Judge Talwani granted Infobionic’s motion to dismiss, finding the claims in suit were directed to patent-inelligible subject matter. CardioNet accused Infobionic of infringing U.S. Patent 7,941,207, titled “Cardiac Monitoring,” by sales of its MoMe Kardia System. The patent concerns monitoring electrical activity of the heart to identify atrial fibrillation and atrial flutter, two forms of arrhythmia, in ambulatory (i.e., not bed-ridden) patients. Judge Talwani noted that dismissals founded on § 101 invalidity were approved by the Federal Circuit in their 2018 Aatrix Software decision, applying the non-moving party’s proposed claim construction where construction is necessary. Here, Judge Talwani found the claims were directed to the abstract idea of looking at the variability in time between heartbeats and taking into account ventricular beats, a method of diagnosis that had long been used, and that the claims merely applied conventional computer components to that idea. She rejected CardioNet’s argument that the improvement to the field of cardiac telemetry necessarily translated into an improvement in computerized technology that would take the claims out of the Alice analysis. Having determined that the claims are directed to a natural phenomenon under the first step of the Alice, Judge Talwani went on to find that the algorithms used in the analysis would not suffice to result in eligibility, because Alice forceloses eligibility based on the implementation of a mathematical principal on a computer. The claims themselves used terms like “variability determination logic” and “relevance determination logic;” Judge Talwani noted that CadioNet failed to identify what aspect of these logic systems described in the specification made the claims patent-eligible, and further noted that “determination logic” is not defined or used in the specification. As such, it would cover any form of logic, and provides no meaningful limitation on the claims that would render them eligible. Accordingly, the complaint was dismissed.
Nike sued Puma for infringement of seven Nike patents covering shoes having knitted upper, and alleged that after it notified Puma about the patents prior to filing suit, Puma not only failed to cease making and selling the accused products, Puma also introduced new shoes to the market that infringed the patents. Puma moved to dismiss the claims with respect to two of the patents as directed to non-patentable subject matter, asserting that one was directed to the abstract idea of forming an outline pattern on a textile and does not disclose an inventive step towards achieving the outline pattern, and that the second is directed to the abstract idea of generating a visual pattern on a textile, which is nothing more than a non-patentable work of art. Judge Sorokin disagreed, finding that the claims, which were directed to tangible manufactured items (i.e., shoes) or to physical components thereof or methods of manufacturing the same, they passed muster under the first prong of the Mayo test as being directed to a statutorily provided category of patent-eligible subject matter. He further noted that, even if they did not, Puma had not met its burden of demonstrating by clear and convincing evidence that the claims lacked an inventive step that would meet the second prong of the Mayo test. Judge Sorokin also denied Puma’s motion to dismiss the willfulness charges, finding Puma’s suggestion that more must be pled than knowledge of the patent and continued infringement remained an open question (albeit one that other Massachusetts judges had found incorrect), but that Nike had sufficiently pled additional facts that would support a finding of willfulness.
Judge Talwani found GeneAlign in default after it failed to respond to Boston Heart Diagnostic’s patent infringement complaint and entered an injunction barring GeneAlign from making, using, selling or offering for sale any SLCO1B1 test. She further awarded BHD costs and fees totaling $15,641.49 after determining, taking the allegations of the complaint as true, that the case was exceptional under 35 U.S.C. § 285.
Judge Saylor granted Collegiums request for leave to file an amended answer pleading the reverse doctrine of equivalents as an affirmative defense. He found this defense not clearly futile, but expressly indicated that he was taking no position as to whether the reverse doctrine of equivalents is an affirmative defense that must be pled or whether it remains a viable legal doctrine.
Purdue alleges that Collegium infringed three patents relating to abuse-deterrent extended-release oxycodone by filing an NDA for Collegium’s XTAMPZA ER product. Collegium sought summary judgment of non-infringement on two theories – that its active ingredient (oxycodone myristate) is not the equivalent of Purdue’s oxycodone hydrochloride, and that Collegium’s product lacks the claimed “irritant.” Collegium also asserted that one of the patents should be deemed invalid under issue preclusion or collateral estoppel, based on a final judgment in a New York court that three related patents were invalid and the PTO’s requirement, during examination of the patents at issue, that a terminal disclaimer be filed to overcome obviousness-type double patenting over the related patents.
The invalidated claims from the prior litigation were all product-by-process claims; while the Judge in that case acknowledged the process was novel, the claims stood or fell based solely on the product limitations, which did not describe a patentably-distinct compound. In evaluating the collateral estoppel argument, Judge Saylor noted that it had not been applied by the District of Delaware in an infringement case involving one of the patents of this suit. Judge Saylor applied Federal Circuit law on the preclusion and estoppel issues, which allows for preclusion on patent invalidity where the differences between the unadjudicated and adjudicated claims do not materially alter the question of patentability. He determined that the PTO’s double patenting analysis fails to satisfy this requirement, and that Purdue’s filing of the terminal disclaimers (particularly while expressly indicating its lack of agreement with the rejections) could not be converted into an admission or acquiescence on the merits of the rejections. He also determined that the claims at issue included additional limitations that materially alter the patentability as compared with the previously-invalidated claims, as the new claims included limitations relevant to the process that were not considered in the New York litigation. Collegium asserted that these limitations were inherently present in the invalidated Purdue patents, but Judge Saylor declined to apply the doctrine of inherency where the references in question, related Purdue patents, would not qualify as prior art, and noted that in any event there were unresolved issues of material fact that precluded summary judgment on the issue. While rejecting the preclusion issue, Judge Saylor did note that the findings of fact by the New York court rendered the validity of at least some of the asserted claims doubtful.
Collegium next sought to apply prosecution history estoppel to preclude a finding of infringement by equivalents, asserting that Purdue had specifically distinguished its hydrochloride form of oxycodone over other forms of oxycodone. Judge Saylor, however, determined that the scope of disavowal extended not further than products including oxycodone free base and declined to estop the equivalency argument. He found factual issues as to whether the two forms were equivalent that precluded summary judgment of non-infringement.
Collegium sought judgment of non-infringement on method claims, asserting that it does on itself complete all of the method steps because its product is manufactured by two companies that it does not control; Judge Saylor determined that Collegium could not demonstrate an absence of material fact on this issue, and denied summary judgment. Collegium’s last effort was to escape infringement of two of the patents on the basis that the myristic acid it utilized in its product is not an “irritant,” but instead is included to dissolve the oxycodone base. Looking back to the construction of “irritant,” the Court noted that Purdue had disavowed from the scope of that term components that both served both as an irritant and provided some other benefit, such as serving as an excipient. Noting that Purdue concedes that myristic acid in the XTAMPZA ER provides an excipient function, Judge Saylor granted summary judgment of non-infringement of all claims requiring an irritant, which effectively resulted in non-infringement on two of the three asserted patents.
Greater Boston Authentication Solutions (“GBAS”) accuses Woburn’s Kaspersky of infringing three patents relating to remotely unlocking electronic data using cryptographic authentication. GBAS asserts that Kaspersky’s license activation and verification technology infringes the patents, either literally or through the doctrine of equivalence. Judge Young has the case.
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).