The Regents of the University of California v. St. Jude Medical, Inc.
Filing
59
ORDER by Judge Yvonne Gonzalez Rogers denying 28 Motion to Dismiss. (fs, COURT STAFF) (Filed on 5/30/2017)
1
2
3
UNITED STATES DISTRICT COURT
4
NORTHERN DISTRICT OF CALIFORNIA
5
6
THE REGENTS OF THE UNIVERSITY OF
CALIFORNIA,
Plaintiff,
7
9
ORDER DENYING MOTION TO DISMISS
(DKT. NO. 28)
vs.
8
CASE NO. 16-cv-06210-YGR
ST. JUDE MEDICAL, INC.,
Defendant.
10
11
United States District Court
Northern District of California
Plaintiff The Regents of the University of California (“the Regents”) brings this patent
12
13
14
15
infringement action against Defendant St. Jude Medical, Inc. (“SJM”) alleging claims for
contributory infringement and actively inducing infringement of two patents, United States Patent
No. 6,164,283 (“the ’283 Patent”), entitled “Device And Method For Forming A Circumferential
Block In A Pulmonary Vein;” and United States Patent No. 6,502,576 (“the ’576 Patent”), entitled
16
“Device And Method For Forming A Circumferential Block In A Pulmonary Vein.” (Dkt. No. 1,
17
Complaint.) The patents describe a method used by physicians to treat irregular heart rhythms
18
known as atrial fibrillation (“AFib”), and the Regents assert that the patented methods are now the
19
“universally-adopted procedure” for treating AFib (“the Patented Method”). (Complaint ¶ 37.)
20
The Regents allege that SJM has infringed on the patents by actively inducing and contributing to
21
physicians’ direct infringement by practicing the Patented Method. SJM has filed a motion to
22
dismiss the contributory infringement claim in the complaint only.
Having carefully considered the papers submitted and the pleadings in this action, and for
23
24
25
26
27
28
the reasons set forth below, the Court DENIES the Motion to Dismiss the contributory infringement
claim.
I.
APPLICABLE STANDARD
To survive a motion to dismiss, “a complaint must contain sufficient factual matter,
accepted as true, to ‘state a claim to relief that is plausible on its face.’” Iqbal, 556 U.S. at 678
1
(citation omitted); see also Fed. R. Civ. P. 12(b)(6). “A pleading that offers ‘labels and
2
conclusions’ or a ‘formulaic recitation of the elements of a cause of action will not do.’ Nor does a
3
complaint suffice if it tenders ‘naked assertion[s]’ devoid of ‘further factual enhancement.’”
4
Iqbal, 556 U.S. at 678 (citation omitted). “Threadbare recitals of the elements of a cause of action,
5
6
7
8
supported by mere conclusory statements” will not suffice. Id. at 679. Determining whether a
complaint states a plausible claim for relief is a very “context-specific task” and requires the
district court to analyze the facts alleged in the complaint, and any documents attached thereto, to
determine whether a claim of contributory infringement is plausible. In re Bill of Lading
Transmission & Processing Sys. Patent Litig., 681 F.3d 1323, 1337 (Fed. Cir. 2012) (citing Iqbal,
9
556 U.S. at 679).
10
United States District Court
Northern District of California
11
12
13
In general, the Court “may not consider any material beyond the pleadings in ruling on a
Rule 12(b)(6) motion.” United States v. Corinthian Colleges, 655 F.3d 984, 998 (9th Cir. 2011)
(quotations omitted). However, the Court may consider materials attached to the complaint and
documents properly the subject of judicial notice. Id. at 999; see also Davis v. HSBC Bank
14
Nevada, N.A., 691 F.3d 1152, 1160 (9th Cir. 2012).
15
II.
16
DISCUSSION
Contributory infringement occurs if a party sells or offers to sell, a material or apparatus
17
for use in practicing a patented process, and that ‘material or apparatus’ is used in practicing a
18
patented process, is material to practicing the invention, and is not a “staple article . . . suitable for
19
substantial non[-]infringing use.” 35 U.S.C. § 271(c); see In re Bill of Lading, 681 F.3d at 1337.
20
A product, or component of a product, that is “specially adapted for use in the patented process
21
and with no substantial non-infringing use, would plainly be ‘good for nothing else’ but
22
infringement,” making its seller liable. Ricoh Co. v. Quanta Computer, Inc., 550 F.3d 1325, 1337
23
(Fed. Cir. 2008) (quoting Metro-Goldwyn-Mayer Studios Inc. v. Grokster, 545 U.S. 913, 932
24
25
26
(2005)). A “staple” article of commerce “is one that was not specifically designed for use with a
patented process [or combination] and has substantial, efficient, and feasible uses outside of the
patent.” Mentor H/S, Inc. v. Medical Device Alliance, Inc., 244 F.3d 1365, 1379 (Fed. Cir. 2001).
A substantial non-infringing use is one that is not unusual, occasional, or aberrant. In re Bill of
27
28
2
1
Lading, 681 F.3d at 1337 (citing Vita–Mix Corp. v. Basic Holdings, Inc., 581 F.3d 1317, 1327–29
2
(Fed.Cir.2009)).
3
4
5
6
7
8
SJM argues that the Regents’ contributory infringement claim must be dismissed because
the Complaint fails to allege sufficient facts to establish that the SJM products identified in the
claim have no substantial non-infringing use. Here, the Regents allege that SJM contributed to
direct infringement by third-party physicians through its purposeful design, manufacture, and
promotion of two particular types of devices that physicians use only in performing the Patented
Method—looped mapping catheters and introducers—and identify a number of model names of
such devices. (Complaint at ¶ 49.) The Complaint alleges in sufficient detail that these mapping
9
catheters and introducers, including those models identified in each category, are essential,
10
United States District Court
Northern District of California
11
12
13
material parts of the system of hardware that enables performance of the Patented Method. (Id. at
¶¶ 47-50, 69, 70, 89.) It alleges that these products are designed specifically for use by physicians
only to perform the Patented Method. (Id. at ¶¶ 49, 50, 70.) The Regents allege that the Patented
Method is the universally-adopted method to treat AFib, such that descriptions in all these
14
materials about use of the products to treat AFib cannot mean anything other than that they are
15
being used to perform the Patented Method. (Id. at ¶¶ 37, 81.) And, finally, it alleges that SJM’s
16
marketing materials promote use of these products as being designed for the purpose of
17
performing the Patented Method, and attaches examples the Regents contend are evidence that
18
SJM characterizes the devices as specially designed to perform the method. (See id. ¶¶ 79, Exh. 5
19
at 8, Exh. 9 at 9.) These allegations are sufficient allege a plausible claim that the products
20
identified have no substantial, non-infringing use. See Mentor H/S, 244 F.3d at 1379 (holding that
21
statements in the defendant’s manual that a certain instrument was specifically designed for use in
22
the surgical method at issue was evidence that product was not a staple article).1
23
24
25
26
27
28
1
While mere boilerplate recitations of the statutory language are insufficient to allege that
the product has no substantial, non-infringing use, several courts post-Iqbal have noted the
difficulty of pleading with greater specificity where plaintiff is essentially required to prove a
negative, without the benefit of discovery. See Iron Gate Sec., Inc. v. Lowe's Companies, Inc., No.
15-CV-8814 (SAS), 2016 WL 1070853, at *4 (S.D.N.Y. Mar. 16, 2016), reconsideration denied,
No. 15-CV-8814 (SAS), 2016 WL 1446230 (S.D.N.Y. Apr. 11, 2016); Conair Corp. v. Jarden
Corp., No. 13-CV-6702 AJN, 2014 WL 3955172, at *4 (S.D.N.Y. Aug. 12, 2014) (collecting
cases).
3
1
Contrary to SJM’s contention, the Court cannot determine from the face of the Complaint
2
and its exhibits that there are substantial non-infringing uses for these mapping catheters and
3
introducers. While the documents attached to the complaint discuss SJM products and their
4
functions, the Court cannot read into these documents to find, as a matter of law, that they perform
5
6
7
8
functions other than parts of the Patented Method, and that such functions constitute substantial
non-infringing uses. In particular, the parties provide conflicting interpretations and out-ofcontext arguments about the import of illustrations and statements in the SJM patient handbook
attached as Exhibit 9. These conflicting interpretations serve only to demonstrate a dispute exists
as to whether the identified products have other substantial, material uses, or only perform the
9
Patented Method. These factual matters will need to be established through an evidentiary record
10
United States District Court
Northern District of California
11
12
13
14
after discovery, perhaps at summary judgment.
Accordingly, the Motion to Dismiss is DENIED.
IT IS SO ORDERED.
This terminates Docket No. 28.
Dated: May 30, 2017
YVONNE GONZALEZ ROGERS
UNITED STATES DISTRICT COURT JUDGE
15
16
17
18
19
20
21
22
23
24
25
26
27
28
4
Disclaimer: Justia Dockets & Filings provides public litigation records from the federal appellate and district courts. These filings and docket sheets should not be considered findings of fact or liability, nor do they necessarily reflect the view of Justia.
Why Is My Information Online?