DCT

1:23-cv-00002

Vincent Systems GmbH v. Fillauer Companies Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:23-cv-00002, E.D. Tenn., 05/31/2023
  • Venue Allegations: Venue is alleged to be proper in the Eastern District of Tennessee because Defendant Fillauer resides and has a regular and established place of business in the district, and Defendant Motion Control has consented to venue for the purposes of the suit.
  • Core Dispute: Plaintiff alleges that Defendants’ TASKA Hand line of prosthetic hands infringes a patent related to the mechanical design of an independently-powered prosthetic finger element.
  • Technical Context: The technology concerns advanced, myoelectric upper-extremity prosthetics, a field focused on creating devices that replicate the complex movements and form factor of a natural human hand.
  • Key Procedural History: The complaint alleges that Plaintiff notified Defendants of infringement on August 31, 2022. It further alleges that on March 17, 2023, Plaintiff informed Defendants that a German court had found the TASKA Hand to infringe the European counterpart to the patent-in-suit, and that a separate German court had rejected a bid to invalidate that European patent.

Case Timeline

Date Event
2008-11-08 U.S. Patent No. 8,491,666 Priority Date
2010-04-10 Inventor assigns rights in '666 Patent to Vincent Systems
2013-07-23 U.S. Patent No. 8,491,666 Issues
2022-08-31 Plaintiff notifies Defendants of alleged infringement
2022-10-03 Defendants acknowledge receipt of Plaintiff's notice
2023-03-17 Plaintiff informs Defendants of German court ruling on counterpart European patent
2023-05-31 Complaint Filed

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

U.S. Patent No. 8,491,666 - “Finger Element,” issued July 23, 2013

The Invention Explained

  • Problem Addressed: The patent seeks to address challenges in creating an "autarkic" (self-contained) prosthetic finger that mimics the dimensions and function of a natural finger while ensuring a long lifetime (Compl. ¶17; ’666 Patent, col. 1:66-2:5). Prior designs either placed drive mechanisms outside the finger, making them bulky, or had internal drive mechanisms where the worm gear was fixed to the motor shaft, making the motor susceptible to damage from applied loads (’666 Patent, col. 1:28-44).
  • The Patented Solution: The invention is a finger element with an internal servo drive where the threaded screw of the worm gear is mechanically decoupled from the motor's drive shaft in the axial direction. The patent describes the threaded screw as being "positively mounted axially movably on the drive shaft and axially guided through separate guides" (’666 Patent, Abstract). This arrangement allows the screw to move along the axis of the drive shaft, preventing forces exerted on the finger from being transmitted directly to the motor, thereby increasing durability (’666 Patent, col. 2:28-39). The patent's Figure 2, reproduced in the complaint, illustrates a cross-section of the finger element showing the motoric drive (11), threaded screw (13), and guidances (14) (Compl. ¶20; ’666 Patent, Fig. 2).
  • Technical Importance: This design enables the construction of a compact, durable, and independently-powered prosthetic finger, suitable for use even in smaller prosthetic hands, such as those for women and children (’666 Patent, col. 2:4-5).

Key Claims at a Glance

  • The complaint asserts infringement of at least independent Claim 1 (Compl. ¶24).
  • The essential elements of Claim 1 are:
    • a) a carrier component,
    • b) a first phalanx with a first hinge connection to the carrier component,
    • c) a second phalanx with a second hinge connection to the first phalanx,
    • d) a servo drive for the first hinge connection with a motor, drive shaft, and a worm gearing (including a threaded screw and cog segment),
    • e) a coupling mechanism between the first and second hinge connections,
    • f) wherein the threaded screw is supported on the drive shaft form fittingly and axially movable, and is also guided in the axial direction by separate guidances.
  • The complaint does not explicitly reserve the right to assert dependent claims, but the prayer for relief requests a determination that Defendants infringed "one or more claims" (Compl. ¶65(a)).

III. The Accused Instrumentality

Product Identification

  • The accused products are a line of prosthetic hands known as the "TASKA Hand" (Compl. ¶23).

Functionality and Market Context

  • The TASKA Hand is a multi-articulating prosthetic hand featuring "Flexible Fingers" with a "knuckle breakaway" feature for robustness, an "inbuilt flexible wrist," and "motorized thumb rotation" (Compl. ¶26). The complaint alleges that Defendant Fillauer is the "exclusive distributor" for the TASKA Hand in the United States and that Defendant Motion Control, a division of Fillauer, also distributes the product (Compl. ¶¶42, 45, 47). The infringement allegations are supported by annotated photographs from an apparent teardown of a TASKA Hand finger element (Compl. ¶¶28-32, 35-40).

IV. Analysis of Infringement Allegations

’666 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
a) a carrier component The part of the finger element that fixes the finger to the rest of the prosthesis. An annotated photo identifies this component (Compl. ¶28, p. 8). ¶28 col. 5:9
b) a first phalanx with a first hinge connection to the carrier component The proximal segment of the finger and its connection to the carrier component. An annotated photo identifies these parts (Compl. ¶29, p. 8). ¶29 col. 5:11-12
c) a second phalanx with a second hinge connection to the first phalanx The distal segment of the finger and its connection to the first phalanx. An annotated photo identifies these parts (Compl. ¶30, p. 9). ¶30 col. 6:1-2
d) a servo drive for the first hinge connection with a motor with a drive shaft and a worm gearing with a threaded screw and a cog segment that engages to the threaded screw The internal drive mechanism that moves the finger. Annotated photos identify the motor, drive shaft, worm gearing, threaded screw, and cog segment (Compl. ¶31 and images on pp. 9-10). ¶31 col. 6:3-7
e) a coupling mechanism between the first hinge connection and the second hinge connection The mechanism linking the motion of the two phalanges. An annotated photo identifies this mechanism (Compl. ¶32 and image on p. 11). ¶32 col. 6:8-10
f) the threaded screw is supported on the drive shaft form fittingly and axially movable as well as guided in axial direction by separate guidances The complaint alleges this limitation is met by: a D-shaped drive shaft and corresponding opening in the screw for a "form fitting" connection (Compl. ¶¶35-36); the screw being slidable on the shaft for "axially movable" support (Compl. ¶¶37-38); and "grooved ball bearings" acting as "separate guidances" (Compl. ¶¶39-40). The complaint includes an annotated photo showing the D-shaped drive shaft (Compl. p. 12) and another showing the alleged separate guidances (Compl. p. 13). ¶¶33-40 col. 6:10-11
  • Identified Points of Contention:
    • Scope Questions: The infringement analysis for limitation (f) raises several questions. A primary issue may be whether the "grooved ball bearings" alleged in the TASKA Hand (Compl. ¶40) fall within the scope of "separate guidances" as described in the patent, which teaches embodiments like "sliding guidances" made of "dry lubricating slide bearing bushing material" (’666 Patent, col. 2:38, col. 4:8-9). Another question is whether the alleged D-shaped shaft and corresponding opening (Compl. ¶35) meets the "form fittingly" limitation, which the patent specification also describes with the example of "a cogging or a matched joint" (’666 Patent, col. 2:34-35).
    • Technical Questions: The complaint alleges the threaded screw is "axially movable" and provides a series of photographs showing the screw being slid onto the drive shaft (Compl. ¶38, p. 12). A key question for the court will be whether this demonstrates axial movability during the assembled operation of the device, or merely that the parts are not permanently fixed during assembly.

V. Key Claim Terms for Construction

  • The Term: "form fittingly"

  • Context and Importance: This term is critical to element (f) of Claim 1. The complaint’s infringement theory rests on the allegation that a D-shaped drive shaft interacting with a D-shaped opening in the threaded screw constitutes a "form fitting" support (Compl. ¶¶35-36). The interpretation of this term will determine whether this common mechanical interface meets the claim limitation.

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: The patent specification provides "a cogging or a matched joint" as an example of a form-fitting coupling, suggesting the term is not limited to a single, specific type of connection (’666 Patent, col. 2:34-35).
    • Evidence for a Narrower Interpretation: Elsewhere, the specification refers to a "key-slot-connection" as the way the screw is pushed onto the drive shaft (’666 Patent, col. 3:63-64). A defendant might argue this points toward a more specific class of mechanical interlocks than a simple D-shaped profile.

  • The Term: "separate guidances"

  • Context and Importance: This term is also central to element (f). The complaint alleges that "grooved ball bearings" in the accused device satisfy this limitation (Compl. ¶40). Practitioners may focus on this term because the patent's description of the guidances appears to differ from the rolling-element bearings alleged to be in the accused product.

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: The term itself is general. Plaintiff may argue that any structure separate from the motor that serves to guide the screw axially meets the limitation, and that the patent's examples are not exhaustive.
    • Evidence for a Narrower Interpretation: The specification describes the guidances as "preferably in form of sliding guidances" and suggests they can be made of "dry lubricating slide bearing bushing material" (’666 Patent, col. 2:38-39, col. 4:8-9). A defendant could argue this language, which describes slide bearings, implicitly disclaims rolling-element bearings like the alleged "grooved ball bearings."

VI. Other Allegations

  • Indirect Infringement: The complaint alleges inducement of infringement, stating that Defendants encourage and instruct their customers and end-users to use the infringing TASKA Hand (Compl. ¶¶50-51). The alleged inducement is supported by claims that Defendants create and distribute technical, marketing, and instructional literature for the products (Compl. ¶52).
  • Willful Infringement: The complaint alleges willfulness based on pre-suit knowledge. It specifically alleges that Plaintiff provided direct notice of infringement to Defendants on August 31, 2022, which Defendants acknowledged receiving (Compl. ¶¶53-54). The allegation is further supported by the claim that Plaintiff later informed Defendants of a German court's finding that the TASKA Hand infringes the patent’s European counterpart (Compl. ¶55).

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

The resolution of this case appears to hinge on two central issues:

  1. A core issue will be one of definitional scope: can the claim terms "form fittingly" and "separate guidances" be construed to cover the accused TASKA Hand’s D-shaped shaft interface and its alleged use of grooved ball bearings? The patent’s description of these elements, particularly the guidances, may provide a basis for a narrow construction that could challenge the infringement allegations.

  2. A key evidentiary and technical question will be whether the specific components and operation of the accused TASKA Hand’s drive mechanism meet the functional requirements of the claims. Specifically, the court will need to determine if the threaded screw is truly "axially movable" during operation and if the alleged "coupling mechanism" functions as claimed, based on evidence beyond the annotated teardown photographs provided in the complaint.