After being sued for patent infringement by Maquet, Abiomed filed non-infringement counterclaims against Maquet its corporate parent, Swedish company Getinge AB. Judge Saylor granted Getinge’s motion to dismiss, agreeing that Getinge lacks standing to sue Abiomed and determining that this insulates Getinge from the declaratory judgment counterclaim. Judge Saylor noted that the counterclaim does not allege that a written agreement exists by which Getinge was given any rights in the subject patent, and absent a written transfer of rights, Getinge can have no rights in the patent. He refused to extend the doctrine of equitable title, stating that there is nothing inherently unfair or inequitable in a corporate subsidiary owning all rights in a patent or in the parent then exercising substantial control over the subsidiary that would require bringing the parent into the controversy. Accordingly, the counterclaim was dismissed as applied to Getinge (although it remains in place against Maquet).
Following a trial in which Rolling Optics was found to have willfully induced infringement of several Crane patents, Judge Sorokin ruled on a number of post-trial motions. He denied Rolling Optics’ motion for judgment of no inducement and lack of notice as a matter of law, finding the motion a mere rehashing of the motion for summary judgment that was previously denied. He likewise denied Rolling Optics’ motion for JMOL that certain claims were anticipated, finding the jury’s determination on the credibility of the parties’ experts dispositive. Judge Sorokin denied Crane’s motion for attorneys fees under 35 USC 285, finding that Rolling Optics’ litigation conduct was not exceptional, particularly given that the injunction that would likely result from losing would jeopardize Rolling Optics’ very existence. He awarded Crane treble damages, finding that Crane had demonstrated that Rolling Optics had copied their products with extensive knowledge of Crane’s patent portfolio and that Rolling Optics took no steps to ensure that they were not infringing valid patent claims – indeed, Rolling Optics continued shipping products into the United States seven months after it had been advised by its legal team to cease doing so. Finally, Judge Sorokin entered a permanent injunction, finding that Rolling Optics was directly competitive to Crane such that continued infringement would result in harms that could not be adequately remedied at law.
Abiomed filed a declaratory judgment action seeking a declaration of non-infringement and invalidity of six Maquet patents relating to guidable intravascular blood pumps, and Maquet brought infringement counterclaims. Judge Saylor partially granted Abiomed’s motion to compel supplemental responses to Abiomed’s invalidity contentions. Maquet had originally asserted 98 claims, and Abiomed provided invalidity contentions as to all 98 claims. In response to a court order, Maquet narrowed the case to 35 claims; pursuant to the court’s order, Maquet will have to further narrow their case to 18 claims following the Markman order, after which Abiomed will have to narrow its list of primary references to 12. Maquet objected to responding to Abiomed’s invalidity contentions because they necessarily cover claims and prior art that will ultimately not be a part of the trial, and also asserted that Abiomed improperly sought expert analysis prematurely. Judge Saylor disagreed, noting that Maquet had the benefit of seeing Abiomed’s invalidity contentions prior to its initial narrowing of claims and that therefore Abiomed should get to see Maquet’s validity contentions prior to reducing the references it was asserting. Judge Saylor did, however, postpone the date by which Maquet would have to respond to the date that it would have to provide its final listing of 18 asserted claims, and limited Maquet’s response to validity contentions concerning those 18 claims. In a separate order, Judge Saylor denied Abiomed’s motion to compel discovery of Maquet’s patent assessments and valuations. Maquet had produced a presentation given to a different heart pump company that included reference to a proposal made by Maquet that made reference to the amount Maquet believed the company could obtain from Abiomed should the company acquire the patents. Abiomed, believing that this would reveal a substantially lower valuation than Maquet was seeking in damages, sought additional information on how Maquet came to the valuation in the proposals; Judge Saylor accepted Maquet’s representation that it had no non-privileged valuations to produce.
MedIdea sued Depuy for patent infringement connected with total knee replacement prostheses in the Northern District of Illinois. Following the TC Heartland decision, the case was transferred to Massachusetts, where it has undergone contentious discovery. Judge Sorokin denied MedIdea’s request for detailed royalty reports, in light of MedIdea’s expert acknowledging that documents already produced provided sufficient information to calculate damages. He also refused to compel production, at no cost to MedIdea, of different sizes of the accused products, finding no authority to require the provision of thousands of dollars of products for free when the sole difference was the size. Judge Sorokin also denied MedIdea’s demand that DePuy produce a 30(b)(6) witness t otestify on the nature of DePuy’s search for documents and choice of keywords for searching electronic records, in light of DePuy’s statement that only outside counsel participated in that task and in light of MedIdea’s delay of eight months form the time when the schedule required the parties to meet and confer on electronic discovery issues. Finally, Judge Sorokin granted DePuy’s motion to quash subpoenas to two inventors of prior art identified by Depuy and that served as the basis for institution of an IPR proceeding. Judge Sorokin noted that MedIdea had been obliged to identify any relevant witnesses in its initial disclosures more than a year prior, and had failed to seek to supplement its disclosures. Moreover, the reference was more than ten years old, and was but one of many references cited by DePuy, but was the sole reference on which the IPR was granted, creating an inference that MedIdea was seeking their depositions in the litigation to circumvent rules that would prohibit such in the IPR proceeding itself.
Judge Saylor granted in part SiOnyx’s renewed motion to compel in this patent infringement, correction of inventorship, and breach of contract case. SiOnyx had entered into an agreement with Hamamatsu to explore a possible business relationship surrounding laser-textured infrared-sensing silicon photonic devices. The business relationship never came to fruition, and Hamamatsu subsequently applied for patents directed to similar technology. A discovery dispute arose over whether SiOnyx could obtain information on products that were textured by some means other than a laser, with Hamamatsu taking the position that the infringement contentions did not accuse such products and the former SiOnyx founder now working for Hamamatsu did not contribute to the invention of non-laser-textured devices. SiOnyx’s initial motion to compel was denied without prejudice, because at the time there was insufficient evidence to support a charge of infringement; since then, SiOnyx was able to develop sufficient information that the products infringe, and that an offer for sale of the accused products has been made that, if accepted, would generate significant sales. Judge Saylor found that SiOnyx’s evidence related to the breach of contract and use of confidential information claims (that the Hamamatsu engineers who were exposed to this information developed the non-laser-textured products) was insufficient to overcome the significant differences in the resulting textures that negate an inference that they were developed using SiOnyx’s confidential information. Because the motion was granted only with respect to the patent claims, Hamamatsu was compelled to produce information relating only to U.S. sales or imports.
Judge Saylor denied MRSI’s motion to compel more detailed infringement contentions. This case was originally brought in 2015 in the Southern District of California, with Palomar asserting infringement of U.S. Patent No. 6,776,327. In 2016, the case was stayed pending resolution of an IPR proceeding filed by MRSI; the case resumed progress when most of the claims were deemed valid by the PTO. In August 2017, MRSI moved to transfer venue to the District of Massachusetts in light of the TC Heartland decision on patent venue, and the case was transferred in February of this year. In denied the motion to compel, Judge Saylor noted that the district’s new local patent rules do not apply to this case, as the scheduling order was issued prior to June 1, 2018, that the prior applicable rule did not require any particular level of detail for infringement contentions, and that the scheduling order itself required only an identification of the claims asserted, products that are accused of infringing those claims, and whether the infringement is literal or by equivalents. While he noted that the contentions are skeletal, Judge Saylor determined that they met the requirements of the applicable rule and the scheduling order, and he indicated that at the early stage of the proceeding, there is no requirement for the claim construction contentions sought by MRSI.
In an order at the end of July, Judge Wolf granted Cellitron’s motion for summary judgment of non-infringement of U.S. Patent No. 7,598,083, the sole patent remaining in this litigation. Janssen’s initial focus had been on a different patent that was found invalid for obviousness-type double patenting. Janssen then shifted focus to allegations that the Defendants infringed the ‘083 patent under the doctrine of equivalents. The ‘083 patent covers compositions for preparing cell culture medium suitable for ultimately producing infliximab, which Janssen sells under the brand name “Remicade.” The asserted claims recite 61 different ingredients, each at a range of concentrations. Only 52 are actually required by the claim to be present, as the remaining 9 have a lower concentration limit of 0. It is undisputed that the accused composition includes all 52 required ingredients, but not all fall within the claimed range. Defendants moved for summary judgment on the grounds that the hypothetical claim that would literally cover the accused composition would ensnare the prior art, which would serve to prohibit application of the doctrine of equivalents. Judge Wolf agreed, finding that this hypothetical claim, while not anticipated, would have been obvious to one of ordinary skill in the art. Janssen, as the party asserting the doctrine of equivalents, bore the burden of proving that the scope of equivalents sought would have been patentable over the prior art, a burden they could not meet. Judge Wolf determined that the claimed composition merely substituted several ingredients of the prior art compositions with known alternatives, which performed in accordance with their previously-established function in providing nutrients to cells. Additionally, while Janssen presented sufficient evidence to permit a finder of fact to determine that the Defendants had copied Janssen’s composition (one of the Graham factors that evidences non-obviousness), this factor would not, even if proven, be enough to overcome the strong prima facie case of obviousness of the hypothetical claim. Accordingly, judgment was entered in favor of the Defendants.