Cicas IP LLC v. Meta Dynamic Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Cicas IP LLC (Wyoming)
  • Defendant: Meta Dynamic, Inc. (California) and Med-Surgical Services, Inc. (California)
  • Plaintiff’s Counsel: Garteiser Honea, PLLC
• Case Identification: 2:24-cv-00665, E.D. Tex., 08/13/2024
• Venue Allegations: Plaintiff alleges venue is proper because Defendants maintain a "regular and established business presence" in the district through employees who live and work there, and through an agency relationship where Meta Dynamic, Inc. acts as an agent for Med-Surgical Services, Inc. within the district.
• Core Dispute: Plaintiff alleges that Defendants’ CBYON System for image-guided surgery infringes two patents related to endoscopic targeting and the calibration of such surgical imaging systems.
• Technical Context: The lawsuit concerns the field of image-guided surgery, where pre-operative diagnostic scans are used to create a virtual map that is overlaid onto a surgeon's real-time view to improve navigational accuracy during minimally invasive procedures.
• Key Procedural History: The patents-in-suit were originally assigned to Stanford University. Plaintiff alleges that a principal of the Defendants was head of product development for the accused CBYON System, which was developed in collaboration with Stanford, and thus had knowledge of the asserted patents since the early 2000s. The asserted patents are expired, and Plaintiff seeks damages for past infringement.

Case Timeline

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

U.S. Patent No. 6,850,794 - “Endoscopic Targeting Method and System,” issued Feb. 1, 2005 (’794 Patent)

The Invention Explained

• Problem Addressed: The patent addresses the difficulty surgeons face when using endoscopic tools, as they can only see surface structures and cannot easily locate or access a target site that may be hidden from direct view (Compl. ¶30; ’794 Patent, col. 1:24-29).
• The Patented Solution: The invention is a system that tracks the position of a movable imaging tool (e.g., an endoscope) relative to a patient. It uses pre-operative volumetric scan data (like a CT scan) to identify a target's coordinates and then projects graphical "indicia" onto the live video feed from the tool. These indicia guide the surgeon by showing the lateral position of the hidden target relative to the visible patient structure on the display. (Compl. ¶32-33; ’794 Patent, col. 2:35-50). The general architecture of this system is depicted in the complaint, which reproduces Figure 1 from the patent (Compl. ¶27).
• Technical Importance: This technology allows for the fusion of pre-operative anatomical data with the real-time surgical field, effectively giving surgeons a way to "see through" tissue and navigate to internal targets with greater precision during minimally invasive surgery (Compl. ¶31; ’794 Patent, Abstract).

Key Claims at a Glance

• The complaint asserts at least independent claim 1 (Compl. ¶46).
• Essential elements of independent claim 1 include:
  • A data file containing volumetric scan data of a patient region that includes a target site.
  • A display device and a movable imaging tool that produces an image of visible patient structure on the display.
  • A system for tracking the position and/or orientation of the tool relative to the patient.
  • A computer that (i) determines the tool's position/orientation, (ii) identifies the target site's coordinates from the scan data, and (iii) projects indicia onto the video image that indicate the direction and lateral position of the target site.
• The complaint reserves the right to assert additional claims (Compl. ¶43).

U.S. Patent No. 6,511,418 - “Apparatus and Method for Calibrating and Endoscope,” issued Jan. 28, 2003 (’418 Patent)

The Invention Explained

• Problem Addressed: The accuracy of image-guided surgery systems depends on precise calibration. The patent notes that multiple small errors in system parameters (such as the endoscope's lens position or field of view) can accumulate, causing a significant mismatch between the virtual overlay and the patient's actual anatomy, which compromises surgical quality (Compl. ¶38; ’418 Patent, col. 2:1-5).
• The Patented Solution: The patent describes a calibration apparatus and method. The apparatus includes a physical "holder" with a known three-dimensional object or pattern. An endoscope is placed in the holder, and a sensing device tracks the positions of both the endoscope and the holder. A processor then compares the endoscope's live image of the pattern to a computer model of that pattern. Based on the differences, it calculates the endoscope's precise lens coordinates, field of view, and lens distortion, thereby calibrating the system. (Compl. ¶39; ’418 Patent, Abstract). The complaint reproduces Figure 6 from the patent to illustrate this apparatus (Compl. ¶36).
• Technical Importance: This method of calibration provides a way to ensure that the virtual guidance information presented to a surgeon accurately corresponds to the physical surgical environment, a critical factor for the safety and efficacy of image-guided procedures (’418 Patent, col. 1:54-67).

Key Claims at a Glance

• The complaint asserts at least independent claim 1 (Compl. ¶55).
• Essential elements of independent claim 1 include:
  • A plurality of tracking elements mounted on the endoscope's shaft.
  • A holder with a guide for receiving the endoscope, which positions the lens to view a three-dimensional object or pattern in the holder.
  • Positional elements mounted on the holder at known positions.
  • A sensing device for sensing all tracking and positional elements.
  • A processor that uses the sensed positions to place the endoscope and holder in a common reference frame, project video and model images, and use the comparison to calculate lens coordinates and field of view.
• The complaint reserves the right to assert additional claims (Compl. ¶43).

III. The Accused Instrumentality

Product Identification

The "CBYON System" (Compl. ¶42).

Functionality and Market Context

The complaint alleges the CBYON System is an "intraoperative image enhanced targeting" system used for image-guided surgery (Compl. ¶42). The complaint further alleges that the system was developed in collaboration with Stanford University and is marketed to hospitals and surgery centers (Compl. ¶14, ¶49). A screenshot from a Med-Surgical Services webpage describes the "CBYON Eclipse" as a way to "Elevate your surgical experience" (Compl. ¶7).

IV. Analysis of Infringement Allegations

The complaint references claim chart exhibits that were not included with the filed pleading (Compl. ¶43). Accordingly, the infringement allegations are summarized based on the complaint's narrative.

The complaint alleges that the CBYON System infringes because it utilizes the "patented intraoperative imaging system's methods and systems, and the patented apparatus and methods of calibrating the intraoperative imaging system" (Compl. ¶42). The infringement theory is that the CBYON System, by its nature as an image-guided surgery platform, must necessarily practice the inventions of the patents-in-suit.

For the ’794 Patent, the theory suggests that the CBYON System performs the functions of the claimed system, as generally depicted in the patent's Figure 1 (Compl. ¶27, Fig. 1). This includes using pre-operative scan data, tracking a surgical tool, and displaying targeting information to a surgeon.

For the ’418 Patent, the theory suggests that to function accurately, the CBYON System must be calibrated using a method and apparatus that meets the limitations of the asserted claims, as generally depicted in the patent's Figure 6 (Compl. ¶36, Fig. 6).

Identified Points of Contention

• Evidentiary Questions: The complaint does not provide specific evidence detailing how the CBYON System operates or is calibrated. A central issue will be whether discovery reveals evidence that the CBYON System in fact performs each element of the asserted claims. For instance, what is the precise nature of the visual guidance provided to the surgeon, and does it meet the "indicia" limitation of the ’794 Patent? Likewise, what specific apparatus and process are used to calibrate the CBYON System, and do they meet the "holder" and "three-dimensional object" limitations of the ’418 Patent?
• Technical Questions: A key technical question will be the degree of correspondence between the patented systems and the accused instrumentality. For example, does the accused CBYON system's calibration process, if one exists, rely on a physical fixture as described in the ’418 Patent, or does it employ an alternative technique (e.g., a purely software-based or non-contact method)?

V. Key Claim Terms for Construction

’794 Patent

The Term:

"indicia that indicate the lateral position of the target site" (Claim 1)

Context and Importance:

This term defines the core output of the claimed system. The dispute will likely focus on what form and function the "indicia" must have to meet this limitation. Practitioners may focus on this term because the complaint provides no information on what the CBYON System actually displays to the surgeon.

Intrinsic Evidence for Interpretation:

• Evidence for a Broader Interpretation: The claim language itself does not restrict the "indicia" to any particular graphical form, which may support an interpretation covering any visual cue that conveys the target's lateral position.
• Evidence for a Narrower Interpretation: The specification describes and illustrates specific embodiments, such as "four arrows... that define a circular area" whose diameter changes with distance to the target (’794 Patent, col. 5:25-41, Figs. 5A-5C). A party could argue these embodiments narrow the scope of "indicia" to a specific type of graphical targeting reticle.

’418 Patent

The Term:

"a holder having a guide in which the endoscope can be received" (Claim 1)

Context and Importance:

This term is critical as it defines the physical apparatus at the heart of the claimed calibration method. The infringement analysis may turn on whether the CBYON System's calibration procedure uses a physical device that can be characterized as a "holder" with a "guide."

Intrinsic Evidence for Interpretation:

• Evidence for a Broader Interpretation: A party could argue that any structure that serves to align or orient the endoscope relative to a calibration pattern meets the plain meaning of a "holder" with a "guide."
• Evidence for a Narrower Interpretation: The specification describes a specific structure, such as a "channel" or "bore" that "slidably receiv[es]" the endoscope shaft, and a "stop for arresting the axial movement" (’418 Patent, col. 2:50-57, col. 6:35-47). This language may support a narrower construction limited to a device that physically constrains the endoscope.

VI. Other Allegations

Indirect Infringement

The complaint alleges active inducement, stating that Defendants provide materials such as "brochures, manuals, [and] instructional documents" that instruct end-users (e.g., surgeons) to use the CBYON System in an infringing manner (Compl. ¶47, ¶56). It also pleads contributory infringement, alleging Defendants provide material parts of the invention that are not staple articles of commerce and are especially adapted for infringing use (Compl. ¶48, ¶57).

Willful Infringement

The complaint alleges that Defendants had actual notice of the patents-in-suit "as early as the early 2000s." The basis for this allegation is that a current executive of the Defendants was previously the "Vice President of Engineering and head of product development for the CBYON Navigation System developed in collaboration with Stanford University," the original patent assignee (Compl. ¶49, ¶58).

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

1. Evidentiary Proof of Infringement: Given the absence of detailed infringement contentions in the complaint, a central issue for the court will be a factual one: does the evidence obtained in discovery demonstrate that the accused CBYON System actually performs the specific functions and includes the structural elements required by each limitation of the asserted claims?
2. Scope of Pre-Suit Knowledge: The allegations of willfulness will depend on a key factual question: can Plaintiff establish that Defendants, through their executives and the alleged collaboration with Stanford University, possessed knowledge of the specific patents-in-suit prior to this litigation, and if so, what was their state of mind regarding potential infringement?
3. Claim Construction and Technical Mismatch: The case may turn on a question of "definitional scope", particularly for the ’418 Patent: can the term "holder having a guide", which is described in the patent as a specific physical apparatus, be construed to read on the method and equipment—if any—used to calibrate the accused CBYON System, or is there a fundamental mismatch in technology?