Massachusetts Patent Litigation Wrap Up: November 2017

This post is part of a monthly series summarizing notable activity in patent litigation in the District of Massachusetts, including short summaries of substantive orders.

Brigham and Women's Hospital, Inc. et al. v. Perrigo Company et al. Civil Action No. 13-cv-11640 (D. Mass, Nov. 17, 2017) (Zobel, J.)

• Order on Perrigo's Motion for Judgment as a Matter of Law of No Infringement — ALLOWED
• Order on Perrigo's Motion for Judgment as a Matter of Law of Invalidity — DENIED
• Order on Perrigo's Motion for Judgment as a Matter of Law on Lack of Standing — DENIED
• Order on Brigham's Pl. Motion to Amend Final Judgment — DENIED AS MOOT

Brigham filed suit against Perrigo alleging infringement of U.S. Patent No. 5,229,137 (the '137 Patent) relating to a method of providing instant and sustained relief from the pain and symptoms of heartburn. On December 14, 2016, a jury found in favor of Brigham that 1) Perrigo had infringed the '137 Patent, 2) the '137 Patent had an effective priority date of March 1990, and 3) all asserted claims were valid.

Judgment was entered on December 19, 2016. Perrigo filed several motions for judgment as a matter of law or a new trial under Fed. R. Civ. P. 50(d) and 59(d). Brigham opposed and moved to amend the final judgment to include damages and pre-judgment interest. The Court's analysis of the various motions was as follows:

1. Standing

Perrigo argued that Brigham lacked standing to sue Perrigo because the license agreement between Brigham and Johnson & Johnson Merck Consumer Pharmaceuticals (JJMCP) covering the '137 Patent was in force at the time of the allegedly infringing activity, and thus Brigham was obligated under the agreement to notify JJMCP and obtain authority prior to filing suit.

The Court agreed that Brigham was obligated to notify JJMCP because it sought damages for infringing activity that occurred when the agreement was still in place, but found that Brigham had prudential standing to sue Perrigo because Brigham retained substantial rights in the '137 patent under the license agreement, including (1) the right to control JJMCP's ability to settle; (2) the secondary right to sue to enforce the '137; and (3) the right to terminate the agreement. The court observed that if JJCMP had elected to sue Perrigo, it would have had to join Brigham as a necessary party in order to establish prudential standing.

2. Infringement

The Court found that Brigham failed to prove direct infringement because it could not show that Perrigo's product read on the "immediate and sustained relief" limitation in claim 1 of the '137 patent. The court held that Brigham's reliance on its own clinical studies that were submitted to the FDA (and that were incorporated by Perrigo in its ANDA) for proof that Perrigo's generic product met this claim limitation was insufficient. This was because while the study in question did show an increase of esophageal pH within the first 5-10 minutes of dosing that would correspond with immediate relief from the symptoms of episodic heartburn, the study did not show that the patients had an esophageal pH of 4 and lower that would indicate that they were ever suffering from heartburn. Because Brigham could not prove that the product read on all the claim limitations of the '137 patent, it could not establish infringement as a matter of law, and the court held that Perrigo was entitled to judgment as a matter of law on direct infringement.

3. Invalidity

The court held that Brigham was not entitled to the March 1990 priority date because the laboratory notebooks entered into evidence to prove an earlier priority date than the filing date were unwitnessed and were not corroborated. However, the court held that Perrigo was not entitled to a judgment as a matter of law on invalidity because none of the prior art references submitted into evidence at trial disclosed the key limitation in claim 1 namely the "immediate and sustained relief" limitation nor explained how the prior art in combination would make the limitation obvious.

4. Damages

Because the court held that Perrigo was entitled to judgment as a matter of law on the infringement claim, the jury's award of damages was vacated. Brigham's motion to alter judgment to award the pre-judgment interest was denied as moot.

Avigilon Corp. & Avigilon Corp., Inc. v. Canon, Inc., Civil Action No. 17-cv-11922 (D. Mass, Nov. 13, 2017) (Talwani, J.)

• Order on Avigilon's Motion to Expedite Decision on Canon's Motion to Transfer — DENIED

Avigilon filed suit seeking a declaratory judgment that Avigilon had not infringed on Canon's patents and that those patents were invalid. Avigilon's suit was filed after Canon had filed a complaint in the Northern District of Texas earlier that day alleging infringement of those patents.

Upon the filing of Avigilon's complaint in D. Mass., Canon filed a motion to transfer the suit to N.D. Tex. Avigilon then filed a motion to expedite asking the Court to decide the motion to transfer "as soon as possible and in advance of" Avigilon's deadline to respond to Canon's complaint in N.D. Tex. Avigilon argued that venue was not proper in N.D. Tex., that convenience does not weigh in Canon's favor, that an exception to the first-to-file rule applies, and that Canon's filing was essentially a race to the courthouse.

Noting that Avigilon could have addressed its venue concerns in N.D. Tex. instead of filing a second action in D. Mass., the court held that the first-to-file rule generally "dictate[s] not only which forum is appropriate, but also which forum should decide which forum is appropriate." The court denied Avigilon's motion to expedite and stayed the action before it to allow N.D. Tex. to determine proper venue and if there were any.

Authors: Claire Collins, Caroline K. Simons