Devicor Medical Products v. Kand Medical

7/27/2019 Devicor Medical Products v. Kand Medical

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JANINE A. CARLAN (SBN 197613)ARENT FOX LLP

1717 KStreet,N.W.Washington, D.C. 20036-5342Telephone: 202.857.6000Facsimile: 202.857.6395

MICHAEL TURRILL (SBN 185263)ARENT FOX LLP

555 West Fifth Street, 48th FloorLos Angeles, CA 90013-1065Telephone: 213.629.7400Facsimile: 213.629.7401

Attorneys forPlaintiffDEVICORMEDICAL PRODUCTS, INC.

UNITED STATES DISTRICT COURT

FOR THE SOUTHERN DISTRICT OF CALIFORNIA

DEVICOR MEDICAL PRODUCTS,

INC., a Delaware Corporation

Plaintiff,

v.

KAND MEDICAL, INC., a

California Corporation

Case No.

COMPLAINT FOR PATENT

INFRINGEMENT

DEMAND FOR JURY TRIAL

Defendant.

COMPLAINT FOR PATENT INFRINGEMENT

'13CV2389 KSCMMA


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COMPLAINT FO RPATENT INFRINGEMENT

PlaintiffDevicor Medical Products, Inc. ("Devicor")brings this action against Kand

Medical, Inc., 1341 Distribution Way, Vista, CA 92081("Kand") and alleges as follows:

PARTIES

1. Devicoris a Delaware corporation with its principalplaceofbusiness at 300 E

Business Way, Sharonville, Ohio 45241.

2. On information and belief, KandMedical, Inc., is a California corporation with

itsprincipalplaceof business at 1341 Distribution Way, Vista, CA 92081.

JURISDICTION A ND VENUE

3. This action is forpatent infringement arising underthe Patent Laws ofthe United

States, 35 U.S.C. 1 etseq. and seeks damages and injunctive relief. The Court has subject

matterjurisdiction overthis actionpursuant to 28U.S.C. 1331 and 1338(a).

4. This Court haspersonaljurisdiction overKandbecause, on information and

belief, it is incorporated in California and purposely avails itselfoftheprivilegeofdoingbusiness

in California.

5. Inaddition,personal jurisdiction over Kand is proper because, on information and

belief, Kand conducts substantialbusiness in this forum, including: (i) deriving substantial

revenue fromsales ofgoods in this District, including significant revenue derived from sales of

infringing goods as alleged herein; (ii) regularlydoing or solicitingbusiness, including

contracting to supply goods and services with businesses and individuals in this District,

including goods and services that encompass the infringing goods, as alleged herein; and (iii)

engaging in otherpersistent, systematic, and continuous courses of conduct in this District.

Venue isproperpursuant to 28U.S.C. 1391(b)-(c) and 1400(b). On information and belief,

Kand has transactedbusiness in this District, and has committed and/or induced acts ofpatent

infringement in this District.

BACKGROUND

6. DevicorMedical Products, Inc. is a global medical products company dedicated

to the investment in, and development of, technologies that facilitate minimally invasive medical

COMPLAINT FORPATENT INFRINGEMENT


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procedures. Among the medical products that Devicor develops and markets are devices in the

minimally invasive breastbiopsymarket.

7. Typically, when apatient undergoes abiopsy, a smallpieceoftissue is removed.

For any givenbiopsyprocedure, a subsequent examination ofthebiopsysite is often needed.

Thus, there is an important need to determine the location ofthebiopsysite. Inserting a markerat

thebiopsysite is one way to determine the location ofthebiopsy site at a subsequent

examination.

8. Devicoroffers a family ofmarkerproducts for vacuum-assisted andcore needle

breast biopsy procedures, visible under imaging modalities, to radiographically markabiopsy

site.

9. Upon information andbelief, Kand offers forsale, sells, and has sold Biopsy

Sciences, LLC's HydroMARKbreastbiopsysite markers in this District and throughout the

United States. Upon information andbelief, a reasonable opportunity fordiscovery will show

that the HydroMARKbreast biopsysite markers infringe one ormore claims ofDevicor's

asserted patents.

PATENTS IN SUIT

10. On August 7, 2001, the United States Patent and Trademark Office ("USPTO")

issued U.S. PatentNo. 6,270,464("the '464patent"), entitled"Biopsy Localization Method and

Device." The '464 patent's inventors are Richard E. Fulton, III and William R. Dubrul. Devicor

is the owner of all right, title, and interest in the '464patent. A true and correct copy ofthe '464

patent is attached hereto as Exhibit 1.

11. On March 12, 2002, the USPTO issued U.S. Patent No. 6,356,782 ("the '782

patent"), entitled "Subcutaneous Cavity Marking Device and Method." The '782patent's

inventors are D. Laksen Sirimanne, Douglas S. Sutton,Natalie V. Fawzi, and Gail Lebovic.

Devicoris the ownerofall right, title, and interest in the '782patent. A true and correct copy of

the '782patent is attached hereto asExhibit 2.

12. On March 2, 2004, the USPTO issued U.S. Patent No. 6,699,205 ("the '205

patent"), entitled "Biopsy Localization Method and Device." The '205 patent's inventors are

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Richard E. Fulton, I II and WilliamR. Dubrul. The '205patent has been subject to reexamination

Devicor is the ownerof all right, title, and interest in the '205patent. A true and correct copy of

the '205patent is attached hereto as Exhibit 3.

13. On June 12, 2007, the USPTO issued U.S. PatentNo. 7,229,417 ("the '417

patent"), entitled "Methods forMarking a Biopsy Site." The '417patent's inventors are Seth A.

Foerster, Fred H. Burbank, Mark A. Ritchart, and Elias A. Zerhouni. The '417patent has been

subject to reexamination. Devicoris the ownerofall right, title, and interest in the '417patent.

A true and correct copy ofthe '417patent is attached hereto as Exhibit 4.

14. On December1, 2009, the USPTO issued U.S. Patent No. 7,625,397 ("the '397

patent"), entitled "Methods forDefining and Marking Tissue." The '397patent's inventors are

Seth A. Foerster, Fred H. Burbank, Mark A. Ritchart, and Elias A. Zerhouni. Devicoris the

owner of all right, title, and interest in the '397patent. A true and correct copy ofthe '397patent

is attached hereto as Exhibit 5.

FIRST CAUSE OF ACTION

INFRINGEMENT OF U.S. PATENT NO . 6,270,464

15. Devicorrealleges and incorporatesby reference the allegations ofparagraphs 1-14

herein.

16. On information and belief, Kand has infringed and continues to infringe, directly

and/orindirectlyby wayofinducement and/or contributory infringement, literally and/orunder

the doctrine ofequivalents, in violation of 35 U.S.C. 271, one ormore claims ofthe '464patent

byselling, and/oroffering for sale in the United States one ormorebiopsy markers that embody

the invention claimed in the '464patent, orthat use and/orincorporate the claimed invention,

including,by way ofexample and without limitation, the HydroMARK line of products.

17. On information and belief, Kand has specifically induced and continues to induce

others to infringe the '464patent in violationof 35 U.S.C. 271byencouraging and facilitating

others, including, but not limited to, doctors, toperformactions knownbyKand to be acts of

infringement ofthe '464patent with intent that those performing the acts infringe the '464patent.

-_3J:COMPLAINT FORPATENT INFRINGEMENT


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18. Kand also contributes to infringement of the '464patent in violation of35 U.S.C.

271byselling within the United States, and/or offering forsale within the United States the

HydroMARK line ofproducts, which embody a material part of the invention described in the

'464patent. On information and belief, theseproducts are knownby Kand to beespecially made

or especially adapted foruse in infringement ofthe '464patent and are not staple articles or

commodities suitable forsubstantial, non-infringing use.

19. By infringing the '464patent, Kand has caused and will continue to cause Devicor

to sufferdamages inanamount to be determined at trial.

20. By wayofitspast and continued acts ofinfringement ofDevicor'spatents,

Kand has caused, and will continue to cause, Devicor irreparable injury and damages, including

but not limited to, lost profits and diminution of the rights granted underDevicor'spatents.

21. Devicorwill suffer further irreparable injury, for which it has no adequate remedy

at law, unless and until Kand is enjoined from infringing Devicor's '464patent.

22. Upon information and belief, Kand's infringement of the '464patent is willful and

Devicor should be awarded increased damages pursuant to 35 U.S.C. 284 and attorneys fees

pursuant to 35 U.S.C. 285.

SECOND CAUSE OF ACTIONINFRINGEMENT OF U.S. PATENT NO. 6,356.782

23. Devicorrealleges and incorporatesby reference the allegations of paragraphs 1-22

herein.


and/orindirectlybyway of inducement and/or contributory infringement, literally and/orunder

the doctrine ofequivalents, in violation of 35 U.S.C. 271, one ormore claims of the '782patent

by selling, and/or offering forsale in the United States one ormorebiopsy markers that embody

the invention claimed in the '782patent, orthat use and/orincorporate the claimed invention,

including,by way of example and without limitation, the HydroMARK line ofproducts.

25. On information andbelief, Kand has specifically induced and continues to induce

others to infringe the '782patent in violation of35U.S.C. 271byencouraging and facilitating

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COMPLAINTFORPATENT INFRINGEMENT


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others, including,but not limited to, doctors, to perform actions knownby Kand to be acts of


26. Kand also contributes to infringement ofthe '782patent in violation of35 U.S.C.

271by selling within the United States, and/or offering forsale within the United States the

HydroMARK line ofproducts, which embody a material part ofthe invention described in the

'782patent. On information and belief, these products are knownby Kand tobeespecially made

orespecially adapted foruse in infringement of the '782patent and are not staple articles or

commodities suitable for substantial, non-infringing use.


to sufferdamages inanamount tobe determined at trial.

28. By way ofitspast and continued acts ofinfringement of Devicor'spatents, Kand

has caused, and will continue to cause, Devicorirreparable injury and damages, includingbut not

limited to, lost profits and diminution ofthe rights granted underDevicor'spatents.

29. Devicorwill sufferfurther irreparable injury, forwhich it has noadequate remedy

at law, unless and until Kand is enjoined from infringing Devicor's '782patent.

30. Upon information and belief, Kand's infringement of the '782patent is willful and

Devicor shouldbeawarded increased damages pursuant to 35 U.S.C. 284 and attorneys fees


THIRD CAUSE OF ACTION

INFRINGEMEN T OF U.S. PATEN T N O. 6.699.205


herein.


and/orindirectlybyway of inducement and/or contributory infringement, literally and/or under the

doctrine of equivalents, in violation of35 U.S.C. 271, one ormore claims of the '205patent,by

using, selling, and/or offering for sale in the United States one or morebiopsymarkers that embody

the invention claimed in the '205patent, orthat use and/or incorporate the claimed invention,

including,by way ofexample and without limitation, theHydroMARK line of products.

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others to infringe the '205patent in violation of35U.S.C. 271byencouraging and facilitating

others, including, but not limited to, doctors, toperformactions knownby Kand to be acts of

infringement of the '205patent with intent that those performing the acts infringe the '205patent.


271byselling within the United States, and/or offering for sale within the United States the

HydroMARK line ofproducts, which embody a material part of the invention described in the

'205patent. On information and belief, these products are knownbyKand tobeespecially made

orespecially adapted foruse in infringement ofthe '205patent and are not staple articles or



to suffer damages in anamount tobe determined at trial.

36. By way of itspast and continued acts of infringement ofDevicor'spatents, Kand

has caused, and will continue tocause, Devicorirreparable injury and damages, includingbut not

limited to, lost profits and diminution ofthe rights granted underDevicor's '205patent.

37. Devicorwill suffer further irreparable injury, forwhich it has noadequate remedy

at law, unless and until Kand is enjoined from infringing Devicor'spatents.

38. Upon information andbelief, Kand's infringement of the '205patent is willful and

Devicor shouldbe awarded increased damages pursuant to 35 U.S.C. 284 and attorneys fees


FOURTH CAUSE OF ACTION

INFRINGEMENT OF U.S. PATENT NO. 7,229,417


herein.

40. On information andbelief, Kand has infringed and continues to infringe, directly

and/or indirectlybyway ofinducement and/or contributory infringement, literally and/orunder

the doctrine ofequivalents, in violation of 35 U.S.C. 271, one or more claims of the '417patent

by using, selling, and/or offering forsale in the United States one or morebiopsymarkers that

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COMPLAINTFORPATENT INFRINGEMENT


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embody the invention claimed in the '417patent, orthat use and/or incorporate the claimed

invention, including,bywayof example and without limitation, theHydroMARK line of

products.

41. On information and belief, Kand has specifically induced and continues to induce

others to infringe the '417patent in violation of35 U.S.C. 271 by encouraging and facilitating

others, including,but not limited to, doctors, toperform actions knownbyKand tobe acts of

infringement of the '417patent with intent that those performing the acts infringe the '417patent.

42. Kand also contributes to infringement of the '417patent in violation of 35 U.S.C.

271byselling within the United States, and/oroffering forsale within the United States the

HydroMARK line ofproducts, which embody a material part of the invention describedby the

'417patent. On information andbelief, theseproducts areknownby Kand to be especially made

or especially adapted foruse in infringement ofthe '417patent and are not staple articles or

commodities suitable for substantial, non-infringing use.


to sufferdamages in an amount tobedetermined at trial.

44. By way of itspast and continued acts of infringement ofDevicor'spatents, Kand

hascaused, and will continue to cause, Devicorirreparable injury and damages, includingbut not

limited to, lostprofitsand diminution of the rights granted underDevicor's '417patent.

45. Devicor will sufferfurther irreparable injury, for which it has noadequate remedy


46. Upon information andbelief, Kand's infringement ofthe '417patent is willful and

Devicor shouldbe awarded increased damagespursuant to 35 U.S.C. 284 and attorneys fees

pursuant to35 U.S.C. 285.

FIFTH CAUSE OF ACTION

INFRINGEMENT OF U.S. PA TEN T N O. 7.625.397

47. Devicorrealleges and incorporates by reference the allegations of paragraphs 1-47

herein.

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48. On information and belief, Kand has infringedand continues to infringe, directly

and/orindirectlybyway ofinducement and/or contributory infringement, literally and/or under

the doctrine ofequivalents, in violation of35 U.S.C. 271, one or more claims of the '397patent

byselling, and/oroffering forsale in the United States one or more biopsy markers that embody

the invention claimed in the '397patent, or that use and/or incorporate the claimed invention,

including,by way of example and without limitation, the HydroMARK line of products.


others to infringe the '397patent inviolation of35 U.S.C. 271byencouraging and facilitating

others, including,but not limited to, doctors, toperformactions knownbyKand tobe acts of



271by selling within the United States, and/or offering forsale within the United States the

HydroMARK line ofproducts, whichembody a material part ofthe invention described in the

'397patent. On information andbelief, theseproducts are knownby Kand tobe especially made

orespecially adapted foruse in infringement ofthe '397patent andare not staple articles or


51. By infringing the '397patent, Kand has caused and will continue tocause Devicor

to sufferdamages in an amount to be determined at trial.

52. By way ofitspast and continued acts of infringement ofDevicor'spatents, Kand

has caused, and will continue to cause, Devicor irreparable injury and damages, includingbut not

limited to, lostprofits and diminution ofthe rights granted underDevicor's '397patent.

53. Devicorwill suffer further irreparable injury, forwhich it has noadequate remedy


54. Upon informationand belief, Kand's infringement ofthe '397patent is willful and

Devicor shouldbeawarded increased damagespursuant to 35 U.S.C. 284 and attorneys fees


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PRAYER FORRELIEF

WHEREFORE, Devicor prays that this Court:

A. Enter judgment in favorof Devicorthat Kand directly and/orindirectly infringes

claims of each of the five Devicorpatents identified herein;

B. Enter judgment enjoining Kand from selling, offering to sell, orusing, anyproduct

that infringes anyclaim ofany of the five Devicor patents identified above;

C. Award Devicordamages pursuant to 35 U.S.C. 284, including costs and pre- and

post-judgment interest;

D. Award Devicor enhanced damages under 35 U.S.C. 284 as a result ofKand's

willful infringement ofDevicor'spatents;

E. Declare this case exceptional under 35 U.S.C. 285 and award Devicor reasonable

attorneys' fees, costs, and expenses; and

F. Award Devicorsuch other reliefas the Court deemsjust and appropriate.

Dated: October4 , 2 0 1 3 A R E N T F O X L L P

By: /s/ Michael L. Turrill

MICHAEL TURRILLAttorneys for PlaintiffDEVICORMEDICAL PRODUCTS, INC.

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DEMAND FOR JURY TRIAL

Pursuant to Federal Rule ofCivil Procedure 38(b), Devicor demands a jury trial on all

issues so triable.

Dated: October4 , 2 0 1 3 A R E N T F O X L L P

By: /s/ Michael L. Turrill

MICHAEL TURRILLAttorneys forPlaintiffDEVICOR MEDICAL PRODUCTS, INC.

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COMPLAINT FOR PATENT INFRINGEMENT

Documents

Devicor Medical Products v. Kand Medical