Minnesota Patent Litigation Wrap-Up - April 2018

This post continues our monthly summary of patent litigation in the District of Minnesota, including short summaries of various substantive orders issued in pending cases.

Wilson Tool Int’l Inc. v. Mate Precision Tooling Inc., No. 17-4608 (April 19. 2018) (Thorson, M.J.)

• Report and Recommendation re Motion to Dismiss: Granted

Plaintiff Wilson Tool moved to dismiss Mate Precision's counterclaim for inequitable conduct, and Magistrate Thorson recommended granting the motion. Wilson and Mate compete in the manufacture of tools and products for sheet metal fabricators, and Wilson sued Mate for infringement of two patents (the '994 and '337 patents) directed to punch assemblies and methods for modifying such assemblies. Mate counterclaimed that Wilson committed inequitable conduct with respect to the '337 patent by failing to specifically disclose a final rejection from the prosecution of the '994 patent and by failing to provide physical "specimens" to the '337 examiner that it had provided to the '994 examiner. Wilson countered that it had disclosed the co-pending prosecution of the '994 patent to the '337 examiner, but Mate alleged that Wilson committed inequitable conduct by "failing to sufficiently highlight the information" at issue.

Magistrate Thorson recommended dismissing Mate's inequitable conduct claim for several reasons. First, Magistrate Thorson noted that the prosecution history of the '994 patent was not "withheld" from the examiner at all, but even if it were, the prosecution history of substantially different claims was not material to the patentability of the '337 patent's claims. Moreover, Magistrate Thorson held that Mate failed to plausibly allege an intent to deceive the patent office, and that Wilson's conduct was "prosecution strategy [that] did not cross the line from permissible competition into inequitable conduct."

Niazi Licensing Corp. v. St. Jude Medical S.C., Inc., No. 17-cv-5096 (April 30, 2018) (Wright)

• Motion to Dismiss: Denied

Judge Wright denied St. Jude's motion to dismiss Niazi's claims for induced, contributory, and willful infringement of Niazi's patent to a catheter for the coronary sinus.

As to induced infringement, St. Jude argued that Niazi's complaint failed to allege awareness of the patent-in-suit or a specific intent to encourage infringement. Niazi's complaint simply alleged that St. Jude "was aware of the patent" prior to filing of the complaint, "encouraged the end users to use" the product, and "knew that the use" would infringe. Judge Wright reasoned that while these allegations "are not particularly comprehensive or specific, they nonetheless are factual allegations" sufficient to put St. Judge on notice of the claim. Niazi's claims for contributory infringement were similarly high-level, but Judge Wright denied St. Jude's motion to dismiss them for similar reasons as the inducement claims.

As to willful infringement, Niazi's allegations were simply that St. Jude knew of the patent, and knew its actions to be infringing. St. Judge argued that post-Halo, Niazi was required to provide more specificity (e.g., allegations as to how St. Jude allegedly knew of the patent). Judge Wright denied the motion to dismiss willfulness, reasoning that, at the pleading stage, the Court would accept the factual allegation that St. Jude knew of the patent before the complaint and knew it was infringing. As such, a motion to dismiss was improper, even if Niazi may ultimately be unable to assemble evidence to prove those allegations.