Use Techno Corp. v. Kenko Usa, Inc.

• Decision Date: 04 September 2007
• Docket Number: No. C-06-02754 EDL.,C-06-02754 EDL.
• Citation: 515 F.Supp.2d 1086
• Court: U.S. District Court — Northern District of California
• Parties: USE TECHNO CORPORATION and Futoshi Matsuyama, Plaintiffs, v. KENKO USA, INC., et.al., Defendants.

515 F.Supp.2d 1086

USE TECHNO CORPORATION and Futoshi Matsuyama, Plaintiffs, v. KENKO USA, INC., et.al., Defendants.

No. C-06-02754 EDL.

United States District Court, N.D. California.

September 4, 2007.

COPYRIGHT MATERIAL OMITTED

Robert P. Andris, Amy Kinsella Gruber, Jesshill E. Love, Lael D. Andara, Ropers Majeski Kohn & Bentley, Redwood City, CA, for Plaintiffs.

Sri K. Sankaran, John Brogan, Kevin S. Ueland, Paul Robbennolt, Surya Saxena, Dorsey & Whitney LLP, Minneapolis, MN, Devin Alexander McRae, Dorsey & Whitney LLP, Palo Alto, CA, Juanita R. Brooks, Fish & Richardson P.C., San Diego, CA, John Michael Farrell, Fish & Richardson LLP, Redwood City, CA, for Defendants.

ORDER GRANTING DEFENDANTS' MOTION FOR SUMMARY JUDGMENT

ELIZABETH D. LAPORTE, United States Magistrate Judge.

On April 24, 2006, Plaintiffs Use Techno Corporation and Futoshi Matsuyama (collectively "Plaintiffs") filed this patent infringement case against Defendants Iovate Health Sciences USA, Inc., Jarrow Formulas, Inc., Jarrow Industries, Inc., Kenko USA, Inc., Soft-Gel Technologies, Inc., Chemco Industries, Inc., Ronald Udell and Siva Hari (collectively, "Defendants"), alleging that Defendants infringed Plaintiffs' United States Patents Nos. 6,485,760 ("the '760 patent") and 6,716,459 ("the '459 patent"), and that Defendants' United States Patent No. 6,784,206 ("the '206 patent") is invalid.¹ On July 13, 2007, the Court granted Defendants' Motion for Summary Judgment as to claims of direct infringement of the '760 patent, granted Plaintiffs' Motion to Dismiss as to claims of contributory infringement or inducement of infringement against Defendants with respect to the '760 patent and granted Plaintiffs' Motion to Dismiss as to the declaratory relief claim for the '209 patent.

On July 24, 2007, Defendants filed a motion for summary judgment that the '459 patent is invalid for failure to comply with the enablement requirement of 35 U.S.C. § 112 and for failure to name the correct inventors under 35 U.S.C. § 102(f), and unenforceable for inequitable conduct. This matter was fully briefed and the Court held a hearing on August 28, 2007. For the reasons set forth below, Defendants' motion for summary judgment is granted.

BACKGROUND

According to the complaint, Plaintiffs' business is related to "studying natural active chemical compounds and developing, patenting and licensing the application developed." Am. Compl. ¶ 1. Plaintiffs have identified corosolic acid as a specific extract of the Banaba plant (Lagerstroemia speciosa (Lin. or Pers.)) leaves that has been found to maintain healthy blood sugar levels in humans. Id. Plaintiffs are "engaged in the business of planting, harvesting, extracting, marketing, and selling corosolic acid extracts for the prevention and treatment of diabetes, obesity, constipation and skin diseases." Id. Plaintiff alleges that it owns the '459 patent and that Defendants are infringing the '459 patent by importing, making, using, offering for sale and selling products containing corosolic acid. Am. Compl. ¶ 61.

The Court issued its claim construction of the '459 patent on July 24, 2007.

DISCUSSION

A. Summary judgment standard

Rule 56(c) of the Federal Rules of Civil Procedure provides that summary judgment "shall be rendered forthwith if the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to judgment as a matter of law." Fed. R.Civ.P. 56(c). Material facts are those that may affect the outcome of the case. See Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). A dispute as to a material fact is "genuine" if there is sufficient evidence for a reasonable jury to return a verdict for the nonmoving party. See id. The court may not weigh the evidence. See id. at 255, 106 S.Ct. 2505. Rather, the nonmoving party's evidence must be believed and "all justifiable inferences must be drawn in [the nonmovant's] favor." United Steelworkers of Am. v. Phelps Dodge Corp., 865 F.2d 1539, 1542 (9th Cir.1989) (en banc) (citing Liberty Lobby, 477 U.S. at 255, 106 S.Ct. 2505).

The moving party bears the initial responsibility of informing the district court of the basis for its motion and identifying those portions of the pleadings, depositions, interrogatory answers, admissions and affidavits, if any, that it believes demonstrate the absence of a genuine issue of material fact. See Celotex Corp. v. Catrett, 477 U.S. 317, 323, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). Where the nonmoving party will bear the burden of proof at trial, the moving party's burden is discharged when it shows the court that there is an absence of evidence to support the nonmoving party's case. See id. at 325, 106 S.Ct. 2548.

A party opposing a properly supported motion for summary judgment "may not rest upon the mere allegations or denials of [that] party's pleading, but ... must set forth specific facts showing that there is a genuine issue for trial." Fed.R.Civ.P. 56(e); Liberty Lobby, 477 U.S. at 250, 106 S.Ct. 2505. The opposing party, however, need not produce evidence in a form that would be admissible at trial in order to avoid a summary judgment. See Celotex, 477 U.S. at 324, 106 S.Ct. 2548. Nor must the opposing party show that the issue will be resolved conclusively in its favor. See Liberty Lobby, 477 U.S. at 248-49, 106 S.Ct. 2505. All that is necessary is sufficient evidence supporting the asserted factual dispute and requiring a jury or judge to resolve the parties' differing versions of the truth at trial. See id.

B. The '459 patent in invalid for lack of enablement.

The '459 patent is entitled "Composition for Inhibiting Increase of Blood Sugar Level or Lowering Blood Sugar Level," and has two claims:

1. A composition for inhibiting an increase in, or lowering, a blood sugar level, in a human patient in need thereof, consisting essentially of: a concentrate of ethanol or ethanol aqueous solution extract of leaves of Lagerstroemia Speciosa, Linn. or Pers. having a corosolic acid content of 0.01 to 15 mg per 100 mg of the concentrate.

2. The composition according to claim 1, wherein said ethanol solution contains 50 to 80 by weight of ethanol.

@459 patent at col. 6, lines 57-65. Defendants specifically argue that the enablement requirement is not met because the specification does not allow one skilled in the art to create a concentrate of 15% corosolic acid. The enablement requirement states:

The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.

See 35 U.S.C. § 112. "Invalidity for lack of enablement is a conclusion of law that must be supported by facts showing a failure to enable by clear and convincing evidence." National Recovery Techs., Inc. v. Magnetic Separation Systems, Inc., 166 F.3d 1190, 1195 (Fed.Cir.1999) (internal citation omitted). The enablement requirement is met "when one skilled in the art, after reading the specification, could practice the claimed invention without undue experimentation." AK Steel Corp. v. Sollac, Ugine, 344 F.3d 1234, 1244 (Fed. Cir.2003); see also Genentech Inc. v. Novo Nordisk, A/S, 108 F.3d 1361, 1365 (Fed. Cir.1997) ("[t]o be enabling, the specification of the patent must teach those skilled in the art how to make and use the full scope of the claimed invention without undue experimentation."); Atlas Powder Co. v. E.I. du Pont De Nemours & Co., 750 F.2d 1569, 1576 (Fed.Cir.1984) (finding of enablement is not precluded even if some experimentation is necessary, although the amount of experimentation needed must not be unduly extensive). Several factors should be considered in deciding the issue of undue experimentation:

(1) the quantity of experimentation necessary; (2) the amount of direction or guidance presented; (3) the presence or absence of working examples; (4) the nature of the invention; (5) the state of the prior art; (6) the relative skill of those in the art; (7) the predictability or unpredictability of the art; and (8) the breadth of the claims.

In re Wands, 858 F.2d 731, 737 (Fed.Cir. 1988). A court need not examine all of the Wands factors; they are "illustrative, not mandatory." Amgen, Inc. v. Chugai Pharmaceutical Co., 927 F.2d 1200, 1213 (Fed.Cir.1991). "Where the specification provides `guidance in selecting the operating parameters that would yield the claimed result,' In re Colianni, 561 F.2d 220, 224, 195 USPQ 150, 153 (C.C.P.A. 1977) (emphasis omitted), it is fair to conclude that the experimentation required to make a particular embodiment is not `undue.'" PPG Indus., Inc. v. Guardian Indus. Corp., 75 F.3d 1558, 1565 (Fed.Cir. 1996). Further, "as part of the quid pro quo of the patent bargain, the applicant's specification must enable one of ordinary skill in the art to practice the full scope of the claimed invention." See AK Steel, 344 F.3d at 1244 (emphasis added); see also Automotive Techs., Int'l. v. BMW of No. Am., Inc., 378 F.Supp.2d 780, 815 (E.D.Mich.2005) (in patent covering sensors for side airbags, the claim was construed to cover both mechanical and electronic sensors, but the patent failed to provide sufficient details to teach a person skilled in the art how to make an electron is sensor); National Recovery, 166 F.3d at 1192-93 (patent covered distinguishing between types of containers in the recycling industry through x-rays, but the patent failed to teach how to distinguish between x-ray signals passing through an irregularity in the containers and a regular container). Further,

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