DCT
1:20-cv-00149
Arthroscopic Innovations LLC v. Tensor Surgical Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Arthroscopic Innovations LLC (Massachusetts)
- Defendant: Tensor Surgical, Inc. (Delaware)
- Plaintiff’s Counsel: Robinson IP Law, PLLC; Meister Seelig & Fein LLP
- Case Identification: 1:20-cv-00149, E.D. Tenn., 06/12/2020
- Venue Allegations: Venue is alleged to be proper in the Eastern District of Tennessee because Defendant has its principal place of business in the district.
- Core Dispute: Plaintiff alleges that Defendant’s TransOS Tunneler surgical system infringes a patent related to methods and apparatus for creating transosseous (through-the-bone) suture passageways for surgical repairs.
- Technical Context: The technology concerns orthopedic surgery, specifically arthroscopic techniques for reattaching soft tissue like tendons to bone, such as in rotator cuff repairs.
- Key Procedural History: The complaint alleges that Plaintiff sent a formal notice letter to Defendant's CEO on March 25, 2020, identifying the patent and the accused product, which forms the basis for the willfulness allegation.
Case Timeline
| Date | Event |
|---|---|
| 2005-04-20 | ’059 Patent Priority Date |
| 2009-08-04 | ’059 Patent Issue Date |
| 2020-03-25 | Plaintiff sends infringement notice letter to Defendant |
| 2020-06-12 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 7,569,059 - "Method and Apparatus for Surgical Repair"
- Patent Identification: U.S. Patent No. 7,569,059, "Method and Apparatus for Surgical Repair", issued August 4, 2009.
The Invention Explained
- Problem Addressed: The patent’s background section describes challenges in surgically reattaching tendons to bone, such as in rotator cuff repair, noting that prior art techniques often involved placing suture anchors at the margin of the bone's articulating surface (’059 Patent, col. 1:26-35).
- The Patented Solution: The invention discloses a method and an associated guide apparatus for creating a passageway through a bone by forming two intersecting holes. This allows a suture, once passed through the tendon, to be routed through the bone tunnel and secured on the far (lateral) side of the bone, away from the original attachment point (’059 Patent, col. 2:38-47). A key feature is a guide apparatus with distinct first and second portions that align the formation of the intersecting holes, ensuring a viable path for the suture (’059 Patent, col. 10:35-44; Fig. 10).
- Technical Importance: This transosseous technique offers an alternative to suture anchors placed near the joint, potentially creating a more robust repair by anchoring the suture through the bone itself (’059 Patent, col. 2:38-47).
Key Claims at a Glance
- The complaint asserts infringement of at least claims 1-19 (Compl. ¶12). Independent claim 1 is a method claim.
- The essential elements of independent claim 1 include:
- providing a first hole in a body portion;
- positioning a first portion of a guide relative to the first hole;
- forming a second hole transverse to the first hole using a second portion of the guide, where the holes intersect to form a passageway;
- using the first and second portions of the guide, while they remain fixed relative to each other, to provide a suture through the passageway;
- securing a repair suture to a material (e.g., a tendon);
- positioning the repair suture in the passageway; and
- securing the material relative to the body portion with the suture.
- The complaint does not specify which dependent claims may be asserted.
III. The Accused Instrumentality
Product Identification
- The Tensor Surgical TransOS Tunneler (the "Accused System") (Compl. ¶10).
Functionality and Market Context
- The complaint alleges the Accused System is a medical device used by surgeons for surgical repair. Its described functionality includes a "first and second portion of a guide, which remain fixed in place relative to each other," and a passage through which a suture is retrieved after being created by an "awl pusher" (Compl. ¶11). These allegations closely mirror the language of the asserted patent claims.
- The system is marketed and sold to "medical professionals, hospitals, and medical centers" (Compl. ¶13). No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
The complaint references an Exhibit B containing a "general description" of infringement, but this exhibit was not provided (Compl. ¶12). The following analysis is based on the narrative allegations in the complaint body.
’059 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| providing a first hole in a body portion | The complaint alleges surgeons use the Accused System in a method for surgical repair, which would include creating the initial hole, potentially with the system's "awl pusher." | ¶11 | col. 2:60-61 |
| positioning a first portion of a guide relative to the first hole... | The Accused System is alleged to include a "first...portion of a guide." | ¶11 | col. 15:19-22 |
| forming a second hole transverse to the first hole using a second portion of the guide...to form a passageway... | The Accused System is alleged to include a "second portion of a guide" used to create a "passage" through which a suture is retrieved. | ¶11 | col. 15:23-29 |
| using the first and second portions of the guide, while the first and second portions of the guide remain fixed in place relative to each other...to provide a suture through the passageway... | The complaint alleges the guide portions "remain fixed in place relative to each other" and that a "suture is retrieved by using the passage." | ¶11 | col. 15:1-9 |
| securing a repair suture to a material to be secured relative to the body portion | This step is part of the "method for performing a surgical repair" that surgeons are alleged to perform using the Accused System. | ¶11 | col. 15:9-11 |
| positioning at least a portion of the repair suture in the passageway | This is accomplished when the "suture is retrieved by using the passage." | ¶11 | col. 15:12-13 |
| securing the material relative to the body portion using the repair suture | This is the ultimate goal of the "surgical repair" method allegedly performed with the Accused System. | ¶10, ¶11 | col. 15:14-16 |
- Identified Points of Contention:
- Technical Questions: A central factual question will be whether the components of the Tensor TransOS Tunneler function as a "guide" with "first and second portions" that remain "fixed in place relative to each other" during the surgical procedure, as required by the claim. The complaint alleges this in a conclusory manner, and the evidence will turn on the actual design and operation of the accused device.
- Scope Questions: The complaint alleges direct infringement by Tensor for "making, using, selling and/or offering to sell" the Accused System (Compl. ¶20). However, Claim 1 is a method claim, whose steps are performed by an end-user (a surgeon). A potential issue is whether Tensor itself performs all steps of the claimed method to be a direct infringer, or if the case will depend entirely on the allegations of indirect infringement.
V. Key Claim Terms for Construction
The Term: "guide"
Context and Importance: The infringement case hinges on whether the Accused System is, or contains, a "guide" as claimed. The definition of this term will determine if the physical components of the TransOS Tunneler fall within the scope of the claims.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent suggests a functional definition, stating a guide may be used "to define the location of the first and/or second hole" or "to locate a starting point" (’059 Patent, col. 10:24-29). This could support an interpretation covering any structure that performs this alignment function.
- Evidence for a Narrower Interpretation: The primary embodiment shows a specific C-shaped "reference structure" (83) holding two guide tubes (81, 82) in a fixed orientation (’059 Patent, Fig. 10; col. 9:15-20). A party could argue that "guide" should be construed more narrowly to require a structure analogous to this depicted embodiment.
The Term: "fixed in place relative to each other"
Context and Importance: This phrase describes the required relationship between the "first and second portions" of the guide. Proving this element is essential for the infringement case, and its definition will be critical. Practitioners may focus on this term because if the components of the accused device move or adjust relative to one another during use, it may not meet this limitation.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: This could be interpreted to mean maintaining a predetermined, stable spatial relationship that allows for alignment, even if the entire assembly is not perfectly rigid.
- Evidence for a Narrower Interpretation: The patent’s embodiment shows the guide portions held in a C-clamp-like structure, suggesting a rigid, immovable relationship (’059 Patent, Fig. 10). The specification notes the guide members may be positioned using a "reference structure" so their ends are adjacent, implying a stable and defined configuration (’059 Patent, col. 10:50-54).
VI. Other Allegations
- Indirect Infringement: The complaint alleges both induced and contributory infringement. It asserts that Tensor provides instructions on its website, through demo videos, in brochures (Exhibits B, C), and via customer support that instruct customers on how to use the Accused System in an infringing manner (Compl. ¶¶ 15, 21). It further alleges the Accused System is not a staple article of commerce and is specifically designed for the infringing use (Compl. ¶¶ 14, 22).
- Willful Infringement: The willfulness allegation is based on Tensor's alleged continued infringement after receiving a formal notice letter from Plaintiff's counsel on March 25, 2020, which allegedly provided knowledge of the patent and the infringing conduct (Compl. ¶¶ 16, 17, 24).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of technical mapping: Do the physical components of the Tensor TransOS Tunneler meet the claim limitations of a "guide" with "first and second portions" that remain "fixed in place relative to each other," or is there a functional or structural mismatch with the patented invention?
- A key legal question will be one of indirect infringement: As the asserted claims are directed to a surgical method performed by surgeons, the case will likely turn on whether Plaintiff can prove Tensor, by providing the device and associated instructions, possessed the specific intent required to induce its customers to infringe the ’059 Patent.
- An early procedural question may be the sufficiency of the direct infringement claim against Tensor. Given that Claim 1 is a method claim, the court may scrutinize whether the allegation that Tensor directly infringes by "making, using, [and] selling" the system, rather than by performing the claimed surgical steps, is sufficiently pled.