7/27/2019 Devicor Medical Products v. Kand Medical
1/11
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
1718
19
20
21
22
23
24
25
26
27
28
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
7/27/2019 Devicor Medical Products v. Kand Medical
2/11
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
1718
19
20
21
22
23
24
25
26
27
28
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
7/27/2019 Devicor Medical Products v. Kand Medical
3/11
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
1718
19
20
21
22
23
24
25
26
27
28
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
-_2z
COMPLAINT FORPATENT INFRINGEMENT
7/27/2019 Devicor Medical Products v. Kand Medical
4/11
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
1718
19
20
21
22
23
24
25
26
27
28
LLP
" LA W
K S
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
7/27/2019 Devicor Medical Products v. Kand Medical
5/11
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
1718
19
20
21
22
23
24
25
26
27
28
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.
24. On information and belief, Kand has infringed and continues to infringe, directly
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
-_4_-
COMPLAINTFORPATENT INFRINGEMENT
7/27/2019 Devicor Medical Products v. Kand Medical
6/11
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
1718
19
20
21
22
23
24
25
26
27
28
LLP
" LAW
I-:S
others, including,but not limited to, doctors, to perform actions knownby Kand to be acts of
infringement ofthe '782patent with intent that those performing the acts infringe the '782patent.
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.
27. By infringing the '782patent, Kand has caused and will continue to cause Devicor
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
pursuant to 35 U.S.C. 285.
THIRD CAUSE OF ACTION
INFRINGEMEN T OF U.S. PATEN T N O. 6.699.205
31. Devicorrealleges and incorporatesby reference the allegations ofparagraphs 1-30
herein.
32. On information and belief, Kand has infringed and continues to infringe, directly
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.
-5_:
COMPLAINT FORPATENT INFRINGEMENT
7/27/2019 Devicor Medical Products v. Kand Medical
7/11
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
1718
19
20
21
22
23
24
25
26
27
28
33. On information andbelief, Kand has specifically induced and continues to induce
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.
34. Kand also contributes to infringement ofthe '205patent in violation of35 U.S.C.
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
commodities suitable forsubstantial, non-infringing use.
35. By infringing the '205patent, Kand has caused and will continue to cause Devicor
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
pursuant to 35 U.S.C. 285.
FOURTH CAUSE OF ACTION
INFRINGEMENT OF U.S. PATENT NO. 7,229,417
39. Devicorrealleges and incorporatesby reference the allegations ofparagraphs 1-38
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
-_6-
COMPLAINTFORPATENT INFRINGEMENT
7/27/2019 Devicor Medical Products v. Kand Medical
8/11
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
1718
19
20
21
22
23
24
25
26
27
28
LLP
" LA W
I- S
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.
43. By infringing the '417patent, Kand has caused and will continue to cause Devicor
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
at law, unless and until Kand is enjoined from infringing Devicor'spatents.
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.
- 7 -
COMPLAINT FORPATENT INFRINGEMENT
7/27/2019 Devicor Medical Products v. Kand Medical
9/11
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
1718
19
20
21
22
23
24
25
26
27
28
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.
49. On information andbelief, Kand has specifically induced and continues to induce
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
infringement ofthe '397patent with intent that those performing the acts infringe the '397patent.
50. Kand also contributes to infringement ofthe '397patent in violation of35 U.S.C.
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
commodities suitable forsubstantial, non-infringing use.
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
at law, unless and until Kand is enjoined from infringing Devicor'spatents.
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
pursuant to 35 U.S.C. 285.
- 8 -
COMPLAINT FORPATENT INFRINGEMENT
7/27/2019 Devicor Medical Products v. Kand Medical
10/11
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
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.
- 9 -
COMPLAINT FORPATENT INFRINGEMENT
7/27/2019 Devicor Medical Products v. Kand Medical
11/11
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
1718
19
20
21
22
23
24
25
26
27
28
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.
- 10 -
COMPLAINT FOR PATENT INFRINGEMENT
Top Related