Defendant's Argument That It Practiced the Prior Art Not Sufficient to Avoid Finding of Infringement on Summary Judgment

October 19, 2012

Plaintiff Gen-Probe Incorporated ("Gen-Probe") filed a patent infringement action against Becton Dickinson & Company ("Becton Dickinson") alleging infringement of its Automation and Cap patents. The Automation patents resulted from Gen-Probe's development of a single automated instrument to detect a target nucleic acid indicative of the presence of a target pathogen within a sample. The Cap patents are directed to a specimen collection vessel that allows the contents of the vessel to be sampled by an automated device.

In the patent infringement action, Gen-Probe accused Becton Dickinson of infringing claims of both the Automation and the Cap patents through the sale of the VIPER XTR and BD Max, which are Becton Dickinson's automated nucleic acid test instruments and penetrable cap products. As explained by the district court, "[t]he Automation Patents describe an automated method of nucleic acid-based testing where the automated analyzer detects the presence of a particular pathogen in a sample. Nucleic acid-based testing involves the creation of a complementary nucleotide sequence that a target pathogen will bind to through complementary base pairing. The complementary nucleotide sequence is used as a probe. The probe is introduced to a sample that may contain the target nucleic acid. If the target binds to the probe, it indicates that the target nucleic acid is present in the sample. The Automation Patents automate the steps of this process in a single instrument. The Cap Patents use a seal or seals on a collection vessel that are penetrated by a fluid transfer device. The seal or seals, in conjunction with the core structure, are intended to prevent the release of aerosols from the sample and limit contamination from fluid on the fluid transfer device after removal."

Both sides filed several cross motions for summary judgment. After denying a number of Becton Dickinson's motions because there were disputed issues of fact, the district court turned to Gen-Probe's motion for summary judgment of direct infringement. "Gen-Probe moves for summary judgment of direct literal infringement, inducement of infringement, and contributory infringement of sixteen Automation Patent claims. Because 'liability for active inducement of infringement or . . . contributory infringement is dependent upon the existence of direct infringement' the Court first considers whether Gen-Probe is entitled to summary judgment of direct infringement. RF Delaware, Inc. v. Pac. Keystone Techs., Inc., 326 F.3d 1255, 1268 (Fed.Cir. 2003)."

Looking at the amplification product, the district court analyzed the relevant claim language, which states "amplification product . . . wherein the amplification product is a nucleic acid sequence that is the same as or complementary to a sequence of the target nucleic acid." As the district court explained, "Becton Dickinson interprets this language to mean that the amplification product can only be the target nucleic acid sequence and nothing else. Gen-Probe argues that it only requires that the amplification product contain the target nucleic sequence. The difference is important because Becton Dickinson's amplification product contains both a target nucleic acid sequence and sequences that are not the target nucleic acid. If the amplification product in the asserted claims is limited to the use of an amplification product that contains only the target nucleic acid sequence, then Becton Dickinson's products do not infringe these claims. The Court agrees that Becton Dickinson's opposition is essentially a belated claim construction argument. In short, Becton Dickinson argues that 'is' means 'is' and Gen-Probe argues that under Becton Dickinson's construction, 'is' means 'is and only is.'"

The district court then rejected Becton Dickson's new construction and found that it could not preclude summary judgment in favor of Gen-Probe. "Claim 13 of the '255 Patent depends on claim 10 of the '255 Patent and claim 14 of the '652 Patent depends on claim 11 of the '652 Patent. Claims 10 and 11 of the respective patents include the relevant language above and claims 13 and 14 respectively specifically include the use of two amplification techniques that require the amplification product to include an adjacent nucleic acid sequence that is not the target nucleic acid sequence - Strand Displacement Amplification (SDA) and Ligase Chain Reaction (LCR). This means that if the Court adopts Becton Dickinson's proposed construction, the claims would claim the use of an amplification technique that is impossible under the claim each depends on. Because this construction 'renders the asserted claims facially nonsensical, [it] cannot be correct. . . . The Court rejects Becton Dickinson's newly proposed construction and will not deny summary judgment to Gen-Probe on this basis."

The district court then rejected Becton Dickson's argument that a finding of infringement could not be made because Becton Dickson practiced the prior art and, therefore could not infringe. "This is essentially a creative way to assert practicing the prior art as a defense to literal infringement. 'But 'practicing the prior art' is not a defense to literal infringement.' Ecolab, Inc. v. Paraclipse, Inc., 285 F.3d 1362, 1377 (Fed. Cir. 2002) (quoting Baxter Healthcare Corp. v. Spectamed, Inc., 49 F.3d 1575, 1583 (Fed. Cir. 1995)). Becton Dickinson cannot claim it does not infringe because its products more closely resemble prior art than the asserted claims because this goes to validity, not infringement. Id. (precluding non-infringement defense that relied on showing product was more similar to prior art than asserted patent). Gen-Probe accurately notes that Becton Dickinson can argue to a jury that Dr. Kricka's report supports Becton Dickinson's invalidity defenses, but it is not a defense to infringement. The Court GRANTS partial summary judgment of direct literal infringement of the sixteen Automation Patent claims."

The district court then turned to the question of indirect infringement. "Gen-Probe moves for summary judgment for inducement of infringement. Inducement 'requires that the accused inducer act with knowledge that the induced acts constitute patent infringement.' Akamai Techs., Inc. v. Limelight Networks, Inc., - F.3d-, 2012 WL 3764695, at *3 (Fed. Cir. 2012) (citing Global-Tech Appliances, Inc. v. SEB S.A., 131 S. Ct. 2060, 2067 (2011)). The alleged infringer must 'knowingly induce[] infringement and possess[] specific intent to encourage another's infringement.' Id. The parties agree that contributory infringement requires the same specific intent as inducement. Global-Techs., 131 S. Ct. at 2067-68."

With respect to the intent issue, Becton Dickson produced an opinion letter from counsel that one of the patents, the only one issued at the time, was invalid for obviousness. The district court then concluded that this opinion of counsel letter was sufficient to raise a genuine issue of material fact so as to preclude summary judgment. "Rather than find that the opinion letter is entirely excluded from considerations of infringement or that it is dispositive in favor of Becton Dickinson, the Court finds the opinion letter is sufficient to create a triable issue of fact. See VNUS Med. Techs., Inc. v. Diomed Holdings, Inc., No. C-05-2972, 2007 WL 2900532, at *1 (N.D. Cal. Oct. 2, 2007) (finding triable issue of fact exists as to whether defendant was liable for inducing infringement based on opinion on infringement and invalidity). On summary judgment, drawing all inferences in Becton Dickinson's favor, the Court cannot say that no reasonable jury could return a verdict for Becton Dickinson. In DSU Medical Corp. v. JMS Co., the court upheld a jury verdict that a defendant did not induce infringement because it lacked specific intent, based in part on opinion letters from counsel advising that a product did not infringe. 471 F.3d 1293, 1307 (Fed. Cir. 2006). While Becton Dickinson's opinion letter concerns invalidity rather than infringement, 'invalid claims cannot give rise to liability for infringement.' Exergen Corp. v. Wal Mart Stores, Inc., 575 F.3d 1312, 1320 (Fed. Cir. 2009). Because there are genuine issues of material fact concerning whether Becton Dickinson had the requisite specific intent, Gen-Probe's motion for summary judgment is DENIED as to inducement of infringement and contributory infringement."

Gen-Probe Inc. v. Becton Dickinson and Co., Case No. 09-cv-2319-BEN (NLS) (S.D. Cal. Sept. 28, 2012)

The authors of www.PatentLawyerBlog.com are patent trial lawyers at Jeffer Mangels Butler & Mitchell LLP. We represent inventors, patent owners and technology companies in patent licensing and litigation. Whether pursuing patent violations or defending infringement claims, we are aggressive and effective advocates for our clients. For more information contact Stan Gibson at 310.201.3548 or SGibson@jmbm.com.