Judge Young denied Micron’s motion to dismiss for improper venue, finding Micron had waived a venue challenge by not raising it in its initial Rule 12(b)(6) motion. It is noteworthy that Harvard’s opposition was based solely on waiver, and that Harvard did not argue that venue was proper under TC Heartand. Micron asserted that its venue challenge was not available as of its initial 12(b)(6) motion, because TC Heartland had not yet issued. Judge Young noted, however, that TC Heartland merely reaffirmed a previous Supreme Court decision on venue, and that the defendant in TC Heartland had (ultimately) successfully mounted a venue challenge in the face of countervailing Federal Circuit law. Accordingly, Micron was found to have waived its venue argument by failing to raise it earlier.
Judge Saris denied Intellectual Ventures’ motion to lift a stay pending inter partes review of the three patents in suit. While not all asserted claims are subject to review, Judge Saris noted the significant overlap between the issues before the Patent Trial and Appeals Board and those in litigation. She noted that the plaintiff, a non-practicing entity, will suffer no undue hardship by the delay, and also noted that the litigation was in its infancy with no trial in sight. Intellectual Ventures did receive some solace – Judge Saris indicated that she would not stay the case for IPR’s filed by non-parties unless all defendants agree to be bound by the results of the IPR, would not wait for all IPR’s to be fully resolved, and would not stay pending appeal of the IPR’s.
Judge Young, tired of discovery disputes this case, put forward a new approach on Wednesday. With five trial days coming up in early September and the parties contending that relevant documents still had not been produced, Judge Young stated that no party would be allowed to introduce into evidence anything that had reasonably been called for but not produced prior to Monday, August 21, and that he would draw an adverse inference at trial against any party found not to have produced relevant and responsive documents. Effectively, he is inviting the parties to either cooperate or to dig their own graves.
Venus Locations LLC sued FitnessKeeper, Inc., alleging infringement of U.S. Patent No. 6,442,485, titled “Method and apparatus for an automatic vehicle location, collision notification, and synthetic voice.” The plaintiff appears to be a non-practicing entity residing in Plano, Texas, and has sued at least two other companies (Inrix Inc. and Nextraq, Inc.) on the same patent in the Eastern District of Texas. The plaintiff is represented by Ferraiuoli LLC, a Puerto Rican law firm with attorneys admitted in Massachusetts.
Judge Zobel entered final judgment in accordance with the December 14, 2016 jury verdict and her April 24, 2017 Order. The final judgment included:
- direct and indirect willful infringement of U.S. Patent 5,229,137;
- ‘137 patent valid over the prior art of record;
- Perrigo was not entitled to a laches defense because plaintiffs knew or should have known of infringement only as of August 2008, too recent for laches to apply;
- Damages of $10,210,071;
- Attorneys’ fees were not awarded, as the defense, while not successful, was not frivolous or vexatious, as Perrigo had investigated infringement and invalidity before filing its ANDA application ad Brigham’s corporate witness testified that it did not immediately bring suit for fear of losing royalties should the claims be found invalid; and
- Enhanced damages would not be applied, despite the jury’s finding of willfulness, in part because the awarded damages were at the high end of those sought.
Judge Zobel’s April order was interesting in that she found that final judgment had previously been entered, triggering the timelines of Fed R. 50(b) and 59(e), which could not be expanded by the district court, despite her having granted a joint motion to extend the deadline. Thus, Perrigo’s renewed motion for judgment as a matter of law was not timely filed, and its notice of appeal was also late.
Judge Talwani granted Mayo’s motion to dismiss Athena Diagnostics’ complaint, finding the claims of U.S. Patent No. 7,267,820 encompassed unpatentable subject matter. The patent is directed to diagnosing Myasthenia Gravis, an autoimmune disorder by detecting IgG autoantibodies. The inventors had discovered that some sufferers of the disease had IgG antibodies that attack a receptor, known as MuSK, on muscles, resulting in muscular weakness, and developed a diagnosis method whereby a radio-labelled version of the receptor, known as 125I-Musk, is introduced to a sample of bodily fluid to attach to MuSK antibodies. The fluid is immunoprecipitated, and the presence of the radioactive label indicates the person has the disease. In the face of Mayo’s Alice motion, Athena argued that the claims were not directed to a law of nature, but instead utilize the man-made 125I-Musk to form a complex with MuSK antibodies that do not occur in nature. Judge Talwani agreed that the complex was not naturally-occurring, but found that this did not transform the subject matter to a patent eligible concept – the patent was not directed to the 125I-Musk-antibody complex, but to the interaction of the 125I-Musk and antiobodies present in fluid, which is a naturally-occurring interaction. She analogized the facts with those of Mayo, in which while it “took human action (the administration of a thiopurine drug) to trigger the desired reaction, the reaction itself happened apart from any human action.” Judge Talwani determined that in Mayo, a man-made substance was administered to a person and the by-product of the metabolization of that substance was observed, just as here.
Having determined that the patent was directed to a law of nature, Judge Talwani next determined that the claims did not include an inventive concept beyond the law of nature that would nevertheless make them patent-eligible, relying on statements in the patent specification that “iodination and immunoprecipitation are standard techniques in the art.” Athena argued that, while the iodination (radio-labelling) and immunoprecipitation processes were known at the time of invention, they were not well understood or routine when applied to complex molecules like proteins. The Court, citing the written description requirements of 35 US.C. 112, found that the specification lacked any such statements, and that Athena’s argument was contradicted by the specification.
In analyzing both the first and second steps of the Alice test, Judge Talwani relied on language in the specification that the purpose of the patent was for diagnosing neurotransmission or developmental disorders related to MuSK, finding that, on its face, the patent claims a process for detecting antibodies, not for creating the 125I-Musk. Because the antibodies occur naturally, it did not matter that 125I-Musk is not itself naturally occurring.
A jury verdict was reach in the case of Koninklijke Philips Electronics N.V. v. Zoll Medical Corp. The jury awarded Philips $8,900,000 as a reasonable royalty for infringement of the ‘374 patent and $1,500,000 for infringement of the ‘454 and ‘905 patents, but also awarded Zoll $3,300,000 for Philips’ infringement of Zoll’s ‘526 and ‘187 patents. Neither side was found to willfully infringe.