Massachusetts Patent Litigation Wrap Up — July 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.

PetEdge, Inc. v. Marketfleet Sourcing, Inc., Civil Action No. 16-12562 (Jul. 12, 2017) (Saylor, J.)

• Motion to Dismiss Counterclaims and to Strike Affirmative Defenses – GRANTED in part and DENIED in part

Plaintiff PetEdge sought to dismiss the counterclaim brought by Marketfleet Sourcing, as well as to strike certain of Marketfleet's affirmative defenses. PetEdge had brought suit against Marketfleet Sourcing alleging that Marketfleet's folding pet stairs infringed PetEdge's patent rights. Prior to bringing suit, PetEdge had allegedly sent a letter to MarketFleet that alleged that it was infringing PetEdge's patent, including a side-by-side comparison of PetEdge's "Renew Rampsteps" with Marketfleet's folding pet-stairs product.

Marketfleet's counterclaim at issue pled three counts:  false marking, declaratory judgment of non-infringement, and invalidity under Sections 101, 102, 103, and/or 112. Marketfleet also raised several affirmative defenses, including unclean hands and patent misuse/fraud.

The Court dismissed the count of false marking, reasoning that Marketfleet had only pled in conclusory fashion that PetEdge's "Renew Rampsteps" was not patented, and had failed to plead any facts at all to explain why PetEdge's product was not patented, or how PetEdge intended mislead Marketfleet into believing that the product was patented. The Court also dismissed the declaratory judgment of non-infringement count, noting that it did no more than to deny infringement and failed to allege any facts to state a plausible claim for non-infringement. As to the count for invalidity, the Court dismissed the claims pleaded under Sections §§ 101 and 112 for merely pleading the statute, but declined to dismiss the claims pleaded under §§ 102 and 103 based on allegations that the patent-at-issue was invalid in view of another patent whose specification was "substantially similar" to the that of the patent-at-issue.

Finally, the Court dismissed without prejudice the affirmative defenses of unclean hands and patent misuse because they relied on the same facts that gave rise to the false marking claim, and were therefore insufficient under the heightened pleading requirements of Rule 9(b). The Court allowed the remaining affirmative defenses to stand because they did not "plainly appear to make redundant, immaterial, impertinent, or scandalous allegations."

Momenta Pharms., Inc. v. Amphastar Pharms., Inc., Civil Action No. 11-11681 (Jul. 21, 2017) (Gorton, J.)

• Motion for Judgment as a Matter of Law on Affirmative Defenses —€“ ALLOWED in part and DENIED in part

This is a patent infringement case in which Plaintiffs Momenta and Sandoz claim that Defendants infringed their patent during the manufacture and sale of Defendants' generic enoxaparin products. Plaintiffs sought judgment as a matter of law under Fed. R. Civ. P. 50(a) regarding Defendants' defenses attacking the patent at issue for (1) patent-eligible subject matter and (2) indefiniteness.

The Court allowed Plaintiffs' motion with respect to the defenses based on patent eligible subject matter and indefiniteness. The Court held that the patent-at issue involves patentable subject matter because it "is directed to a new and useful method of ensuring the quality of enoxaparin and involves a series of laboratory steps rather than a law of nature or abstract idea." With respect to indefiniteness, the Court found that the patent afforded clear notice of what is claimed based on the intrinsic evidence of Figure 1A in the patent. The Court dismissed Defendants' argument that the claims were indefinite because they pointed to a particular "Figure 1" that did not exist, noting that Figure 1 was composed of Figure 1A and Figure 1B, and that Figure 1A corresponded to the description of the claim limitation.

Author: Caroline K. Simons