Massachusetts Patent Litigation Wrap Up — August 2019

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

Brigham & Women's Hospital, Inc. v. Perrigo Co., No. 1:13-cv-11640-RWZ (D. Mass. Aug. 1, 2019) (Zobel, J.)

Order on Defendants' Bill of Costs

Brigham and Women's Hospital, Inc. and Investors Bio-Tech LLP (collectively, "Brigham" or "Plaintiffs") sued Perrigo Company and L. Perrigo Company (collectively, "Perrigo" or "Defendants") for patent infringement in July 2013. Perrigo counterclaimed for declaratory judgment of non-infringement, invalidity, and unenforceability, as well as a declaratory judgment that Brigham's claims were barred by laches.

At trial in December 2016, the jury found that the asserted claims of U.S. Patent No. 5,229,137 were valid, that Perrigo infringed each asserted claim, and that Perrigo's infringement was willful. Perrigo filed a renewed motion for judgment as a matter of law ("JMOL") of non-infringement and invalidity under Federal Rule of Civil Procedure 50(b). The Court found that "no reasonable jury could have returned a verdict" in Brigham's favor because Brigham had failed to present sufficient evidence of direct infringement. Brigham & Women's Hosp., Inc. v. Perrigo Co., 280 F. Supp. 3d 192, 197 (D. Mass. 2017). Accordingly, the Court granted JMOL of non-infringement. Id. at 199. The Court denied JMOL of invalidity, however, because Perrigo did not show either anticipation or obviousness by clear and convincing evidence. Id. at 203-05. Perrigo appealed the order denying judgment of invalidity as a matter of law, and Brigham cross-appealed the same order granting judgment of non-infringement as a matter of law. The United States Court of Appeals for the Federal Circuit affirmed the judgment of non-infringement and did not reach the remaining issues. Brigham & Women's Hosp. Inc. v. Perrigo Co., 761 F. App'x 995, 996 (Fed. Cir. 2019).

In May 2019, Perrigo filed a Bill of Costs under Federal Rule of Civil Procedure 54(d) seeking $90,637.02 from Brigham. Plaintiffs objected to all but $2,357 of these costs. Judge Zobel held that, as the prevailing party, Perrigo was entitled to costs under Rule 54(d). Brigham argued that this was a case of "mixed results" where each party prevailed on at least one issue so costs should be awarded to the party who "carried the day" at each stage of the case. Judge Zobel rejected this argument, however, because Perrigo "categorically won" the case and therefore was the only party entitled to costs.

Judge Zobel awarded Perrigo $22,843.48 in costs, the highlights of which are as follows:

• Transcript and Video Expenses: Judge Zobel denied Perrigo's request for an additional $3,458.70 for trial realtime fees because they were not "necessarily" incurred within the meaning of 28 U.S.C. § 1920(2).
• Copies and Exemplification Fees: Judge Zobel denied Perrigo's request for the costs incurred for a graphic designer to prepare demonstratives because the amount ($35,298) was excessive, and there was not enough evidence that this expense was necessary, so it was not within the scope of 28 U.S.C. § 1920(4).
• Witness Fees: Judge Zobel denied some of the subsistence expenses that Perrigo requested because there were no supporting receipts. Even though 28 U.S.C. § 1821(c) does not require receipts, the District of Massachusetts does require supporting documentation.
• Expert Deposition Costs under Federal Rule of Civil Procedure 26(b)(4)(E): In the Order on Bill of Costs, the Court also addressed the parties' dispute over expert deposition fees. Neither party filed a motion to recover these fees following the close of expert discovery in May 2016. Instead, the parties introduced this dispute for the first time in their opposition and reply briefs to the Bill of Costs in June 2019. Therefore, Judge Zobel concluded that any request for fees at this time was unreasonable and untimely.

CardioNet, LLC v. InfoBionic, Inc., No. 1:15-cv-11803-IT (D. Mass. Aug. 12, 2019) (Talwani, J.)

Plaintiff's Motion to Sever Counts III and IV of its Third Amended Complaint: DENIED

CardioNet, LLC and Braemar Manufacturing, LLC (collectively, "CardioNet") sued InfoBionic, Inc. ("InfoBionic") for patent infringement in May 2015. CardioNet's Third Amended Complaint, filed in March 2017, asserted infringement of six patents.

In May 2017, the Court ruled that the asserted claims of U.S. Patent Nos. 7,212,850 (the "'850 Patent") and 7,907,996 (the "'996 Patent") were not patent eligible under Section 101 as a matter of law (relying on Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 134 S. Ct. 2347 (2014)). In March 2019, CardioNet requested that the court sever the counts related to those patents—Counts III and IV of its Third Amended Complaint—under Federal Rule of Civil Procedure 21 to "allow CardioNet to immediately appeal to the Federal Circuit the Court's [May 2017] § 101 rulings" on those patents.

The Court denied CardioNet's motion to sever Counts III and IV. In order for CardioNet to appeal the rulings, the Court would have to not only sever the claims but also enter a final judgment. Therefore, instead of deciding the motion under Rule 21, the Court applied the Federal Rule of Civil Procedure 54(b) standard for a motion for final judgment as to fewer than all pending claims. Under Rule 54(b), the court "may enter judgment as to some but not all of the claims only if the court expressly determines that there is no just reason for delay.'" This is because "there is a long-settled and prudential policy against the scattershot disposition of litigation." The Court applied a two-part test for entering judgment: (1) there must be "an ultimate disposition of an individual claim entered in the course of a multiple claims actions"; and (2) there must be "no persuasive reason for delay," taking into account "judicial administrative interests as well as the equities involved." At the first step, the Court determined that its earlier order finding the patents invalid under Alice was an "ultimate disposition" of each individual claim.

At the second step, however, the Court found that the Rule 54(b) test was not met for two reasons. First, the Court noted that CardioNet's other patent infringement claims share "common sets of fact and law" with the claims here, making it inappropriate to enter a separate judgment for Counts III and IV. Second, the Court had previously invalidated two other CardioNet patents under Alice and, at the time of this motion, the subsequent appeal already had been fully briefed. See CardioNet, LLC v. InfoBionic, Inc., 348 F. Supp. 3d 87 (D. Mass. 2018), appeal docketed, No. 19-1149 (Fed. Cir. Nov. 2, 2018). Judge Talwani noted that had CardioNet brought this motion to sever earlier and sought to proceed with a consolidated appeal, the Court likely would have allowed the motion. At this stage in the case, however, it was too late because a separate judgment here "would result in litigation unnecessarily proceeding on three different tracks."

Abiomed, Inc. v. Maquet Cardiovascular LLC, No. 1:16-cv-10914-FDS (D. Mass. Aug. 23, 2019) (Saylor, J.)[1]

Abiomed's Motion to Strike Portions of Maquet's Second Supplemental Non-Infringement Contentions: GRANTED in part; DENIED in part

Plaintiff and counterclaim defendants Abiomed, Inc., Abiomed R&D, Inc., and Abiomed Europe GmbH (collectively, "Abiomed") moved to strike the second supplemental non-infringement contentions of defendant and counterclaim plaintiff Maquet Cardiovascular, LLC ("Maquet"). Maquet's supplemental contentions added a claim under 35 U.S.C. § 271(f) (exporting from the United States components of a patented invention for assembly outside of the United States) and new contentions concerning the "guide mechanism" term of U.S. Patent No. 7,022,100 (the "'100 Patent").

The Court granted the motion to strike with respect to the supplemental contentions that sought to assert new claims under § 271(f). Maquet's counterclaim asserted no claim for relief under § 271(f), "either directly or indirectly." The counterclaim did not refer to § 271(f) specifically, track its language, or "make[] factual allegations from which it could be reasonably inferred that a § 271(f) claim [was] intended." Judge Saylor noted that Maquet could not use the supplementation of claim contentions to assert an entirely new unpleaded claim. Instead, a party may add a new claim only by an amendment to the counterclaim pursuant to Federal Rule of Civil Procedure 15.

The Court denied the motion to strike with respect to the supplemental contentions concerning the "guide mechanism" term of the '100 Patent. Inadvertently, the Court had failed to set a date for service of final contentions in its scheduling order. Thus, the Court's scheduling order did not "literally prohibit" the service of supplemental amended contentions. Additionally, Maquet argued that its amendment was "based on 'newly adduced' evidence that was not previously available to it." Considering these circumstances, Judge Saylor questioned whether it would be fair to preclude the amendment. Consequently, the Court denied the motion to strike, thus allowing the amendment.

Sanderson-MacLeod, Inc. v. Hobbs Medical, Inc., No. 3:19-cv-30013 (D. Mass. Aug. 9, 2019) (Mastroianni, J.)

Defendant's Motion to Dismiss for Failure to State a Claim: GRANTED

Sanderson-MacLeod, Inc. ("Sanderson" or "Plaintiff") filed a patent infringement complaint against Hobbs Medical, Inc. ("Hobbs" or "Defendant") in January 2019. Sanderson alleged that Hobbs's medical brushes infringed U.S. Patent Nos. 8,783,787 (the "'787 Patent") and 8,850,650 (the "'650 Patent") concerning protective cleaning tips of wire brushes.

In March 2019, Hobbs filed a motion to dismiss for failure to state a claim pursuant Federal Rule of Civil Procedure 12(b)(6). To decide the motion, the Court applied the generally applicable pleading standards under Iqbal and Twombly—"a complaint must contain sufficient factual matter, accepted as true, to 'state a claim to relief that is plausible on its face.'" Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) (quoting Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 570 (2007)). That is, the claim must "plead factual content that allows the court to draw the reasonable inference that the defendant is liable for the misconduct alleged." Id. (citing Twombly, 550 U.S. at 556). Therefore, to survive a motion to dismiss, the claim must contain specific factual allegations; mere conclusory statements are not enough.

Judge Mastroianni found that Sanderson did not provide a factual basis for a plausible claim that Hobbs was infringing its patents. Sanderson's amended complaint described the allegedly infringing products only as "medical brushes, including, for example, endoscope cleaning brushes and cytology brushes." Sanderson did not provide any description of the medical brushes' structure or how they allegedly met any claim limitations. The Court found that this description was "so speculative as to provide insufficient notice to Defendant as to which products [were] being challenged." The amended complaint also lacked factual allegations of infringement. The only factual allegation was that Sanderson received an email from a senior engineer at a medical device manufacturing company seeking a quote for a medical brush that the engineer thought that Hobbs manufactured for Sanderson. Therefore, the Court concluded that there was no plausible claim for infringement, and Judge Mastroianni dismissed the case with prejudice under Rule 12(b)(6).

[1] This case was also discussed in the May and June 2019 installations of the Massachusetts Patent Litigation Wrap Up series.

Authors: Matthew Berntsen, Kayleigh McGlynn