Massachusetts Patent Litigation Wrap Up — August 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 issued in pending cases.

Athena Diagnostics, Inc. v. Mayo Collaborative Services, LLC, Civil Action No. 15-cv-40075 (Aug. 4, 2017) (Talwani, D.J.)

• Renewed Motion to Dismiss — GRANTED

Athena brought suit against Mayo alleging that Mayo designed an alternate test to diagnosis Myasthenia Gravis in patients without AChR antibodies to purposefully avoid paying licensing fees for the patented test. Mayo sought to dismiss Athena's complaint claiming that the patent at issue was invalid under 35 U.S.C. § 101, applying only routine and conventional techniques to a law of nature.

Mayo's original Motion to Dismiss was denied without prejudice. The Court decided it was unable to determine on the papers alone whether the patent at issue was sufficiently inventive to be patentable under § 101. However, subsequent to that denial, Athena's counsel agreed that key elements of the claimed invention were "standard techniques in the art." Based upon this admission, the Court granted Mayo's request to renew the motion for dismissal.

Athena claimed that its patent was valid under § 101, arguing that the patent required the production of non-naturally occurring proteins and, thus, could not be directed to a law of nature. The Court, however, disagreed with Athena's characterization of the patent claims, instead finding that "the patent claims a process for detecting antibodies, not a process for creating the I-MuSK." Further, the Court found that Athena's argument that the patented claims were complex and beyond the standard "[i]odination and immunoprecipitation . . . techniques in the art" when applied to proteins, a much more complex structure, to be unpersuasive reasoning that "[n]one of the complexity to which the Plaintiffs cite is described or claimed in the patent." Based on these factors, the Court found the patented claims to be routine and conventional techniques directed to a law of nature and granted Mayo's Renewed Motion to Dismiss.

President and Fellows of Harvard College v. Micron Tech., Inc., Civil Action No. 16-11249 (Aug. 30, 2017) (Young, D.J.)

• Motion to Dismiss for Improper Venue — DENIED

President and Fellows of Harvard College brought this patent infringement suit against Micron Technologies, alleging infringement of two patents. Promptly following the Supreme Court's decision in TC Heartland, Micron filed the instant motion to dismiss for improper venue.

The Court described the issue as whether Micron's challenge to proper venue was waived by failing to object "in their first offensive move," or whether the Supreme Court's decision in TC Heartland created an exception to waiver because the defense was not available when Micron made its first defensive move.

The Court described the holding in TC Heartland as reaffirming a 1957 Supreme Court decision that was never invalidated by amendment to 28 U.S.C. § 1400(b), 28 U.S.C. § 1391(c), or any other act of Congress. Ultimately, the Court joined the majority of districts that have declined to find TC Heartland created intervening law that would render improper venue defenses to become available to defendants after the first defensive move. Further, the Court while admitting the TC Heartland did change the "understanding [of] the patent venue landscape," equity in this instance did not require the Court to allow Micron's untimely motion, nearly one year after filing its first motion to dismiss in the case.

Lexington Luminance LLC v. TCL Multimedia Tech. Holdings, Ltd., Civil Action No. 16-cv-11458 (August 30, 2017) (Casper, J.)

• Motion to Strike Second Amended Complaint — DENIED
• Motion to Dismiss Second Amended Complaint — DENIED
• Motion to Strike Affirmative Defenses — DENIED
• Motion to Maintain Stay — DENIED

Lexington was granted a patent for semiconductor LEDs having a particular structure. Lexington's complaint accuses TCL of infringing the patent by making and selling television sets containing allegedly infringing LEDs. TCL previously moved to stay the case pending the disposition of petitions to the Patent Trial and Appeal Board (PTAB) for inter partes review (IPR) filed by third parties, which motion was granted until August 3, 2017.

In the present order, the Court denied TCL's motion to extend the stay after the previously filed IPR petitions upon which that stay was premised were denied. TCL had requested the stay be extended after it filed its own IPR petition, which is currently pending. The Court denied the motion in light of the PTAB's decisions denying the prior IPR petitions.

The Court then considered three other motions that had been filed prior to the stay. In the first motion TCL moved to strike the Second Amended Complaint (SAC) filed by Lexington as being filed without consent or leave of Court. There was a dispute about whether the filing of Lexington's First Amended Complaint had exhausted its right to amend its complaint as a matter of course pursuant to Fed.R.Civ.P. 15(a)(1). Lexington and TCL disputed that TCL had consented to the First Amended Complaint, which Lexington argued entitled it to a second amendment as a matter of course. The Court determined that "any mistaken belief by Lexington's counsel" that the First Amended Complaint was filed with consent of TCL, thereby allowing them to amend the pleading once as a matter of course, "was, at a minimum, good faith error" and, for that reason, denied TCL's motion to strike the Second Amended Complaint.

In the second motion, TCL moved to dismiss Lexington's Second Amended Complaint in its entirety, on the grounds that it failed to state claims for direct, indirect and willful patent infringement. The Court found that the SAC stated plausible claims for direct infringement because it alleged that the LEDs used by TCL included each limitation of claim 1 of the patent-in-suit. The Court found that the SAC plausibly stated a claim for indirect patent infringement because it alleged that TCL had pre-suit knowledge of the patent-in-suit and because it plausibly alleged that TCL had intentionally encouraged third-party resellers and end users of its products to infringe the patent-in-suit. Finally, the Court found that the SAC stated plausible claims for willful infringement because it alleged that TCL had pre-suit knowledge of the patent-in-suit, and of infringement. It, therefore, denied TCL's motion to dismiss.

In the third motion, Lexington moved to strike TCL's affirmative defenses of (1) invalidity, (2) estoppel, (3) waiver, latches, and/or equitable estoppel, and (4) exhaustion and license, on the ground that they were insufficient as a matter of law. The Court denied Lexington's motion to strike in its entirety stating that it "declines at this stage, to strike affirmative defenses that are more than adequate to give Lexington fair notice of Defendants' defenses."

Authored by Jessica L. Perry