Trs. of Purdue Univ. v. Omron Corp.
| Decision Date | 04 December 2020 |
| Docket Number | No. 20-cv-5443,20-cv-5443 |
| Citation | 505 F.Supp.3d 808 |
| Parties | The TRUSTEES OF PURDUE UNIVERSITY, Plaintiff, v. OMRON CORPORATION and Omron Healthcare Company, Limited, Defendants. |
| Court | U.S. District Court — Northern District of Illinois |
John R. Maley, Barnes & Thornburg, LLP, Indianapolis, IN, Alfonso G. Chan, PHV, Pro Hac Vice, Halima Shukri Ndai, Pro Hac Vice, Michael W. Shore, PHV, Pro Hac Vice, Shukri M. Abdi, PHV, Pro Hac Vice, Shore Chan DePumpo LLP, Dallas, TX, Elizabeth A. DiMarco, Pro Hac Vice, Emma L. Frank, Pro Hac Vice, Eric J. Rutt, Pro Hac Vice, Gerald B. Hrycyszyn, Pro Hac Vice, Jason W. Balich, Pro Hac Vice, Wolf, Greenfield & Sacks, P.C., Boston, MA, Joseph Ming Kuo, Saul Ewing Arnstein & Lehr LLP, Chicago, IL, for Plaintiff.
Andrew M. McNeil, Payne Craig E. Pinkus, Bose McKinney & Evans LLP, Indianapolis, IN, Kimberly Kristin Dodd, Foley & Lardner LLP, Milwaukee, WI, Lucas I. Silva, PHV, Pro Hac Vice, Matthew B. Lowrie, PHV, Pro Hac Vice, Foley & Lardner LLP, Boston, MA, Richard Spencer Montei, Foley & Lardner LLP, Chicago, IL, for Defendants.
Plaintiff The Trustees of Purdue University ("Purdue") is the owner of U.S. Patent No. 7,014,611 (the "'611 Patent") which describes an oscillometric blood pressure monitor
. ECF No. 31-1. In this action, Purdue asserts that several blood pressure monitors made and/or sold by Defendants infringe the '611 Patent. Defendants have moved to dismiss Purdue's complaint, arguing that the '611 Patent is invalid as directed to patent-ineligible subject matter, and that the complaint fails to state a claim under Federal Rule of Civil Procedure 12(b)(6). For the reasons that follow, the motion to dismiss [47] is denied.
Purdue asserts that Defendants’ products infringe upon at least eight claims1 of the '611 Patent. The '611 Patent, invented by Leslie A. Geddes and Rebecca A. Roeder and issued in 2006, describes an oscillometric blood pressure monitor
capable of determining systolic blood pressure as a function of maximum oscillation amplitude and mean cuff pressure.
Blood pressure can be measured in many different ways—for example, it can be measured directly by inserting a catheter into a blood vessel, or it can be estimated using a stethoscope to detect heart sounds while an artery is compressed. See ECF No. 31-2 ¶¶ 10-11. Oscillometry
is one noninvasive technique for estimating blood pressure in which an inflatable cuff is placed around a patient's appendage, the cuff is inflated to apply pressure, and pressure readings are taken as the cuff deflates. See id. ¶ 14. Prior to issuance of the '611 Patent, users of the oscillometric method commonly calculated systolic blood pressure as a fixed ratio of the maximum amplitude of the pressure oscillations measured during cuff deflation. Id. at ¶ 15; ECF No. 31-1 col. 4 ll. 57-63. For example, systolic blood pressure might be estimated as 50% of the value of the maximum amplitude. ECF No. 31-1 col. 4 ll. 57-63. This method of calculation is sometimes called the "fixed ratio" technique. ECF No. 31-2 ¶ 15.
The '611 Patent claims an oscillometric blood pressure monitor
that calculates systolic blood pressure as a function of both maximum amplitude and mean cuff pressure. Using these variables in combination purportedly allows for a significantly more accurate blood-pressure estimation. Claim 1 recites:
An oscillometric, noninvasive blood pressure monitor
, comprising:
an inflatable cuff;
a pump connected to said cuff;
a pressure transducer connected to said cuff, said pressure transducer producing a cuff-pressure signal;
means for detecting oscillations in arterial pressure occurring during a transition in cuff pressure between a pressure greater than normal systolic pressure and a pressure less than normal diastolic pressure; and
a blood pressure measurement circuit responsive to said oscillations, said circuit determining the maximum amplitude Am of said oscillations, identifying mean cuff pressure Pm as the coincident value of said cuff-pressure signal, and determining systolic pressure as a function of both Am and Pm.
ECF No. 31-1 cl. 1.2
In December 2017, Purdue filed its original complaint in the U.S. District Court for the Northern District of Indiana, alleging that Defendants’ blood pressure products infringed the '611 Patent. ECF No. 1. Defendants moved to dismiss, arguing in part that there was no personal jurisdiction over Defendants in the Northern District of Indiana. ECF No. 15. In June 2018, at the same time it filed its response to the motion to dismiss, Purdue filed an Amended Complaint. ECF Nos. 31, 32. Defendants then moved to dismiss the Amended Complaint, ECF No. 47, and both motions to dismiss were fully briefed.3
In September 2020, Purdue agreed to resolve the personal jurisdiction issue raised by Defendants by transferring the case to this court. See ECF No. 72. The remaining issues raised by the motions to dismiss are now ripe for decision.4
Defendants argue that the claims of the § 101 question, I turn first to the threshold issue of Purdue's immunity.
The Eleventh Amendment provides: "The Judicial power of the United States shall not be construed to extend to any suit in law or equity, commenced or prosecuted against one of the United States by Citizens of another State ...." U.S. Const. amend. XI. Eleventh Amendment immunity is waived, however, when a state "consents to federal jurisdiction by voluntarily appearing in federal court," as Purdue has done by initiating this action. See Univ. of Fla. Rsch. Found., Inc. v. Gen. Elec. Co. , 916 F.3d 1363, 1365 (Fed. Cir. 2019) (citation omitted).5 The waiver extends "not only to the cause of action but also to any relevant defenses and counterclaims." Id. (citation omitted). Purdue argues that an assertion of patent ineligibility under § 101 is not a counterclaim or affirmative defense to patent infringement, so it has not waived its immunity to Defendants’ § 101 eligibility challenge. I disagree.
After briefing had concluded on the instant motion to dismiss, the Federal Circuit opined on this very issue in a strikingly similar case, University of Florida Research Foundation, Inc. v. General Electric Company. There, a state university research foundation sued for patent infringement, then asserted sovereign immunity when the defendant argued that the patent was directed to ineligible subject matter under § 101. 916 F.3d at 1364. The Federal Circuit held that a challenge to eligibility under § 101 qualifies as a defense to patent infringement both under the statutory framework and as a matter of common practice. Id. at 1365. As a result, it determined that the plaintiff had waived its immunity to the § 101 eligibility challenge when it sued for patent infringement in the district court. Id. at 1366. For precisely the same reasons, Purdue has waived Eleventh Amendment immunity here.
Purdue also argues generally that this court "does not have authority to eradicate a state-owned property right." ECF No. 51 at 9. But the only case Purdue cites in support, Florida Prepaid Postsecondary Education Expense Board v. College Savings Bank , concerns the constitutionality of a statutory abrogation of sovereign immunity, and does not offer any support for the proposition that a patent owned by a state cannot be invalidated if it is directed to patent-ineligible subject matter. 527 U.S. 627, 630, 119 S.Ct. 2199, 144 L.Ed.2d 575 (1999). Indeed, state-owned patents are routinely invalidated by federal courts. See, e.g. , Univ. of Fla. , 916 F.3d at 1369.
Purdue also maintains that even if it waived its Eleventh Amendment immunity, it is protected by Indiana's broad, general sovereign immunity, which applies in actions brought in both federal and state court. See Beaulieu v. Vermont , 807 F.3d 478, 483 (2d Cir. 2015) (). Defendants counter that just as in the context of the Eleventh Amendment, general sovereign immunity is waived when a lawsuit is initiated by the state. See id. (). If a state were allowed to simultaneously invoke and shield itself from a court's jurisdiction, Defendants argue, it "could generate seriously unfair results," which the Supreme Court has cautioned against in the context of Eleventh Amendment immunity. See Lapides v. Bd. of Regents of Univ. Sys. of Ga. , 535 U.S. 613, 619, 122 S.Ct. 1640, 152 L.Ed.2d 806 (2002). However, I need not resolve the question of whether Purdue has general sovereign immunity that protects it from Defendants’ § 101 eligibility challenge because, for the reasons outlined below, I decline to hold that the '611 Patent ’s claims are invalid. See Hester v. Ind. State Dep't of Health , 726 F.3d 942, 946 (7th Cir. 2013) ().
Section 101 of the Patent Act defines the subject matter eligible for patent protection as follows: "any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof." 35 U.S.C. § 101. The section, however, "contains an important implicit exception: Laws of nature, natural phenomena, and abstract ideas are not patentable." Alice Corp. Pty. Ltd. v. CLS Bank Int'l , 573 U.S. 208, 216, 134 S.Ct. 2347, 189 L.Ed.2d 296 (2014) (citing Assoc. for Molecular Pathology v. Myriad Genetics, Inc. , 569 U.S. 576, 589, 133 S.Ct. 2107, 186 L.Ed.2d 124 (2013) ). Courts recognizing this exception have been motivated by preemption: laws of nature, natural...
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