DCT
3:18-cv-00414
Xodus Medical Inc v. Prime Medical LLC
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Xodus Medical Inc. (Pennsylvania), Alessio Pigazzi (California), and Glenn Keilar (California)
- Defendant: Prime Medical LLC (Tennessee)
- Plaintiff’s Counsel: The Webb Law Firm
- Case Identification: 3:18-cv-00414, W.D. Pa., 11/10/2016
- Venue Allegations: Plaintiff alleges venue is proper because Defendant has committed acts of patent infringement in the Western District of Pennsylvania.
- Core Dispute: Plaintiffs allege that Defendant’s foam operating room table pads, used for positioning patients during surgery, infringe a patent covering a patient support system.
- Technical Context: The technology relates to patient positioning pads, particularly those made of viscoelastic foam, designed to prevent patients from sliding on inclined operating tables and to minimize pressure-related injuries during procedures like Trendelenburg surgery.
- Key Procedural History: The asserted patent claims priority to a 2012 provisional application and is the result of a chain of continuation and continuation-in-part applications. The patent is also subject to a terminal disclaimer.
Case Timeline
| Date | Event |
|---|---|
| 2012-06-01 | ’876 Patent Priority Date (Provisional Application No. 61/654,339) |
| Sometime in 2012 | Defendant Prime Medical LLC allegedly formed |
| 2015-10-20 | U.S. Patent No. 9,161,876 Issues |
| 2016-10-21 | Plaintiff's counsel allegedly last visited Defendant's website |
| 2016-11-10 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,161,876 - "Method of Securing a Patient Onto an Operating Table When the Patient is in the Trendelenburg Position and Apparatus Therefor Including a Kit"
- Patent Identification: U.S. Patent No. 9161876, “Method of Securing a Patient Onto an Operating Table When the Patient is in the Trendelenburg Position and Apparatus Therefor Including a Kit,” issued October 20, 2015.
The Invention Explained
- Problem Addressed: The patent describes the challenge of securing a patient on an operating table when the table is tilted, such as in the Trendelenburg position. This incline creates a risk of the patient sliding, which can disrupt the surgery, and can cause nerve or tissue damage from concentrated pressure points (’876 Patent, col. 1:40-54, col. 2:1-9).
- The Patented Solution: The invention is a patient support pad made of a “viscoelastic foam” that deforms under the patient’s weight to create a conforming impression (’876 Patent, Fig. 5; col. 2:64-65). This impression, combined with the foam’s frictional properties and slow rate of recovery, generates holding forces that secure the patient against sliding, while also distributing pressure evenly to prevent injury (’876 Patent, col. 5:1-14, col. 17:22-38).
- Technical Importance: This approach allows for secure patient positioning in steeply inclined surgical positions, which can be advantageous for certain procedures, while mitigating the risk of common complications like brachial plexopathy (nerve damage) (’876 Patent, col. 2:9-14).
Key Claims at a Glance
- The complaint asserts independent claims 1 (an apparatus claim) and 17 (a method claim).
- Independent Claim 1 requires, in essence:
- A pad arrangement for a tiltable medical table, long enough to support a patient’s torso.
- The pad comprises a “deformable material.”
- The material deforms under the patient’s torso to form a “depression.”
- The depression provides a “substantial portion” of the forces that hold the patient in place when tilted.
- The material has a “rate of recovery sufficiently slow” to maintain the depression.
- The pad is configured to “distribute pressure forces” to minimize injury.
- Independent Claim 17 recites a method of using a pad with these properties to position and hold a patient on a tilting medical table.
- The complaint reserves the right to assert dependent claims, specifically mentioning claims 3 and 18 (Compl. ¶14, 16-17).
III. The Accused Instrumentality
Product Identification
- The accused products are the “STP100,” “STP100 S,” “STP200/ S,” and “STP150 S,” each identified as a “foam Trendelenburg O.R. Table Pad” (Compl. ¶¶15, 18, 21, 24).
Functionality and Market Context
- The complaint alleges these are “knockoff patient positioning system[s]” sold for the same purpose as Plaintiffs’ commercial product—to secure patients during surgical procedures involving inclined positions (Compl. ¶14). The products are allegedly marketed to hospitals at a significantly lower price than Plaintiffs’ product (Compl. ¶14). The complaint alleges the products can be seen on Defendant’s website but provides no specific technical details on their material composition or performance characteristics (Compl. ¶27).
IV. Analysis of Infringement Allegations
The complaint does not provide a detailed, element-by-element infringement analysis. Instead, it makes general allegations that the accused products read on the asserted claims.
No probative visual evidence provided in complaint.
- ’876 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A patient support arrangement configured to support a body of a patient... comprising: a pad arrangement configured to be placed on a tiltable medical procedure table; | Defendant sells, offers for sale, and imports the accused products, which are identified as foam Trendelenburg O.R. table pads. | ¶¶15, 16 | col. 17:9-15 |
| said pad arrangement comprising a deformable material; | The accused products are described as being made of foam. | ¶15 | col. 17:21 |
| said deformable material being configured to be deformable by the torso of a patient to form a depression in said pad arrangement, which depression provides a substantial portion of holding forces which hold a patient... | The complaint alleges the accused products are sold for the same purpose as the patented invention and read on every element of the claim, implying they function by forming a depression that holds the patient. | ¶¶14, 16 | col. 17:22-38 |
| said deformable material has a rate of recovery sufficiently slow to maintain a depression in said pad arrangement for a desired period of time... | The complaint makes a blanket allegation that the accused products meet every limitation of the asserted claims. | ¶16 | col. 17:39-42 |
| said pad arrangement is configured to distribute pressure forces across a portion of the torso of a patient... sufficient to minimize injuries... | The complaint alleges the accused products serve the same purpose as the patented invention, which includes minimizing injury from pressure. | ¶¶14, 16 | col. 17:43-49 |
- Identified Points of Contention:
- Scope Questions: A central dispute may arise over whether the accused products’ foam constitutes the specific “deformable material” of the claims. The complaint’s allegations raise the question of whether the accused pads create a “depression” that provides a “substantial portion” of the holding force, as distinct from merely providing surface friction.
- Technical Questions: The complaint does not provide evidence that the accused foam pads exhibit a “sufficiently slow” rate of recovery as required by claim 1. The infringement analysis will depend on whether discovery and expert testing can demonstrate that the accused products meet the functional and material property limitations recited in the patent.
V. Key Claim Terms for Construction
The Term: "deformable material"
Context and Importance: The definition of this term is central, as it will determine whether the claims cover a broad category of foam pads or are limited to materials with specific viscoelastic properties. Practitioners may focus on this term because it distinguishes the invention from a generic piece of foam.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: Plaintiffs may argue that the claim language itself does not explicitly require “viscoelastic” properties, only that the material be “deformable” in the manner claimed (’876 Patent, col. 17:21).
- Evidence for a Narrower Interpretation: The specification repeatedly and extensively discusses the invention in the context of “viscoelastic foam” and details numerous specific physical parameters, such as ball rebound, compression set, and indentation force deflection, suggesting these are essential characteristics of the invention (’876 Patent, col. 2:5; col. 2:26-3:34).
The Term: "a depression... which provides a substantial portion of holding forces"
Context and Importance: This limitation is critical for distinguishing the claimed invention from a simple high-friction mat. The dispute will likely center on how much of the holding force must come from the physical cavity itself versus surface friction.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: Plaintiffs might contend that any measurable holding contribution from the depression, beyond mere friction, is “substantial.”
- Evidence for a Narrower Interpretation: The patent states that the “impression on the Trendelenburg pad may provide the primary holding for holding a person on the operating table,” suggesting the depression must be the main, not a minor, source of the holding force (’876 Patent, col. 5:50-53).
VI. Other Allegations
- Indirect Infringement: The complaint alleges inducement of infringement of the method claims (17 and 18) by asserting that Defendant “intends” its products to be used in an infringing manner and “markets” them for such use (Compl. ¶¶17, 30, 32, 34, 36). A general allegation of contributory infringement is also made (Compl. ¶37).
- Willful Infringement: The complaint alleges that Defendant’s infringement is “willful and wanton” (Compl. ¶39). The pleading does not specify whether this is based on pre- or post-suit knowledge, but it does allege that Defendant’s products are “knockoff[s]” that are “Capitalizing on the success of the patented invention,” which may be intended to support an inference of copying (Compl. ¶14).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of claim scope: will the term "deformable material" be construed narrowly to require the specific viscoelastic properties detailed throughout the specification, or can it be read more broadly to encompass the accused “foam” pads, whose specific properties are not detailed in the complaint?
- A key evidentiary question will be one of technical proof: can Plaintiffs produce sufficient evidence to demonstrate that the accused products actually function as claimed—specifically, by forming a load-bearing "depression" with a "sufficiently slow rate of recovery" that provides a "substantial portion" of the holding force, as opposed to merely functioning as a high-friction surface?