ORIGINAL COMPLAINT FOR PATENT INFRINGEMENT 1

UNITED STATES DISTRICT COURT

EASTERN DISTRICT OF TEXAS

MARSHALL DIVISION

CICAS IP LLC,

Plaintiff,

v.

Ethicon, Inc.,

Defendants.

Case No. 2:23-cv-293

JURY TRIAL DEMANDED

ORIGINAL COMPLAINT FOR PATENT INFRINGEMENT

CICAS IP LLC (“Plaintiff”) hereby files this Original Complaint for Patent Infringement against 

Ethicon, Inc. (“Ethicon” or “Defendant”), and alleges, upon information and belief, as follows:

THE PARTIES

1. CICAS IP LLC is a limited liability company organized and existing under the laws of the State 

of Wyoming with its principal place of business at 30 N Gould St, Suite R, Sheridan, WY 82801.

2. Upon information and belief, Defendant is a New Jersey corporation with a place of business in 

this District located Plano and Tyler, Texas. Upon information and belief, Defendant employs 

individuals in this Judicial District involved in the sales and marketing of its products. Defendant

may be served with process via its registered agent, C T Corporation System, located at 1999 

Bryan Street, Suite 900, Dallas, Texas 75201. Upon information and belief, Defendant does 

business in Texas, directly or through intermediaries, and offers its products and/or services, 

including those accused herein of infringement, to customers and potential customers located in 

Texas, including in the judicial Eastern District of Texas.

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ORIGINAL COMPLAINT FOR PATENT INFRINGEMENT 2

JURISDICTION AND VENUE

3. This Court has subject matter jurisdiction over this case under 28 U.S.C. §§ 1331 and 1338(a).

4. This Court has personal jurisdiction over Defendant. Defendant has continuous and systematic 

business contacts with the State of Texas. Defendant transacts business within this District and 

elsewhere in the State of Texas. Further, this Court has personal jurisdiction over Defendant 

based on its commission of one or more acts of infringement of patent-in-suit in this District and 

elsewhere in the State of Texas.

5. Upon information and belief, Defendant transacts substantial business in the State of Texas and 

this Judicial District. Defendant has committed acts of infringement in this District by, among 

other things, offering to sell and selling products that infringe the asserted patents, including the 

accused products as alleged herein, as well as providing service and support to its customers in 

this District. Upon information and belief, Defendant, directly or indirectly, participates in the 

stream of commerce that results in products, including the accused products, being made, used, 

offered for sale, and/or sold in the State of Texas and/or imported into the United States to the 

State of Texas.

6. Defendant maintains regular, physical, continuous, and established places of businesses, 

including places of business for an Executive Territory Leader, along with medical device sales

associates/representatives, in this District, which Defendant has established, ratified, and 

controlled; have employed people to conduct their business from this District; and from which 

they have willfully infringed the Asserted Patents in order to benefit themselves in this District. 

Defendant commits acts of infringement in this District, including as explained further below by 

making and using the infringing systems in, and performing at least one step of the accused 

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ORIGINAL COMPLAINT FOR PATENT INFRINGEMENT 3

methods of the Asserted Patents, at their regular and established places of business in this 

District.

7. As shown below, Defendant has employees in the Eastern District of Texas, including ab 

Executive Territory Leader for over 20 years:

See https://www.linkedin.com/in/chuck-schreiber-090a4841/ (screenshot of Chuck Schreiber’s LinkedIn 

page, as Executive Territory Leader, located in Plano, Texas, of Defendant).

See https://www.linkedin.com/in/blake-luce-a4006a1/ (screenshot of Blake Luce’s LinkedIn page, as 

Medical Device Sales, located in Tyler, Texas of Defendant).

8. As shown above, all three of these employees are located in this District in Plano and Tyler, 

Texas. Their locations within the Eastern District of Texas are important to the business 

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ORIGINAL COMPLAINT FOR PATENT INFRINGEMENT 4

performed and defendant had intention to maintain some place of business in the Eastern District 

of Texas in the event any employees decided to terminate their residences as a place there.

9. Defendant’s employees also not merely possess inventory. Their use in the Eastern District of 

Texas part of Defendant’s services to its Eastern District of Texas customers, a job that falls on 

these employees. When sample products or inventory arrive at these employees’ places of 

businesses, they then visit local customers to deliver or show the samples.

10. Defendant has further solicited salespeople in public advertisements to cover the challenged 

venue area and preferred that those employees live in their assigned sales area. Their locations

within the Eastern District of Texas are important to the business performed and defendant had

intention to maintain some place of business in the Eastern District of Texas in the event any

employees decided to terminate their residences as a place there.

11. Defendant has regular, physical presences of Defendant employees in this District conducting 

Defendant’s business. Defendant maintains a regular and established place of business at the 

Defendant defined places and separate areas by the regular, physical presence of its employees.

12. Venue is proper in this District as to Defendant pursuant to at least 28 U.S.C. §§ 1391(c)(2) and 

1400(b). As noted above, Defendant maintains a regular and established business presence in 

this District. See In re Monolithic Power Sys., Inc., 50 F.4th 157, 160 (Fed. Cir. 2022); see also 

AGIS Software Dev. LLC v. Google LLC, No. 2:19-CV-00361-JRG, 2022 WL 1511757, at *9

(E.D. Tex. May 12, 2022)

BACKGROUND AND PATENTS-IN-SUIT 

13. Plaintiff is the sole and exclusive owner, by assignment, of U.S. Patent Nos. 6,850,794 (“the 

’794 Patent”) titled “Endoscopic Targeting Method and System” relating to image-guided 

surgery, and in particular, to an endoscopic targeting method and system.

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14. By operation of law, the ’794 Patent was originally issued and exclusively vested to the named 

inventor, Ramin Shahidi, as of the issue date of the ’794 Patent. See 35 U.S.C. § 261; 

Schwendimann v. Arkwright Advanced Coating, Inc., 959 F.3d 1065, 1072 (Fed. Cir. 2020); 

Suppes v. Katti, 710 Fed. Appx. 883, 887 (Fed. Cir. 2017); Taylor v. Taylor Made Plastics, Inc., 

565 Fed. Appx. 888, 889 (Fed. Cir. 2014). The inventors, in a written instrument dated 

November 6, 2001, and filed with the United States Patent and Trademark Office on January 23, 

2002, assigned all rights, title, and interest in the ’794 Patent to Stanford University. 

15. Stanford University, in a written instrument dated October 31, 2007, and filed with the United 

States Patent and Trademark Office, assigned all rights, title, and interest in the ’794 Patent back 

to Ramin Shahidi.

16. Ramin Shahidi, in a written instrument dated April 8, 2010, and filed with the United States 

Patent and Trademark Office on April 13, 2010, then assigned all rights, title, and interest in the 

’794 Patent to California Institute of Computer Assisted Surgery, Inc.

17. Thereafter, California Institute of Computer Assisted Surgery, Inc. assigned all rights, title, and 

interest in the ’794 Patent to the Plaintiff. As such, Plaintiff has sole and exclusive standing to 

assert the ’794 Patent and to bring these causes of action.

18. The ’794 Patent is valid, enforceable, and was duly issued in full compliance with Title 35 of the 

United States Code.

19. The inventions described and claimed in the ’794 Patent were invented individually and 

independently by Ramin Shahidi.

20. The ’794 Patent includes numerous claims defining distinct inventions. As represented in Fig. 

Fig. 1 of the ’794 Patent below, the inventions generally relate to image-guided surgery, and in 

particular, to an endoscopic targeting method and system.

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ORIGINAL COMPLAINT FOR PATENT INFRINGEMENT 6

21. The priority date of each of the ’794 Patent is at least as early as September 23, 2000. As of the 

priority date, the inventions as claimed were novel, non-obvious, unconventional, and nonroutine.

22. Before the inventions of the ’794 Patent, endoscopic surgical tools were used in a variety of 

surgical procedures. Typically, such tools included an optical system for visualizing patient 

structure at or near a target site, and a surgical tool for carrying out desired operations at the site,

e.g., removal of tissue for biopsy, surgical removal of necrotic or tumorous tissue, surgical repair 

of tissue structure, etc. See ’794 Patent, Col. 1, ll. 1-21.

23. Therefore, in an endoscope-guided operation, the surgeon would be required to know in which 

direction, and what distance to advance the tool in order to optimally access the target site. Since 

an endoscopic tool can only view surface structure, the surgeon would often have difficulty in 

locating and/or accessing a target site, which is likely to be hidden from endoscopic view. Id., 

Col. 1, ll. 23-9.

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ORIGINAL COMPLAINT FOR PATENT INFRINGEMENT 7

24. The inventor of the ’794 Patent conceived new an endoscopic targeting method and system to 

assist a surgeon in performing an endoscopic surgical procedure or endoscopic examination of a 

patient. Id., Col. 1, ll. 30-3.

25. To do so, the ’794 Patent includes, in one aspect, a system for enhancing the ability of a surgeon

to access a target site within a patient. The system includes a data file containing volumetric scan 

data of a region of the patient that includes the target site, a display device, a movable imagining 

tool for producing on the display device, an image of visible patient structure seen by the tool, 

where the position of the tool is tracked relative to the position of the patient, and a computer 

operatively connected to data file, display screen, and tracking device. Id., Col. 1, ll. 36-45.

26. Then, the computer operates to (i) determine the position and/or orientation of the tool in the 

frame of reference of the patient, (ii) identify the scan-data coordinates (either x,y or x,y,z 

coordinates) of the target site, and (iii) project on the video image on the display device, indicia 

that indicate the lateral position of the target site with respect to the patient structure imaged on 

the display device. Id., Col. 1, ll. 46-52.

27. The ’794 Patent is a pioneering patent and has been cited as relevant prior art in 134 subsequent 

United States Patent Applications, including Applications Assigned to Defendant and such 

technology leaders and academia as Ethicon Surgical Operations, Inc., Veran Medical 

Technologies, Inc., Stryker Corporation, Boston Scientific Scimed, Inc. and Covidien.

28. The claims of the ’794 Patent were all properly issued and are valid and enforceable for the 

respective terms of their statutory life through expiration, and are enforceable for purposes of 

seeking damages for past infringement even post-expiration. See, e.g., Genetics Institute, LLC v. 

Novartis Vaccines and Diagnostics, Inc., 655 F.3d 1291, 1299 (Fed. Cir. 2011) (“[A]n expired 

patent is not viewed as having ‘never existed.’ Much to the contrary, a patent does have value 

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ORIGINAL COMPLAINT FOR PATENT INFRINGEMENT 8

beyond its expiration date. For example, an expired patent may form the basis of an action for 

past damages subject to the six-year limitation under 35 U.S.C. § 286”) (internal citations 

omitted).

DEFENDANT’S INFRINGING PRODUCTS 

29. Upon information and belief, Defendant makes, sells, advertises, offers for sale, uses, or 

otherwise provides endoscopic targeting methods and systems, including, but not limited to, the 

Monarch Platform (“Accused Instrumentalities”), that utilize the ’794 Patent’s patented 

endoscopic targeting methods and systems. On information and belief, these endoscopic 

targeting systems and methods include (a) a data file containing volumetric scan data, (b) a 

display, (c) a movable imaging tool, (d) a computer connected to the data file and display, and 

(e) indicia that indicate the direction and position of target site, as invented in the ’794 Patent.

30. As shown in more detail below, Defendant’s products include each and every limitation of at 

least, but not limited to, claim 1 of the ’794 Patent and therefore literally infringe these claims. 

Plaintiff reserves the right to assert additional claims and to assert infringement under the 

doctrine of equivalents in light of information learned during discovery or in view of this Court’s 

claim construction order.

31. Images of Defendant’s endoscopic targeting products are shown below. Defendant’s endoscopic 

targeting systems products include the require 

o a data file containing volumetric scan data;

o a display;

o a movable imaging tool for producing on the display device, an image of visible 

structure seen by the tool, where the position and/or orientation of the tool is 

tracked with respect to the patient coordinate system; 

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ORIGINAL COMPLAINT FOR PATENT INFRINGEMENT 9

o a computer connected to the data file and display, for (i) determining the position 

and/or orientation of the tool in a patient coordinate system, (ii) identifying the 

scan-data coordinates of the target site in the patient coordinate system, and (iii) 

projecting on the video image on the display device; and

o indicia that indicate (a) the direction of the target site, if the target site is outside 

the patient structure imaged on the display device, and (b) the lateral position of 

the target site with respect to the patient structure imaged on the display device 

and the distance between the tool and the target site, if the target site is within the 

patient structure imaged on the display device.

32. For example, the Ion Biopsy System is shown below from its website promoting the Accused

Instrumentalities and YouTube videos on how it works:

https://www.jnjmedtech.com/en-US/product-family/monarch

https://www.aurishealth.com/monarch-platform

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ORIGINAL COMPLAINT FOR PATENT INFRINGEMENT 10

https://usermanual.wiki/Auris-Surgical-Robotics/MONARCH/pdf

https://usermanual.wiki/Auris-Surgical-Robotics/MONARCH/pdf

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ORIGINAL COMPLAINT FOR PATENT INFRINGEMENT 11

https://usermanual.wiki/Auris-Surgical-Robotics/MONARCH/pdf

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ORIGINAL COMPLAINT FOR PATENT INFRINGEMENT 12

https://www.aurishealth.com/monarch-platform

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ORIGINAL COMPLAINT FOR PATENT INFRINGEMENT 13

https://www.aurishealth.com/monarch-platform

https://usermanual.wiki/Auris-Surgical-Robotics/MONARCH/pdf

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ORIGINAL COMPLAINT FOR PATENT INFRINGEMENT 14

https://usermanual.wiki/Auris-Surgical-Robotics/MONARCH/pdf

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ORIGINAL COMPLAINT FOR PATENT INFRINGEMENT 15

https://usermanual.wiki/Auris-Surgical-Robotics/MONARCH/pdf

https://usermanual.wiki/Auris-Surgical-Robotics/MONARCH/pdf

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ORIGINAL COMPLAINT FOR PATENT INFRINGEMENT 16

https://usermanual.wiki/Auris-Surgical-Robotics/MONARCH/pdf

https://usermanual.wiki/Auris-Surgical-Robotics/MONARCH/pdf

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ORIGINAL COMPLAINT FOR PATENT INFRINGEMENT 17

From Spec: The system also determines indicia which will be placed on the video image to indicate to 

the user the following types of information (i) the x,y (lateral) position of the target site, (ii) the z 

distance from the instrument to the target site, and optionally, (iii) the uncertainty in target-site position.

https://usermanual.wiki/Auris-Surgical-Robotics/MONARCH/pdf

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https://usermanual.wiki/Auris-Surgical-Robotics/MONARCH/pdf

https://usermanual.wiki/Auris-Surgical-Robotics/MONARCH/pdf

COUNT I

Infringement of U.S. Patent No. 6,850,794

33. Plaintiff incorporates the above paragraphs by reference.

34. Defendant without authority, continues to make, use, sell, offer to sell, and/or import into the 

United States its Accused Instrumentalities as shown above.

35. Defendant thus has infringed and continues to infringe at least claim 1 of the ’794 Patent literally 

and/or under the doctrine of equivalents.

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36. Defendant has also actively induced and will continue to actively induce the infringement of at 

least one of claim 1 of the ’794 Patent, in violation of 35 U.S.C. § 271(b), by, among other 

things, actively and knowingly aiding and abetting infringement of others through activities such 

as creating and/or distributing videos of use such as the videos above, brochures, manuals,

instructional documents, and/or similar materials with instructions on creating, manufacturing, 

designing, assembling and/or implementing infringing products, with the specific intent to 

induce others to directly make, use, offer for sale, sell, and/or import into the United States 

products that fall within the scope of the ’794 Patent, without license or authority from Plaintiff. 

On information and belief, Defendant knows that the induced acts constitute infringement of the 

’794 Patent.

37. Defendant individually, collectively, or through others or intermediaries, has contributorily 

infringed, and/or is contributorily infringing, in violation of 35 U.S.C. § 271(c), at least one 

claim of the ’794 Patent by making, using, offering for sale, selling, and/or importing, material 

parts of the inventions claimed in the ’794 Patent, which are not a staple article or commodity of 

commerce suitable for substantial non-infringing use, and knowing the accused parts to be 

especially made or especially adapted for use in an infringement of the ’794 claims.

38. Defendant has been on actual notice of the ’794 Patent at least as early as September 13, 2019, 

when he inventor of the ’794 Patent entered into an NDA with Auris Health, Inc to discuss the 

’794 Patent. In February of 2019, Johnson & Johnson today announced that Ethicon, Inc., 

entered into a definitive agreement to acquire Auris Health, Inc. for approximately $3.4 billion in 

cash (see https://www.jnj.com/johnson-johnson-announces-agreement-to-acquire-auris-healthinc). Defendant’s direct and indirect infringement of the ’794 Patent has thus been committed 

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ORIGINAL COMPLAINT FOR PATENT INFRINGEMENT 20

with knowledge of the ’794 Patent, making Defendant liable for direct, indirect, and willful 

infringement.

39. Defendant’s infringement of the ’794 Patent will continue to damage Plaintiff, causing 

irreparable harm for which there is no adequate remedy at law, unless it is enjoined by this 

Court.

40. Plaintiff has been damaged because of the infringing conduct by Defendant alleged above. Thus, 

Defendant is liable to Plaintiff in an amount that adequately compensates it for such 

infringement, which, by law, cannot be less than a reasonable royalty, together with interest and 

costs as fixed by this Court under 35 U.S.C. § 284.

41. Plaintiff and/or its predecessors-in-interest have satisfied all statutory obligations required to 

collect pre-filing damages for the full period allowed by law.

PRAYER FOR RELIEF

WHEREFORE, Plaintiff respectfully requests the Court enter judgment against Defendant as 

follows:

1. Declaring that Defendant has infringed the ’794 Patent;

2. Awarding Plaintiff its damages suffered because of Defendant’s infringement of the ’794

Patent;

3. Awarding Plaintiff its costs, reasonable attorneys’ fees, expenses, and interest; 

4. An award to Plaintiff of enhanced damages, up to and including trebling of Plaintiff’s 

damages pursuant to 35 U.S.C. § 284 for Defendant’s willful infringement of the ’794

Patent;

5. Granting a permanent injunction pursuant to 35 U.S.C. § 283, enjoining Defendants from 

further acts of infringement with respect to the ’794 Patent;

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6. Awarding Plaintiff ongoing post-trial royalties for infringement of the non-expired ’794

Patent; and

7. Granting Plaintiff such further relief as the Court finds appropriate.

JURY DEMAND

Plaintiff demands trial by jury, under Fed. R. Civ. P. 38.

Respectfully Submitted

/s/ Christopher A. Honea

M. Scott Fuller

 Texas Bar No. 24036607

 sfuller@ghiplaw.com

Randall Garteiser 

 Texas Bar No. 24038912

 rgarteiser@ghiplaw.com

Christopher A. Honea

 Texas Bar No. 24059967

 chonea@ghiplaw.com

GARTEISER HONEA, PLLC

119 W. Ferguson Street

Tyler, Texas 75702

Telephone: (903) 705-7420

ATTORNEYS FOR PLAINTIFF

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