In re: NeuroGrafix (‘360) Patent Litigation (13-md-02432).

Judge Stearns denied plaintiff’s motion to amend the complaint to add a principal-agent theory of direct infringement in a long-running multi-district litigation originally filed in 2012. Discovery in the matter was extended to August 2017, with the judge admonishing the parties that remaining discovery was to focus on new issues; Judge Stearns granted a motion to quash subpoenas directed to defendant BrainLab’s customers in September, noting that NeuroGrafix had been aware of its inducement theory of infringement for years and had no justification for waiting until the close of discovery to pursue that theory.  NeuroGrafix subsequently moved for leave to file an amended complaint, citing newly discovered evidence that BrainLab provided compensation in the form of dinners, drinks and paid consulting opportunities to neurosurgeons.  NeuroGrafix asserts that, as a result of these payments (which range from one hundred to several thousand dollars), a principal-agent relationship was formed whereby BrainLab directed  or controlled the doctors’ performance and the doctors’ actions could thus be imputed to BrainLab pursuant to Akamai Techs. V. Limelight Networks, 797 F.3d 1020 (Fed. Cir. 2015).  Judge Stearns found that the proposed complaint, which asserted that “BrainLab intends for Neurosurgeons to carry out each step” of the asserted claim was asserting induced, not direct, infringement, and NeuroGrafix had already been denied the opportunity to belatedly pursue such a theory.

Teva Pharmaceuticals Int’l GmbH v. Eli Lilly & Co. (17-cv-12087).

Teva sued Eli Lilly, accusing it of infringing five Teva patents covering humanized monoclonal antibodies that can be used to treat migrane sufferers. This month, Teva submitted a Biologics License Application (“BLA”) to the FDA seeking approval to market their product, known as “fremanezumab.”  Eli Lilly recently stated that it had filed its own BLA for a monoclonal antibody, to be called “Galcanezumab,” that targets the same peptide that Teva’s product targets.  Based on Eli Lilly’s completion of Phase III clinical trial, its filing of the BLA, and its extensive press statements that it intends to make and sell the product upon receiving approval, Teva asserts that its cause of action is ripe for consideration by the courts.  Regarding venue (Eli Lilly is not alleged to be a Massachusetts corporation), Teva asserts that Eli Lilly is registered to do business in the Commonwealth, has a registered agent and a Foreign Corporation Certificate of Registration in the Commonwealth, described its business in Massachusetts as “pharmaceutical manufacturing and sales” in 2017 Annual Report filed with the state, and employs consultants and sales people in Massachusetts to work with Massachusetts health care providers.  Moreover, Eli Lilly is asserted to have a facility in Cambridge (in a building, coincidentally, that resides directly behind my firm’s office in Kendall Square) at which it does research and development work, including work on delivery of biologics and pain treatment, which Teva suggests meets the “committed acts of infringement” part of the patent venue statute.

RW IP Holdings, LLC v. Standard Innovation Corp. (17-cv-12060).

RW IP Holdings sued Standard Innovation Corp. for infringement of U.S. Patent No. 6,028,531, “Terminal Units for a Mobile Communications System” by its sales of We-Vibe® adult toys that can be controlled remotely through a smartphone or the like. Direct, contributory and induced infringement are alleged, and damages, enhancement for willfulness, and attorneys’ fees are sought; no injunction is being sought however, as it appears the patent (which has a priority date of October 12, 1996) has expired.

Potentially of interest, Standard Innovation is alleged to be a Canadian corporation located in Ontario. While the complaint alleges advertising and sales into Massachusetts, there are no allegations that Standard Innovation has a regular and established place of business in the state.  At present, it is unclear whether the venue requirements of TC Heartland will apply to foreign corporations, which previously could be sued in any venue in which personal jurisdiction could be established – the TC Heartland decision notes that the Court was not expressing an opinion on the subject.  It will be interesting to see whether a venue challenge is made in this case.

Hybrid Audio, LLC v. ASUS Computer International, Inc. et al. (16-cv-10643).

Judge Zobel allowed Hybrid Audio’s motion to transfer this case to the Northern District of California and denied ASUS’ motion to dismiss.  The ASUS defendants are a Taiwanese corporation and its U.S. subsidiary, which is incorporated in and resides in California.  The parties agreed that venue in Massachusetts is no longer proper, pursuant to TC Heartland; the real action in this issue was ASUS’ desire that the case be dismissed, forcing Hybrid Audio to refile in California – as the asserted patent expired prior to the filing of the lawsuit, and ASUS’ first notice of infringement was on January 5, 2011, refiling would eliminate ten months of damages that were available pursuant to the six-year limit on damages set forth in 35 U.S.C. § 286.  Hybrid Audio sought to have the case transferred “in the interest of justice.”  Judge Zobel endorsed Hybrid’s motion, rather than authoring an opinion of her own.

Amax, Inc. v. ACCO Brands Corporation (16-cv-10695).

Judge Gorton issued a claim construction order in a case involving allegations that ACCO’s Swingline Quick Touch Full Strip and Quick Touch Compact staplers.

Swingline Stapler

In virtually each instance, Judge Gorton refused to read limitations into the claims and sided with Amax.  Of particular interest, Judge Gorton declined to consider whether the claims were indefinite at the claim construction phase of the litigation; as a part of this, it appears that Judge Gorton laid out an outdated legal standard for proving indefiniteness.  Under the Supreme Court’s 2014 Nautilis decision, indefiniteness exists if a patent’s claims, “read in light of the specification delineating the patent, and the prosecution history, fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention.”  Judge Gorton’s analysis, however, asserted that ACCO must show that a “skilled artisan could not discern the bounds of the claim,” and that to be found indefinite, “the claim must be ‘insolubly ambiguous,’” citing to the Federal Circuit’s pre-Nautilis 2008 Halliburton Energy decision.  It should be interesting to see how this issue progresses.

Abiomed, Inc v. Maquet Cardiovascular, LLC (16-cv-10914).

Abiomed sued Maquet seeking a declaratory judgment that its Impella intracardiac heart pumps do not infringe Maquet’s patents, and Maquet counterclaimed for infringement. Abiomed, believing that Maquet’s parent company, Getinge AB, controls the litigation, moved to compel the deposition of Abraham Roani, Getinge’s General Counsel, on valuation, commercialization, validity and enfoceability of the patents-in-suit.  Maquet opposed, arguing that any information Roani has would be protected by the attorney-client privilege and work product doctrine, and Maquet offered a non-attorney alternative witness.   Magistrate Judge Boal, noting the red flags that are raised by the noticing of deposition of the opposing party’s attorney, referred to the Shelton test adopted by the Eight Circuit, which requires there be no other means to obtain the sought information, the information be relevant and non-privileged, and the information be crucial to the development of the case.  She found that Abiomed had not met the first of these criteria, particularly given the proffer of a non-attorney witness, and denied the motion without prejudice.

Maquet fared better with its motion to compel.  Abiomed unsuccessfully sought to limit production to documents relating to features of the accused products that are alleged to meet the claim limitations, rather than technical information on all features of the accused products.  While Judge Boal compelled production of documents related to the accused products and not just the accused features, she sided with Abiomed that requests seeking all documents “related to” particular topics were overly broad, and limited these requests to the specific examples of types of documents contained in the requests.  Finally, Judge Boal required Abiomed to produce technical documents that predate the six-year limitation on damages period set forth in 35 U.S.C. § 286, because such documents go to infringement and not just to damages.

Purdue Pharma LP et al. v. Collegium Pharmaceutical, Inc. (17-cv-11923).

Purdue Pharma sued Collegium for infringement of U.S. Patent Nos. 9,522,919 and 9,073,933, which relate to oxycodone hydrochloride compositions and formulations. The suit is based on Collegium’s submission of a supplemental New Drug Application seeking approval for revised labeling for Collegium’s Xtampza® oxycodone extended release capsules.  Purdue has been pursuing claims against Xtampza® for some time now, beginning in March 2015, and most recently on September 21, 2017, as discussed here.