DCT

4:24-cv-04433

Versah LLC v. DR Cesar Guerrero Facial Oral Surgery PLLC

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 4:24-cv-04433, S.D. Tex., 11/12/2024
  • Venue Allegations: Venue is based on Defendant’s operation of a place of business in Houston, Texas.
  • Core Dispute: Plaintiffs allege that Defendant's use and promotion of "Bone Clock" dental drill burs infringes ten U.S. patents related to a surgical method and tool for "osseodensification."
  • Technical Context: The technology concerns dental implant site preparation, specifically a method and associated tools that compact and densify bone tissue ("osseodensification") rather than excavating it, with the goal of improving implant stability.
  • Key Procedural History: The complaint details a licensing chain wherein Plaintiff Huwais IP Holdings LLC, the owner of the patents-in-suit, granted an exclusive license to BRRTech, LLC, which in turn granted a limited exclusive license for the dental field of use to Plaintiff Versah, LLC, including the right to bring suit for infringement.

Case Timeline

Date Event
2011-03-23 Earliest Priority Date for ’783, ’593, ’253, ’312, ’639 Patents
2012-11-19 Earliest Priority Date for ’778, ’621 Patents
2014-04-01 Plaintiff Versah founded (approximate month)
2015-05-05 U.S. Patent No. 9,022,783 Issues
2015-05-12 U.S. Patent No. 9,028,253 Issues
2016-01-14 Earliest Priority Date for ’294, ’548, ’250 Patents
2016-05-03 U.S. Patent No. 9,326,778 Issues
2016-12-27 U.S. Patent No. 9,526,593 Issues
2017-08-22 U.S. Patent No. 9,737,312 Issues
2018-08-07 U.S. Patent No. 10,039,621 Issues
2020-02-25 U.S. Patent No. 10,568,639 Issues
2021-04-20 U.S. Patent No. 10,980,548 Issues
2023-02-21 U.S. Patent No. 11,583,294 Issues
2023-08-01 U.S. Patent No. 11,712,250 Issues
2024-04-13 Defendant promotes event featuring accused "Bone Clock" burs
2024-07-25 Defendant's alleged use of "Bone Clock" burs (approximate)
2024-11-12 Complaint Filed

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

U.S. Patent No. 9,022,783 - "Fluted Osteotome and Surgical Method for Use"

  • Patent Identification: U.S. Patent No. 9,022,783, "Fluted Osteotome and Surgical Method for Use," issued May 5, 2015.

The Invention Explained

  • Problem Addressed: The patent background describes prior art for preparing dental implant sites, including traditional mallet-driven osteotomes which are traumatic, and motor-driven expander screw taps which inextricably link the tool's rotation rate to the bone expansion rate, limiting surgical control (’783 Patent, col. 3:45-53). The complaint frames this problem as traditional methods being "unnecessarily traumatic to the jawbone" by excavating healthy bone (Compl. ¶7).
  • The Patented Solution: The invention is a surgical method using a fluted osteotome that can be rotated in two different directions. Rotated one way (e.g., counter-clockwise), "burnishing edges" on the tool's flutes expand and compact the bone with little to no removal of bone material (’783 Patent, col. 4:5-11). Rotated in the opposite direction, the same edges cut bone material (’783 Patent, col. 4:20-25). This dual-functionality allows a surgeon to de-link rotation speed from expansion rate, providing greater control over the procedure (’783 Patent, col. 3:54-62).
  • Technical Importance: The method aims to preserve healthy bone tissue by compacting it rather than removing it, which is alleged to be important for achieving primary implant stability and enabling early loading (Compl. ¶10).

Key Claims at a Glance

  • The complaint asserts infringement of at least one claim (Compl. ¶30). The first independent claim, Claim 1, is a method claim with the following essential steps:
    • Providing a rotary osteotome with a tapered working end and longitudinally extending burnishing edges.
    • Positioning the working end over an initial osteotomy.
    • Rotating the working end at high speed.
    • Enlarging the osteotomy by forcibly advancing the rotating working end into it.
    • This enlarging step is independent of the rate of rotation.
    • Irrigating the osteotomy concurrently.

U.S. Patent No. 9,526,593 - "Fluted Osteotome and Surgical Method for Use"

  • Patent Identification: U.S. Patent No. 9,526,593, "Fluted Osteotome and Surgical Method for Use," issued December 27, 2016.

The Invention Explained

  • Problem Addressed: Similar to the ’783 Patent, the specification addresses the limitations of prior art hammered osteotomes and motor-driven expanders, noting the latter's lack of independent control over the rate of bone expansion (’593 Patent, col. 2:50-col. 3:53).
  • The Patented Solution: This patent claims the apparatus (the fluted osteotome tool itself) used to perform the osseodensification method. The tool has a tapered working end with multiple longitudinally extending flutes. These flutes have "burnishing edges" that, when rotated in one direction, concentrate force to expand bone with little removal of material, and when rotated in the opposite direction, cut bone material (’593 Patent, col. 4:1-11; Abstract). This dual-function design is the core of the patented solution.
  • Technical Importance: The tool provides clinicians with a single instrument capable of performing a less traumatic, bone-preserving osteotomy, which Plaintiffs assert was a "revolution in the dental implant field" (Compl. ¶10).

Key Claims at a Glance

  • The complaint asserts infringement of at least one claim (Compl. ¶36). The first independent claim, Claim 1, is an apparatus claim for an osteotome with the following key elements:
    • A tapered working end.
    • A plurality of longitudinally extending flutes.
    • Each flute extends radially to a crest.
    • A burnishing edge disposed along the crest.
    • The burnishing edge has a large negative rake angle.

Multi-Patent Capsules

  • U.S. Patent No. 9,028,253, "Fluted Osteotome and Surgical Method for Use," issued May 12, 2015
    • Technology Synopsis: This patent is directed to a surgical method for expanding an osteotomy using a fluted osteotome. The method includes steps of rotating the tool to either expand bone via burnishing or remove bone via cutting, depending on the rotational direction (’253 Patent, Abstract).
    • Asserted Claims: At least one claim is asserted (Compl. ¶42).
    • Accused Features: The "Bone Clock" burs and their use are accused of infringement (Compl. ¶26).
  • U.S. Patent No. 9,737,312, "Fluted Osteotome and Surgical Method for Use," issued August 22, 2017
    • Technology Synopsis: The patent describes a surgical method for expanding an initial osteotomy by rotating and pushing a tapered osteotome. The tool's "burnishing edges" concentrate force to expand the osteotomy with little or no bone removal in one direction, and cut bone in the opposite direction (’312 Patent, Abstract).
    • Asserted Claims: At least one claim is asserted (Compl. ¶48).
    • Accused Features: The "Bone Clock" burs and their use are accused of infringement (Compl. ¶26).
  • U.S. Patent No. 10,568,639, "Fluted Osteotome and Surgical Method for Use," issued February 25, 2020
    • Technology Synopsis: This patent covers a surgical method and tool for expanding an osteotomy. The tool features burnishing edges that incrementally expand the bone site when rotated in one direction and cut when rotated in the opposite direction, allowing for progressive expansion with larger osteotomes (’639 Patent, Abstract).
    • Asserted Claims: At least one claim is asserted (Compl. ¶54).
    • Accused Features: The "Bone Clock" burs and their use are accused of infringement (Compl. ¶26).
  • U.S. Patent No. 11,583,294, "Autografting Tool with Enhanced Flute Profile and Methods of Use," issued February 21, 2023
    • Technology Synopsis: This patent describes a rotary tool and method for enlarging a precursor hole. The tool features helical flutes with a negative rake angle and a stopper section that plugs the hole at a certain depth, which can build hydraulic pressure to autograft a slurry of host material into the sidewalls (’294 Patent, Abstract).
    • Asserted Claims: At least one claim is asserted (Compl. ¶60).
    • Accused Features: The "Bone Clock" burs and their use are accused of infringement (Compl. ¶26).
  • U.S. Patent No. 9,326,778, "Autografting Osteotome," issued May 3, 2016
    • Technology Synopsis: This patent describes a fluted osteotome that rotates in one direction to enlarge an osteotomy by burnishing and in the opposite direction by cutting/drilling. The tool’s lips and lands are configured to generate an opposing axial reaction force to improve surgical control and to auto-graft bone particles into the osteotomy (’778 Patent, Abstract).
    • Asserted Claims: At least one claim is asserted (Compl. ¶66).
    • Accused Features: The "Bone Clock" burs and their use are accused of infringement (Compl. ¶26).
  • U.S. Patent No. 10,039,621, "Autografting Osteotome," issued August 7, 2018
    • Technology Synopsis: This patent is directed to a fluted osteotome that can enlarge an osteotomy by burnishing in one rotational direction and cutting in the opposite direction. The tool's lips and lands are designed to generate an opposing axial reaction force and to auto-graft ground bone particles into the site (’621 Patent, Abstract).
    • Asserted Claims: At least one claim is asserted (Compl. ¶72).
    • Accused Features: The "Bone Clock" burs and their use are accused of infringement (Compl. ¶26).
  • U.S. Patent No. 10,980,548, "Autografting Tool with Enhanced Flute Profile and Methods of Use," issued April 20, 2021
    • Technology Synopsis: This patent describes a rotary tool for enlarging a precursor hole, featuring helical flutes and a stopper section. When used with irrigation fluid, the tool can build hydraulic pressure to autograft a slurry of host material particles into the sidewalls of the hole, creating a densifying crust (’548 Patent, Abstract).
    • Asserted Claims: At least one claim is asserted (Compl. ¶78).
    • Accused Features: The "Bone Clock" burs and their use are accused of infringement (Compl. ¶26).
  • U.S. Patent No. 11,712,250, "Autografting Tool with Enhanced Flute Profile and Methods of Use," issued August 1, 2023
    • Technology Synopsis: The technology concerns a rotary tool with helical flutes and a stopper section designed to enlarge a hole in a host material. The tool's design enables the use of hydraulic pressure from irrigation fluid to autograft material into the hole's sidewalls to create an "incipient densifying crust" (’250 Patent, Abstract).
    • Asserted Claims: At least one claim is asserted (Compl. ¶84).
    • Accused Features: The "Bone Clock" burs and their use are accused of infringement (Compl. ¶26).

III. The Accused Instrumentality

Product Identification

  • The accused products are drill bits or burs called "Bone Clock" ("Infringing Burs") (Compl. ¶26).

Functionality and Market Context

  • The complaint alleges that the Defendant, a facial and oral surgery practice, uses and promotes the Bone Clock burs in the United States (Compl. ¶26). An Instagram post from the Defendant, included as a visual in the complaint, describes the product as a "new burs system for dental implants when the bone is poor or soft" and states that it achieves "excellent stability after bone condensation" (Compl. p. 7). A promotional image for a professional event also explicitly links the "Bone Clock" name with "Oseodensificación" (Compl. p. 6). These allegations suggest the accused burs perform bone compaction or densification to prepare a site for a dental implant, particularly in bone of poor quality.

IV. Analysis of Infringement Allegations

The complaint does not provide a claim chart or detailed element-by-element infringement allegations for any of the asserted patents. The analysis below is based on the narrative infringement theory and visual evidence presented in the complaint, mapped to the elements of representative independent claims.

'783 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
A surgical method for expanding an initial osteotomy to receive a dental implant... Defendant's alleged use of the Bone Clock burs to prepare sites for dental implants. ¶26, ¶30 col. 4:12-14
providing a rotary osteotome having a tapered working end...and...longitudinally extending burnishing edges... The complaint identifies the accused instrumentality as a "drill bit or bur" and provides an image of the "Bone Clock" bur system, which appears to show tapered, fluted tools. ¶26; p. 7 col. 4:15-18
rotating the working end of the osteotome at high speed; The complaint alleges that Plaintiff's own burs, which practice the patented method, are rotated at 800-1500 rpms. The complaint does not specify the rotational speed of the accused burs. ¶9 col. 4:32-34
enlarging the initial osteotomy by forcibly advancing the rotating working end...so that the...burnishing edges lap against the interior surface... Defendant's description of the accused method as achieving "bone condensation" suggests a process of expanding the osteotomy by pressing the tool against the bone wall. p. 7 col. 4:35-41
the rate of said enlarging step being independent of the rate of rotation of the working end... The complaint does not provide sufficient detail for analysis of this element. col. 4:42-44
  • Identified Points of Contention:
    • Evidentiary Questions: The complaint's primary evidence is an Instagram post mentioning "bone condensation" (Compl. p. 7). A central question will be what factual evidence Plaintiffs can produce to show that this "condensation" is achieved through the specific method of "burnishing" as claimed, and that the accused burs possess the claimed "burnishing edges."
    • Functional Questions: What evidence will demonstrate that the accused method "de-links" the rate of osteotomy enlargement from the tool's rotation speed, a key limitation of the claim? The complaint offers no facts on this point.

'593 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
A fluted osteotome...comprising: a tapered working end... Visual evidence in the complaint shows the accused "Bone Clock" burs have a generally tapered and fluted shape. p. 7 col. 8:44-46
a plurality of longitudinally extending flutes, each...extending radially outwardly to a crest... Images of the accused burs show multiple flutes extending along the tool's body. p. 7 col. 8:47-50
a burnishing edge disposed along the crest of a respective one of the flutes... The complaint does not provide technical details sufficient to identify a specific "burnishing edge" structure on the accused burs. col. 8:51-53
said burnishing edge being defined by a large negative rake angle. The complaint does not provide sufficient detail for analysis of this element. col. 8:54-55
  • Identified Points of Contention:
    • Structural Questions: The infringement analysis will depend on whether the physical structure of the accused "Bone Clock" burs meets the specific geometric limitations of the claim. A key question is whether the cutting/working edges of the accused burs can be shown to have the "large negative rake angle" required by the claim.
    • Scope Questions: Does the "bone condensation" functionality described by the Defendant (Compl. p. 7) necessarily imply the use of a tool with the specific "burnishing edge" and "large negative rake angle" structures claimed in the patent?

V. Key Claim Terms for Construction

  • The Term: "burnishing edge" (’593 Patent, Claim 1) / "burnishing" (’783 Patent, Claim 1)
  • Context and Importance: This term is central to the dispute. Plaintiffs' infringement theory appears to equate the accused "bone condensation" with the claimed "burnishing." The outcome of the case may depend on whether the court construes "burnishing" broadly to mean any bone compaction, or narrowly to require a specific tool structure and mechanism of action.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification describes burnishing as a process that "incrementally expand[s] the osteotomy with little to no removal of bone material" (’783 Patent, col. 4:9-11). This functional language could support a broader definition focused on the result (compaction) rather than the specific structure.
    • Evidence for a Narrower Interpretation: The specification links the "burnishing edge" to a specific structure: a "large negative rake angle" (’593 Patent, Claim 1). Embodiments describe this angle as being greater than 45° or 60° (’593 Patent, col. 7:51-55). This language may support a narrower construction requiring a specific tool geometry.

VI. Other Allegations

  • Willful Infringement: The complaint does not contain an explicit allegation of willful infringement. However, the Prayer for Relief requests "damages...together with prejudgment and post-judgment interest" under 35 U.S.C. § 284, which is the statutory basis for enhanced damages, and separately requests a finding that the case is "exceptional" to award attorneys' fees under 35 U.S.C. § 285 (Compl., Prayer for Relief ¶¶ B-C). The complaint does not allege any facts to support pre-suit knowledge of the patents by the Defendant.

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

This case presents a dispute over technology for preparing dental implant sites. The resolution will likely depend on the court’s answers to several key questions:

  • A central issue will be one of claim construction: How will the court define the term "burnishing" and its structural counterpart, "burnishing edge"? The case may turn on whether the Defendant's "bone condensation" process falls within the scope of this term, which could be construed functionally (as bone compaction) or structurally (requiring a specific large negative rake angle).
  • A key challenge for the Plaintiffs will be one of evidentiary proof: The complaint relies on marketing statements rather than detailed technical analysis. A primary question will be what evidence Plaintiffs will offer to prove that the accused "Bone Clock" burs physically embody the specific flute, land, and edge geometries recited in the asserted claims.
  • A potential threshold issue may be standing to sue: The complaint describes a three-party chain of ownership and licensing (Compl. ¶¶11-14). The court may need to confirm that the Plaintiffs, as the ultimate owner and a limited field-of-use licensee, collectively possess all substantial rights required to bring suit and recover damages for infringement of the ten asserted patents.