CaptION Health Inc. v. University of British Columbia

This Inter Partes Review (IPR), CaptION Health Inc. v. University of British Columbia (IPR2025-01422), centers on a dispute over artificial intelligence (AI) in medical imaging. The petitioner, CaptION Health Inc., is a medical technology company specializing in AI-powered cardiovascular imaging, known for developing algorithms that guide medical professionals in performing and interpreting echocardiograms. CaptION Health was acquired by GE HealthCare in February 2023, making it part of a leading global precision care innovator. The patent owner, University of British Columbia (UBC), is an academic institution with an active technology transfer office that protects and licenses high-potential discoveries from its researchers, managing a substantial patent portfolio and executing numerous technology licenses annually. In this context, UBC acts as a patent owner and licensor, commercializing intellectual property developed through its research.

The IPR challenges the patentability of claims 1-30 of US Patent 10,751,029, titled "ULTRASONIC IMAGE ANALYSIS," owned by the University of British Columbia. This patent describes a computer-implemented method and system for analyzing ultrasound images, which involves using neural networks to extract features and automatically determine image properties, such as a view category, and a quality assessment value. While there isn't an "accused product" in an IPR, CaptION Health's own business revolves around its "Caption AI" technology, which provides real-time AI guidance and automated interpretation for cardiac ultrasounds. The IPR is likely a strategic move by CaptION Health to clear potential patent hurdles for its AI ultrasound imaging solutions.

The case is proceeding before the Patent Trial and Appeal Board (PTAB), a specialized administrative court within the USPTO, where the trial was formally instituted on February 3, 2026. The PTAB venue is significant for its distinct procedural rules and claim construction standards, although in this particular case, the USPTO Director denied a request for discretionary denial of institution, partly due to CaptION Health's stipulation to use the same claim construction in the IPR as in parallel district court litigation. This IPR is notable for its direct linkage to ongoing district court proceedings where CaptION Health is a defendant in an infringement suit by UBC, and its attempt to stay the district court case pending the IPR's outcome was denied. The dispute also highlights the growing importance and competitive landscape of AI-powered diagnostic tools in the medical field, particularly for improving access and efficiency in ultrasound imaging.

This analysis covers the key legal developments and outcomes related to U.S. Patent 10,751,029, encompassing both the ongoing Inter Partes Review (IPR) proceeding and a parallel patent infringement litigation.

Parallel District Court Litigation: University of British Columbia v. CaptION Health Inc., N.D. Cal. Case No. 5:24-CV-03200

2024-05-28: Filing of Complaint
University of British Columbia filed a patent infringement lawsuit against CaptION Health Inc. in the U.S. District Court for the Northern District of California, asserting U.S. Patent 10,751,029.

2025-08-06: Denial of Motion to Stay Pending IPR
CaptION Health Inc., as the defendant in the district court case, filed a motion to stay the litigation pending the outcome of anticipated IPR proceedings. The district court denied this motion, noting that while fact discovery had begun, costly expert discovery or dispositive motions had not yet occurred, and no claim construction order or trial date had been set. The court found the benefits of a stay speculative at that stage, as the PTAB had not yet decided to review the patent. However, the denial was "without prejudice to renewal" if the PTAB instituted inter partes review.

2025-08-14: Joint Claim Construction Document Filed
A joint claim construction document (Dkt. 68) was filed in the district court case, indicating that the parties were preparing for or engaging in claim construction discussions.

Parallel PTAB IPR Proceeding: CaptION Health Inc. v. University of British Columbia, IPR2025-01422

2025-08-15: Filing of IPR Petition
CaptION Health Inc. filed a petition for Inter Partes Review (IPR) against U.S. Patent 10,751,029, owned by the University of British Columbia. The petition challenged claims 1-30 of the patent, asserting grounds of unpatentability based on anticipation by Krishnan (Claims 1-3, 9, 11, 21-22, 27, 29-30) and obviousness over Krishnan in view of Chen (Claims 3-8, 23-26), and over Krishnan, Chen, and Wu (Claims 12-20).

2025-10-20: Patent Owner's Request for Discretionary Denial
The University of British Columbia, as Patent Owner, requested the USPTO Director to discretionarily deny institution of the IPR. This request was partly based on an argument that CaptION Health Inc. had submitted inconsistent claim construction theories regarding the term "quality assessment value" in its IPR petition and the co-pending district court case.

2025-10-03 (Decision Dated 2025-12-18): USPTO Director's Denial of Discretionary Denial
USPTO Director John Squires issued a decision on October 3, 2025, documented as Paper 15 on December 18, 2025, denying the Patent Owner's request for discretionary denial. The Director's decision was largely influenced by CaptION Health Inc.'s stipulation to use the same claim construction for the challenged claims in both the PTAB proceeding and the parallel district court litigation. This stipulation resolved any potential inconsistencies in claim construction theories between the two fora.

2026-02-03: Trial Instituted
The Patent Trial and Appeal Board (PTAB) instituted trial for IPR2025-01422. The IPR is currently in the trial phase.

Claim Construction in IPR

Due to the Petitioner's stipulation, the PTAB is expected to apply the same claim constructions agreed upon in the parallel district court litigation. Specifically, for means-plus-function terms in claim 30, the Petitioner indicated agreement to constructions identifying corresponding structures in the specification.

Present Posture

As of May 24, 2026, the IPR proceeding (IPR2025-01422) is in the "Trial Instituted" phase, with no final written decision yet issued. The parallel district court litigation (Case No. 5:24-CV-03200) has not been stayed, but its progression will likely be impacted by the ongoing IPR, and the Petitioner retains the option to renew its motion to stay. No trial date has been set in the district court case.

CaptION Health Inc. is represented by a team of attorneys from Thompson Hine LLP in the Inter Partes Review (IPR) proceeding IPR2025-01422. The counsel of record includes lead counsel Jeffrey C. Metzcar, backup counsel David R. Jaglowski, and Marla R. Butler and William E. Manske, who are to be admitted pro hac vice.

Here are the details for the identified counsel:

• Jeffrey C. Metzcar

  • Role: Lead Counsel
  • Firm: Thompson Hine LLP
  • Office Location: While not explicitly stated in the provided search results for Metzcar himself, Thompson Hine LLP has multiple offices. His registration number suggests he is a registered patent attorney. He is listed as lead counsel for CaptION Health Inc. in this IPR.
  • Relevant Experience: Metzcar is listed as lead counsel for the petitioner, CaptION Health Inc., in this IPR proceeding. He is also listed as counsel for CaptION Health Inc. in the related district court litigation, University of British Columbia v. Caption Health, Inc. et al. (N.D. Cal. Case No. 5:24-cv-03200).

• David R. Jaglowski

  • Role: Backup Counsel
  • Firm: Thompson Hine LLP
  • Office Location: Similar to Metzcar, specific office information for Jaglowski isn't in the provided snippets, but he is part of the Thompson Hine LLP team. He is a registered patent practitioner.
  • Relevant Experience: Jaglowski serves as backup counsel for CaptION Health Inc. in IPR2025-01422.

• Marla R. Butler

  • Role: Counsel (to be admitted pro hac vice)
  • Firm: Thompson Hine LLP
  • Office Location: While her office isn't specified in the IPR documents, she is admitted to the Bars of Georgia, Minnesota, and New York, and practices before several U.S. District Courts and the U.S. Court of Appeals for the Federal Circuit.
  • Relevant Experience: Butler is a highly skilled and experienced litigator with institutional knowledge of the subject matter at issue in this IPR. She has a deep and detailed working knowledge of the relevant subject matter through her participation in the parallel district court proceeding (where U.S. Patent No. 10,751,029 is also at issue) and a parallel IPR challenging U.S. Patent No. 11,129,591 (IPR2025-01066). She has experience with patent litigation concerning the application of software, including artificial intelligence algorithms, to medical imaging and diagnostic technology. She is also listed as counsel for CaptION Health Inc. in the related district court litigation.

• William E. Manske

  • Role: Counsel (to be admitted pro hac vice)
  • Firm: Thompson Hine LLP
  • Office Location: Not specified in the provided search results, but he is associated with Thompson Hine LLP for this IPR.
  • Relevant Experience: Manske is listed as an attorney to be admitted pro hac vice for CaptION Health Inc. in the IPR.

In the Inter Partes Review (IPR) case IPR2025-01422, the University of British Columbia is represented by attorneys from Perkins Coie LLP.

The counsel of record for the University of British Columbia includes:

• Ramsey M. Al-Salam

  • Role: Counsel
  • Firm: Perkins Coie LLP, Seattle, Washington
  • Note: Mr. Al-Salam is listed as counsel for the University of British Columbia in related district court litigation.

• Dorianne Salmon

  • Role: Counsel (pro hac vice)
  • Firm: Perkins Coie LLP, Seattle, Washington
  • Note: Ms. Salmon is an attorney at Perkins Coie LLP and has submitted declarations in support of UBC's opposition to motions in related district court cases, indicating her involvement in the overall patent dispute.

• Moeka Takagi

  • Role: Counsel
  • Firm: Perkins Coie LLP, Palo Alto, California
  • Note: Ms. Takagi is listed as counsel for the University of British Columbia and her email is provided for communication regarding the IPR.

While the University of British Columbia has an internal Office of the University Counsel, the external firm Perkins Coie LLP appears to be the primary counsel of record for this specific IPR proceeding.