Bio-Rad and the University of Chicago accuse French company Stilla of infringing patents related to droplet digital PCR, a method of genetic analysis in which DNA molecules are separated into individual water droplets in an oil emulsion, eliminating the need for multiple test tubes or wells and allowing for analysis of smaller sample sizes than other PCR systems. Bio-Rad asserts that it spent more than $500 million developing the technology, through research and strategic acquisition, and that it has an extensive patent portfolio covering the technology. Bio-Rad accuses Stilla’s Naica System, introduced in 2016, of infringing two of those patents, one of which is owned by the University of Chicago and exclusively licensed to Bio-Rad and the second of which is owned directly by Bio-Rad. Personal jurisdiction is asserted in Massachusetts on the basis of Stilla’s recently-formed and Beverly-based U.S. entity, as well as on Stilla’s demonstration of the Naica System at the Circulating Biomarkers World Congress in Boston in March 2018, prior to the founding of Stilla’s U.S. entity. The case has been assigned to Judge Young.
ProStairs Fitness and Richard Mullen sued Collis Brown and Coliseum, LLC over a fitness product made up of a set of stairs and a slide, permitting users to work out by climbing the stairs while eliminating the stress of impact that would result from descending the stairs. According to the complaint, Mullen provided more than a quarter of a million dollars in funding to the development and production of the product, with the expectation that he would market the product with Brown and Coliseum.
When Brown declined to proceed, Mullen began marketing the product through ProStairs Fitness. In response to Brown’s subsequent threat to sue Mullen for infringing U.S. Patent No. 9,114,271, on which Brown is the sole named inventor, Mullen filed the instant complaint, seeking a declaration that the ProStairs exercise apparatus does not infringe the ‘271 patent.
Nuance, a designer of automated speech recognition (ASR) and transcription technologies, accuses Greek company Omilia of infringing eight patents related to ASR and conversational interactive voice response systems. Nuance states that Omilia was a licensee of the technology for use outside of the United States, but continued using the technology when the license terminated, subsequently expanding into the U.S. Nuance further alleges that Omilia was put on specific notice of the patents-in-suit by letter of October 8, 2018, but has refused to substantively respond or cease its activity.
Judge Saylor denied Abiomed’s motion for a protective order prohibiting discovery of foreign sales of products whose components were exported from the United States and assembled abroad. Abiomed had sought to preclude this information because Maquet had not specifically pled 35 U.S.C. § 271(f) as a basis for infringement. Noting that the limits on discovery set forth in Rule 26 may encompass matters that could bear on any issue that “is or may be in the case,” Judge Saylor determined that discovery as to worldwide sales is potentially relevant to damages. He stated that the order concerns only discoverability, and that he was taking no position on whether a claim under 271(f) was properly pled or on whether the resulting discovery would ultimately be admissible at trial. Judge Saylor further denied Abiomed’s motion to compel discovery from the Getinge Group, a consortium of companies that includes Maquet and that is owned by Getinge AB, a Swedish company. Getinge AB had initially been named as a defendant in Abiomed’s declaratory judgment complaint, but had successfully moved to dismiss because it’s lack of ownership of the subject patents meant that it lacked standing to defend such claims. Abiomed then had sought information and documents related to patent transactions, assessments, valuations and licenses held by Getinge Group entities located outside of the United States. Judge Saylor determined that the documents were not in the possession, custody or control of Maquet, because the fact that Maquet is a subsidiary of and shares a legal services department with Getinge was insufficient to establish that Maquet is an alter ego of Getinge.
Uniloc 2017, a non-practicing entity affiliated with the original Uniloc, sued Paychex, Akamai and athenahealth, accusing each of infringing a pair of patents relating to the management and distribution of application programs to target stations on a network. The patents originally belonged to IBM, and have an odd chain of title through the PTO’s assignment page – it appears that Uniloc assigned a security interest in the patents to Fortress Credit Co. in 2014 without having first obtained title from IBM – that assignment (to Uniloc Luxembourg S.A.) was executed in 2016. The patents each claim priority to a December 1998 filing, so both have expired. The cases are all before Judge Stearns.
In 2018, Nike sued Puma on seven patents related to knitted uppers for athletic shoes, and subsequently added another three newly-issued patents. Puma sought inter partes review on five of the patents and moved to stay the case pending resolution of these IPR’s, asserting that it would file another two IPR requests as soon as the rules permitted (i.e., no sooner than nine months after issuance). Judge Sorokin denied Puma’s motion to stay, noting that Puma had failed to seek post-grant review despite being in a position to do so, and that the PTO had not yet actually instituted any of the requested IPR’s. His denial was expressly based “on the present record,” suggesting that he would consider a follow-on motion when the remaining requests are filed and the PTO has acted on them.
Judge Stearns denied Samsung’s motion to dismiss for failure to state a claim, agreeing that the complaint meets the Twombly “plausibility” standard because it states the patents alleged to be infringed and the acts by which they are allegedly infringed. Rain Computing asserts that Samsung’s delivery of their apps to end user devices via an app store that requires registration and subscription to use, which are asserted to infringe Rain’s patent directed to methods and systems for delivering software to client terminals based on a subscription service. Judge Stearns held that the Federal Rules of Civil Procedure, even as explained by Twombly, “do not require a plaintiff to plead facts establishing that each element of an asserted claim is met.” This holding seems to be inconsistent with a pair of prior D. Mass. cases (Rampage v. Global Graphics, Judge Burroughs, and Sunrise Techs. V. Cimcon Lighting, Judge Gorton) that held that a patent plaintiff “must allege that defendant’s product practices all the elements of at least one of the claims of the subject patent.” It will be interesting to see whether Samsung will challenge this decision down the road.