DCT

3:08-cv-00298

General Electric Co v. Sonosite Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 3:08-cv-00298, W.D. Wisc., 05/22/2008
  • Venue Allegations: Venue is based on Defendant Sonosite regularly conducting business in the district, including selling products marked with the patent-in-suit, and on Plaintiff GE’s relevant business division being based in Wauwatosa, Wisconsin.
  • Core Dispute: Plaintiff seeks a declaratory judgment that Defendant's patent related to handheld, portable ultrasound systems is invalid, anticipating an infringement suit over Plaintiff's forthcoming product line.
  • Technical Context: The technology concerns the miniaturization of complex medical ultrasound systems, integrating features like B-mode and Doppler imaging into a single, portable, handheld device.
  • Key Procedural History: The complaint alleges that a legal controversy exists based on Sonosite's history of enforcing the patent-in-suit against another company (Zonare Medical Systems, Inc.), public statements by Sonosite's counsel asserting the patent's broad coverage over handheld ultrasound devices, and an ongoing, separate patent litigation between the parties.

Case Timeline

Date Event
1996-06-28 U.S. Patent No. 5,722,412 Priority Date
1998-03-03 U.S. Patent No. 5,722,412 Issue Date
2008-05-22 Complaint for Declaratory Judgment Filed

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

U.S. Patent No. 5,722,412 - "Hand Held Ultrasonic Diagnostic Instrument"

The Invention Explained

  • Problem Addressed: The patent's background section notes that at the time of invention, premium ultrasound systems were large, complex instruments weighing several hundred pounds, while older, smaller desktop units lacked advanced capabilities like color Doppler and 3D imaging (ʼ412 Patent, col. 1:7-17). The patent identifies a need to "compact the entire ultrasound system into a scanhead-sized unit" while retaining the advanced features of larger systems (ʼ412 Patent, col. 1:23-31).
  • The Patented Solution: The invention is a highly miniaturized ultrasound system that integrates components—such as a transducer, beamformer, and image processor—into a portable, handheld unit. This is achieved through the "judicious selection of functions and features and efficient use of integrated circuit and ultrasound technology," specifically through the use of several application-specific integrated circuits (ASICs) that handle different processing stages ('412 Patent, col. 2:41-54; Fig. 1). The result is a sophisticated instrument weighing ten pounds or less, capable of both B-mode and Doppler imaging ('412 Patent, Abstract).
  • Technical Importance: The invention describes a path to creating a fully-featured, portable ultrasound device, moving diagnostic imaging capabilities out of the traditional hospital setting and closer to the point of care.

Key Claims at a Glance

  • The complaint seeks a declaration of invalidity for "[e]ach claim of the '412 patent" (Compl. ¶15). The independent claims are representative of the patented technology.
  • Independent Claim 1:
    • A portable ultrasound system comprising:
    • an array transducer; and
    • a sampled data beamformer for delaying and combining samples of echo signals received by elements of said array transducer,
    • wherein said array transducer and said beamformer are located in a common enclosure.
  • Independent Claim 11:
    • A handheld ultrasound system comprising:
    • an array transducer; and
    • a sampled data beamformer for delaying and combining samples of echo signals received by elements of said array transducer,
    • wherein said array transducer and said beamformer are located in one or more enclosures weighing less than ten pounds (4.5 kilograms).
  • Independent Claim 19:
    • A handheld ultrasound system comprising:
    • a transducer;
    • a B mode signal processor; and
    • a Doppler signal processor,
    • wherein said transducer, said B mode signal processor and said Doppler signal processor are located in a common handheld enclosure.

III. The Accused Instrumentality

Product Identification

  • The complaint identifies GE's "New Systems," which are described as "new ultrasound systems weighing less than 10 pounds" (Compl. ¶7).

Functionality and Market Context

  • The complaint, being a declaratory judgment action filed by the manufacturer, does not provide a detailed technical description of the New Systems. It states that GE has "expended substantial resources to develop these New Systems," has "completed prototypes," and has "constructed working demonstration versions" (Compl. ¶7). The filing is premised on GE's intent to launch these products and its belief that Sonosite would subsequently allege infringement (Compl. ¶¶ 7, 11, 14). No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

As this is a complaint for a declaratory judgment of patent invalidity, the plaintiff (GE) does not make infringement allegations against the defendant. Instead, the complaint establishes a legal controversy by stating GE's reasonable belief that it will be sued by Sonosite for infringing the ’412 patent upon the launch of its "New Systems" (Compl. ¶¶ 11, 14). The complaint does not provide a specific theory of infringement for analysis.

V. Key Claim Terms for Construction

  • The Term: "common enclosure" (from Claim 1 and Claim 19)

  • Context and Importance: The requirement that key components (e.g., transducer, beamformer, processors) reside in a "common enclosure" is central to the patent's goal of miniaturization. The construction of this term will be critical in defining the physical integration required to fall within the scope of the claims. Practitioners may focus on this term because its definition will determine whether multi-part but functionally integrated systems are covered.

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: The specification describes a "two-part unit" embodiment where a "lower section" (81) containing the transducer and electronics is connected by a cable (90) to an "upper section" (83) containing the display and battery ('412 Patent, col. 4:18-34; Fig. 4). An argument could be made that if the claims are to cover this disclosed embodiment, "common enclosure" might not be limited to a single, monolithic housing.
    • Evidence for a Narrower Interpretation: The patent also describes a "one piece unit" (80) that "contains all of the elements of a fully operational ultrasound system" in a "single package" ('412 Patent, col. 4:10-16; Figs. 2a-2b). This embodiment could support an interpretation that "common enclosure" requires the components to be housed within a single, physically unified structure.

  • The Term: "handheld" (from Claim 11 and Claim 19)

  • Context and Importance: This term distinguishes the invention from larger "premium ultrasound systems" mounted on carts ('412 Patent, col. 1:8-10). Its definition helps set the physical size and portability boundaries of the claimed invention.

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: The term is used generally to describe the system's portability. The specification states the invention can be manufactured as a "hand held unit weighing less than five pounds" ('412 Patent, col. 2:60-61), but Claim 11 claims a weight of "less than ten pounds," suggesting "handheld" may encompass a range of sizes and weights.
    • Evidence for a Narrower Interpretation: The specification provides specific context, analogizing the desired size to that of "an electric razor" or a "conventional ultrasound scanhead" ('412 Patent, col. 1:23-28). It also provides specific dimensions for an embodiment: "approximately 20.3 cm high, 11.4 cm wide, and 4.5 cm deep" ('412 Patent, col. 4:11-13).

VI. Other Allegations

The complaint does not allege indirect or willful infringement. Its sole cause of action is for a declaratory judgment that all claims of the '412 patent are invalid under 35 U.S.C. §§ 102, 103, and/or 112 (Compl. ¶15).

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

  • A core issue will be one of validity in view of the prior art: was the integration of known ultrasound components (transducer, beamformer, processors) into a single, handheld enclosure weighing less than ten pounds a non-obvious invention in 1996, or was it an obvious design choice enabled by the concurrent trend of general electronics miniaturization? The outcome will depend on what level of ordinary skill in the art is established and what specific prior art references are presented.

  • A key legal question will be one of claim scope and written description: does the patent's specification provide adequate written description and enablement under 35 U.S.C. § 112 to support the full scope of the broad claims? For example, the court may need to decide if the term "common enclosure" in the claims is adequately supported by a specification that explicitly describes both single-unit and two-unit embodiments.