Harmony iQ user interface, which shows a central video preview area flanked by a "Sources" list on the left and a "Destinations" list on the right (Compl. ¶19). A similar layout is shown for the BDV IDSS system (Compl. ¶25). Plaintiff alleges Defendant sells these systems to its "past and potential customers," suggesting direct market competition (Compl. ¶¶ 17, 23).
IV. Analysis of Infringement Allegations
The complaint provides a narrative infringement theory for claims 3 and 81 against both accused product lines. Because claim 81 is the sole surviving independent claim asserted, its analysis is presented below.
'420 Patent Infringement Allegations (Claim 81)
| Claim Element (from Independent Claim 81) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a system for controlling the communication of medical imaging data, comprising: a computer; a plurality of sources of medical imaging data...; a plurality of destinations for the medical imaging data...; a touchscreen controlled by said computer; | The Harmony iQ and BDV IDSS Integration Systems are alleged to be systems with a computer, multiple sources (cameras, PCs), multiple destinations (displays), and a touchscreen for controlling the communication of medical imaging data. | ¶35, ¶47 | col. 10:10-18 |
| software executing on said computer for displaying on said touchscreen a plurality of source icons corresponding to said plurality of sources of medical imaging data... | The systems' software allegedly displays a list of selectable source icons (e.g., "Endo Camera 1," "PACS PC") on the touchscreen. This is depicted in a provided screenshot of the accused user interface. | ¶35, ¶47, ¶19 | col. 14:30-36 |
| software executing on said computer for displaying on said touchscreen a plurality of destination icons corresponding to said plurality of destinations... | The systems' software allegedly displays a list of selectable destination icons (e.g., "Surgical Display 1," "Wall Display 2") on the touchscreen. This is depicted in a provided screenshot of the accused user interface. | ¶35, ¶47, ¶25 | col. 14:37-43 |
| software executing on said computer for displaying on said touchscreen medical images generated from the medical imaging data supplied by the selected source, wherein the medical images are displayed between the plurality of source icons and the plurality of destination icons. | The systems allegedly display a live preview of the selected video source in a "Preview Window" that is physically located on the screen between the column of source icons on the left and the column of destination icons on the right. | ¶35, ¶47, ¶19, ¶25 | col. 14:44-51 |
Identified Points of Contention
- Legal Question: A threshold issue for the court will be whether Plaintiff’s assertion of claim 3 is permissible under 35 U.S.C. § 282(b)(2), given that its parent claims were cancelled via IPR before the complaint was filed.
- Technical Question: For the surviving claim 81, the infringement analysis appears straightforward based on the complaint's allegations and visual evidence. A potential point of contention could arise if the accused systems have modes of operation where the user interface layout differs from that shown in the complaint, or if the "source" and "destination" elements displayed do not meet the definitions of "icons" as construed from the patent.
V. Key Claim Terms for Construction
- The Term: "between the plurality of source icons and the plurality of destination icons"
- Context and Importance: This phrase, appearing in both asserted claims 3 and 81, defines the core spatial layout of the patented user interface. The infringement case for claim 81 hinges on whether the accused products' display of medical images in a central pane, flanked by source and destination lists, falls within the scope of this term. Practitioners may focus on this term because it is the key structural limitation differentiating the invention from other interface designs.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party might argue for a broad, plain-and-ordinary-meaning construction, asserting that "between" simply requires the image display to be located in the general area separating the source and destination icon groups, without mandating a specific, rigid columnar layout. The specification's focus is on simplifying user interaction, which this general arrangement achieves.
- Evidence for a Narrower Interpretation: A party could argue for a narrower construction limited to the specific embodiment shown throughout the patent. The abstract, detailed description, and every relevant drawing (e.g., Figs. 1, 2, 9, 14) consistently depict a distinct three-column layout: a vertical list of source icons on the left, a vertical list of destination icons on the right, and the display window occupying the space that separates them ('420 Patent, Abstract; col. 5:47-54). This consistency could be argued to limit the term to that specific configuration.
VI. Other Allegations
- Indirect Infringement: The complaint alleges both induced infringement (§ 271(b)) and contributory infringement (§ 271(c)) (Compl. ¶¶ 28, 31, 40, 43). The factual basis for inducement is the allegation that Defendant sells the products with the "specific intent" that they be used in an infringing manner (Compl. ¶¶ 30, 42). For contributory infringement, it is alleged the products are a material part of the invention, have no substantial non-infringing uses, and are especially made for infringing use (Compl. ¶¶ 32, 44).
- Willful Infringement: Willfulness is alleged based on Defendant having been "on notice of the '420 patent since at least as early as August 10, 2017," more than a year before the complaint was filed (Compl. ¶14). The prayer for relief seeks treble damages pursuant to 35 U.S.C. § 284 (Compl. p. 13).
VII. Analyst’s Conclusion: Key Questions for the Case
A central threshold question is one of claim viability: can Plaintiff maintain its cause of action on claim 3, a dependent claim whose parent claim (claim 2) was cancelled in an IPR proceeding that concluded before the suit was filed? The resolution of this issue will define the scope of the case going forward.
A primary substantive issue will be one of infringement interpretation for the surviving claim 81: does the term "between the plurality of source icons and the plurality of destination icons" read on the accused systems' user interfaces? While the complaint's visual evidence appears to show a layout consistent with the patent's figures, the precise construction of this spatial limitation will be critical.
A key question for damages will be willfulness: what was Defendant's state of mind after receiving notice of the patent in August 2017, particularly in light of the subsequent IPR proceedings and the cancellation of numerous claims? The answer will determine whether any damages for infringement of the surviving claim 81 can be enhanced.