DCT
2:23-cv-00294
Cicas IP LLC v. Intuitive Surgical Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Cicas IP LLC (Wyoming)
- Defendant: Intuitive Surgical, Inc. (Delaware)
- Plaintiff’s Counsel: Garteiser Honea, PLLC
- Case Identification: 2:23-cv-00294, E.D. Tex., 06/22/2023
- Venue Allegations: Plaintiff alleges venue is proper in the Eastern District of Texas because Defendant maintains a regular and established place of business in the district, employing individuals in roles such as Senior Manufacturing Engineer and Clinical Sales Manager. The complaint asserts these employees conduct business for the Defendant from locations within the district.
- Core Dispute: Plaintiff alleges that Defendant’s Ion Biopsy System, a robotic-assisted surgical platform, infringes a patent related to methods for endoscopic targeting and guidance.
- Technical Context: The technology lies in the field of image-guided surgery, where pre-operative scan data is used to provide real-time navigational guidance to a surgeon during a minimally invasive endoscopic procedure.
- Key Procedural History: The patent-in-suit is expired, and Plaintiff seeks damages for past infringement. The complaint details a chain of assignments for the patent, originating with the inventor, to Stanford University, back to the inventor, to a corporate entity, and finally to the Plaintiff. Plaintiff alleges Defendant had pre-suit knowledge of the patent as early as 2013 through citations in its own patent prosecution history, and also received a direct notice letter in 2019 from Plaintiff’s predecessor-in-interest regarding potential licensing.
Case Timeline
| Date | Event |
|---|---|
| 2000-09-23 | '794 Patent Priority Date |
| 2001-09-20 | '794 Patent Application Filing Date |
| 2001-11-06 | '794 Patent assigned to Stanford University |
| 2005-02-01 | '794 Patent Issue Date |
| 2007-10-31 | '794 Patent assigned back to inventor Ramin Shahidi |
| 2010-04-08 | '794 Patent assigned to California Institute of Computer Assisted Surgery, Inc. |
| 2013-01-29 | Defendant's U.S. Patent No. 8,361,090 issues, allegedly citing the '794 Patent |
| 2019-11-21 | Plaintiff's predecessor allegedly sends notice letter to Defendant |
| 2023-06-22 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 6,850,794 - “Endoscopic Targeting Method and System”
- Patent Identification: 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 endoscopes, which typically only allow for visualization of surface structures. This makes it challenging to locate and access a target site, such as a tumor, that may be hidden beneath the visible surface, as the surgeon lacks information on the required direction and distance to advance the surgical tool ('794 Patent, col. 1:23-29).
- The Patented Solution: The invention addresses this by creating a system that combines pre-operative volumetric scan data (e.g., a CT scan) with real-time tracking of the endoscopic tool's position and orientation. A computer processes this information to project graphical "indicia" onto the surgeon's video display, indicating the location of the subsurface target relative to the tool's current position, thereby guiding the surgeon toward it ('794 Patent, Abstract; col. 2:13-28). This is illustrated in the patent's system diagram, Figure 1, which shows a computer (36) integrating data from a scan-data file (38) and a sensor (26) tracking the endoscopic tool (16) to generate a guided image on a display (40).
- Technical Importance: This method of fusing pre-operative data with live instrument tracking provides a form of augmented reality, aiming to enhance the precision and effectiveness of minimally invasive surgical procedures ('794 Patent, col. 1:30-33).
Key Claims at a Glance
- The complaint asserts independent claim 1 ('794 Patent, col. 6:22-50; Compl. ¶30).
- The essential elements of independent claim 1 are:
- A system comprising a data file with volumetric scan data of a patient region that includes 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.
- A computer connected to the data file and display.
- The computer determines the tool's position/orientation, identifies the target site's coordinates from the scan data, and projects indicia on the video image.
- The indicia indicate (a) the direction to the target if it is outside the image, and (b) the lateral position and distance to the target if it is within the patient structure imaged.
- The complaint reserves the right to assert additional claims (Compl. ¶30).
III. The Accused Instrumentality
Product Identification
- The complaint identifies the “Ion Biopsy System” or “Ion endoluminal system” as the Accused Instrumentality (Compl. ¶29).
Functionality and Market Context
- The Ion system is described as a robotic-assisted platform for minimally invasive lung biopsy (Compl. ¶32). The complaint alleges it uses an "ultrathin, ultramaneuverable catheter" with a "fiber-optic shape sensor" to measure the catheter's shape and provide "real-time precise location and shape information" (Compl. ¶12). This system integrates with pre-procedure CT scans to create a planned path to a target lesion. The complaint includes a screenshot from a promotional video showing the system's user interface, which displays a "DISTANCE TO TARGET" value and a split screen with a virtual map of the airways alongside a live video feed from the catheter's camera (Compl. p. 12, ¶32). This interface allegedly offers guidance to manage differences between pre-procedure CT images and intra-procedural imaging (Compl. p. 11, ¶32).
IV. Analysis of Infringement Allegations
'794 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a data file containing volumetric scan data of a region of the patient that includes the target site | The Ion system uses a 3D scan performed by an imaging system (e.g., Siemens Cios Spin) which is sent to the Ion system; this constitutes a data file with volumetric scan data. | ¶31, ¶32 | col. 6:24-26 |
| a display device | The Ion system includes a console with a touchscreen display. A screenshot shows the user interface on a large monitor. | ¶31, ¶32 | col. 6:27 |
| a movable imagining tool for producing on the display device, an image of visible structure seen by the tool, where the position and/or orientation of the tool is tracked with respect to the patient coordinate system | The Ion system's "ultrathin robotic catheter" has a "vision probe" (camera) that provides a real-time video feed. A "fiber-optic shape sensor" allegedly measures the catheter's shape and position. | ¶12, ¶13, ¶31 | col. 6:28-32 |
| a computer operatively connected to data file and display screen for (i) determining the position and/or orientation of the tool in a patient coordinate system, (ii) identifying the scan-data coordinates of the target site... | The Ion system's computer integrates the 3D scan data and uses the catheter's shape-sensing technology to determine its position relative to the pre-planned path and target derived from the scan. | ¶12, ¶31 | col. 6:34-40 |
| and (iii) projecting on the video image on the display device, indicia that indicate... (b) the lateral position of the target site... and the distance between the tool and the target site... | The Ion system's display shows a "DISTANCE TO TARGET" value and a "compass feature" that "translates the direction of the catheter to anatomical directions on the screen in real time." A screenshot shows a split-screen view with a virtual airway path and the live video feed. | ¶12, ¶13, ¶15 | col. 6:40-50 |
- Identified Points of Contention:
- Scope Questions: A central question may be the interpretation of "projecting on the video image." The complaint provides visuals, such as one showing a split-screen display with a virtual navigation map next to the live video feed (Compl. p. 14, ¶32). The court may need to decide whether providing guidance in an adjacent panel constitutes "projecting on the video image" as required by the claim, or if the claim requires a direct overlay of indicia onto the live video itself.
- Technical Questions: The claim requires indicia that indicate both "lateral position" and "distance." The complaint shows the accused system displays a numerical "DISTANCE TO TARGET" (Compl. p. 15, ¶32). An evidentiary question will be whether the combination of this numerical value and the system's "compass feature" and virtual map (Compl. p. 13, ¶32) provides information corresponding to the "lateral position" of the target in the manner claimed by the patent.
V. Key Claim Terms for Construction
The Term: "projecting on the video image... indicia"
Context and Importance: This term is critical because the method of displaying guidance to the surgeon is a core element of the invention. The infringement analysis will depend on whether the accused Ion system's split-screen interface, which places a virtual map alongside the live video, falls within the scope of this term.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent specification describes a goal of allowing the surgeon to "visualize target position and distance in both endoscopic and virtual images reconstructed from the scan data" ('794 Patent, col. 6:12-15). This language might support an argument that the precise method of presenting the combined information is less important than the act of doing so.
- Evidence for a Narrower Interpretation: The claim language "projecting on the video image" and the patent's Figures 5A-5C, which explicitly depict graphical arrows (82) superimposed directly onto the "endoscopic image" (80a), could support a narrower construction requiring a literal overlay. The abstract similarly states "project on the video image... indicia" ('794 Patent, Abstract).
The Term: "indicia that indicate... the lateral position of the target site"
Context and Importance: Practitioners may focus on this term because the nature of the guidance information is specifically defined. The accused system provides a numerical distance and a virtual map; whether this combination satisfies the "lateral position" requirement will be a key point of dispute.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent's overall purpose is to tell a surgeon "in which direction, and what distance to advance the tool" ('794 Patent, col. 1:24-26). One could argue that any graphical system achieving this goal meets the spirit of the invention, and the "compass feature" alleged in the complaint serves this purpose (Compl. p. 13, ¶32).
- Evidence for a Narrower Interpretation: The specification describes a specific embodiment where the indicia "define a circular area" whose "center... correspond[s] to the x,y coordinates of the target site" ('794 Patent, col. 5:25-32). This detailed description of a specific graphical representation for lateral position could be used to argue for a narrower definition that the accused system's interface does not meet.
VI. Other Allegations
- Indirect Infringement: The complaint alleges induced infringement based on Defendant’s creation and distribution of promotional and instructional materials, including videos and manuals, that allegedly instruct customers on how to use the Ion system in an infringing manner (Compl. ¶36). It also alleges contributory infringement, stating that components of the Ion system are not staple articles of commerce and are especially adapted for infringing use (Compl. ¶37).
- Willful Infringement: The willfulness claim is based on alleged pre-suit knowledge of the '794 Patent. The complaint alleges two independent sources of notice: first, that Defendant cited the '794 Patent during the prosecution of its own U.S. Patent No. 8,361,090, with alleged knowledge dating back to at least 2013 (Compl. ¶38); and second, that Defendant received a notice letter on November 21, 2019 from Plaintiff's predecessor-in-interest, which allegedly led to draft license and asset purchase agreements that were never executed (Compl. ¶39).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of claim construction: can the phrase "projecting on the video image" be construed broadly enough to read on the accused Ion system's user interface, which presents a virtual guidance map in a separate panel alongside the live endoscopic video feed, or does it strictly require a direct graphical overlay?
- A second central question will be one of infringement: does the combination of the accused system's numerical distance display, "compass feature," and virtual map provide the specific guidance information—namely the "lateral position" and "distance"—as required by the specific limitations of Claim 1, or is there a functional mismatch between what the patent claims and what the accused system displays?
- Finally, a key issue for damages will be willfulness: given the strong allegations of pre-suit knowledge from two distinct sources—citation in Defendant's own patent prosecution history and a direct notice letter followed by licensing discussions—the court will likely focus on whether any infringement was committed with the knowledge and intent required for an enhancement of damages.