Defendant's Argument That It Practiced The Prior Art Not Sufficient To Avoid Finding Of Infringement On Summary Judgment

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...