Bio-Rad and Harvard University sued 10X Genomics in 2019, accusing 10X of infringing two patents owned by Harvard and exclusively licensed by Bio-Rad and of infringing one Bio-Rad – owned patent. Judge Young denied 10X Genomics’ motion to dismiss the induced and willful infringement claims on the three patents, finding these claims to be sufficiently pled. The complaint alleges that 10X knew of the two Harvard-owned patents – with knowledge being an element of both induced and willful infringement – by way of previous litigation between the parties on the patents-in-suit that was dismissed in favor of the current suit and by way of 10X’s own license agreements with Harvard. This knowledge is further evidenced by 10X having cited the published application that matured into one of the patents in an IDS with the Patent Office. The complaint further alleges 10X had knowledge of the Bio-Rad patent because the sole inventor on that patent subsequently left Bio-Rad to form 10X. That patent was also cited by 10X in an IDS. Importantly, the complaint alleges that the knowledge of the three patents came about before the litigation was filed, as willfulness cannot in this district be predicated on knowledge resulting from the complaint. Judge Young further noted that, at the motion to dismiss stage, a pleading alleging pre-suit knowledge of the patents and continued sale of the allegedly infringing products is sufficient to state a claim of willful infringement.
10X also moved to dismiss for improper forum or transfer the Bio-Rad – owned patent claim. Judge Young denied the dismissal request. He found that this patent, unlike the Harvard-owned patents, was not the subject of the forum selection clause found in 10X’s license with Harvard that directed claims be brought in Massachusetts. Further, the patent venue statute had been held to limit suits to districts in which the defendant resides or has committed acts of infringement and has a regular place of business. 10X is incorporated in Delaware and is located in California, and the complaint lacks allegations that 10X has a physical location in Massachusetts. The patent venue statute thus does not provide for venue in Massachusetts. Judge Young determined that Bio-Rad could rely on pendant jurisdiction, because the non-Harvard infringement claims were directed towards the same products that the Harvard-owned infringement claims. He granted 10X’s request, however, to transfer the infringement claim with respect to the Bio-Rad patent to the Northern District of California. As Harvard is not a co-plaintiff on that claim, the forum selection clause in the Harvard license does not apply and the sole connection with Massachusetts does not exist. Both Bio-Rad and 10X are headquartered in N.D. California, the sole named inventor on the patent resides in the district, and the parties are already litigating a different patent, related to the Bio-Rad patent in this case, in that district. Judicial economy favors transfer.
Judge Saylor granted Collegiums request for leave to file an amended answer pleading the reverse doctrine of equivalents as an affirmative defense. He found this defense not clearly futile, but expressly indicated that he was taking no position as to whether the reverse doctrine of equivalents is an affirmative defense that must be pled or whether it remains a viable legal doctrine.
Judge Stearns denied Telerik’s motion to amend its answer to add counterclaims of invalidity and unenforceability due to Telerik’s lack of diligence in seeking to add these claims. Telerik obtained key documents giving rise to the proposed claims six months before seeking to amend, and provided no explanation for the delay, thus failing to establish the diligence required to show good cause under Rule 16(b).
Avigilon filed suit against Canon, seeking declaratory judgment that its cameras and camera software do not infringe various Canon patents. Earlier this summer, Canon had sued Avigilon for patent infringement in the Eastern District of New York. After Avigilon indicated it would move to transfer the case to Massachusetts, Canon filed a notice of voluntary dismissal. Avigilon seeks declarations that U.S. Patent Nos. 6,580,451, 6,911,999, 7,0344,864, 7,321,453, and 9,191,630 are not infringed and are invalid and/or unenforceable.
It will be interesting to see whether the sufficiency of the pleading is challenged. The Iqbal/Twombly standard has been found not to apply to affirmative defenses, thus allowing generically pled affirmative defenses of non-infringement and invalidity to stand. Earlier this summer, however, in the case of PetEdge, Inc. v. Marketfleet Sourcing, Inc. d/b/a Frontpet (16-cv-12562), Judge Saylor dismissed similar bare-bones non-infringement and invalidity pleadings when presented as counterclaims.
Magistrate Judge Kelley granted defendants’ motion to dismiss the copyright infringement claims, citing the failure of the plaintiff to allege it held any validly registered copyrights and failure to identify any specific content that was alleged to be both original and copied. Trust Safe accuses its former employees of taking a confidential algorithm and using it to create a competing business, of copying Trust Safe’s website, and of tracking the website and changing its own in exactly the same way as Trust Safe’s site. Applying the Twombly standard, Judge Kelley noted that the complaint asserts that Trust Safe is the assignee of three copyright registrations, but fails to allege that the applications, together with the deposit and fees, had been sent to the Copyright Office, which is required when relying on preregistration of a copyright. She also found the failure to specify similarities between Trust Safe’s site and that the Defendant “frustrate[s] any effort to compare the parties’ materials” and thus fails to show copying. Judge Kelley also dismissed the state statutory and common law trade secret counts for failure to adequately identify the trade secrets at issue – the recitation of an “algorithm,” without specifying what the algorithm was or what it did, was not sufficient. Intentional fraud and M.G.L. 93A claims that depended on the trade secret misappropriation claim were also dismissed. Because all of the claims were deemed plausible, albeit inadequately pled, all of the dismissals were without prejudice. The case was before the Magistrate pursuant to 28 U.S.C. 636(c) and with the consent of the parties.
Judge Casper denied Defendants’ motion to strike or dismiss Lexington’s second amended complaint and also denied Lexington’s motion to strike Defendants’ affirmative defenses. Lexington brought suit in 2016, alleging infringement of U.S. Patent No. 6,936,851, which covers a semiconductor light-emitting device. Lexington asserts that Defendants infringe at least one claim from the ‘851 patent through sales of LED televisions. The case had been stayed pending inter partes reviews; Defendants sought to continue the stay to allow for subsequent IPR’s, which Judge Casper denied. He also denied the request to have the direct infringement count struck under the Twombly pleading standard, which alleged that Lexington had improperly “parroted” the claim language rather than pointing out with further specificity where each limitation of the asserted claim was found in the accused products. Judge Casper declined to “wade beyond the sufficiency of the Second Amended Complaint and into an assessment of [its] substantive merits.” So long as the specific products accused of infringement and the specific claims are identified and a description of how the products infringe are present, the complaint will survive a Twombly/Iqbal motion. Motions to dismiss induced and willful infringement claims were likewise denied, with Judge Casper stating that at this early stage, a plaintiff is not required to allege more than knowledge of the patent and of infringement.
Lexington’s motion to strike the affirmative defenses was a bit more interesting. Judge Casper noted that it remains in dispute whether Twombly and Iqbal apply to affirmative defenses. An example of the affirmative defense pled was that “one or more of the asserted claims of the ‘851 patent are invalid for failing to comply with one or more provisions of Title 35 of the United States Code, including, without limitation, one or more of §§ 101, 102, 103, and/or 112.” Lexington argued that this is too broad to provide adequate notice of the basis for the defense. Judge Casper found that, by specifying the statutory provisions and by referencing the IPR’s (and the art cited therein), the defense was sufficiently specific. With respect to defenses of waiver, laches, equitable estoppel, exhaustion or license, Judge Casper refused to apply a heightened pleading standard of Rule 9(b), which applies to allegations of fraud, and refused to strike the defenses at this early stage of the proceedings, without identifying any pled facts that would support such a defense. It appears that Judge Casper believes that the Twombly/Iqbal standards do not apply to affirmative defenses.