Nike, Inc. v. Puma North America, Inc. (18-cv-10876).

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.

Oxford Immunotec Ltd. v. Qiagen, Inc. et al. (15-13124).

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.