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 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.
Avigilon filed suit against Canon, seeking declaratory judgment that its cameras and camera software do not infringe various Canon patents. Earlier this summer, Canon had sued Avigilon for patent infringement in the Eastern District of New York. After Avigilon indicated it would move to transfer the case to Massachusetts, Canon filed a notice of voluntary dismissal. Avigilon seeks declarations that U.S. Patent Nos. 6,580,451, 6,911,999, 7,0344,864, 7,321,453, and 9,191,630 are not infringed and are invalid and/or unenforceable.
It will be interesting to see whether the sufficiency of the pleading is challenged. The Iqbal/Twombly standard has been found not to apply to affirmative defenses, thus allowing generically pled affirmative defenses of non-infringement and invalidity to stand. Earlier this summer, however, in the case of PetEdge, Inc. v. Marketfleet Sourcing, Inc. d/b/a Frontpet (16-cv-12562), Judge Saylor dismissed similar bare-bones non-infringement and invalidity pleadings when presented as counterclaims.
Judge Sorokin denied Covidien’s motion for a preliminary injunction that sought to bar sales of Ethicon’s Enseal® X1 Large Jaw Device, a surgical tool that allows a surgeon to grasp a vessel between two jaws, apply energy to the jaws to for a seal, and cut the now-sealed vessel. Prior to the introduction of this device, Covidien was the market leader in such instruments that used bipolar (or radiofrequency) energy to seal the vessel. Since its introduction in March 2017, the X1 Large Jaw has generated $7.8 million in revenue. Covidien contends that the X1 Large Jaw infringes U.S. Patent No. 8,241,284, which claims vessel sealing devices having non-conductive stop members that maintain a constant distance between the jaw surfaces along the length of the jaws.
Because Ethicon raised a substantial question of non-infringement, Covidien was unable to demonstrate a likelihood of success on the merits. Of interest, while both parties sought to have the claim terms given their plain and ordinary meaning, the parties disagreed as to what that meaning was, with Ethicon urging a meaning that took its product out of infringement. Judge Sorokin determined that “Ethicon’s proposed meanings are at least sufficiently persuasive to raise a substantial question regarding the ‘plain and ordinary’ meanings of the relevant terms.” In addition, Judge Sorokin found that Covidien failed to show a nexus between the claimed elements of the device and the success of the X1 Large Jaw. Ethicon provided evidence that sales of the X1 device were driven by factors, such as better ergonomics, ease of use, availability of sealing separately from cutting, and price, that were unrelated to the claimed elements. Accordingly, Covidien did not show irreparable harm “resulting from the alleged infringement.”
Judge Glen E. Conrad of the Western District of Virginia granted defendant Tomtom’s motion to transfer venue to the District of Massachusetts. The complaint, for patent infringement, was filed in July 2016, yet Tomtom’s motion was not filed until after the TC Heartland decision holding that venue is restricted to the state of incorporation or a venue in which the defendant both has a regular place of business and has committed acts of infringement. Tomtom is not incorporated in Virginia and has no regular place of business there. In response to the motion, Smart Wearable acknowledged that venue in Virginia is not proper under TC Heartland, but argued that Tomtom waived its venue challenge by failing to raise it earlier.
When faced with a similar situation, Judge Young of the District of Massachusetts denied the motion to transfer, finding that TC Heartland was not a change in the law that allowed for the late filing of a venue motion. In Virginia, however, Judge Conrad determined that TC Heartland “significantly changed the law of venue” in patent cases , and that, “as a practical matter,” the motion to transfer was not available to Tomtom prior to that decision. While these decisions are on their face contradictory, it may be the result of differences in controlling circuit law – Judge Conrad specifically cited to a Second Circuit holding that a defense cannot be waived where it was directly contradictory to then-existing circuit precedence.
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.