AntiCancer, Inc. v. Berthold Technologies U.S.A., LLC et al (TV1)
Filing
46
MEMORANDUM AND OPINION as set forth in following order.Signed by Chief District Judge Thomas A Varlan on 2/20/13. (ABF)
UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF TENNESSEE
AT KNOXVILLE
ANTICANCER, INC.,
)
)
Plaintiff,
)
)
v.
) No.: 3:11-CV-457
)
(VARLAN/SHIRLEY)
BERTHOLD TECHNOLOGIES, U.S.A., LLC, et al., )
)
Defendants.
)
MEMORANDUM OPINION
This civil matter is before the Court on defendants’ Motion for Summary
Judgment of Noninfringement [Doc. 35], in which defendants move the Court to dismiss
plaintiff’s claims of patent infringement. Plaintiff submitted a response [Doc. 37], to
which defendants submitted a reply [Doc. 38]. The Court has considered the pending
motion, the responsive pleadings, and supporting exhibits in light of the relevant case
law. For the reasons discussed herein, defendants’ motion [Doc. 35] will be granted,
plaintiff’s claims against defendants will be dismissed, and this case will be closed.
I.
Facts
The dispute in this action arises from plaintiff’s method patents in procedures
which enable medical researchers to track the growth and spread of cancerous cells in
animals by using tumor cells which contain fluorescent proteins [Doc. 1 ¶ 4]. The
fluorescent proteins glow so that researchers may track the growth in real time using
fluorescence imaging, which allows researchers to learn what effect a given drug or
treatment has on the examined tumor cells [Id. ¶ 6].
The first of the two patents at issue in this case pertaining to the use of fluorescent
proteins is U.S. Patent No. 6,649,159 B2 (the ‘159 patent), which claims “methods for
whole-body external optical imaging of gene expression and methods for evaluating a
candidate protocol or drug for treating diseases or disorders using a fluorophore . . .”
[Doc. 1-1, Ex. B at 2]. The ‘159 patent was issued on November 18, 2003.
The second patent at issue is U.S. Patent No. 6,759,038 B2 (the ‘038 patent). The
‘038 patent claims the procedure for following “the progression of metastasis of a
primary tumor, which method comprises removing fresh organ tissues from a vertebrate
subject which has been modified to contain tumor cells that express [fluorescence] and
observing the excised tissues for the presence of fluorescence . . .” [Doc. 1-1, Ex. A at 2].
The ‘038 patent was issued on July 6, 2004 [Id.]. Plaintiff licenses the use of both patents
to commercial users, including pharmaceutical companies, as well as non-commercial
users, including educational institutions [Doc. 1 ¶ 18].
Defendants design, manufacture, and sell imaging systems for use by researchers
and other medical scientists, including the NightOWL LB 981 NC 100 (the
“NightOWL”) and the NightOWL II LB 983 (the “NightOWL II”) [Id. ¶ 20]. Both of
these imaging systems, when used with the appropriate filter settings, are capable of
utilizing the methods covered by the ‘159 and ‘038 patents in order to capture images of
fluorescent protein [Id. ¶ 21].
In or around November 2002, defendants sold a
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NightOWL system and various accessories for the device to Indiana University School of
Medicine [Doc. 36-3 at 4]. The shipment included a filter for the use of fluorescent
protein imaging [Id.]. Defendants later sold a NightOWL system to the Massachusetts
Institute of Technology (“MIT”) in August 2003, which also included filter accessories
for the use of fluorescent protein imaging [Id. at 7]. In between the sale of the two
systems, defendants published a marketing brochure in June 2003 entitled Ultra Sensitive
Whole Sample Imaging [:] NightOWL LB 981 (the “Whole Sample Imaging brochure”),
which highlighted the capabilities of the NightOWL [Doc. 36 at 4].
In or around 2009 and again in or around 2010, researchers at the Koch Institute
for Integrative Cancer Research at MIT used a NightOWL device to practice the methods
claimed by the ‘038 patent without a license from plaintiff [Doc. 37-1 ¶ 6]. Plaintiff
discovered the unlicensed uses based on at least two articles published by researchers at
the Koch Institute, detailing the activities surrounding use of the NightOWL and
plaintiff’s patented methods [Id. (citing Hai Jiang, et al., The Combined Status of ATM
and p53 Link Tumor Development with Therapeutic Response, 23 Genes and Develop.
1895 (June 2009) (the “Jiang article”); Kun Xie, et al., Error-prone Translesion Synthesis
Mediates Acquired Chemoresistance, 107 Proceedings of the Nat’l Acads. of Sci. 20792
(Nov. 2010) (the “Xie article”)].
Plaintiff also alleged that researchers at Indiana
University similarly infringed the ‘038 patent using the NightOWL sold to them by
defendants [Doc. 36 at 5].
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Plaintiff filed suit against defendants in the Southern District of California on
November 12, 2010, alleging direct infringement and indirect infringement of both the
‘159 and ‘038 patents, specifically alleging that defendants induced individuals at Indiana
University and MIT to infringe plaintiff’s patent using the NightOWL [Doc. 1 ¶¶ 41-43].
Upon defendants’ motion, the case was transferred to this Court on September 19, 2011.
II.
Standard of Review
Summary judgment under Rule 56 of the Federal Rules of Civil Procedure is
proper “if the movant shows that there is no genuine dispute as to any material fact and
the movant is entitled to judgment as a matter of law.” Fed. R. Civ. P. 56(a). The
moving party bears the burden of establishing that no genuine issues of material fact
exist. Celotex Corp. v. Catrett, 477 U.S. 317, 330 n.2 (1986); Moore v. Phillip Morris
Cos., 8 F.3d 335, 339 (6th Cir. 1993). All facts and all inferences to be drawn therefrom
must be viewed in the light most favorable to the non-moving party. Matsushita Elec.
Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 587 (1986); Burchett v. Kiefer, 301 F.3d
937, 942 (6th Cir. 2002). “Once the moving party presents evidence sufficient to support
a motion under Rule 56, the non-moving party is not entitled to a trial merely on the basis
of allegations.” Curtis Through Curtis v. Universal Match Corp., Inc., 778 F. Supp.
1421, 1423 (E.D. Tenn. 1991) (citing Catrett, 477 U.S. at 317). To establish a genuine
issue as to the existence of a particular element, the non-moving party must point to
evidence in the record upon which a reasonable finder of fact could find in its favor.
Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986). The genuine issue must also
4
be material; that is, it must involve facts that might affect the outcome of the suit under
the governing law. Id.
The Court’s function at the point of summary judgment is limited to determining
whether sufficient evidence has been presented to make the issue of fact a proper
question for the factfinder. Anderson, 477 U.S. at 250. The Court does not weigh the
evidence or determine the truth of the matter. Id. at 249. Nor does the Court search the
record “to establish that it is bereft of a genuine issue of material fact.” Street v. J.C.
Bradford & Co., 886 F.2d 1472, 1479–80 (6th Cir. 1989). Thus, “the inquiry performed
is the threshold inquiry of determining whether there is a need for a trial—whether, in
other words, there are any genuine factual issues that properly can be resolved only by a
finder of fact because they may reasonably be resolved in favor of either party.”
Anderson, 477 U.S. at 250.
III.
Analysis
A.
The ‘159 Patent
Plaintiff alleges that defendants directly infringed the ‘159 patent by discussing
use of the NightOWL for monitoring gene expression and by using an image of a mouse
imaged for “report gene expression” in the Whole Sample Imaging brochure [Doc. 37-3 at
23].1 In support of their motion for summary judgment, defendants argue that plaintiff
cannot show that defendants practiced all of the steps of the method claimed by the ‘159
1
Although plaintiff alleges both direct and indirect infringement of the ‘159 patent against
defendant in its complaint [Doc. 1], defendants note that in response to interrogatories plaintiff
has clarified it is only pursuing an action for direct infringement of the ‘159 patent [Doc. 36 at 3
(citing Doc. 36-1 at 5)].
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patent. Defendants further argue that the marketing brochure plaintiffs rely upon as
evidence of infringement was released for public distribution prior to the issuance of the
‘159 patent.
Defendants also contend that the marketing brochure was created in
Germany, and that all activity described in the brochure also took place in Germany, so
that no there can be no infringement.2
35 U.S.C. § 271(a) provides that:
Except as otherwise provided in this title, whoever without
authority makes, uses, offers to sell, or sells any patented
invention, within the United States or imports into the United
States any patented invention during the term of the patent
therefor, infringes the patent.
Under section 271(a), “the concept of ‘use’ of a patented method or process is
fundamentally different from the use of a patented system or device.” NTP, Inc. v.
Research in Motion, Ltd., 418 F.3d 1282, 1317 (Fed. Cir. 2005). “A method or process
consists of one or more operative steps, and accordingly ‘[i]t is well established that a
patent for a method or process is not infringed unless all steps or stages of the claimed
process are utilized.’” Id. (quoting Roberts Dairy Co. v. United States, 530 F.2d 1342,
1354 (Ct. Cl. 1976)); see also EMI Group N. Am., Inc. v. Intel. Corp., 157 F.3d 887, 896
(Fed. Cir. 1998) (“For infringement of a process invention, all of the steps of the process
must be performed, either as claimed or by an equivalent step.”).
In addition to the requirement that all steps to the method must be performed, all
steps to the method must be performed when the patent is in force, i.e. after the patent has
2
The Court notes that plaintiff did not offer argument regarding the ‘159 patent in its
response brief [Doc. 37].
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issued, for an act of infringement to occur. See Monsanto Co. v. Syngenta Seeds, Inc.,
503 F.3d 1352, 1360 (Fed. Cir. 2007) (noting that “infringement of a multi-step method
claim cannot lie by the performance of a single step after issuance of the patent when the
initial steps were performed prior to issuance”); see, e.g. Mycogen Plant Sci. Co. v.
Monsanto Co., 252 F.3d 1306, 1318 (Fed. Cir. 2001) (noting that § 271(g) of statute
“requires that the patent be issued and in force at the time that the process is practiced
and the product is made”), vacated on other grounds, 535 U.S. 1109 (2002).
Plaintiff’s sole claim of patent infringement of the ‘159 patent stems from the
Whole Sample Imaging brochure. That brochure discusses use of the Night OWL for the
type of imaging gene expression claimed by the ‘159 patent [Doc. 36-2 at 9]. The
brochure also displays images that depict gene expression in living mice [Id.]. Plaintiff
alleges that defendants had to follow the methods covered by the ‘159 patent in order to
produce the brochure.
In support of its motion, defendants submitted the affidavit of Bernd Hutter, an
employee in defendants’ Marketing & Product Management, Bioanalytical Instruments
division [Doc. 36-2 ¶ 1]. Mr. Hutter testified that the Whole Sample Imaging brochure
was released for public distribution on or about June 20, 2003 and that the all of the
activity described in and connected to the brochure occurred prior to June 20, 2003 [Id.
¶¶ 3-4]. Mr. Hutter further stated that the date of the brochure can be observed by the
“notation in the bottom right corner of the page” in vertical text which appears on the last
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page of the brochure: 062003 [Id. ¶ 3].3 Plaintiff has not offered any evidence to rebut
Mr. Hutter’s testimony that the Whole Sample Imaging brochure was produced prior to
the November 18, 2003 issuance of the ‘159 patent. Plaintiff has not created a genuine
issue of material fact as to whether defendants performed all of the steps under the ‘159
patent after the ‘159 patent had issued. Accordingly, defendants are entitled to summary
judgment on plaintiff’s claim of patent infringement of the ‘159 patent.4
B. The ‘038 Patent
In its response to defendants’ motion [Doc. 37], plaintiff claims that researchers at
the Koch Institute for Integrative Cancer Research at MIT practiced the methods of the
‘038 patent without a license and thereby committed patent infringement in 2009 and
again in 2010 when they used the NightOWL to produce the Jiang and Xie articles.
Plaintiff argues that defendants induced this direct infringement by producing a
marketing brochure [Doc. 37-6, Ex. E] and PowerPoint presentation [Doc. 37-6, Ex. F],
both of which give instructions on how to use a NightOWL II camera to conduct
fluorescence imaging.
Plaintiff contends that defendants sent these documents to
researchers at MIT in order to encourage or assist the researchers’ infringement. In
support of this argument, plaintiff submits that “it is standard procedure for
instrumentation manufacturers such as [defendants] to supply prospective and existing
3
Later brochures produced by defendants similarly indicate the date of creation in vertical
text on the last page [See Doc. 1-1 at 63, 73, 87].
4
Because the Court finds that defendants did not engage in any potentially infringing
activity after issuance of the ‘159 patent, the Court need not address defendants’ other
arguments.
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customers with information about scientific applications for their products” [Id. at 8].
Defendants contend that plaintiff has produced no evidence that defendants sent the
documents in question to MIT or any other institution, and as a result, has not presented a
genuine issue of material fact as to whether defendants encouraged MIT researchers to
infringe the ‘038 patent.
35 U.S.C. § 271(b) states: “[w]hoever actively induces infringement of a patent
shall be liable as an infringer.” The Supreme Court has held that induced infringement
under § 271(b) “requires knowledge that the induced acts constitute patent infringement.”
Global-Tech Appliances, Inc. v. SEB S.A., 131 S. Ct. 2060, 2068 (2011). In light of the
Supreme Court’s ruling in Global-Tech, the Sixth Circuit set forth four requirements a
plaintiff must satisfy to establish a claim for inducement infringement: (1) specific acts of
direct infringement by a third-party; (2) the defendant took active steps that induced the
third-party’s infringement; (3) the defendant intended the third-party to take the
infringing acts; and (4) the defendant knew or willfully disregarded the risk that those
actions by the third-party would constitute direct infringement.
Static Control
Components, Inc. v. Lexmark Int’l, Inc. 697 F.3d 387, 415 (6th Cir. 2012); see also
Akamai Techs., Inc. v. Limelight Networks, Inc., 692 F.3d 1301, 1308 (Fed. Cir. 2012)
(en banc) (“‘[I]nducement requires that the alleged infringer knowingly induced
infringement and possessed specific intent to encourage another’s infringement.”’)
(quoting DSU Med. Corp. v. JMS Co., 471 F.3d 1293, 1306 (Fed. Cir. 2006) (en banc)).
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In this case, assuming arguendo that the MIT researchers infringed the ‘038
patent, plaintiff must also present evidence showing that defendants knowingly
encouraged the researchers to infringe the ‘038 patent as required by the test set forth in
Static Control.
Defendants sold the NightOWL and shipped all accompanying
instructions and applications to MIT in 2003, prior to the issuance of the ‘038 patent and
prior to plaintiff informing defendants of the existence of the ‘038 patent in 2006 [Doc.
37 at 4]. Any of defendants’ activities in regard to the sale of the NightOWL prior to
2006, then, cannot serve as evidence of inducing infringement because defendants did not
know about the ‘038 patent. See Static Control, 697 F.3d at 415 (noting that plaintiff
must show defendant knew or willfully disregarded the risk that others would infringe
patent). The only two actions that plaintiff relies upon as proof of inducement by
defendants are the publication of the brochure [Doc. 37-6, Ex. E] and the PowerPoint
presentation [Doc. 37-6, Ex. F], both of which discuss the NightOWL II, a newer model
of the device owned by MIT.
Plaintiff submits that “it is standard procedure for instrumentation manufacturers”
such as defendants to send information to current and past customers about applications
for their products [Doc. 37 at 8].
This general statement about the practices of
instrumentation manufacturers cannot satisfy plaintiff’s burden of creating a genuine
issue of material fact as to whether these were actually sent by defendants to the MIT
researchers who subsequently produced the Jiang and Xie articles.
Conclusory
allegations and unsubstantiated assertions are not evidence and are not adequate to
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oppose a motion for summary judgment. Miller v. Aladdin-Temp-Rite, LLC, 72 F. App'x
378, 380 (6th Cir. 2003) (citing Lujan v. Nat’l Wildlife Fed’n, 497 U.S. 871, 888 (1990));
see also Roopchan v. ADT Sec. Sys., Inc., 781 F. Supp. 2d 636, 650 (E.D. Tenn. 2011)
(noting conclusory allegations in plaintiff’s response to motion for summary judgment
did not raise a genuine issue for trial).
Plaintiff has not presented evidence that
defendants have a procedure whereby they periodically send out marketing materials to
past customers or that defendants had a history of sending marketing materials to
academic institutions such as MIT.
Rather, plaintiff infers that because some
manufacturers send such information, defendants sent the materials in question here and
that information enabled the MIT researchers to infringe the patent. This assertion,
without any other evidence that defendants sent MIT researchers the marketing materials
intending that they be used to commit patent infringement, does not demonstrate the type
of “specific facts showing a genuine issue for trial” necessary to defeat a well-supported
motion for summary judgment under Rule 56. Fed. R. Civ. P. 56(e); Matsushita, 475
U.S. at 586.
Defendants have submitted evidence rebutting plaintiff’s claim that the brochure
and presentation were used to infringe the ‘038 patent in showing that there is no genuine
dispute as to any material fact. In reply to plaintiff’s response, defendants submitted an
affidavit from Rhonda Mullins (“Mullins”), the president of defendant Berthold
Technologies, U.S.A [Doc. 38]. Mullins testified that the PowerPoint presentation in
question was created by defendant Berthold Technologies GMBH & Co., KG (“Berthold
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Germany”) and is used in employee sales training in Germany, noting that the
presentation was not sent to MIT [Id. ¶ 2]. Mullins further testified that the brochure in
question was also created by Berthold Germany for the NightOWL II and that the
brochure was not provided to MIT [Id. ¶ 3].
As plaintiff has not presented evidence showing that MIT received the brochure or
PowerPoint from defendants, and defendants have presented evidence that they did not
send either of the materials to MIT, the Court concludes that there is no genuine issue of
material fact as to whether defendants induced the MIT researchers to infringe the ‘038
patent. Accordingly, the Court will grant defendants’ motion for summary judgment of
non-infringement as to the ‘038 patent.5
III.
Conclusion
For the reasons stated, defendants’ motion [Doc. 35] will be GRANTED,
plaintiff’s claims against defendants will be DISMISSED, and this case will be
CLOSED.
ORDER ACCORDINGLY.
s/ Thomas A. Varlan
CHIEF UNITED STATES DISTRICT JUDGE
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While plaintiff initially alleged that defendants also induced researchers at the
University of Indiana to commit patent infringement, the Court notes that plaintiff does not
address this claim in response to defendants’ motion for summary judgment. Nonetheless, the
Court applies the same analysis and reaches the same conclusion that there is no genuine issue of
material fact for which a jury could rule in plaintiff’s favor.
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