Judge Gorton denied Oxford’s motion for a preliminary injunction on sales of Qiagen’s QFT-Plus one-tube option for the diagnosis of tuberculosis. According to the opinion, tuberculosis is detected in two ways – through skin tests or through in vitro blood test known as interferon gamma release assay (“IGRA”). Currently, Oxford and Qiagen offer the only IGRA’s available in the United States. Oxford’s test utilizes a single, standardized tube, while Qiagen’s test requires multiple specialized tubes. Qiagen’s next generation product contains a single tube option that Oxford believes would infringe its patents. Oxford sought to prevent the sale of the next generation product, scheduled for launch in October 2017, until after a trial on the infringement claims. The asserted claims have already survived an Alice-based motion to dismiss, as well as five different petitions, all rejected, for inter partes review on obviousness grounds, and at Markman, all claims were construed on Oxford’s favor.
In considering the preliminary injunction factors, Judge Gorton determined that the claims were likely to be directed to patentable subject matter, because they included non-naturally-occurring peptides. He found that Oxford was likely to succeed in proving the patents valid over the prior art because, although Qiagen could show that researchers were exploring the use of the specific peptide, this showed only that it was “obvious to try” which does not rise to a finding of obviousness. He also noted that Qiagen’s arguments to this effect had previously been rejected by the PTO in its denial of the inter partes petitions. Judge Gorton found that Oxford would also likely prevail on a written description challenge, as well as on infringement by the Qiagen product. He determined, however, that Oxford had not made a “clear showing” that substantial and immediate harm is likely in the absence of an injunction. This was due both to the delay between finding out in January that Qiagen was about to apply for FDA approval and its filing the motion for preliminary injunction in August and because Oxford had not shown that money damages would be insufficient – “evidence of potential lost sales alone does not demonstrate irreparable harm.” This factor also weighed heavily in the balance of hardship consideration, offsetting the hardships that Oxford, a one-product company, would face in allowing Qiagen to continue selling, and ultimately led to denial of the motion.
Purdue asserts that Collegium infringes U.S. Patent No. 9,693,961, which covers improved oxycodone hydrochloride compositions, both by filing an NDA and by making and selling the now-approved Xtampza® ER oxycodone extended release capsules. This marks the latest in a series of lawsuits filed by Purdue alleging Xtampza® infringes Purdue patents.
Polyzen sued Chicopee, Massachusetts company Dielectrics, Inc., alleging that various Dielectrics’ multi-layer film welded medical balloons infringe U.S. Patent No. 9,737,694. The patent, which issued just last month, claims methods of manufacturing medical balloons. The case is before Judge Mark Mastroianni in the Springfield division of the District of Massachusetts.
Judge Mastroianni, a Springfield native, received his commission as a judge in June, 2014. Of the five patent cases he has thus far presided over, this is the second involving Polyzen and Dielectrics. Polyzen previously sued Dielectrics on August 19, 2015, alleging infringement of U.S. Patent Nos. 7,976,497 and 8,740,845, which are also directed to medical balloons. The dispute centers around Polyzen’s distributor RadiaDyne, who has the exclusive right to use and sell covered medical balloons manufactured by Polyzen. According to the earlier complaint, RadiaDyne provided confidential and proprietary information of Polyzen to Dielectrics, who used the information to manufacture lower-cost (but infringing) balloons for RadiaDyne to sell. Polyzen sued both companies in North Carolina, but the suit against Dielectrics was dismissed for lack of personal jurisdiction, leading to the Massachusetts suit. This first case remains stayed pending the outcome of the North Carolina suit, which is currently under appeal.
Rothschild accused Repsly of direct and indirect infringement of U.S. Patent No. 7,456,872, “Devise and Method for Embedding and Retrieving Information in Digital Images.” The plaintiff is a Texas entity with a place of business in Plano, Texas, home to many non-practicing entities, and appears to be exlcusively in the patent infringement business. Rothschild was registered as a limited liability company in August of 2016 by Leigh Rothschild, the sole named inventor on the patent, however, making this case at least somewhat different than many of the non-practicing entity suits we see.
Judge Stearns granted a motion to quash subpoenas served on more than 100 of defendant’s customers that were issued after the discovery deadline. Plaintiff was pursuing indirect infringement claims against the defendant, and sought through the subpoenas to obtain discovery on direct infringement. Defendants moved for an emergency protective order on September 5th, and Judge Stearns granted the motion on September 6th, finding that a previous extension of discovery was limited to new issues raised by Plaintiff’s proposed new complaint and/or any new defenses; as Plaintiffs knew about its indirect infringement claim since at least December 2013, there was no justification for its not having sought discovery from the customers in a timely fashion. He ordered the parties to meet and confer on the best way to notify the customers that they did not need to respond to the subpoenas, with the Plaintiff to bear the costs of such notification.
Judge Casper denied Defendants’ motion to strike or dismiss Lexington’s second amended complaint and also denied Lexington’s motion to strike Defendants’ affirmative defenses. Lexington brought suit in 2016, alleging infringement of U.S. Patent No. 6,936,851, which covers a semiconductor light-emitting device. Lexington asserts that Defendants infringe at least one claim from the ‘851 patent through sales of LED televisions. The case had been stayed pending inter partes reviews; Defendants sought to continue the stay to allow for subsequent IPR’s, which Judge Casper denied. He also denied the request to have the direct infringement count struck under the Twombly pleading standard, which alleged that Lexington had improperly “parroted” the claim language rather than pointing out with further specificity where each limitation of the asserted claim was found in the accused products. Judge Casper declined to “wade beyond the sufficiency of the Second Amended Complaint and into an assessment of [its] substantive merits.” So long as the specific products accused of infringement and the specific claims are identified and a description of how the products infringe are present, the complaint will survive a Twombly/Iqbal motion. Motions to dismiss induced and willful infringement claims were likewise denied, with Judge Casper stating that at this early stage, a plaintiff is not required to allege more than knowledge of the patent and of infringement.
Lexington’s motion to strike the affirmative defenses was a bit more interesting. Judge Casper noted that it remains in dispute whether Twombly and Iqbal apply to affirmative defenses. An example of the affirmative defense pled was that “one or more of the asserted claims of the ‘851 patent are invalid for failing to comply with one or more provisions of Title 35 of the United States Code, including, without limitation, one or more of §§ 101, 102, 103, and/or 112.” Lexington argued that this is too broad to provide adequate notice of the basis for the defense. Judge Casper found that, by specifying the statutory provisions and by referencing the IPR’s (and the art cited therein), the defense was sufficiently specific. With respect to defenses of waiver, laches, equitable estoppel, exhaustion or license, Judge Casper refused to apply a heightened pleading standard of Rule 9(b), which applies to allegations of fraud, and refused to strike the defenses at this early stage of the proceedings, without identifying any pled facts that would support such a defense. It appears that Judge Casper believes that the Twombly/Iqbal standards do not apply to affirmative defenses.
Altova GmbH and Massachusetts-based Altova, Inc., accused Romanian partnership Syncro Soft SRL of infringing U.S. Patent No. 9,501,456, titled “Automatic Fix for Extensible Markup Language Errors.” Altova asserts that Syncro Soft’s Oxygen XML Editor’s “Quick Fix” functionality infringes the patent. Altova alleges that venue in Massachusetts is proper because Syncro Soft is not a resident of the United States (and thus may be sued in any judicial district pursuant to TC Heartland) and that Syncro Soft is subject to jurisdiction because it conducts “substantial business” in the state, including at least part of its infringing activity.