DCT
2:25-cv-00330
Tamino Corp v. Boston Scientific Corp
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Tamino Corp. (Texas)
- Defendant: Boston Scientific Corporation (Delaware)
- Plaintiff’s Counsel: Garteiser Honea, PLLC
- Case Identification: 2:25-cv-00330, E.D. Tex., 04/02/2025
- 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, conducted both through its own employees and through authorized "Customer Agents" in Tyler, Texas. The complaint supports these allegations with references to LinkedIn profiles of Defendant's local employees and public job postings for positions in the district.
- Core Dispute: Plaintiff alleges that Defendant’s RCE Pulsed RF Electrode products, which are used for nerve stimulation, infringe a patent related to flexible catheters that incorporate temperature sensors for safety.
- Technical Context: The technology relates to medical devices for therapeutic nerve stimulation, a field focused on treating chronic pain and other neurological conditions by applying electrical energy to targeted nerve structures.
- Key Procedural History: The complaint alleges that Defendant has been on actual notice of the patent-in-suit since at least June 24, 2019, through correspondence with Cosman Medical, Inc., a company Defendant subsequently acquired. This allegation of pre-suit knowledge forms the basis for the willfulness claim.
Case Timeline
| Date | Event |
|---|---|
| 2003-05-27 | '229 Patent Priority Date |
| 2016-09-20 | '229 Patent Issue Date |
| 2019-06-24 | Alleged date Defendant received actual notice of '229 Patent |
| 2024-12-03 | Date of job posting cited as evidence for venue |
| 2025-04-02 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,446,229 - "Catheter", issued September 20, 2016
The Invention Explained
- Problem Addressed: The patent describes a need for improved devices for nerve stimulation. Prior art methods, such as using rigid needles to deliver high-frequency energy, were limited by anatomical constraints and carried a risk of injury, while existing flexible catheters were not adapted for this purpose ('229 Patent, col. 1:41-48). A key deficiency was the inability to control the thermal effects of stimulation, creating a risk of tissue damage ('229 Patent, col. 2:49-54).
- The Patented Solution: The invention is a flexible epidural catheter system designed to apply pulsed radio frequency (RF) energy to nerves, particularly in the spinal canal ('229 Patent, col. 3:6-12). Its central innovation is the integration of a temperature sensor into the distal tip of the catheter, near the electrical contacts that deliver the energy. This allows for real-time monitoring of tissue temperature, and the system includes a feedback mechanism to automatically adjust or stop the RF energy if the temperature exceeds a predefined safety threshold, such as 42°C, thereby preventing thermal damage to sensitive neural tissue ('229 Patent, Abstract; col. 6:31-40).
- Technical Importance: This integrated temperature feedback loop represented a significant safety enhancement, allowing clinicians to use higher-energy or longer-duration pulsed RF treatments with greater confidence, thereby potentially expanding the range of treatable conditions and improving therapeutic outcomes ('229 Patent, col. 6:41-57).
Key Claims at a Glance
- The complaint asserts independent claim 1.
- The essential elements of independent claim 1 include:
- A flexible epidural catheter with a mantle, a hose line for delivering medicaments, and at least first and second electrical contacts.
- A temperature sensor encased by the mantle and at least one of the contacts.
- A distal aperture for the hose line, located between the two electrical contacts.
- A temperature measuring device continuously connected to and receiving signals from the temperature sensor.
- A pulse generator in continuous communication with the temperature measuring device.
- The pulse generator is configured to provide pulsed RF current to the contacts in response to signals from the temperature measuring device and to automatically switch off or suppress the current if the measured temperature exceeds 42°C.
- The complaint reserves the right to assert additional claims (Compl. ¶ 31).
III. The Accused Instrumentality
- Product Identification: Defendant’s "RCE Pulsed RF Electrode products" (Compl. ¶ 30).
- Functionality and Market Context: The complaint identifies the accused products as "endoscopic targeting methods and systems" that utilize "patented spinal implants methods and systems" (Compl. ¶ 30). An image provided in the complaint depicts the "RCE Pulsed RF Electrode," showing a flexible probe with markings for package contents and length (Compl. ¶ 31, p. 10). The complaint alleges these products are made, used, sold, and advertised by Defendant for nerve stimulation procedures (Compl. ¶ 30). The complaint does not provide further technical detail on the operation of the accused products beyond the allegation that they meet the limitations of the asserted claims.
IV. Analysis of Infringement Allegations
The complaint alleges that the Accused Instrumentalities, as a whole, meet every limitation of claim 1 of the '229 Patent (Compl. ¶¶ 31-32, 35). While the complaint does not provide a detailed element-by-element mapping, the core of its infringement theory is summarized below.
’229 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a stimulation system for applying pulsed radio frequency energy... | The complaint alleges that Defendant’s RCE Pulsed RF Electrode products constitute infringing systems. | ¶30 | col. 13:13 |
| a flexible epidural catheter including a mantle... a hose line... at least first and second electrical contacts... a temperature sensor... a distal aperture... | The complaint alleges Defendant's products, including the RCE Pulsed RF Electrode depicted in the complaint, contain these physical components. | ¶¶30, 31 | col. 13:16-41 |
| a temperature measuring device that is continuously electrically connected to said temperature sensor... continuously measuring temperature... | The complaint alleges the accused systems include a device that performs this function. | ¶¶31, 35 | col. 13:42-47 |
| a pulse generator that is electrically connected... said pulse generator also being in continuous electrical communication with said temperature measuring device to provide pulsed, radio frequency electrical current... in response to continuous signals from said temperature measuring device... | The complaint alleges the accused systems include a pulse generator that operates in this responsive manner. | ¶¶31, 35 | col. 13:48-59 |
| and wherein the pulse generator is configured to automatically switch off or temporarily suppress the pulsed radio frequency electrical current in response to the temperature measuring device measuring a temperature that exceeds an upper temperature limit of 42° C. | The complaint alleges the accused systems are configured with this specific automatic safety shut-off feature. | ¶¶31, 35 | col. 13:59-64 |
- Identified Points of Contention:
- Scope Questions: Claim 1 is a system claim requiring a catheter, a temperature measuring device, and a pulse generator with specific logic. The complaint accuses the "RCE Pulsed RF Electrode products" (Compl. ¶ 30). A primary question will be whether Defendant makes, uses, or sells the complete, operational system as claimed, or only a component (the electrode). If Defendant sells only a component, the case may turn on allegations of indirect infringement.
- Technical Questions: What evidence supports the allegation that Defendant’s system performs the specific function of automatically suppressing or switching off current when a temperature of 42° C is exceeded? The complaint does not provide technical documentation or other evidence to substantiate this highly specific functional limitation, which will be a central factual question for discovery.
V. Key Claim Terms for Construction
The Term: "a stimulation system"
- Context and Importance: This term, appearing in the preamble of claim 1, is likely to be treated as a limiting element. Its construction is critical because infringement of a system claim requires all elements to be attributable to a single accused party. Practitioners may focus on this term because if Defendant is found to sell only a component (the electrode) and not the full "system" including the generator, it may avoid direct infringement.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent describes the catheter as being connectable to a pulse generator and measuring device, suggesting the components are intended to work together as a system ('229 Patent, col. 10:56-62). A party could argue that "system" encompasses a set of compatible components offered for sale together, even if not physically pre-assembled.
- Evidence for a Narrower Interpretation: The claim recites specific functional interactions between the components, such as the generator operating "in response to continuous signals from said temperature measuring device" ('229 Patent, col. 13:54-57). A party could argue that this requires a single, integrated apparatus where the claimed components are already in "continuous electrical communication," not merely capable of being connected by an end-user.
The Term: "configured to automatically switch off or temporarily suppress"
- Context and Importance: This term defines the specific safety feature at the heart of the invention. The dispute will likely center on whether the accused device's functionality meets the "configured to automatically" requirement.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification describes the function as an "automatic" switching or change of parameters when a temperature is reached, which could be argued to cover any non-manual, system-initiated response ('229 Patent, col. 10:14-22). "Configured to" could be interpreted as being designed with the capability to perform the function.
- Evidence for a Narrower Interpretation: A party could argue that "automatically" requires the action to occur without any user intervention or setup, and that "configured to" means this is a built-in, default behavior of the device. If the accused device's temperature limit is user-settable or merely triggers an alarm rather than an automatic current suppression, it might fall outside this narrow construction.
VI. Other Allegations
- Indirect Infringement: The complaint alleges active inducement, asserting that Defendant provides "brochures, manuals, instructional documents, and/or similar materials" that instruct others on how to use the products in a manner that directly infringes the '229 Patent (Compl. ¶ 37). It also pleads contributory infringement, alleging the accused products are not staple articles of commerce and are especially adapted for an infringing use (Compl. ¶ 38).
- Willful Infringement: The complaint alleges willful infringement based on Defendant's alleged pre-suit knowledge of the '229 Patent since at least June 24, 2019, evidenced by a letter acknowledging a notice sent to Cosman Medical, Inc., a company Defendant later acquired (Compl. ¶ 39). The complaint further alleges Defendant was "willfully blind" to Plaintiff's patent rights (Compl. ¶ 36).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of system versus component infringement: can Plaintiff prove that Defendant directly infringes the asserted system claim, or will the case depend on theories of indirect infringement, hinging on whether Defendant instructs end-users (e.g., physicians) to assemble and operate the components in an infringing manner?
- A key evidentiary question will be one of functional proof: does the accused pulse generator, when used with the accused electrode, contain the specific, non-obvious logic claimed—namely, being "configured to automatically switch off or temporarily suppress" the current when the temperature exceeds the precise threshold of 42°C, as required by claim 1?
- The viability of the willfulness claim will depend on imputing knowledge: can Plaintiff establish that the pre-acquisition notice provided to Cosman Medical, Inc. in 2019 constitutes legally effective notice to Defendant, Boston Scientific, sufficient to establish the knowledge and intent required for enhanced damages?