Massachusetts Patent Litigation Wrap-Up — September 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.

Oxford Immunotec Ltd. v. Qiagen, Inc., Civil Action No. 15-13124 (Sept. 26) (Gorton, J.)

• Motion for Preliminary Injunction — DENIED

In 2015, Oxford accused Qiagen of infringing its patents relating to a method and kit for diagnosing tuberculosis. After surviving multiple IPRs and prevailing on every single term at claim construction, Oxford moved to enjoin Qiagen from selling the accused QFT-Plus product in the United States until after the completion of trial, which is set for January 16, 2018.

The Court addressed each of the preliminary injunction factors including whether Oxford was likely to prevail at trial in light of Qiagen's defenses.

As to validity, on Section 101 the Court found that Oxford was likely to demonstrate that its "peptides are synthesized and are "markedly different" from naturally occurring peptides" and thus patent eligible. On anticipation and obviousness, the Court found that Quigen presented similar art in its failed IPRs and had failed to articulate a motivation to combine its alleged obviousness art, noting that "'[o]bvious to try' does not constitute obviousness' . . . ." The Court also found for Oxford on written description.

As to infringement, the Court rejected Quigen's attempt to "alter[]" the Court's claim construction, finding that "Qiagen is not likely to be successful in avoiding Oxford's claims of infringement."

On irreparable harm, the Court found that Oxford delayed eight months in filing its motion, and that it had failed to show that money damages would be insufficient.

The Could found that a balance of the hardships slightly favored Oxford because it "risks the loss of a substantial portion of the market for its single core product."

The Court found that public interest factors did not weigh heavily, and despite having generally found that the factors weigh in favor of Oxford, it had failed to make the clear showing required for the "drastic and extraordinary remedy" of preliminary injunction.

IN RE: Neurografix (‘360) Patent Litigation, Civil Action No. 1:13-md-02432 (Sept. 28) (Stearns, J.)

• Motion for Extension of Time — DENIED IN PART; GRANTED IN PART
• Motion to File Second Supplemental Complaint — DENIED

The Court denied the motions, finding that "Neurografix must face the consequences for its failure to fully develop this claim in the more than three years since [it first learned of it]."

Neurografix filed sued in 2012. In January 2017 the Court granted the Parties' request to extend discovery to May 24, 2017. The Court further extended the deadline to August 22, 2017 to accommodate Neurografix's hiring of new counsel, cautioning that it would allow discovery only into new issues.

On July 13, 2017 the Court denied a first bid to file a second supplemental complaint, finding that it "attempts to re-expand the list of accused instrumentalities… [and] [p]laintiffs provide[d] no justifications for this belated attempt to undo the lengthy efforts to narrow the dispute." (alterations by the Court).

Neurografix's replacement counsel withdrew on August 11, 2017. Three days later the Court permitted Neurografix's successor counsel, who was not yet admitted to and did not have access to ECF from D. Mass., to access ECF and practice before the Court.

On the final day of fact discovery, Neurografix served discovery on defendants' customers (the alleged direct infringers underlying defendant's alleged indirect infringement. Defendant sought a protective order, which the Court granted finding no reason that the requested discovery could not have been timely completed.

The next day, Neurografix filed the instant motions seeking to supplement its complaint and extend discovery based on information that it allegedly discovered during the time it was unrepresented, alleging that defendants' customers acted as its agents for infringement purposes.

The Court rejected this theory, describing it as "recycled," concluding that Neurografix had been aware of it sin at least December 2013. The Court denied the motions, finding that "Neurografix must face the consequences for its failure to fully develop this claim in the more than three years since" and that the proposed "Second Supplemental Complaint . . . belatedly attempts to broaden the list of accused instrumentalities."

The Court concluded by granting brief extensions to expert report deadlines.

Sunrise Technologies, Inc. v. Cimcon Lighting, Inc., Civil Action No. 15-11545 (Sept. 13) (Gorton, J.)

• Motion to Amend Scheduling Order — DENIED

The Court denied the Parties' motion to amend, stating that while it would entertain a short continuance to the scheduled Markman hearing, it would not move the Pretrial Conference. In so doing, the Court held:

Participation in settlement discussions several months before the rescheduled Markman hearing and 13 months before the scheduled trial is insufficient reason to amend the scheduling order yet again.