Streck, Inc. v. Research & Diagnostic Systems
| Citation | 658 F.Supp.2d 988 |
| Decision Date | 09 September 2009 |
| Docket Number | No. 8:06CV458.,8:06CV458. |
| Parties | STRECK, INC., a Nebraska Corporation, Plaintiff/Counter-defendant, v. RESEARCH & DIAGNOSTIC SYSTEMS, INC., a Minnesota Corporation, and Techne Corporation, a Minnesota Corporation, Defendants/Counter-claimants. |
| Court | U.S. District Court — District of Nebraska |
Howrey Law Firm, Houston, TX, Robert F. Rossiter, Jr., Roger L. Shiffermiller, Fraser, Stryker Law Firm, Omaha, NE, for Plaintiff/Counter-defendant.
Cynthia A. Moyer, Grant D. Fairbairn, Kurt J. Niederluecke, Laura L. Myers, Fredrikson, Byron Law Firm, Minneapolis, MN, Jill R. Ackerman, John A. Sharp, Baird, Holm Law Firm, Omaha, NE, for Defendants/Counter-claimants.
This matter is before the court on the following motions: 1) plaintiff Streck, Inc.'s ("Streck's") motion for partial summary judgment that certain claims of the patents-in-suit are not invalid under the written description requirement of 35 U.S.C. § 112, Filing No. 160; defendants Research & Diagnostic Systems, Inc., and Techne Corporation's (collectively "R & D's") motion for summary judgment seeking a declaratory judgment in its favor on the issue of willfulness and a declaration that certain claims of the patents at issue are invalid under 35 U.S.C. § 112, Filing No. 161; Streck's motion for a partial summary judgment of infringement, Filing No. 166; Streck's motion for partial summary judgment that its patents-in-suit are not invalid by reason of novelty under 35 U.S.C. §§ 102(a)-(e) or obviousness under 35 U.S.C. § 103, Filing No. 168.
This is an action for patent infringement. In this action, Streck alleges that R & D has made, sold or offered for sale certain products, specifically, the "CBC-XE," the "CBC-4K Plus Retics," and the "CBC-5D Plus Retics" integrated hematology control products ("the accused products") in violation of Streck's patent rights under three of its patents: 1) United States Patent No. 6,200,500, ("the '500 patent"); 2) United States Patent No. 6,221,668 ("the '668 patent"), and 3) United States Patent No. 6,399,388 ("the '388 patent") (collectively, "the Streck patents"). Filing No. 1, Complaint, Exhibits ("Exs.") A-C. Streck asserts that the accused products infringe claims 28 and 29 of the '500 patent, claims 1, 4, 5, 6, 8, 9, and 13 of the '668 patent and claim 13 of the '388 patent. R&D asserts invalidity and priority of invention as defenses and has counterclaimed for a declaratory judgment of noninfringement and invalidity.
The following undisputed facts are gleaned primarily form the parties' various statements of undisputed facts. See Filing Nos. 162, 167, 169, 183, 191, 202, 203, 207, 209, 210, 212, and 214, briefs. Streck is a corporation organized under the laws of Nebraska having a principal place of business at 7002 S. 109th St., La Vista, Nebraska. Defendant R & D is a corporation organized under the laws of Minnesota, having a principal place of business at 614 McKinley Place, Minneapolis, Minnesota. Defendant Techne Corporation is the parent corporation of Techne and is a corporation organized under the laws of Minnesota, having a principal place of business at 614 McKinley Place, Minneapolis, Minnesota.1 Both Streck and R&D manufacture and sell hematology control products.
The accused products are integrated reticulocyte controls. The first accused product R&D sold commercially was called CBC-XE. With respect to the sale of CBC-XE, an R & D internal memorandum stated: "[t]he release of this product (our first 5 part differential control with addition of reticulocytes) may also trigger a legal action by Streck." R & D admits that it has no written opinion of counsel regarding the validity of Streck's patents-in-suit or their infringement by R & D's accused products.
Dr. Wayne Ryan is the majority owner and Chief Executive Officer of Streck. John Scholl is a research and development manager at Streck. Dr. Ryan is the named inventor on the 500' patent, and Dr. Ryan and Scholl are named as co-inventors on the '668 and '388 patents. Dr. Ryan filed his application for the '500 patent related to integrated hematology control technology on August 20, 1999. The '500 patent issued on March 13, 2001. Id. The '668 patent, issued April 24, 2001, is a continuation of the '500 patent, and the '388 patent, issued June 4, 2002, is a continuation of the '668 patent. Dr. Ryan and Scholl assigned the '500, '668, and '388 patents to Streck. The reticulocyte component of Streck's commercial integrated reticulocyte controls is made using human red blood cell encapsulation.
Dr. Johnson is a senior scientist in R & D Systems' Hematology Division. Dr. Johnson of R & D Systems filed a patent application for integrated hematology control technology on October 18, 1999 (the "'991 application"), resulting in U.S. Patent No. 6,444,471, issued on September 2, 2002. Dr. Johnson admitted he was aware of Streck's patents-in-suit shortly after they were issued in 2001 and 2002, which was before R & D released their accused products starting in 2004. Dr. Johnson assigned his '991 application to his employer, R & D Systems, prior to the issuance of the '471 patent. R & D's Patent Application entitled "Reticulocyte Containing Complete Blood Control" claims priority to October 18, 1999, which is after the priority date of Streck's patents-in-suit.
An "interference" is a proceeding that the United States Patent and Trademark Office ("PTO") conducts to determine questions of priority (i.e., who was first to invent common subject matter claimed in an issued patent or patent application) and validity. Dr. Johnson filed the '995 application in an attempt to provoke an interference proceeding between the '995 application and the patents relating to integrated reticulocyte controls that Dr. Ryan assigned to Streck, including the patents-in-suit. On June 12, 2003, after the '388 patent issued, Dr. Johnson further amended the claims of the '995 application and formally requested that the PTO declare an interference between the '995 application and Streck's patents. R & D released the first two of its accused products while its request for an interference was pending. The PTO did not declare the interference until March 21, 2007. The PTO has not yet ruled on the interference action.
On December 14, 2006, the parties agreed to be bound in this case by Rules 3-1, 3-2, 3-3, 3-4, 3-7 and 3-8 of the Patent Local Rules of the United States District Court for the Northern District of California regarding required disclosures of asserted claims and infringement and invalidity contentions. Additionally, the parties agreed to a modified version of Rule 3-6.2 The Patent Rules of the Northern District of California require defendants to serve Preliminary Invalidity Contentions 45 days after the plaintiff's infringement contentions. The Patent Rules further require that defendants identify specific prior art references that invalidate the patents-in-suit and provide "[a] chart identifying where specifically in each alleged item of prior art each element of each asserted claim is found." The court's progression order required that the parties' final invalidity contentions, if filed, were due 50 days after the claim construction ruling was issued. Filing No. 134. Pursuant to the agreed Patent Rule 3-7, the supplementation of invalidity contentions was allowed only by order of court on a showing of good cause. Streck informed R & D on December 16, 2008, that it only asserted infringement of claims 28 and 29 of the '500 patent; claims 1, 4, 5, 6, 8, 9, and 13 of the '668 patent; and claim 13 of the '388 patent.
On January 19, 2007, R&D served its Preliminary Invalidity Contentions. Its contentions asserted invalidity under 35 U.S.C. § 102(g) based upon R & D's alleged prior invention. Invalidity under 35 U.S.C. § 102(a)-(e) or 35 U.S.C. § 103 was not asserted. No specific prior art references were identified by R & D. On March 27, 2007, R&D served Amended Preliminary Invalidity Contentions that asserted invalidity under 35 U.S.C. § 102(g) (prior invention) and § 112, ¶¶ 1-2 (written description requirement). Again, R&D based no contentions on 35 U.S.C. §§ 102(a)-(e) or 35 U.S.C. § 103. On January 2, 2009, R&D served its Final Invalidity Contentions that assert invalidity under 35 U.S.C. §§ 102(g) and 112, ¶¶ 1-2, and not 35 U.S.C. §§ 102(a)-(e) or 103. R & D did not provide any invalidity analysis or charts for §§ 102(a)-(e) or 103, but stated that it reserved the right to demonstrate that the Johnson inventions render Streck's claims obvious.
R&D provided an expert report of Dr. Elkin Simson on December 22, 2008, on the issue of invalidity. In the report, Dr. Simson provided invalidity analyses for written description (§ 112), enablement (§ 112), indefiniteness (§ 112), and priority of invention (§ 102(g)). Dr. Simson did not address invalidity of Streck's patents-in-suit under 35 U.S.C. §§ 102(a)-(e) or 103 in his expert report.3
Streck informed R & D on December 16, 2008, that its allegations of infringement were limited to claims 28 and 29 of the '500 patent; claims 1, 4, 5, 6, 8, 9, and 13 of the '668 patent; and claim 13 of the '388 patent.4 The reticulocyte component of Streck's commercial integrated reticulocyte controls is made using human red blood cell encapsulation.
For purposes of Streck's motion for summary judgment in the issue of infringement, Streck agreed to adopt R & D's description of the experience required for someone to be a "person of ordinary skill in the art," as set forth by R & D's expert, Dr. Elkin Simson, as follows:
A person of ordinary skill in the art would typically have an advanced degree, such as a Masters, Ph.D. or equivalent degree, in biological sciences with 5-10 years of post-graduate experience working in the field of...
To continue reading
Request your trial
-
Streck, Inc. v. Research & Diagnostic Sys., Inc.
...motion for JMOL and motion for a new trial on priority; and (5) issuance of a permanent injunction. Streck, Inc. v. Research & Diagnostic Sys., Inc., 658 F.Supp.2d 988 (D.Neb.2009) (“ Summary Judgment Order ”); Streck, Inc. v. Research & Diagnostic Sys., Inc., No. 8:06cv458, 2010 WL 3926059......
-
Control v. Telular Corp.
...claims other than those that [the plaintiff] asserts [the defendant] has infringed in this action." Streck, Inc. v. Research & Diagnostic Sys., Inc., 658 F. Supp. 2d 988, 1000 (D. Neb. 2009), aff'd, 665 F.3d 1269 (Fed. Cir. 2012). The court found that "[t]he harm that creates a justiciable ......
-
Isn't It Obvious? How Klein's Definition of Analogous Prior Art Conflicts with the Supreme Court's Vision for Obviousness
...infringed claims are invalid because they are obvious over the prior art. See Streck, Inc. v. Research & Diagnostic Sys., Inc., 658 F. Supp. 2d 988, 996 (D. Neb. 2009) (noting that nonobviousness is one of two “conditions of patentability and therefore [a] defense[] available in an infringe......