HEART IMAGING TECHNOLOGIES, LLC v. MERGE HEALTHCARE INCORPORATED
Filing
95
MEMORANDUM OPINION AND ORDER signed by JUDGE JAMES A. BEATY, JR on 8/14/2013, that Plaintiff Heart Imaging Technologies, LLC's Motion for a Preliminary Injunction [Doc. # 15 ] is hereby DENIED, as set herein. (Butler, Carol)
IN THE UNITED STATES DISTRICT COURT
FOR THE MIDDLE DISTRICT OF NORTH CAROLINA
HEART IMAGING
TECHNOLOGIES, LLC,
Plaintiff,
v.
MERGE HEALTHCARE
INCORPORATED,
Defendant.
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1:12CV1020
MEMORANDUM OPINION AND ORDER
BEATY, District Judge.
This matter is before the Court on a Motion for a Preliminary Injunction [Doc. #15]
filed by Plaintiff Heart Imaging Technologies, LLC (“Plaintiff” or “Heart IT”). Defendant
Merge Healthcare Incorporated (“Defendant” or “Merge”) opposes Heart IT’s Motion for a
Preliminary Injunction. The Motion was fully briefed as of March 16, 2013, and the Court held
a hearing on the Motion on July 16, 2013.1 Based on the arguments and information presented
by the parties in briefing and at the hearing, the Court will deny Heart IT’s Motion for a
Preliminary Injunction.
I.
FACTUAL AND PROCEDURAL BACKGROUND
This case involves a patent dispute related to U.S. Patent No. 6,934,698 (“’698 Patent”),
U.S. Patent No. 7,457,656 (“’656 Patent”), and U.S. Patent No. 8,166,381 (“’381 Patent”). Heart
1
The Court notes that the scope of the hearing was limited to the arguments and
evidence presented in the parties’ briefing on the Motion for a Preliminary Injunction completed
on March 16, 2013. As such, the Court’s disposition of the Motion for a Preliminary Injunction
is limited to such arguments as well.
IT is the sole owner of the three Patents at issue in the underlying matter. In its Complaint,
Heart IT alleges three counts of infringement against Merge regarding the ’698 Patent, the ’656
Patent, and the ’381 Patent. Specifically, Heart IT alleges that a series of products created by
Merge, including Cedara WebAccess, iConnect Access, and Merge Honeycomb2 (“Accused
Products”), infringe upon Heart IT’s three Patents. In response to Heart IT’s Complaint, Merge
filed an Answer denying any infringement and asserting counterclaims for a declaratory
judgment of non-infringement and invalidity as to all three Patents.
Each of the three Patents at issue in the underlying infringement action generally address
medical image conversion and management technology. However, Heart IT’s Motion only seeks
an injunction to prevent Merge from infringing claim 1 of the ’381 Patent. As such, the Court
need only consider the ’381 Patent at this time. The ’381 Patent was filed as US Application
Serial No. 11/238,406 on September 29, 2005, as a continuation of the ’656 Patent, and was
officially issued on April 24, 2012. (Pl.’s Opening Mem. [Doc. #16], at 7).3 Prior to the ’381
Patent, Heart IT contends that “a standard output format called DICOM (Digital Imaging and
Communications in Medicine) [had] been adopted by the imaging industry.” (Pl.’s Opening
2
Despite being referred to by three different names, the Accused Products consist of only
two products, as iConnect Access and Cedara WebAccess are different names for the same
product. iConnect Access, formerly named Cedara WebAccess, is classified by Merge as “a
‘zero-download’ medical image viewer that allows users to view medical images in a browser.”
(Def.’s Initial Response Brief [Doc. #26], at 4). Merge Honeycomb classified by Merge as a
“cloud-based product that allows users to upload, download, view, and share medical images”
and the “viewing of images is only one of Honeycomb’s features.” (Def.’s Initial Response Brief
[Doc. #26], at 4).
3
When referring to the page numbers of documents cited throughout this Memorandum
Opinion and Order, the Court will use the page numbers assigned to the document by the
Clerk’s Office during docketing rather than the page number assigned by Heart IT or Merge.
2
Mem. [Doc. #16], at 7). However, DICOM files were not “viewable on a browser” and instead
required a computer to have “specialized software (e.g., plugs-ins) [to] enable [the computer]
to view the DICOM files.” (Pl.’s Opening Mem. [Doc. #16], at 4). More specifically, Heart IT
contends that the large size of DICOM files causes delayed transfer times and takes up a large
amount of disk space. (Pl.’s Opening Mem. [Doc. #16], at 4). Additionally, plug-ins or thirdparty software are necessary to enable the viewing of DICOM images, and this additional
software takes time and effort to download, install, and maintain on each user device. (Pl.’s
Opening Mem. [Doc. #16], at 4). Heart IT contends that the ’381 Patent addressed both of
these limitations by “translating DICOM files into simpler, browser-compatible formats (e.g.,
GIF or PNG images) before sending them to the user’s device, while retaining diagnostic quality.”
(Pl.’s Opening Mem. [Doc. #16], at 5). Heart IT refers to this technology as “zero-footprint”
technology because the end user only needs a standard Internet browser to view and manipulate
the images. (Pl.’s Opening Mem. [Doc. #16], at 4).
For the purposes of Heart IT’s Motion for a Preliminary Injunction, the relevant portion
of the ’381 Patent is claim 1,which reads as follows:
1. A method of managing medical information comprising:
receiving at a first computer a plurality of image series resulting from a patient medical
imaging procedure, each image series comprising one or more digital medical images in
a format that is incompatible with displaying in an Internet web browser;
providing a pointer associated with the patient medical imaging procedure;
in response to user selection of the pointer at a second computer,
providing an Internet web page for display in an Internet web browser on the second
computer, the Internet web page forming a user interface for a medical image
workstation when displayed in the Internet web browser without requiring software
executing outside the Internet web browser on the second computer, the user interface
3
comprising a rectangular grid of one or more rows and one or more columns for
simultaneously displaying a plurality of navigational images in the user interface of the
Internet web page, and
providing to the user the plurality of navigational images for display in the user interface
of the Internet web page, the plurality of navigational images corresponding to different
ones of the image series from the patient medical imaging procedure, the plurality of
navigational images comprising a format that is compatible for displaying in an Internet
web browser without requiring software executing outside the Internet web browser on
the second computer, the plurality of navigational images being converted to a browser
compatible format before being transmitted over the Internet, and
in response to user selection of one of the plurality of navigational images, providing to
the user the one or more digital medical images of the image series associated with the
selected one of the navigational images for display in the user interface of the Internet
web page, the one or more digital medical images comprising a format that is compatible
for displaying in the Internet web browser without requiring software executing outside
the Internet web browser on the second computer, the one or more digital medical
images providing medical information to the user, the one or more digital medical images
being converted to a browser compatible format before being transmitted to the second
computer,
wherein the medical image workstation enables user navigation among the plurality of
navigational images and the one or more digital medical images of the image series to
permit medical diagnosis from the one or more digital medical images without requiring
software executing outside the Internet web browser.
(’381 Patent, col. 11, lines 19-62, col. 12, lines 1-8).
More generally, Heart IT describes the patented process in claim 1 as follows:
Independent Claim 1 generally covers a method that (1) receives multiple medical
image series on a first computer in a format that is incompatible with viewing on
an Internet browser; (2) provides a pointer associated with the imaging procedure;
(3) when the user selects the pointer, it displays an Internet web page that
emulates a medical image workstation, including a grid showing one or more
navigational images, using only the browser on the user’s computer; (4) the
navigational images each represent an image series from the study, and the
navigational images are converted to a browser compatible format before being
sent over the Internet as part of the web page; (5) when the user selects a
navigational image, it displays the medical images of the series in the web page to
provide medical information to the user, and the medical images are converted
to a browser compatible format before being sent over the Internet; (6) thereby
permitting diagnosis by giving users navigational images and diagnostic quality
4
image series in browser-compatible formats over the Internet.
(Pl.’s Opening Mem. [Doc. #16], at 8).
In its Motion for a Preliminary Injunction, Heart IT alleges that Merge’s Accused
Products operate in the same manner as the patented process described above and therefore
infringe claim 1 of the ’381 Patent. Specifically, Heart IT alleges that in 2006, Merge’s medical
imaging viewer was “based on the conventional design requiring specialized software in order
to view the DICOM files, namely an Active-X plug in.” (Pl.’s Opening Mem. [Doc. #16], at 5).
However, Heart IT contends that in 2008 and 2009, after visiting Heart IT’s online
demonstration of its zero-footprint technology, Merge received approval from the FDA to
market a new medical image viewer which utilized zero-footprint technology, and this
technology is now utilized within the Accused Products. Based on this alleged infringement,
Heart IT now seeks a preliminary injunction to “prevent [Merge] from infringing on the [’381
Patent] by selling its Accused Products, including Cedara WebAccess, iConnect Access, and
Merge Honeycomb . . . pending trial of this matter.” (Motion for a Preliminary Injunction [Doc.
#15], at 1).4
II.
MOTION FOR A PRELIMINARY INJUNCTION
“Injunctive relief in patent cases is authorized by 35 U.S.C. § 283.” Anton/Bauer, Inc.
v. PAG, Ltd., 329 F.3d 1343, 1348 (Fed. Cir. 2003). Generally, “a preliminary injunction is an
4
The Court notes that at the hearing, Heart IT clarified that its Motion for a Preliminary
Injunction seeks to enjoin Merge from any new advertising or sales of its Accused Products, but
does not seek to enjoin the continued use of the Accused Products that have already been
purchased and/or are already in use.
5
extraordinary remedy never awarded as of right.” Winter v. Natural Res. Def. Council, Inc., 555
U.S. 7, 24, 129 S. Ct. 365, 376, 172 L. Ed. 2d 249 (2008). A movant seeking injunctive relief
must establish four elements before such relief may issue: (1) it is likely to succeed on the merits;
(2) it is likely to suffer irreparable harm in the absence of preliminary relief; (3) the balance of
equities tips in its favor; and (4) an injunction is in the public interest. Winter, 555 U.S. at 20,
129 S. Ct. at 374. All four elements must be satisfied for the Court to grant a preliminary
injunction. Id. In that regard, as the party seeking a preliminary injunction, Heart IT bears the
burden of proof on each of these four elements. Reebok Int’l Ltd. v. Baker, Inc., 32 F.3d 1552,
1555 (Fed. Cir. 1994). To determine whether Heart IT has satisfied its burden, the Court will
analyze each element individually.
A.
LIKELIHOOD OF SUCCESS ON THE MERITS
“[A]t the preliminary injunction stage, because of the extraordinary nature of the relief,
the patentee carries the burden of showing likelihood of success on the merits with respect to the
patent’s validity, enforceability, and infringement.” Nutrition 21 v. United States, 930 F.2d 867,
869 (Fed. Cir. 1991) (emphasis in original). “[T]he [patentee] must show, in light of the burdens
that will inhere at trial, that (1) it will likely prove infringement and (2) any challenges to the
validity and enforceability of its patent ‘lack substantial merit.’” Anton/Bauer, Inc., 329 F.3d at
1348. Still, a patentee need only show that it will likely prove infringement and validity as to “at
least one valid and enforceable patent claim.” Abbott Labs. v. Andrx Pharm., Inc., 473 F.3d
1196, 1201 (Fed. Cir. 2007) (“Abbott II”).
However, an accused infringer can successfully challenge a patentee’s showing of a
6
likelihood of success by raising a “‘substantial question’ concerning validity, enforceability, or
infringement.” Abbott Labs. v. Andrx Pharm., Inc., 452 F.3d 1331, 1335 n.2 (Fed. Cir. 2006)
(“Abbott I”).
If the alleged infringer raises a substantial question regarding validity,
enforceability, or infringement and the patentee cannot show that such question “lacks
substantial merit,” a preliminary injunction should not issue. Id.
For the purposes of Heart IT’s Motion for a Preliminary Injunction, claim 1 of the ’381
Patent is the only relevant claim. Thus, Heart IT must show that (1) it likely will prove Merge’s
Accused Products infringe on claim 1 of the ’381 Patent and (2) that claim 1 of the ’381 Patent
likely will withstand Merge’s challenges to its validity. Each of these requirements will be
discussed in turn.
1.
Likelihood of Success: Infringement on Claim 1 of the ’381 Patent
A determination of patent infringement requires a two-step analysis: (1) the proper
construction of the asserted claim and (2) a determination as to whether the accused method or
product infringes the asserted claim as properly construed. Vitronics Corp. v. Conceptronic,
Inc., 90 F.3d 1576, 1581-82 (Fed. Cir. 1996). As such, to evaluate the likelihood that Heart IT
will successfully show that Merge’s Accused Products infringe on claim 1 of the ’381 Patent, the
Court must consider both steps in the infringement analysis.
a.
Step 1: Claim Construction of the Asserted Claim
With regard to claim construction, at the preliminary injunction stage, “a district court
does not have to conduct a comprehensive and final claim construction.” Shuffle Master, Inc.
v. VendingData Corp., 163 F. App’x 864, 867 (Fed. Cir. 2005). Instead, “[d]istrict courts may
7
engage in a rolling claim construction, in which the court revisits and alters its interpretation of
the claim terms as its understanding of the technology evolves.” Jack Guttman, Inc. v.
Kopykake Enter., Inc., 302 F.3d 1352, 1361 (Fed. Cir. 2002). “A district court therefore is at
liberty to change the construction of a claim term as the record in a case evolves after a
preliminary injunction appeal.” Transonic Sys., Inc. v. Non-Invasive Med.Tech. Corp., 75 Fed.
App’x 765, 774 (Fed. Cir. 2003). However, because a court still has the “duty to determine
whether the movant is likely to prevail on the merits . . . if that question turns on a contested
issue of claim construction, the court must give the claim construction issue the attention
necessary to determine the likelihood of success.” Shuffle Master, Inc., 163 F. App’x at 868.
In that regard, the Court here must perform a tentative claim construction for the purposes of
determining the likelihood that Heart IT will succeed on its infringement claim.
In performing a claim construction analysis, it is well-settled that, in interpreting an
asserted claim, a court should look to the intrinsic evidence of record, including “the claims, the
specification and, if in evidence, the prosecution history.” Vitronics Corp., 90 F.3d at 1582.
First, a court should “look to the words of the claims themselves, both asserted and nonasserted,
to define the scope of the patented invention.” Id. Generally, the words of a patent claim are
“given their ordinary and customary meaning,” that is, the “meaning that the term would have
to a person of ordinary skill in the art in question at the time of the invention, i.e., as of the
effective filing date of the patent application.” Phillips v. AWH Corp., 415 F.3d 1303, 1312-13
(Fed. Cir. 2005) (internal quotations omitted). “Importantly, the person of ordinary skill in the
art is deemed to read the claim term not only in the context of the particular claim in which the
8
disputed term appears, but in the context of the entire patent, including the specification.” Id.
at 1313.
Second, a court must also “review the specification to determine whether the inventor
has used any terms in a manner inconsistent with their ordinary meaning.” Vitronics Corp., 90
F.3d at 1582. The specification “contains a written description of the invention which must be
clear and complete enough to enable those of ordinary skill in the art to make and use it.” Id.
Thus, the “specification acts as a dictionary when it expressly defines terms used in the claims
or when it defines terms by implication.” Id. Accordingly, “the specification is always highly
relevant to the claim construction analysis” and “[u]sually, it is dispositive.” Id.
The third type of intrinsic evidence a court should consider is the patent’s prosecution
history, if it is in evidence. Id. This history, if available, “contains the complete record of all the
proceedings before the Patent and Trademark Office, including any express representations
made by the applicant regarding the scope of the claims.” Id. “As such, the record before the
Patent and Trademark Office is often of critical significance in determining the meaning of the
claims.” Id. However, “because the prosecution history represents an ongoing negotiation
between the PTO and the applicant, rather than the final product of that negotiation, it often
lacks the clarity of the specification and thus is less useful for claim construction purposes.”
Phillips, 415 F.3d at 1317.
Where an analysis of the intrinsic evidence alone will resolve any ambiguity in a disputed
claim term, it is improper to rely on extrinsic evidence. Vitronics Corp., 90 F.3d at 1583.
However, if intrinsic evidence cannot resolve an ambiguity in a disputed term, extrinsic evidence
9
may be considered. Id. Extrinsic evidence “consists of all evidence external to the patent and
prosecution history, including expert and inventor testimony, dictionaries, and learned treatises.”
Phillips, 415 F.3d at 1317.
Still, extrinsic evidence should only be used for a court’s
understanding of the patent and “not for the purpose of varying or contradicting the terms of
the claims.” Markman v. Westview Instruments, Inc., 52 F.3d 967, 981 (Fed. Cir. 1995).
In the context of Heart IT’s Motion for a Preliminary Injunction, the parties dispute the
construction of the claim term “software executing outside the Internet web browser” and the
claim term “incompatible with displaying in an Internet web browser.” These disputed claim
terms will be discussed in turn.5
1.“[without requiring] software executing outside the Internet web
browser”6
The above referenced claim term is included within claim 1 of the ’381 Patent. Heart IT
5
The Court notes that at this time, the parties have provided a Joint Claim Construction
and Prehearing Statement [Doc. #55] for the claim construction proceeding in the underlying
matter. This Joint Statement indicates that the parties dispute six claim terms within claim 1 of
the ’381 Patent. However, as the Court noted in its July 8, 2013 Order, the Court’s
consideration of Heart IT’s Motion for a Preliminary Injunction is limited to the claim terms
and proposed constructions offered by the parties in the briefing on the Motion for a
Preliminary Injunction that was completed on March 16, 2013. The Court may subsequently
adjust any constructions made during the preliminary injunction stage if necessary as the case
proceeds. See Transonic Sys., Inc, 75 Fed. App’x at 774 (“A district court . . . is at liberty to
change the construction of a claim term as the record in a case evolves after a preliminary
injunction appeal.”).
6
Each of the four times the claim term “software executing outside the Internet web
browser” is used within claim 1, it is immediately preceded by the phrase “without requiring.”
Thus, a more complete construction of the claim term includes a consideration of the entire
claim phrase “[without requiring] software executing outside the Internet web browser,” as the
distinct nature of the claim lies in the “zero-footprint” technology, which enables a user to view
images without the installation of any software to facilitate the viewing.
10
proposes that the claim term be construed as “[without requiring] external software that
facilitates the presentation of images, as exemplified by JAVA and MPEG viewers.” However,
Merge proposes that the claim term be construed as “[without requiring] software other than
the Internet web browser.” The claim term appears four times throughout claim 1 of the ’381
Patent in the following contexts (emphasis added to disputed claim term):
. . . providing an Internet web page for display in an Internet web browser on the second
computer, the Internet web page forming a user interface for a medical image
workstation when displayed in the Internet web browser without requiring software executing
outside the Internet web browser on the second computer, the user interface comprising a
rectangular grid of one or more rows and one or more columns for simultaneously
displaying a plurality of navigational images in the user interface of the Internet web
page, and
providing to the user the plurality of navigational images for display in the user interface
of the Internet web page, the plurality of navigational images corresponding to different
ones of the image series from the patient medical imaging procedure, the plurality of
navigational images comprising a format that is compatible for displaying in an Internet
web browser without requiring software executing outside the Internet web browser on the second
computer, the plurality of navigational images being converted to a browser compatible
format before being transmitted over the Internet, and
in response to user selection of one of the plurality of navigational images, providing to
the user the one or more digital medical images of the image series associated with the
selected one of the navigational images for display in the user interface of the Internet
web page, the one or more digital medical images comprising a format that is compatible
for displaying in the Internet web browser without requiring software executing outside the
Internet web browser on the second computer, the one or more digital medical images
providing medical information to the user, the one or more digital medical images being
converted to a browser compatible format before being transmitted to the second
computer,
wherein the medical image workstation enables user navigation among the plurality of
navigational images and the one or more digital medical images of the image series to
permit medical diagnosis from the one or more digital medical images without requiring
software executing outside the Internet web browser.
(’381 Patent , col. 11, lines 30-62, col. 12, lines 1-8).
11
The first dispute between the parties regarding the construction of “[without requiring]
software executing outside the Internet web browser” involves determining from which
computer or computers software must be excluded. Within claim 1, three of the four times the
claim term “[without requiring] software executing outside the Internet web browser” is used,
the claim term is immediately followed by the phrase “on the second computer,” thereby
specifying that the patented process allows the images to be viewed on the second computer
“[without requiring] software executing outside the Internet web browser on the second computer.”
((’381 Patent , col. 11, lines 30-62, col. 12, lines 1-2). However, the fourth use of the claim term
is not followed by the phrase “on the second computer.” Instead, the fourth use of the claim
term is as follows:
wherein the medical image workstation enables user navigation among the plurality of
navigational images and the one or more digital medical images of the image series to
permit medical diagnosis from the one or more digital medical images without requiring
software executing outside the Internet web browser.
(’381 Patent col. 12, lines 3-8). Based on the absence of the phrase “on the second computer”
following the fourth use of the disputed claim term, Merge contends that a construction of the
claim term must encompass a process that does not require software executing outside the
Internet web browser “on the first computer, on the second computer, or any other computer.”
(Merge Surreply [Doc. #36], at 4). In that regard, Merge argues that its proposed construction
of “[without requiring] software other than the Internet web browser” is necessary because it
encompasses the fourth use of the claim term which must be read as excluding any external
software at the first computer, second computer, or any other computer.
In response, Heart IT argues that Merge’s contention regarding the absence of the “on
12
the second computer” language following the fourth use of the disputed claim term “violates
normal claim construction rules and ignores overwhelming intrinsic evidence to the contrary.”
(Response to Surreply [Doc. #47], at 2). Heart IT contends that claim 1 of the ’381 Patent is
“constructed so that each of the . . . claim elements build on the previous element.” (Response
to Surreply [Doc. #47], at 2). The first three times the disputed term is used within claim 1, it
is in the context of detailing what the first computer must “provide” in response to an action
by the user on the second computer, while the fourth use of the disputed term does not contain
any “providing” language. Instead, the fourth use of the disputed term is preceded by a
“wherein” clause, which Heart IT contends “summarizes the previous five elements and adds
the requirement that the claimed system ‘permits medical diagnosis from the one or more digital
medical images.’” (Response to Surreply [Doc. #47], at 2).
A consideration of the prosecution history of the ’381 Patent supports Heart IT’s
contention that the absence of the phrase “on the second computer” following the fourth use
of the disputed claim term does not necessitate a construction requiring software to be excluded
from the first computer, the second computer, or any other computer. The disputed claim term
“[without requiring] software executing outside the Internet web browser” was added during the
prosecution history of the ’381 Patent, following the ’381 Patent’s rejection for being
unpatentable in light of a U.S. Patent No. 6,349,330 (“the Bernadett Patent”) and U.S. Patent
No. 2002/0018254 (“the Saito Patent”). The prosecution history noted that the Bernadett
Patent “teaches a method that requires software executing outside an Internet web browser,
namely an MPEG viewer, to view a lossy medical image movie file, and that viewing that movie
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file using that external software is a prerequisite for viewing lossless, diagnostic quality medical
images selected from among the frames of the movie file.” (PTO Action [Doc. #33-2], at 7).
While the Bernadett Patent’s system is “incapable of viewing any medical images without using
software executing outside the Internet web browser, namely an MPEG viewer,” the
prosecution history notes that the ’381 Patent “claims a method for a medical image workstation
that enables user navigation among a plurality of navigational images and one or more digital
medical images to permit medical diagnosis from the one or more medical images - - without
requiring software executing outside the Internet web browser.” (PTO Action [Doc. #33-2],
at 8).
Further, the Patent Examiner’s Interview Summary dated February 24, 2012 contains a
statement addressing the differences between the newly added claims to the ’381 Patent and the
Bernadett and Saito Patents. In the statement, the Patent Examiner recognizes that in the
Bernadett and Saito Patents, “though the medical images are converted to the web format, these
web format images are viewed on the web browser with an additional software unlike in the
invention, the medical images are viewed on the web browser without any software executing
outside the web browser.” (Examiner Interview Summary [Doc. #33-3], at 1).
This prosecution history supports Heart IT’s contention that a proper construction of
“[without requiring] software executing outside the Internet web browser” will only exclude such
software from the second computer in the process, despite the phrase “on the second
computer” being omitted from the fourth use of the claim term. The prosecution history
evidences a distinction made between the “viewing” of medical images under the Bernadett
14
Patent and the ’381 Patent. The Interview Summary also focuses on the use of external software
in the “viewing” of medical images, noting that in the ’381 Patent, the medical images are
“viewed on the web browser without any software executing outside the web browser” unlike
the Bernadett Patent which requires images to be “viewed on the web browser with an
additional software.” (Examiner Interview Summary [Doc. #33-3], at 1). The “viewing” of
images discussed in both Patents necessarily takes place at the second computer, as the ’381
Patent claims a process that involves receiving medical images at a first computer that are then
accessed by a user on a second computer for the purposes of viewing the image and permitting
medical diagnosis. Thus, based on the claim language itself and the prosecution history, the
Court finds that a proper construction of the disputed term applies to software on the second
computer, where the user is viewing images, and not to software on the first computer or any
other computer in the process.
However, even construing the disputed claim term to limit only the use of certain
software on the second computer, Merge argues that its construction of “[without requiring]
software other than the Internet web browser” is more plainly supported by the ’381 Patent
claim language. Merge supports this contention by focusing on the word “outside” in the claim
language. Because the claim language covers a process that does not require software executing
“outside” the Internet web browser, Merge contends that the claim language “does not preclude
the usage of plug-ins such as Flash, Java Applets, Silverlight, etc. because such web browser
plug-ins can be considered to be ‘software executing inside the Internet web browser.’”
(Declaration of Atul Agarwal [Doc. #29], at 3). However, this construction of “outside” is not
15
supported by the intrinsic evidence of the ’381 Patent. Instead, the specification specifically
distinguishes the claimed system from a system in which a Java program runs inside the web
browser on the second computer. For example, the specification notes that “[u]sing the ‘Java’
model, the client is no longer simply using the browser to view ‘static’ files downloaded from
the server, but rather in addition the client’s computer is running a program that was sent from
the server.” (’381 Patent, col. 3, lines 24-26). The specification further highlights some of the
disadvantages of using a “Java” model, including “additional [wait] time while the ‘Java’ code is
downloaded” and frequent problems with the Java code “caus[ing] browser’s to ‘crash.’” (’381
Patent, col. 3, lines 27-34). However, the ’381 Patent claims a process which purportedly
“overcome[s]” the “limitations of current Internet standards,” including those of the Java model.
(’381 Patent, col. 4, lines 9-10). Thus, Merge’s contention that the ’381 Patent does not claim
a process excluding software running inside the Internet web browser, such as certain Java or
other plug-ins, is not supported by the intrinsic evidence of the ’381 Patent.
In that regard, Heart IT’s proposed construction of “[without requiring] external software
that facilitates the presentation of images, as exemplified by JAVA and MPEG viewers” is the
most appropriate construction at this time. Based on the intrinsic evidence of the ’381 Patent,
the use of the term “external” in Heart IT’s proposed construction is most properly understood
to refer to software external to the Internet web browser software itself, whether such software
runs outside of the Internet web browser or runs inside of the Internet web browser. Further,
Heart IT’s proposed construction evidences that the disputed claim term is limited to excluding
software necessary to facilitate the viewing of images on the second computer and does not
16
extend to excluding software unrelated to the viewing of images.
In contrast, Merge’s proposed construction of “[without requiring] software other than
the Internet web browser” broadens the scope of the claim term beyond the claim language by
seeking to exclude software from all computers used in the process. Further, Merge’s proposed
construction seeks to exclude all software other than the Internet web browser itself, whether
or not such software is necessary to facilitate the viewing of images.7 In that regard, Merge’s
proposed construction is broader than necessary and is not properly supported by the claim
language and specification, which indicate that any software exclusion is limited to software
necessary to facilitate the viewing of images on the second computer. Accordingly, at this stage,
the Court finds that Heart IT’s proposed construction of “[without requiring] external software
that facilitates the presentation of images, as exemplified by JAVA and MPEG viewers” is the
most appropriate construction.
2. “incompatible with displaying in an Internet web browser”
The above referenced claim term is included within claim 1 of the ’381 Patent. Heart IT
proposes that the claim term be construed as “a format that cannot be viewed in a standard
Internet web browser without the assistance of external software that facilitates the presentation
7
More specifically, Merge argues that navigation between user images on the second
computer in the Accused Products necessarily requires software other than the Internet web
browser, including “software for controlling an input device (such as a mouse) and software
used to translate DICOM images into another format (such as PNG).” (Def.’s Initial Response
Brief [Doc. #26], at 9). However, the claim language, specification, and prosecution history of
the ’381 Patent do not support a construction excluding the use of any software outside of the
Internet web browser on the second computer. Instead, an appropriate construction excludes
only software relating to the viewing of images.
17
of images.” However, while Merge raises the contention in its initial brief that this term is
“ambiguous,” Merge does not propose a specific construction of the term in its Surreply Brief.
Thus, Merge’s response is most appropriately interpreted as a contention that the claim term is
indefinite and cannot be construed. As a threshold matter, in order to prove indefiniteness of
a claim term, Merge must “demonstrate by clear and convincing evidence that one of ordinary
skill in the relevant art could not discern the boundaries of the claim based on the claim
language, the specification, the prosecution history, and the knowledge in the relevant art.”
Volumetrics Med. Imaging, LLC v. Toshiba Am. Med. Sys., Inc., 2011 WL 6934603, at *5
(M.D.N.C. Dec. 30, 2011) (citing Haemonetics Corp. v. Baxter Healthcare Corp., 607 F.3d 776,
783 (Fed. Cir. 2010)).
Here, the disputed claim term appears only once in the first element of claim 1 of the
’381 Patent as follows (emphasis on disputed term):
receiving at a first computer a plurality of image series resulting from a patient medical
imaging procedure, each image series comprising one or more digital medical images in
a format that is incompatible with displaying in an Internet web browser.
(’381 Patent, col. 11, lines 21-25).
The specification of the ’381 Patent indicates that the Patent emerged from a “realization that
if medical images of different formats could be processed in such a way that limitations of
current Internet standards could be overcome, any standard Internet browser could be used as
a diagnostic workstation to allow any medical image to be viewed from any location on earth
without specialized hardware or software.” (’381 Patent, col. 4, lines 6-13). The claim language
further indicates that images requiring specialized hardware or software to facilitate viewing are
18
in such formats considered “incompatible with displaying in an Internet web browser.” (’381
Patent, col. 11, lines 24-25). Examples of such “incompatible” formats are provided within the
specification, which specifically highlights “a variety of formats which are standard but cannot
be displayed by browsers, such as, for example, DICOM.” (’381 Patent, col. 7, lines 25-31).
Thus, the specification indicates that certain image formats will require additional steps in order
to be capable of being viewed in an Internet web browser. However, the ’381 Patent claims a
process by which such incompatible formats are converted on the first computer into formats
capable of being viewed in an Internet web browser.
In that regard, Heart IT’s proposed construction of the disputed claim term
“incompatible with displaying in an Internet web browser” as “a format that cannot be viewed
in a standard Internet web browser without the assistance of external software that facilitates the
presentation of images” is supported by the intrinsic evidence of the ’381 Patent. As such,
Merge’s indefiniteness argument necessarily fails because it is possible for one with ordinary skill
in the art to discern the boundaries of the disputed claim term. Accordingly, at this stage, the
Court finds that Heart IT’s proposed construction of “a format that cannot be viewed in a
standard Internet web browser without the assistance of external software that facilitates the
presentation of images” is the most appropriate construction.
b.
Step 2: Infringement Analysis
After construing the disputed claim terms, the Court must now consider whether Merge’s
Accused Products infringe upon claim 1 of the ’381 Patent. This step involves a “comparison
of the claim to the accused device” and “requires a determination that every claim limitation or
19
its equivalent be found in the accused device.” Oakley, Inc. v. Sunglass Hut Int’l, 316 F.3d 1331,
1339 (Fed. Cir. 2003). Further, if Merge has raised a “‘substantial question’ concerning . . .
infringement” and Heart IT has not shown that such question “lacks substantial merit,” a
preliminary injunction should not issue. Abbott I, 452 F.3d at 1335 n.2.
To support a showing of infringement, Heart IT offers the Declaration of its expert, Dr.
John Grizzard, a radiologist and an associate professor of diagnostic radiology at Virginia
Commonwealth University. Dr. Grizzard compares each element of claim 1 of the ’381 Patent
to the process utilized in Merge’s Honeycomb product by accessing Merge’s Honeycomb
website.8 Dr. Grizzard first obtained publicly available medical images in a DICOM format,
then logged onto the Merge Honeycomb website and uploaded the DICOM formatted images
onto Merge’s Honeycomb server computer, which is properly considered the “first computer”
for the purposes of the ’381 Patent. (Declaration of Dr. Grizzard [Doc. #16-1], at 4). After
uploading these DICOM images to Merge’s Honeycomb server computer, Dr. Grizzard
contends that Honeycomb created a “pointer” associated with the uploaded images, just as the
’381 Patent provides for “a pointer associated with the patient medical imaging procedure.”
(’381 Patent, col. 11, lines 26-27). Next, upon selection of the pointer on Dr. Grizzard’s
computer, which is properly considered the “second computer” for the purposes of the ’381
Patent, Dr. Grizzard contends that Honeycomb responded by sending a webpage with a user
interface of a medical image workstation which displayed on Dr. Grizzard’s computer “without
8
Dr. Grizzard states that “the underlying functionality of Honeycomb is identical to
iConnect Access,” making his infringement analysis applicable to both of the Accused Products.
(Declaration of Dr. Grizzard [Doc. #16-1], at 2).
20
any software other than the browser.” (Declaration of Dr. Grizzard [Doc. #16-1], at 5).
Further, Dr. Grizzard contends that the navigational images provided by the Honeycomb “were
converted to a browser-compatible format before being transmitted over the Internet by
Honeycomb server.” (Declaration of Dr. Grizzard [Doc. #16-1], at 6). Specifically, the images
accessed by Dr. Grizzard were received in portable network graphics (“PNG”) formats.
(Declaration of Dr. Grizzard [Doc. #16-1], at 6). Finally, Dr. Grizzard contends that the
Honeycomb image workstation on his computer allowed him to access navigational images and
full image series in a browser-compatible format sufficient to permit medical diagnosis on his
computer. (Declaration of Dr. Grizzard [Doc. #16-1], at 8). Based on Dr. Grizzard’s
Declaration, Heart IT contends that the Accused Products infringe on every element of claim
1 of the ’381 Patent.
Despite Dr. Grizzard’s Declaration, Merge contends that the Accused Products do not
infringe on claim 1 of the ’381 Patent because the Accused Products process images “on the
fly,” meaning that “every time a new image is requested [on the second computer], the image
is retrieved from its source, converted to the PNG file format [on the first computer], and
transmitted to the user’s computer ‘on the fly.’” (Merge Surreply [Doc. #36], at 5). In contrast,
Merge contends that the ’381 Patent claims a system that pre-coverts all images and saves them
to a database before a user on a second computer makes a request for a specific image, thus
avoiding any delay inherent in “on the fly” processing. To support this contention, Merge cites
to the specification of the ’381 Patent, which, in referencing a previous patent, notes that the
approach of the previous patent “creat[ed] Web Pages ‘on the fly,’ meaning that the user must
21
wait for the image processing to complete.” (’381 Patent, col. 3, lines 44-46). The specification
further states that “systems designed to create Web Pages ‘on the fly’ introduce a delay of
seconds to minutes while the person requesting to view the images waits for the data to be
processed.” (’381 Patent, col. 3, lines 2-7). In contrast, in discussing the preferred embodiment
of the invention claimed in the ’381 Patent, the specification notes that “[b]ecause images are
already stored in the format of Internet Web Pages, no processing of the data is required
resulting in maximum speeds for image access and transfer and ensuring minimum costs for the
overall system.” (’381 Patent, col. 10, lines 3-7). Based on this intrinsic evidence, Merge
contends that the “on the fly” processing utilized within the Accused Products prevent the
Accused Products from infringing the ’381 Patent.
In response to this argument, Heart IT contends that “[w]hether the software running
on the server performs image conversion ‘on the fly’ or not is irrelevant.” (Response to Surreply
[Doc. #47], at 3). Instead, Heart IT argues that “the ’381 Patent specification describes server
software that converts the images to a browser-compatible format before transmitting them over
the Internet and the images retain diagnostic quality” without requiring Java or other plug-ins
on the second computer. (Response to Surreply [Doc. #47], at 3). Because Merge’s Accused
Products convert images to a browser compatible format on a first computer or server, albeit
“on the fly” and only after a user request, Heart IT argues that Merge’s products infringe the
’381 Patent. (Response to Surreply [Doc. #47], at 3).
However, a consideration of Figure 1 and Figure 3 within the specification supports a
finding that Merge has raised a substantial question concerning infringement based on the
22
Accused Products’ utilization of “on the fly” processing. Figure 1 is classified as “Prior Art” and
“depicts a prior art method for user to view images from a scanner.” (’381 Patent, col. 5, lines
40-41). Figure 1 details a process by which a user requests a single image and the “user must
wait” while the single image is converted into a web compatible format. (’381 Patent, Fig. 1).
This waiting period is further described in the specification as introducing “a delay of seconds
to minutes while the person requesting to view the image waits for the data to be processed.”
(’381 Patent, col. 3, lines 5-7). When referring to Figure 1, the specification notes that “serial
processing of image data ‘on the fly’ combined with extensive user interaction results in a slow,
expensive, and unstable system.” (’381 Patent, col. 3, lines 59-61).
In contrast, Figure 3 “depicts a system overview of an embodiment of the Present
Invention for providing a user with images from a scanner.” (’381 Patent, col. 5, lines 44-46).
In Figure 3, the preferred embodiment details a process in which images acquired on a scanner
are converted into a web compatible format before a user requests any images. Thus, the
conversion process occurs with “no user interaction.” (’381 Patent, Fig. 3). Further, because
the images are pre-converted, when a user requests images, the “user waits minimal time” for
the images to load. (’381 Patent, Fig. 3). This minimal wait time is further highlighted in the
specification’s description of the preferred embodiment of the claimed invention, which notes
that “[b]ecause images are already stored in the format of Internet Web Pages, no processing of
the data is required resulting in maximum speeds for image access and transfer and ensuring
minimum costs for the overall system.” (’381 Patent, col. 10, lines 3-7).
The claim language relevant to the issue of “on the fly” processing requires that images
23
be “converted to a browser compatible format before being transmitted over the Internet.” (’381
Patent, col. 11, lines 49-51) (emphasis added). Based on the relevant Figures and portions of the
specification discussed above, there is a substantial question as to whether a proper construction
of this claim term encompasses a process requiring both the conversion of an image before
transfer and the conversion of an image before a user request. If the “before” limitation were
construed to extend to conversion before a user request, the Accused Products would not
infringe on every element of claim 1, as the Accused Products perform conversion “on the fly”
only after a user request. In that regard, the Court finds that Merge has raised a substantial
question regarding infringement.
Further, to the extent the Court finds that Merge has raised a substantial question
regarding infringement, the Court also finds that Heart IT has not shown that this question lacks
substantial merit. Instead, within its briefing addressing its Motion for a Preliminary Injunction,
Heart IT did not offer a proposed construction of the relevant claim term requiring that the
images be “converted to a browser compatible format before being transmitted over the Internet.”
(’381 Patent, col. 11, lines 49-51)(emphasis added). While Heart IT contends that the “on the
fly” conversion is “irrelevant,” it has failed to provide sufficient evidence and arguments to
support such a contention at the preliminary injunction stage. Instead, a substantial question
remains as to whether an “on the fly” processing system infringes on claim 1 of the ’381 Patent.
Accordingly, because Merge has raised a substantial question concerning infringement and Heart
IT has failed to show this question lacks substantial merit, the Court finds that Heart IT has not
shown a likelihood of success regarding infringement.
24
2.
Likelihood of Success: Validity of Claim 1 of the ’381 Patent
Even assuming, arguendo, that Heart IT has shown a likelihood of success on the issue of
infringement, in order to show a likelihood of success on the merits, Heart IT must also show
a likelihood of success on the issue of the validity of the ’381 Patent. In the context of a
preliminary injunction, “while the burden of proving invalidity is with the party attacking validity,
the party seeking the injunction retain[s] the burden of showing a reasonable likelihood that the
attack on its patent’s validity would fail.” Oakley, 316 F.3d at 1340-41 (internal quotations
omitted). In that regard, “[w]hen the presumptions and burdens applicable at trial are taken into
account, the injunction should not issue if the party opposing the injunction raises ‘a substantial
question concerning infringement or validity, meaning that it asserts a defense that [the party
seeking the injunction] cannot prove lacks substantial merit.’” Id. at 1341.
Here, Merge argues that the ’381 Patent is invalid by reason of anticipation by prior art
publications. Pursuant to 35 U.S.C. § 102, a claim is fully anticipated and thus invalid if “each
and every limitation is found either expressly or inherently in a single prior art reference.” Id.
at 1339. In support of its invalidity argument, Merge contends that two separate prior art
publications fully anticipated claim 1 of the ’381 Patent: (1) an article published in April of 2000
entitled “On-demand Server-side Image Processing for Web-based DICOM Display”
(“Sakusabe et al.”) and (2) an article published in 1997 entitled “Web-Based Radiology
Applications for Clinicians and Radiologists” (“Feingold et al.”). The background of each
potential prior art reference will be discussed in turn, followed by an analysis of potential
anticipation.
25
A.
April 18, 2000: Sakusabe et al.
As summarized by Merge’s expert Dr. Shih, the Sakusabe et al. reference (“Sakusabe”)
teaches the “implementation of an imaging workstation” with “web based image display [that]
could have the look and feel of an imaging workstation.” (Declaration of Dr. Shih [Doc. #27],
at 12). Sakusabe was published on April 18, 2000 and resulted from a conference on February
12, 2000. Based on these dates, Sakusabe is properly considered prior art.9
With regard to the merits of Sakusabe, Merge, through Dr. Shih, compares each of the
six elements of claim 1 of the ’381 Patent to the process described in Sakusabe in order to
demonstrate anticipation. Merge describes Sakusabe as detailing a process through which
DICOM images resulting from a patient’s medical imaging procedure are received at a first
computer. A URL associated with a particular image can be used, and an HTML document is
generated from attributes of DICOM files. In response to a client request for images, images
9
The Court notes that the parties dispute whether Sakusabe is in fact prior art based on
its publication date. Heart IT, through the Declaration of Dr. Judd, contends that “[t]he
Sakusabe paper . . . was published six months after the invention of the ’381 Patent was disclosed
to Northwestern University in August 1999.” (Second Declaration of Robert Judd [Doc. #33],
at 5). However, “a patent’s claims are not entitled to an earlier priority date merely because the
patentee claims priority.” In re NTP, Inc., 654 F.3d 1268, 1276 (Fed. Cir. 2011). Instead, “the
art must have existed as of the date of invention, presumed to be the filing date of the
application until an earlier date is proved.” Id. (internal quotations omitted). Here, the filing
date of the ’381 Patent is September 29, 2005. Because the ’381 Patent was filed as a
continuation in part of the ’656 and ’698 Patents at issue in the underlying case, the’381 Patent
could arguably date back to December 20, 2000, the filing date for the ’698 Patent. However,
Heart IT offers no evidence, beyond Dr. Judd’s statement, to support a priority date for the ’381
Patent of August of 1999. Thus, while Heart IT would not be precluded from proving evidence
of this earlier priority date at a later stage of the proceeding, for the purposes of a preliminary
injunction, Heart IT has not shown an August 1999 priority date. Further, even using the earlier
’698 Patent filing date of December 20, 2000, Sakusabe is properly considered prior art at this
stage.
26
are processed on the server-side and delivered to the client immediately. These images are
displayed in a “directory” where users can “change the layout of images, navigate with
thumbnails, zoom into a clicked position, and change the Window Center/Width in real-time
by dragging mouse.” (Sakusabe et al. [Doc. #27-9], at 5). The system of Sakusabe does not
require Java plug-ins to process images on the client-side, but instead, “images are processed on
[the] server-side when a client requests and delivered to the client immediately.” (Sakusabe et
al. [Doc. #27-9], at 3). Finally, the system of Sakusabe emulates a medical image workstation
without the need for downloading additional software, specifically noting that the
“implementation of an imaging workstation . . . shows that Web based image display could have
the look and feel of an imaging work station.” (Sakusabe et al. [Doc. #27-9], at 7). However,
Sakusabe recognizes the limitations of its system, noting that not “all imaging workstations could
be replaced by Web browsers” as “there is some lack of performance” with the quality of the
images. (Sakusabe et al. [Doc. #27-9], at 7). Still, Sakusabe acknowledges that its system may
be “useful for most of clinicians in a hospital, and for a radiologist who is in the situation that
he/she could not use [a] high performance imaging workstation.” (Sakusabe et al. [Doc. #27-9],
at 7). Based on these interpretations of Sakusabe, Merge contends that Sakusabe teaches every
element of claim 1 of the ’381 Patent.
B.
1997: Feingold et al.
The Feingold et al. reference (“Feingold”) generally describes a “Web based application[]
for clinicians and radiologists [that] provide[s] wide spread, cost-effective and easy access to
radiological information” with all studies viewed within the application “automatically
27
transfer[ring] through a web sever for processing before being displayed.” (Feingold et al. [Doc.
#27-11], at 2). The article was published in 1997. As such, Feingold is properly considered
prior art.10
With regard to the merits of Feingold, Merge, through Dr. Shih, compares each of the
six elements of claim 1 of the ’381 Patent to the process described in Feingold in order to
demonstrate anticipation. Generally, Merge describes Feingold as detailing a process where
DICOM images are first received at a web server to be processed, and a report database with
studies associated with a patient medical imaging procedure is then provided. (Def.’s Initial
Response Brief [Doc. #26], at 8). Once a study is selected, a “multi-frame HTML document
is loaded” which includes a “series frame” that is “filled with thumbnails of each image in a
selected series.” (Feingold et al. [Doc. #27-11], at 8). After selecting a thumbnail, a full-sized
image or series of images will be loaded into the frame, and the diagnostic report, if available,
will load into the report frame as well. (Feingold et al. [Doc. #27-11], at 8). No additional
software is needed to view these images on the second computer because all images are stored
in “DICOM and GIF formats” and “Netscape 3.x browser supports both GIF and JPEG
formats natively.” (Feingold et al. [Doc. #27-11], at 10). Feingold notes that this system avoids
“the temptation to use ‘plug-ins’ to bypass the limitations of HTML and JavaScript.” (Feingold
et al. [Doc. #27-11], at 12). Based on this process, Merge argues that Feingold anticipates every
element of claim 1 of the ’381 Patent.
10
Heart IT does not dispute Feingold’s classification as prior art based on its date of
publication.
28
C.
Sakusabe and Feingold: Anticipation Arguments
In contrast to Merge’s contentions, Heart IT argues that neither Sakusabe nor Feingold
anticipate claim 1 of the ’381 Patent. To support this contention, Heart IT stresses that
Sakusabe and Feingold do not describe medical imaging systems that permit medical diagnosis,
but instead describe medical imaging systems limited to report distribution. Specifically, Heart
IT notes that “there have historically been two different types of medical imaging systems.”
(Reply Brief [Doc. #32], at 5). The first, a diagnostic imaging system, is a system in which the
radiologist navigates through all of the images of the study to make a diagnosis. The second,
report distribution, includes the radiologist’s diagnosis and some illustrative images from the
study for the purposes of record keeping and/or patient consultation. (Reply Brief [Doc. #32],
at 5). Heart IT contends that the ’381 Patent claims a diagnostic imaging system, while Sakusabe
and Feingold facilitate report distribution but not medical diagnosis.
With regard to Sakusabe, Heart IT cites to language within Sakusabe noting that not “all
imaging workstations could be replaced by Web browsers,” as “there is some lack of
performance” because a radiologist may need “large and high quality images.” (Sakusabe et al.
[Doc. #27-9], at 7). In contrast, claim 1 of the ’381 Patent states that a medical image
workstation will allow navigation among images “to permit medical diagnosis” from such
images. (’381 Patent, col. 12, line 6). In order to permit medical diagnosis, the specification of
the ’381 Patent provides that “using the Present Invention a database of images [c]an [sic] be
constructed with the maximum Internet performance and without loss of diagnostic
information.” (’381 Patent, col. 10, lines 63-65). Heart IT contends that Sakusabe is not prior
29
art anticipating claim 1 of the ’381 Patent because it only permits report distribution and not
medical diagnosis.
However, while Sakusabe recognizes a possible “lack of performance” regarding the
quality of images, Sakusabe also emphasizes its usefulness for “a radiologist who is in the
situation that he/she could not use a high performance imaging workstation.” (Sakusabe et al.
[Doc. #27-9], at 7). In that regard, no language in Sakusabe precludes this usefulness from
permitting medical diagnosis, even if the radiologist is not viewing the images at a high
performance imaging workstation. Further, while claim 1 of the ’381 Patent describes a
“medical image workstation” that “enables user navigation among the plurality of navigational
images . . . to permit medical diagnosis,” a question remains as to what image quality is sufficient
“to permit medical diagnosis.”
(’381 Patent, col. 12, lines 3-8).
Guidance within the
specification of the ’381 Patent indicates that images are converted “without a loss of diagnostic
data.” (’381 Patent, col. 5, line 25). However, the claim language and specification does not
indicate that full resolution is required for an image to retain its diagnostic data, and Heart IT
has not presented sufficient evidence at this time for the Court to read this limitation into the
claim.11
Further, with regard to Feingold, Heart IT argues that because of the lossy compression12
11
The Court notes that in Dr. Judd’s Second Declaration, Dr. Judd himself recognizes
that “[He] do[es] not dispute that a handful of selected, lossy, non-diagnostic images may
occasionally be diagnostically useful.” (Second Declaration of Robert Judd [Doc. #33], at 6).
12
Lossy compression is a process that “achieves its reduction in file size by eliminating
some of the data in the file being compressed.” Universal City Studios, Inc. v. Reimerdes, 111
F.Supp.2d 294, 314 n.107 (S.D.N.Y. 2000).
30
that takes place in Feingold, which Heart IT contends discards 75% of the image pixels,
Feingold is not capable of medical diagnosis. (Reply Brief [Doc. #32], at 6). While Feingold
itself refers to a “Full-Size button” that “allows for viewing the current image at full resolution
in a new browser window that is sized at the full screen resolution,” Heart IT contends that this
full resolution display allows for stretching the GIF image which has already been reduced and
does not allow for viewing of the original image at full resolution. (Response to Surreply [Doc.
#47], at 5). Even if this contention is correct and the original image cannot be viewed at full
resolution under Feingold, Heart IT has not shown that an image must be viewed at full
resolution in order to permit medical diagnosis under the ’381 Patent. In that regard, while
Heart IT asserts that “no medical imaging professional would contend that images with only
25% of their original resolution should be used to make medical diagnosis,” Heart IT has not
provided sufficient evidence to support this contention. (Response to Surreply [Doc. #47], at
5). As such, the Court cannot determine, at this stage, that an image with only 25% of its
original resolution cannot permit medical diagnosis in certain instances. Thus, Heart IT’s
contentions regarding the distinctions between report distributions and medical diagnosis do not
show that Merge’s contentions regarding the prior art lack substantial merit.
Additionally, with regard to both Sakusabe and Feingold, Heart IT argues against
anticipation based on each system’s failure to teach the ability to view multiple images within a
single series and navigate between series. However, Sakusabe states that its “image display
system, the SeriesViewer . . . displays a series of DICOM images in a directory” where a user can
then “change the layout of images, navigate with thumbnails, [and] zoom into a clicked
31
position.” (Sakusabe et al. [Doc. #27-9], at 5). Further, Feingold explains that after converting
images, a “Study Frame” is provided that contains “thumbnail sized images from each study in
the patient’s folder.” (Feingold et al. [Doc. #27-11], at 8). Feingold also provides a “Series
Frame” that is “filled with thumbnails of each image in a selected series.” (Feingold et al. [Doc.
#27-11], at 8).
In comparison, the ’381 Patent claims a method for managing medical information
including “receiving at a first computer a plurality of image series” with “each image series
comprising of one or more digital medical images.” (’381 Patent, col. 11, lines 19-25). This
language indicates that a “series” need only be comprised of one or more digital medical images.
Thus, Heart IT’s argument that both Feingold and Sakusabe only receive a plurality of single
images does not distinguish the ’381 Patent from Feingold and Sakusabe, because a “series” can
be a single image, and navigation between two single images could consist of navigation between
two series, each series having only one image. Thus, Heart IT’s arguments regarding the series
distinctions do not show that Merge’s contentions regarding the prior art lack substantial merit.
Overall, based on the above analysis, Merge has raised a substantial question as to
whether Sakusabe and Feingold “clearly [teach] key limitations of the claims of the [’381
Patent].” See Amazon.com, Inc. v. Barnesandnoble.com, Inc., 239 F.3d 1343, 1359 (Fed. Cir.
2001). In response, the arguments offered by Heart IT do not show that Merge’s contentions
lack substantial merit. Accordingly, the Court finds that Heart IT has not shown a likelihood
of success on the merits regarding invalidity.
B.
LIKELIHOOD OF IRREPARABLE HARM
32
Even assuming, arguendo, that Heart IT has shown a likelihood of success on the merits,
in order to obtain a preliminary injunction, Heart IT must also show that it will likely suffer
irreparable harm in the absence of preliminary relief. A patentee seeking a preliminary injunction
must “make a clear showing that it is at risk of irreparable harm, which entails showing a
likelihood of substantial and immediate irreparable injury.” Apple Inc. v. Samsung Elecs. Co.,
Ltd., 695 F.3d 1370, 1374 (Fed. Cir. 2012) (“Apple II”) (internal quotations omitted). However,
in cases “where the accused products include many features of which only one (or a small
minority) infringe,” the “patentee must also establish that the harm is sufficiently related to the
infringement.” Id. Here, the Accused Products “incorporate many features, of which the ‘zerofootprint’ feature is only one.” (Def.’s Initial Response Brief [Doc. #26], at 20). Thus, in order
to show irreparable harm based on a loss of market share, Heart IT must show “1) that absent
an injunction, it will suffer irreparable harm, and 2) that a sufficiently strong causal nexus relates
the alleged harm to the alleged infringement.” Apple II, 695 F.3d at 1374.
Further, a claim of irreparable harm based on a loss of market share cannot be shown
if sales would be lost regardless of the infringing conduct. Apple, Inc. v. Samsung Elecs. Co.,
Ltd., 678 F.3d 1314, 1324 (Fed. Cir. 2012) (“Apple I”). Indeed, a “mere showing that [a
patentee] might lose some insubstantial market share as a result of [an alleged infringer’s]
infringement is not enough.” Id. However, the “likelihood of price erosion and loss of market
position” can be considered as evidence of irreparable harm. Purdue Pharma L.P. v. Boehringer
Ingelheim GmbH, 237 F.3d 1359, 1368 (Fed. Cir. 2001); see also Polymer Techs., Inc. v.
Bridwell, 103 F.3d 970, 975-76 (Fed. Cir. 1996) (finding that loss of market opportunities is
33
evidence of irreparable harm).
Generally, Heart IT alleges that it will suffer irreparable harm if an injunction is not
granted based on the rapidly changing medical imaging market. Because medical facilities are
current in the process of converting to electronic health records (“EHR”), Heart IT argues that
every sale Merge makes using its Accused Products “locks in another customer that will not be
likely to purchase Heart IT’s WebPax® zero-footprint viewer.” (Pl.’s Opening Mem. [Doc.
#16], at 5). Because the EHR transition is being “funded by the Federal government, with
billions in dollars of incentives to encourage ‘meaningful use’13 of EHRs” and Heart IT alleges
that zero-footprint technology is “now the best available technology for achieving the MU
imaging standards for EHR systems,” Heart IT contends that “several thousand hospitals in the
US [sic] will be looking at zero-footprint viewers over the next 1-2 years as part of their move
to EHR.” (Pl.’s Opening Mem. [Doc. #16], at 5, 19). More specifically, Heart IT contends that
“85% of the hospitals in the US [sic] have announced plans to participate in the program” and
“[i]f Merge is allowed to obtain market share by virtue of its infringement, Heart IT will be
irreparably harmed.” (Pl.’s Opening Mem. [Doc. #16], at 6).
With regard to Heart IT’s loss of market share contentions, it is first necessary to
determine the relevant market to be considered. In its opening brief, Heart IT’s defines the
relevant market as the “zero-footprint viewer” market, but Merge argues that this
characterization is “too narrow” because zero-footprint viewers compete directly in a market
13
Heart IT refers to this “meaningful use” requirement under the EHR transition as
“MU” throughout its briefing.
34
with viewers that require a download. (Def.’s Initial Response Brief [Doc. #26], at 14). In that
regard, Merge contends that the relevant market is “the market for all web-based medical image
viewers.” (Def.’s Initial Response Brief [Doc. #26], at 14). However, while Heart IT’s and
Merge’s products are competing within the market for all web-based medical image viewers,
including both viewers that utilize zero-footprint technoloy and viewers that do not utilize such
technology, a consideration of medical images viewers that do not utilize zero-footprint
technology could lead to an inaccurate estimation of potential harm based on Merge’s alleged
infringement. Thus, the relevant market seems to be that originally identified by Heart IT as the
“zero-footprint viewer” market. This market would include all products within the medical
imaging market that utilize “zero-footprint viewer” technology as at least one aspect of the
product.14
Proceeding with the relevant market as the market for medical imaging products that
utilize zero-footprint viewer technology, the Court must determine whether Heart IT has shown
sufficient harm, and, if so, whether Heart IT has shown a sufficient causal nexus between the
alleged harm and the alleged infringement. To support a showing of harm and a causal nexus
between this harm and the alleged infringement, Heart IT cites to specific instances of
competition between Heart IT and Merge. For example, Merge and Heart IT competed against
14
Defining the relevant market as the “zero-footprint viewer” market does not
automatically establish the causal connection necessary to show irreparable harm. Instead, even
using the defined market of products utilizing “zero-footprint viewer” technology, Heart IT still
must show that the zero-footprint feature of the Accused Products drives the demand for the
products in order to provide a causal nexus between the alleged harm and the alleged
infringement. See Apple II, 695 F.3d at 1375.
35
each other in a “Request for Proposal” (“RFP”) from St. Vincent Health System in Indianapolis,
Indiana in early 2010. At this time, Heart IT prevailed over Merge and nine other bidders to win
a contract to provide imaging systems at St. Vincent Health System. (Reply Brief [Doc. #32],
at 11). However, Heart IT contends that after receiving its contract with St. Vincent Health, the
parent organization of St. Vincent Health, Ascension Health, began an evaluation of medical
image management systems with the goal of selecting a preferred vendor for all of its 500
locations. (Second Declaration of Robert Judd [Doc. #33], at 15). On February 4, 2013, “Heart
IT was notified that Merge had been selected as a preferred provider for all 500 of Ascension
Health System’s locations, including [St. Vincent Health System], and that at the conclusion of
its current contract, Heart IT would probably be displaced by Merge at St. Vincent’s.” (Reply
Brief [Doc. #32], at 11). Regarding the value of this specific contract, Heart IT cites to Merge’s
2012 Investor Presentation that lists a “$2+ million” sale to “Ascension Health” as one of
Merge’s “recent significant wins.” (Merge Investor Presentation [Doc. #33-16], at 10).
Heart IT provides another specific example of competition with Merge occurring in early
2012 and involving negotiations with St. Francis Hospital, a member of the larger Franciscan
Alliance comprised of 13 different hospitals. (Second Declaration of Robert Judd [Doc. #33],
at 16). Heart IT contends that St. Francis Hospital “was very interested in [Heart IT’s]
WebPAX” and “appeared ready to sign paperwork,” but then “abruptly stopped talking to Heart
IT with no clear reason.” (Second Declaration of Robert Judd [Doc. #33], at 16). Soon after
these negotiations, Merge issued a Press Release stating that “Franciscan Alliance, Inc. has
selected Merge Healthcare’s iConnect Access* to image-enable their EMR and provide real-time
36
access to radiology and cardiology images and information across its network of 13 hospitals in
Indiana and Illinois.” (Merge Press Release [Doc. #33-17], at 1). Heart IT emphasizes that
Merge’s press release further noted that “iConnect Access provides a true ‘zero-footprint’ image
viewing capability.” (Merge Press Release [Doc. #33-17], at 1).
In addition to providing specific examples of competition, Heart IT also contends that
prior to Ascension Health’s selection of Merge as its preferred provider for EHR image
integration, Heart IT had regular interaction with Ascension Health’s “Digital Imaging
Community of Excellence” (“DICE”), which includes an individual named Carol Joseph.
(Second Declaration of Robert Judd [Doc. #33], at 17). However, Heart IT contends that in
recent months, Heart IT and DICE have stopped communicating, “yet Ms. Joseph was a
speaker at Merge’s August 2012 Client Conference.” (Second Declaration of Robert Judd [Doc.
#33], at 17). Because “[e]xtensive communication with customers is of fundamental importance
to vendor product development,” Heart IT contends that this is another example of irreparable
loss of market share. (Second Declaration of Robert Judd [Doc. #33], at 17).
In response, Merge contends that “the examples HIT cites . . . do not support a finding
of irreparable harm because HIT does not prove that its losses to Merge are the result of the
allegedly infringing feature in the Accused Products.” (Merge Surreply [Doc. #36], at 10).
Because the Accused Products “incorporate many features, of which the ‘zero-footprint’ feature
is only one,” Merge contends that Heart IT has not shown that the zero-footprint feature drove
the demand for Merge’s products in any of the specific examples provided by Heart IT. (Def.’s
Initial Response Brief [Doc. #26], at 17). Instead, Merge contends that there are “several
37
important factors when deciding which [Picture Archiving and Communication] system
including an image viewer to purchase for a hospital,” including the “reputation of the product
and company, quality and terms of the service contract, and the ability for the [Picture Archiving
and Communication] system to integrate with other existing information systems in the
department and throughout the hospital.” (Declaration of Dr. Shih [Doc. #27], at 33). In that
regard, Merge contends that Heart IT has failed to provide sufficient evidence to show that the
zero-footprint feature of Merge’s Accused Products drives the demand for such products.
As previously discussed, where an accused product includes many features of which only
one or a small minority allegedly infringe,“[t]o show irreparable harm, it is necessary to show
that the infringement caused harm in the first place.” Apple I, 678 F.3d at 1324. With regard
to this causal connection, the Federal Circuit has recognized the following:
Sales lost to an infringing product cannot irreparably harm a patentee if
consumers buy that product for reasons other than the patented feature. If the
patented feature does not drive the demand for the product, sales would be lost
even if the offending feature were absent from the accused product. Thus, a
likelihood of irreparable harm cannot be shown if sales would be lost regardless
of the infringing conduct.
Id. at 1324.
Accordingly, the Court must determine whether Heart IT has provided enough evidence
to show that it will suffer a loss of market share and that this loss of market share is due to the
zero-footprint viewer feature included within Merge’s Accused Products. Heart IT’s evidence
of specific instances in which Heart IT lost a competing bid to Merge demonstrates a loss of
market share. However, Heart IT fails to provide sufficient evidence to support a finding that
this loss of market share was due to the zero-footprint feature utilized within the Accused
38
Products. For example, with regard to St. Vincent Health Systems, Heart IT offers the
Declaration of Dr. Judd, in which he states that when Heart IT was originally selected as the
winner of the RFP competition in early 2010, “to the best of [his] knowledge, Merge did not
offer a zero-footprint viewer to [St. Vincent Health Systems] at the time of this RFP
competition.” (Second Declaration of Robert Judd [Doc. #33], at 15). Further, Heart IT
contends that since “a major change in Merge’s product line since 2010 is its focus on
interoperability and iConnect access,” Heart IT has shown that the loss of the contract with
Ascension Health, which includes St. Vincent Health Systems, was caused by Merge’s alleged
infringement. (Reply Brief [Doc. #32], at 11). However, Dr. Judd’s belief that Merge did not
utilize zero-footprint technology in 2010 but was utilizing the technology later when it won the
contract from Ascension Health is not sufficient to establish to a causal nexus between the harm
and the alleged infringement. Indeed, this observation does not indicate that the addition of the
zero-footprint viewer was the only feature distinguishing Merge’s later product line from the
product line offered in 2010. Further, Heart IT does not provide evidence to show that the
zero-footprint feature was even a factor in Ascension Health’s decision to contract with Merge.
In that regard, Heart IT has not provided sufficient evidence to establish a causal nexus between
the alleged harm and the alleged infringement.
Additionally, with regard to the Franciscan Alliance contract, to support a causal
connection, Dr. Judd’s Declaration cited to a Press Release issued by Merge announcing that
“Franciscan Alliance, Inc. has selected Merge Healthcare’s iConnect Access* to image-enable
their EMR and provide real-time access to radiology and cardiology images and information
39
across its network of 13 hospitals in Indiana and Illinois.” (Merge Press Release [Doc. #33-17],
at 1). Within this Press Release, Heart IT highlighted the language by Merge that “iConnect
Access provides a true ‘zero-footprint’ image viewing capability’ to support its contentions that
zero-footprint technology was the dominant feature behind Merge’s contract with Franciscan
Alliance, Inc. However, in this same Press Release, the Senior Vice President of Information
Services at Franciscan Alliance, Inc., specifically stated that the company was “pleased to realize
that not only could we provide anywhere, any time access to radiology images - our original goal
- but that iConnect Access could also connect to our archive of cardiology images,” which was
“not something that [Franciscan Alliance, Inc.] initially expected but was one of the factors that
[Franciscan Alliance, Inc.] used in deciding to purchase iConnect.” (Merge Press Release [Doc.
#33-17], at 1). Thus, the Press Release indicates that a product feature focused on the archiving
of materials was one of the factors that influenced the Franciscan Alliance’s decision to purchase
iConnect. The Press Release does not indicate that this archiving feature involves “zerofootprint” technology, and Heart IT offers no such evidence. Further, the mention of the
“zero-footprint” capabilities in the Press Release is highlighted by Merge itself, not by any
representative of the Franciscan Alliance. Thus, with regard to the Franciscan Alliance, Heart
IT has not provided sufficient evidence that the zero-footprint viewer drove the demand for
Merge’s iConnect Access.
Further, to the extent that Heart IT contends that Merge’s alleged infringement has
harmed Heart IT’s communication with customers, Heart IT again fails to provide sufficient
evidence to support this contention. While Heart IT provides that it had regular interactions
40
with Ascension Health’s DICE and these communications have now “apparently shifted to
Merge,” this contention itself is not sufficient evidence of a causal connection between the
alleged harm and the alleged infringement. (Second Declaration of Robert Judd [Doc. #33], at
17). Indeed, Heart IT has not provided evidence that its decline in communications with DICE
is in any way related to Merge’s alleged infringement. Evidence that Heart IT’s communications
with DICE have ceased while Merge’s communications with DICE continue is not sufficient,
on its own, to support the necessary showing of causation.
Ultimately, in order to show irreparable harm, Heart IT must show “1) that absent an
injunction, it will suffer irreparable harm, and 2) that a sufficiently strong causal nexus relates
the alleged harm to the alleged infringement.” Apple II, 695 F.3d at 1374. This causation will
not be present “[i]f the patented feature does not drive the demand for the product.” Id. Here,
even assuming that the evidence presented by Heart IT regarding specific instances of
competition with Merge is sufficient to show Heart IT will suffer irreparable harm absent an
injunction, Heart IT has not sufficiently shown a causal nexus relating the alleged harm to the
alleged infringement. In that regard, Heart IT has not provided sufficient evidence that the
harm caused by the specific instances of competition with Merge were based on the Accused
Products’ alleged infringement. Without such evidence, Heart IT has not carried its burden of
showing irreparable harm. Accordingly, the Court finds that Heart IT has not shown a
likelihood of suffering irreparable harm in the absence of a preliminary injunction.15
15
Because the Court has found that Heart IT has not shown a likelihood of success on
the merits or irreparable harm, the Court need not address the remaining two factors. See Attic
Tent Inc. v. Copeland, No. 3:06CV66, 2006 WL 839085 (W.D.N.C. Mar. 28, 2006) (“[B]efore
41
III.
CONCLUSION
Based on the foregoing, the Court finds that Heart IT has not carried its burden of
showing a likelihood of success on the merits, as Merge has raised substantial questions
concerning infringement and invalidity and Heart IT has not shown these contentions lack
substantial merit. Further, as to irreparable harm, the Court finds that Heart IT has not
sufficiently shown a causal nexus relating the alleged harm to the alleged infringement. As such,
the Court will deny Heart IT’s Motion for a Preliminary Injunction.
IT IS THEREFORE ORDERED that Plaintiff Heart Imaging Technologies, LLC’s
Motion for a Preliminary Injunction [Doc. #15] is hereby DENIED.
This, the 14th day of August, 2013.
United States District Judge
denying a motion for a preliminary injunction, the Court need not make findings concerning the
balance of hardships or on the public interest if the moving party fails to establish either
likelihood of success on the merits or irreparable harm.”).
42
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