IP Law Daily, PATENT—SDCal: Tumor Cell Tracking Patent Infringement Claims Rejected, (Mar 14, 2013)

By William Zale, J.D.

AntiCancer, the holder of patents for techniques that allow researchers to track metastasis of tumor cells in live lab animals through the use of fluorescent proteins, failed to provide evidence that could support its infringement claims against Fujifilm Medical Systems U.S.A. or GE Healthcare, the federal district court in San Diego has ruled (AntiCancer, Inc. v. Fujifilm Medical Systems U.S.A., Inc., March 11, 2013, Curiel, G.). The court granted Fujifilm’s and GE’s motion for summary judgment.

Direct infringement. AntiCancer failed to provide substantial evidence to support a finding of direct infringement of its '038 and '159 patents by Fujifilm, the court determined. Direct patent infringement occurs under 35 U.S.C. §271(a) when someone “(1) without authority (2) makes, uses, offers to sell, sells, or imports (3) the patented invention (4) within the United States, its territories, or its possessions (5) during the term of the patent.”

Although the record reflected little evidence to support a direct infringement claim, the court considered whether demonstrations of Fujifilm’s LAS-4000 multi color fluoresecence imaging system performed by Fujifilm employee Stephanie Pappas were sufficient to show the elements of a direct infringement claim. Nowhere in the record did AntiCancer provide specific information as to how Ms. Pappas performed some or all of the steps in the patent claimed methods, according to the court.

AntiCancer also failed to show any evidence that someone “without authority” infringed the patent, a necessary element of a direct infringement claim. A declaration by the president of AntiCancer, Dr. Robert Hoffman, and deposition testimony by Ms. Pappas clearly indicated that AntiCancer had authorized Ms. Pappas to bring the Fujifilm instrument onto their facilities for the purpose of performing certain imaging techniques, the court found.

Fujifilm marketing materials were at best circumstantial evidence that the LAS-4000 has the capability to conduct AntiCancer’s patent process. The materials say nothing about whether somebody at Fujifilm or a customer of Fujifilm used AntiCancer’s patent method claim processes, the court noted. The marketing materials would not provide a reasonable jury adequate grounds on which to find direct infringement by Fujifilm, the court concluded.

Induced infringement. The court also decided that there was insufficient evidence of induced infringement of the '038 and '159 patent claims. Liability for induced infringement requires (1) proof of direct infringement and (2) the patentee shows that defendant knew of the patent and induced others to perform some or all of steps of the methods claimed in the patent, under Akamai Techs., Inc. v. Limelight Networks, Inc., 692 F.3d 1301, 1318 (Fed. Cir. 2012).

AntiCancer relied on the marketing materials that the court found to be insufficient evidence of direct infringement. Having failed to provide any additional information showing that Fujifilm or GE used AntiCancer’s methods claimed in the patents, AntiCancer failed to provide proof of direct infringement—an element necessary to sustain a claim for induced infringement.

Even if the court were to find some evidence of infringing acts, the marketing materials were insufficient to support a finding that they induced others to perform some or all of the steps of AntiCancer’s method claims. In E-Pass Technologies, Inc. v. 3Com Corp., 473 F.3d 1213, 1221 (Fed. Cir. 2007), the Federal Circuit found that evidence that competitors’ manuals taught their customers each step of the claimed method in isolation did not prove that customers actually performed the claimed patented method.

Contributory infringement. Whoever sells an apparatus for use in practicing a patented method, knowing it to be “especially made or especially adapted for use in an infringement of such patent, and not a staple article or commodity of commerce suitable for substantial non-infringing use, shall be liable as a contributory infringer,” under 35 U.S.C. §271(c).

It was undisputed that the accused products are capable of non-infringing use. The question then turned on whether the non-infringing use is substantial, an element which AntiCancer has not provided any supporting evidence, according to the court. Given the continued lack of evidence supporting the claim for contributory infringement, the court found that a reasonable jury would be unable to make a finding in support of AntiCancer’s contributory infringement claim.

The '384 patent. AntiCancer’s second amended complaint included a claim for violation of its '384 patent, but the record since was void of any factual or circumstantial evidence regarding the '384 patent, the court noted. AntiCancer failed to disclose the '384 patent claims in preliminary infringement contentions. Without an infringement theory, and the discovery period having ended, the court thereby granted summary judgment in favor the defendants on the '384 patent violation claim.

The case is No. 09-cv-1311-GPC (JMA).

Attorneys: Matthew D. Valenti for AntiCancer, Inc. Diana M. Szego (Orrick Herrington & Sutcliffe LLP) for Fujifilm Medical Systems U.S.A., Inc.

Companies: AntiCancer, Inc.; Fujifilm Medical Systems U.S.A., Inc.; GE Healthcare Inc.

Cases: Patent CaliforniaNews