Thompson v. Medtronic Public Ltd Co

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Darrell K. Thompson; William T. Holt (deceased); Leatha J. Holt (next of kin); and NewAir Manufacturing, LLC (Tennessee)
  • Defendant: Medtronic, Inc.; Medtronic Public Limited Company; Medtronic USA, Inc.; Stryker Corporation; Physio-Control International, Inc.; Physio-Control, Inc.; Physio-Control Manufacturing, Inc.; Jolife AB; and Bain Capital, Inc.
  • Plaintiff’s Counsel: Tennyson & Wiggington PLLC
• Case Identification: 2:19-cv-02038, W.D. Tenn., 01/11/2019
• Venue Allegations: Venue is alleged to be proper because Defendants have committed acts of infringement in the state and district, are subject to personal jurisdiction, and a substantial part of the events giving rise to the claim occurred in the district.
• Core Dispute: Plaintiffs allege that Defendants' mechanical resuscitator devices, particularly when used with the LUCAS Stabilization Strap, infringe a patent related to a resuscitator that combines chest compression with a mechanism for maintaining an open airway.
• Technical Context: The lawsuit concerns mechanical resuscitators used to perform cardiopulmonary resuscitation (CPR) on patients experiencing cardiac arrest.
• Key Procedural History: The complaint alleges an extensive pre-suit history, including communications between the inventor and Medtronic representatives beginning in 2002 regarding the technology. The complaint also references a prior state court action filed by Plaintiffs against Medtronic in November 2016 for Breach of Contract, Misappropriation of Trade Secrets, and Unjust Enrichment. These allegations of long-standing knowledge form the basis for Plaintiffs' claims of willful infringement.

Case Timeline

Date	Event
2002-03-22	U.S. Patent No. 6,988,499 Priority Date
2002-03-23	Inventor allegedly approached by Medtronic representative about the invention
2002-10-22	Inventor allegedly mailed non-disclosure agreement to Medtronic
2003-09-23	Application for the ’499 patent published
2006-01-24	U.S. Patent No. 6,988,499 Issued
2011-04-25	Physio-Control announced acquisition of Jolife AB
2011-11-17	Bain Capital announced acquisition of Physio-Control from Medtronic
2012-11-28	Inventor allegedly confirmed patent issuance to Medtronic
2016-02-16	Stryker announced acquisition of Physio-Control from Bain Capital
2016-11-30	Prior state court complaint filed against Medtronic
2019-01-11	Complaint Filing Date

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

U.S. Patent No. 6,988,499 - “Mechanical Resuscitator”

• Patent Identification: U.S. Patent No. 6,988,499, “Mechanical Resuscitator,” issued January 24, 2006 (the “’499 Patent”).

The Invention Explained

• Problem Addressed: The complaint suggests that prior mechanical resuscitators had certain drawbacks, including the need for additional means to position a patient's neck to maintain an open airway and to ensure the device did not shift during use (Compl. ¶29). The patent itself is directed toward improving resuscitators to more effectively combine the delivery of gas to a patient's lungs with the simultaneous application of chest compressions (’499 Patent, col. 2:61-68).
• The Patented Solution: The invention is a resuscitator that integrates a pump for ventilation with a "sternum means" for applying pressure to the chest (’499 Patent, Abstract). The key improvement, recited in the asserted dependent claim, is the addition of "neck positioning means" designed to support the patient's neck, limit head movement, and keep the head tilted to maintain an open airway during resuscitation (’499 Patent, col. 6:6-16). This integrated approach aims to allow a single rescuer to perform both ventilation and compressions with a single device while ensuring the airway remains patent.
• Technical Importance: The invention purports to provide a single, integrated device that addresses the critical and simultaneous needs of chest compression, ventilation, and airway management during CPR (Compl. ¶26).

Key Claims at a Glance

• The complaint asserts dependent Claim 2, which incorporates independent Claim 1 (Compl. ¶77).
• Independent Claim 1 requires:
  • A pump with movable means for forcing gas out and drawing gas in.
  • A base member for positioning over the patient's sternum, with a passageway for gas.
  • Coupling means (e.g., a hollow tube) to connect the base member's passageway to the patient's lungs.
  • Seal means to form a gas-tight seal between the pump and the base member.
  • An improvement comprising a "sternum means" attached to the base member, consisting of a "ball-like member" for applying pressure to the sternum.
• Dependent Claim 2 adds the further improvement of:
  • "neck positioning means for maintaining the patient's airway open during resuscitation."
• The complaint reserves the right to assert additional claims (Compl. ¶73).

III. The Accused Instrumentality

Product Identification

• The "LUCAS Stabilization Strap" and associated mechanical resuscitators manufactured, sold, and distributed by the Defendants (Compl. ¶70, ¶82).

Functionality and Market Context

• The complaint alleges that Defendants' mechanical resuscitators perform the functions of Claim 1 of the ’499 Patent, namely including a pump to force gas into a patient's lungs and a "ball-like member" to apply pressure to the sternum (Compl. ¶81-82). The infringement allegation for Claim 2 is based on the addition of the "LUCAS Stabilization Strap," which the complaint describes as a "neck strap which attaches to the device and loops underneath the neck of a patient, forcing their head to tilt such that the airway is left unobstructed" (Compl. ¶81). The combination of the resuscitator and the strap is alleged to infringe Claim 2 (Compl. ¶82).

IV. Analysis of Infringement Allegations

No probative visual evidence provided in complaint.

’499 Patent Infringement Allegations

Claim Element (from Independent Claim 1 and Dependent Claim 2)	Alleged Infringing Functionality	Complaint Citation	Patent Citation
An improved resuscitator including a pump including movable means movable between a first position and a second position for forcing gas from the pump...	Defendants' devices are alleged to be mechanical resuscitators that include a pump which can alternate between two positions to force gas into a patient's lungs (Compl. ¶81).	¶81	col. 4:26-31
a base member for positioning over the sternum area of the patient's chest...	The accused resuscitators are placed on the patient's chest and include a member that is positioned over the sternum (Compl. ¶81).	¶81	col. 4:57-62
coupling means for allowing gas to pass from the passageway of the base member to the patient's lungs...	The accused devices are alleged to deliver air to the patient's lungs, which implies a coupling mechanism (Compl. ¶81).	¶81	col. 6:41-44
seal means for forming a gas-tight seal between the opening of the pump and the first end of the passageway of the base member...	This function is implicitly alleged as part of the device's operation to force gas into the patient's lungs (Compl. ¶81).	¶81	col. 5:6-9
wherein the improvement comprises: sternum means attached to the base member...said sternum means consisting of a ball-like member...	The accused devices are alleged to include a "ball-like member which, when placed substantially upon the sternum of a patient, uses the alternation of the pump to apply direct pressure to the patient's sternum to simulate cardiopulmonary resuscitation" (Compl. ¶81).	¶81	col. 6:57-60
(from Claim 2) The improved resuscitator of claim 1 wherein the improvement further includes; neck positioning means for maintaining the patient's airway open during resuscitation.	The accused "LUCAS Stabilization Strap" is alleged to be a "neck strap which attaches to the device and loops underneath the neck of a patient, forcing their head to tilt such that the airway is left unobstructed and allows the device to deliver air to the patient's lungs" (Compl. ¶81).	¶81, ¶82	col. 6:6-9

• Identified Points of Contention:
  • Scope Questions: The central infringement dispute may turn on the scope of the term "neck positioning means." The complaint alleges a "neck strap" meets this limitation (Compl. ¶81). The court will have to determine whether this term, as described in the patent, is broad enough to read on a strap, or if it is limited to a structure more closely aligned with the embodiment described in the specification.
  • Technical Questions: A key technical question is whether the accused "LUCAS Stabilization Strap" is structurally and functionally equivalent to the "neck positioning means" disclosed in the ’499 Patent. The patent describes this element as a "firm pillow-like member 63 secured to the base member... by string means 65" (’499 Patent, col. 6:9-11). The degree of structural difference between a "pillow-like member" and a "strap" will likely be a primary focus of the infringement analysis.

V. Key Claim Terms for Construction

• The Term: "neck positioning means" (Claim 2)
• Context and Importance: This term is the sole additional element in the asserted dependent claim and is the basis for alleging infringement by the LUCAS Stabilization Strap (Compl. ¶82). The entire infringement case for Claim 2, and the associated damages, hinges on whether the accused strap falls within the legal scope of this term. Practitioners may focus on this term because of the apparent structural difference between the accused "strap" and the patent's described "pillow-like member."
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: Plaintiffs may argue that the claim uses functional language—"means for maintaining the patient's airway open"—and should therefore not be limited to the specific structure disclosed. The patent states the purpose is to "keep the patient's head properly tilted and airway open" (’499 Patent, col. 6:14-15), a function a strap could arguably perform.
  • Evidence for a Narrower Interpretation: Defendants may argue that the specification provides a specific and limiting definition. The patent states the "neck positioning means 61 may consist of a firm pillow-like member 63" used to "support the patient's neck" (’499 Patent, col. 6:9-13). This language, combined with the depiction in Figures 1 and 3, may be used to argue that the scope of the term is limited to a supportive, pillow-like structure and does not extend to a simple strap.

VI. Other Allegations

• Indirect Infringement: The complaint alleges induced infringement, stating that Defendants instruct manufacturers, customers, and users to combine and use the resuscitator and the LUCAS Stabilization Strap in an infringing manner (Compl. ¶88). It specifically alleges that parent corporations like Medtronic and Stryker "instructed the development, distribution, sale, and offer for sale of the LUCAS Stabilization Strap" (Compl. ¶89-¶90).
• Contributory Infringement: The complaint alleges that the LUCAS Stabilization Strap is a component offered for sale and sold by Defendants with the knowledge that it is "especially made or adapted for use in the infringement" and is not a "staple article or commodity of commerce suitable for substantial noninfringing use" (Compl. ¶96-¶97).
• Willful Infringement: The complaint makes extensive allegations to support willfulness. It claims Defendants had knowledge of the pending patent application as early as 2002 and of the issued patent since at least 2012, based on direct communications with the inventor (Compl. ¶65). It further alleges knowledge based on a prior state court lawsuit filed in 2016 (Compl. ¶65, ¶66).

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

• A core issue will be one of definitional scope and claim construction: can the term "neck positioning means," which the patent specification describes as a "firm pillow-like member," be construed to cover the accused "LUCAS Stabilization Strap"? The viability of the infringement allegation for Claim 2 depends almost entirely on the answer.
• A second central question involves the interplay between the patent claims and the allegations of trade secret misappropriation. The complaint constructs a detailed narrative that the accused products were developed using confidential information disclosed by the inventor to Defendants (Compl. ¶40, ¶44, ¶49). The extent to which Plaintiffs can substantiate this narrative may influence the court's view of the Defendants' knowledge and intent, which is particularly relevant to the claims of willful infringement.
• A key evidentiary question will be one of technical and structural comparison: what evidence will be presented to demonstrate that a "strap" is the structural equivalent of the "firm pillow-like member" with "string means" as disclosed in the patent? The factual outcome of this comparison will directly inform the legal question of infringement under the doctrine of equivalents, should literal infringement fail.