DCT

2:23-cv-00292

Cicas IP LLC v. Olympus Corp

Log In

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:23-cv-00292, E.D. Tex., Filing Date not specified in provided document
  • Venue Allegations: Plaintiff alleges venue is proper in the Eastern District of Texas because Defendant Olympus Corp maintains a regular and established place of business in Plano, Texas, and employs individuals within the district, including a Regional Vice President, who conduct sales, service, and support for the accused products.
  • Core Dispute: Plaintiff alleges that Defendant’s SPiN Vision/Thoracic Navigation System, used for endoscopic procedures, infringes a patent related to image-guided surgical targeting systems.
  • Technical Context: The technology at issue involves systems for image-guided surgery, which enhance a surgeon's ability to navigate an endoscopic tool to an internal target by superimposing guidance indicators onto a live video feed based on pre-operative scan data.
  • Key Procedural History: The asserted patent is expired, and Plaintiff seeks damages for past infringement. The complaint alleges that Defendant had actual notice of the patent as early as December 2013, because it was cited during the prosecution of a patent owned by Veran Medical Technologies, a company Defendant later acquired. The patent was originally assigned to Stanford University before being assigned back to the inventor and subsequently transferred to the Plaintiff's predecessor-in-interest.

Case Timeline

Date Event
2000-09-23 Priority Date for U.S. Patent No. 6,850,794
2001-11-06 '794 Patent assigned from inventor to Stanford University
2005-02-01 U.S. Patent No. 6,850,794 issues
2007-10-31 '794 Patent assigned from Stanford University back to inventor Ramin Shahidi
2010-04-08 '794 Patent assigned from inventor to California Institute of Computer Assisted Surgery, Inc.
2013-12-11 Alleged notice date to Defendant via citation in Veran Medical patent prosecution
2020-12-29 Defendant Olympus acquires Veran Medical Technologies

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

U.S. Patent No. 6,850,794 - "Endoscopic Targeting Method and System," issued February 1, 2005

The Invention Explained

  • Problem Addressed: The patent's background section describes the difficulty surgeons face when using endoscopic tools, which typically only allow for viewing surface structures. This makes it challenging to locate and access a target site, such as a tumor, that is hidden from the endoscope's direct line of sight ('794 Patent, col. 1:23-29).
  • The Patented Solution: The invention is a system that integrates pre-operative 3D scan data (e.g., from a CT scan) with a live endoscopic video feed. The system tracks the position of the endoscopic tool relative to the patient and uses a computer to project "indicia" (graphical indicators) onto the live video display. These indicia show the surgeon where the hidden target is located relative to the visible patient anatomy, indicating its direction and position ('794 Patent, Abstract; col. 1:36-52). The complaint includes a reproduction of Figure 1 from the patent, which provides a block diagram of the patented system, showing a sensor, computer, display, and endoscopic tool interacting with a patient (Compl. p. 9).
  • Technical Importance: The technology aimed to improve the accuracy and efficiency of endoscopic procedures by providing real-time, data-driven guidance to internal targets, overcoming the limitations of relying solely on the surgeon's anatomical knowledge and the restricted endoscopic view ('794 Patent, col. 1:30-34).

Key Claims at a Glance

  • The complaint asserts infringement of at least independent claim 1 (Compl. ¶36).
  • The essential elements of independent claim 1 are:
    • A data file containing volumetric scan data of a patient region including a target site.
    • A display device.
    • A movable imaging tool that produces an image of visible patient structure on the display, where the tool's position/orientation is tracked with respect to a patient coordinate system.
    • A computer connected to the data file and display that:
      • (i) determines the tool's position/orientation in the patient coordinate system;
      • (ii) identifies the target site's coordinates from the scan data; and
      • (iii) projects indicia onto the video image that indicate (a) the target's direction if it is off-screen, and (b) the target's lateral position and distance if it is on-screen.
  • The plaintiff reserves the right to assert additional claims (Compl. ¶36).

III. The Accused Instrumentality

Product Identification

  • The SPiN Vision/Thoracic Navigation System ("Accused Instrumentalities") (Compl. ¶35).

Functionality and Market Context

  • The complaint alleges the Accused Instrumentalities are endoscopic targeting systems that perform the patented methods (Compl. ¶35). These systems are alleged to include a data file with volumetric scan data, a display, a movable imaging tool, a computer, and graphical indicia that indicate the direction and position of a target site (Compl. ¶35). The complaint notes that the SPiN System was acquired by Olympus as part of its acquisition of Veran Medical Technologies for over $300 million, suggesting its commercial significance (Compl. ¶7).

IV. Analysis of Infringement Allegations

The complaint references an Exhibit 1 containing a detailed claim chart, but this exhibit was not provided with the filed complaint (Compl. ¶36). The infringement theory is therefore summarized from the body of the complaint.

The plaintiff's narrative theory alleges that the Accused Instrumentalities, particularly the SPiN System, literally infringe at least claim 1 of the '794 Patent (Compl. ¶39). The complaint posits that the SPiN system is an image-guided endoscopic targeting system that practices all elements of the asserted claim. This includes allegations that the system utilizes (a) a data file containing volumetric scan data, (b) a display, (c) a movable and tracked imaging tool, and (d) a computer that connects these components (Compl. ¶35). The computer is alleged to perform the claimed functions of determining the tool's position, identifying the target's coordinates within the scan data, and projecting indicia onto the live video display to guide a surgeon by indicating the target's direction and position (Compl. ¶35).

  • Identified Points of Contention:
    • Scope Questions: Claim 1 requires the projected "indicia" to perform a specific, two-part conditional function: indicating direction for an off-screen target and indicating lateral position and distance for an on-screen target ('794 Patent, col. 6:42-50). The infringement analysis may focus on whether the SPiN System's on-screen graphics perform this exact dual function or if there is a technical mismatch.
    • Technical Questions: The patent's preferred embodiment details an optical tracking system ('794 Patent, col. 3:8-14). While the claim is not limited to optical tracking, a key question for the court will be how the accused SPiN System achieves tracking "with respect to the patient coordinate system" and whether its method of "determining" position and "identifying" coordinates is technically and legally equivalent to what is claimed.

V. Key Claim Terms for Construction

  • The Term: "indicia"

    • Context and Importance: The definition of this term is critical, as the core of the claimed invention lies in the specific information conveyed by the graphical overlay. The infringement question will depend on whether the accused system's graphics meet the functional requirements laid out in claim 1(iii).
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The specification refers generally to "a variety of 2-D and 3-D indicia and indicia formats" that can be constructed ('794 Patent, col. 6:21-23), which may support an interpretation not strictly limited to the examples shown.
      • Evidence for a Narrower Interpretation: The patent provides specific examples, such as an arrow pointing toward an off-screen target ('794 Patent, Fig. 4) and a circular area whose size corresponds to the z-axis distance to the target ('794 Patent, Figs. 5A-5C; col. 5:25-42). A party could argue the term should be construed to require graphics that convey this specific combination of directional, positional, and distance information.

  • The Term: "tracked with respect to the patient coordinate system"

    • Context and Importance: This phrase defines the fundamental spatial relationship that enables the system to map pre-operative data onto the live surgical view. Practitioners may focus on this term because the method of establishing and maintaining this coordinate system is essential to the system's function.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The claim language itself is technology-agnostic, simply requiring the functional result of tracking relative to the patient. This could support a construction that covers any tracking modality (e.g., optical, electromagnetic) that achieves this outcome.
      • Evidence for a Narrower Interpretation: The specification's detailed description focuses heavily on a preferred embodiment using an "optical tracking system ('OTS')" with LED markers on the patient and the tool ('794 Patent, col. 3:8-14, col. 3:62-65). A party might argue that the scope of "tracking" should be understood in the context of this detailed and enabling disclosure.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges both induced and contributory infringement.
    • Inducement is alleged based on Defendant's creation and distribution of "brochures, manuals, instructional documents, and/or similar materials" that allegedly instruct users on how to operate the accused systems in an infringing manner (Compl. ¶40).
    • Contributory infringement is alleged on the basis that Defendant provides material parts of the invention that are not staple articles of commerce and are "especially made or especially adapted for use in an infringement" (Compl. ¶41).
  • Willful Infringement: The complaint alleges willful infringement based on pre-suit knowledge. The specific factual basis is the allegation that Defendant had actual notice of the '794 Patent "at least as early as the date, December 11, 2013," because the patent was cited in the patent prosecution file history of U.S. Patent No. 8,696,549, which was owned by Veran Medical Technologies, a company Defendant acquired in 2020 (Compl. ¶42).

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

  • A core issue will be one of functional specificity: Do the on-screen "indicia" in the accused SPiN System perform the specific, two-part conditional logic recited in Claim 1—showing direction for off-screen targets and lateral position plus distance for on-screen targets—or is there a fundamental mismatch in the technical function of the guidance provided?
  • A key legal question will concern willful infringement: Can pre-suit knowledge be imputed to the Defendant based on a patent citation that appeared in the prosecution history of a patent belonging to a company that the Defendant acquired years later? The court's decision on this point will significantly impact potential damages.
  • The primary evidentiary question will relate to damages: As the patent is expired, the litigation is centered on calculating a reasonable royalty for past infringement. The valuation will depend on the strength of the infringement case and the interpretation of the commercial importance of the patented technology during the infringement period.