Patent And Trademark Bulletin For The District Of Massachusetts - July 2013

PATENT

PerkinElmer Health Sciences, Inc. v. Agilent Technologies, Inc., C.A. No. 12-10562-NMG, 2012 WL 139737 (D. Mass. Jan. 8, 2013) (Gorton, D. J.) [Standing] PerkinElmer Health Sciences, Inc. ("PerkinElmer") brought suit against Agilent Technologies, Inc. ("Agilent), alleging that Agilent breached a sublicense agreement and infringed patents for which PerkinElmer holds an exclusive license. Agilent moved to dismiss the case on the basis of lack of standing. The Court denied Agilent's motion, finding that PerkinElmer had "all substantial rights" in the patents.

The patents at issue in this case 'U.S. Patent No. 5,130,538, No. 5,686,726, and No. 5,581,080 'resulted from the work of three researchers at Yale University ("Yale") in the field of charged ions. The patents were assigned to Yale, which continues to hold them. In March 1997, Yale granted an exclusive license to the "538 Patent and any subsequently-issued, related patents to Analytica of Branford, Inc. ("AoB") and its successors. According to this agreement, Yale retained the right to use the patents for non-commercial purposes, to participate in infringement actions brought by AoB, and to sue an alleged infringer if, after providing notice to AoB, AoB declined to sue. The license otherwise granted AoB an exclusive, world-wide license for the life of the patents. In 2009, AoB merged with and into PerkinElmer. In March 2012, PerkinElmer filed a complaint alleging that Agilent willfully and materially breached a sublicense agreement related to the patents-in-suit when it failed to make royalty payments. PerkinElmer also alleged that Agilent infringed the patents. Agilent moved to dismiss the complaint under Fed. R. Civ. P. 12(b)(1) arguing that PerkinElmer lacked standing to sue Agilent because it did not own all substantial rights to the patent.

The patentee and its successors-in-title have standing to bring an infringement claim under the Patent Act. Moreover, an exclusive licensee is considered a successor-in-title with standing to sue for patent infringement if the patent owner transferred "all substantial rights" to the patent under the license agreement. In assessing whether "all substantial rights" were transferred from Yale to PerkinElmer, the Court reviewed the nine factor test set forth in Alfred E. Mann Found. For Scientific Research v. Cochlear Corp., 604 F.3d 1354, 1360-61 (Fed. Cir. 2010). According to that case, "the nature and scope of the licensor's retained right to sue accused infringers is the most important."

The District Court analogized PerkinElmer's rights to those rights retained by the licensor in Vaupel Textilmaschinen KG v. Meccanica Euro Italia S.P.A., 944 F.2d 870, 874 (Fed. Cir. 1991). There, the Federal Circuit held that an exclusive patent licensee had standing to sue for infringement where it acquired: (1) rights from the patentee to bring lawsuits for infringement, (2) the exclusive right to make, use, and sell items practicing the patent, and (3) total responsibility to incur costs arising from the pursuit of an infringement action. The dispositive grant was the right to sue, which was subject only to the obligation to inform the patent owner. The District Court noted that "[a]lthough the patentee retained a veto right on sublicensing the patent, a reversionary right in the event of bankruptcy and a right to receive infringement damages, the Federal Circuit ruled that none of those rights "was so substantial as to reduce the transfer to a mere license or indicate an intent not to transfer all substantial rights.'" In the case at hand, the license agreement's limitation on assignments was counteracted by PerkinElmer's ability to sublicense its rights and to use the patents and settle claims without Yale's supervision.

The only limitations on PerkinElmer's rights were Yale's right to bring suit against alleged infringers if PerkinElmer chose not to and the limitation on assignment of the license. Accordingly, Judge Gorton concluded that "all substantial rights" in the patents had been transferred to PerkinElmer and, thus, PerkinElmer had standing to pursue the present infringement case.

Inline Plastics Corp. v. EasyPack, LLC, C.A. No. 11-cv-11470-TSH, Memorandum and Order on Claim Construction (D. Mass. Jan. 22, 2013) (Hillman, D.J.) [Claim Construction] Plaintiff Inline Plastics Corp. ("Inline") filed suit against EasyPak, LLC ("EasyPak") alleging infringement of U.S. Patent Nos. 7,118,003 ("the "003 patent") and 7,073,680 ("the "680 patent"). EasyPak seeks declarations of noninfringement and invalidity of the "003 patent and the "680 patent under 35 U.S.C. §§ 102, 103, and 112. The District Court (Hillman, D.J.) settled claim construction disputes for various terms in the two patents.

Inline's patents are directed to tamper resistant and tamper evident clamshell packaging systems for storing and displaying food. The "003 and "680 patents improve on traditional clamshell food packaging by providing a locking mechanism. The Court construed five disputed terms from the "003 and "608 patents: (1) "frangible section;" (2) "frangible section, which upon severing;" (3) "tamper evident bridge;" (4) "tamper-resistant/evident container;" and (5) "lock." The "frangible section" and "frangible section, which upon severing" were treated as one term for purposes of claim construction. The Court's treatment of each term is addressed in turn below.

" Frangible section" and "frangible section, which upon severing"

Inline's proposed construction calls for "at least one score line or at least one perforation line" whereas EasyPak's construction limits the claim to a "removable tear strip." In response to EasyPak's construction, Inline argued that the narrow proposed construction "suggest[s] that [the Court] look to only specific embodiments, figures and description[s] in complete disregard of the clear and express language of the [patents], which provide[] [for] a broader disclosure." But, the Court noted that "Inline commits the same transgression it accuses EasyPak of...[as] it would have this Court validate a secondary and inconspicuous embodiment in complete disregard of the overwhelming evidence to the contrary."

Further, the Court reasoned that the doctrine of claim differentiation did not apply even though dependent claims state that the frangible section is delimited at least in part by a pair of parallel score lines. It noted that claim differentiation is not a hard and fast rule, and claims cannot be broadened beyond their correct scope through the doctrine. In arriving at the Court's construction, Judge Hillman engaged in an analysis of how frequently the term frangible appears in the specification and notes that it is most frequently shown and described as being removable. The Court also points to the prosecution history, noting that Inline stated that the containers contained a tear strip during prosecution. Thus, the Court construed the frangible terms to mean "a removable tear strip, delimited by at least two severable score lines."

"Tamper evident bridge"

Ultimately, the Court rejected both parties' proposed constructions for this term. First, the Court found EasyPak's prosecution history estoppel argument inapplicable. Judge Hillman noted that because the disputed term was disclosed by the prior art, there was no disclaimer to the exclusion of...