8 UNITED STATES DISTRICT COURT 9
10 NORTHERN DISTRICT OF CALIFORNIA
11 SAN JOSE DIVISION
12 THE REGENTS OF THE UNIVERSITY Case No. 19-CV-07470-LHK 13 OF MICHIGAN, ORDER DENYING MOTION TO 14 Plaintiff, DISMISS 15 v. Re: Dkt. No. 17
16 LEICA MICROSYSTEMS INC., 17 Defendant. 18
The Regents of the University of Michigan (“Michigan”) bring this action for patent 19 infringement against Leica Microsystems Inc. (“Leica”). ECF No. 1 (“Compl.”). Michigan 20 alleges that Leica infringes U.S. Patent No. 7,277,169 (the “’169 Patent”) either literally or under 21 the doctrine of equivalents. See id. ¶¶ 23–53. Before the Court is Leica’s motion to dismiss for 22 failure to state a claim. ECF No. 17. Having considered the submissions of the parties, the 23 relevant law, and the record in this case, the Court DENIES Leica’s motion to dismiss. 24 25 I. BACKGROUND A. Factual Background 26 1. The Parties 27 1 Michigan is a “constitutional corporation of the State of Michigan” primarily located in 2 Ann Arbor, Michigan. Compl. ¶ 2. Michigan is the assignee and sole owner of the ’169 Patent. 3 Id. ¶ 9. Leica is a Delaware corporation with its primary place of business in San Francisco, 4 California. Id. ¶ 3. 5 2. The ’169 Patent 6 The ’169 Patent is titled “Whole Spectrum Fluorescence Detection with Ultrafast White 7 Light Excitation.” ECF No. 1-1 (“’169 Patent”). The ’169 Patent was filed on February 16, 2006 8 and issued on October 2, 2007. See id. 9 The ’169 Patent relates to “fluorescence measurements and, more particularly, relates to a 10 method and apparatus for detecting multiple fluorophores using an ultrafast super continuum light 11 source for excitation.” Id. at col. 1:23–25. Specifically, the ’169 Patent describes a novel 12 fluorescence detection system that “employ[s] a single laser source to simultaneously excite a 13 plurality of dye molecules and collect the entire spectrum [of light] ranging from visible to near 14 infrared emitted therefrom.” Id. at col. 3:25–28. The fluorescence detection system of the ’169 15 Patent features two main components, “a single source white light generation system” and a “time- 16 resolving detector.” Id. at col. 7:46–55. 17 Moreover, the ’169 Patent states that it teaches “a unique approach for fluorescence 18 excitation and detection in contrast to conventional fluorescence measurements.” Id. at col. 5:53– 19 55. The ’169 Patent highlights that “conventional fluorescence” techniques use “a single 20 excitation wavelength, such as a laser source,” which can only “excite[] and thus detect[]” a 21 “limited number of fluorophores that have absorption [wavelengths] matched with the excitation 22 wavelength.” Id. at col. 2:23–25. In contrast, the ’169 Patent teaches the use of “a single laser 23 source” which generates a “white light pulse” that comprises the entire spectrum of visible light 24 and that can “simultaneously excite a plurality of dye molecules and collect the entire spectrum 25 ranging from visible to near infrared emitted therefrom.” Id. at col. 3:25–28. Accordingly, 26 “[u]nlike prior art systems, the usefulness of the [] teachings [of the ’169 Patent] is not dependent 27 upon the use of band pass filters and/or dichroic mirrors and, thus, the present teachings [of the 1 ’169 Patent] provide a significantly simplified configuration.” Id. at col. 3:28–32. 2 Michigan asserts “at least claim 1 of the ’169 Patent.” Compl. ¶ 26. Claim 1 of the ’169 3 Patent recites: 4 1. A fluorescence detection system for testing a sample, said sample having a plurality of fluorophores, said fluorescence detection system comprising: 5 a single-source white light generation system outputting a supercontinuum white 6 light pulse comprising an entire spectrum of white light, said supercontinuum white light pulse exciting the plurality of fluorophores of the sample to emit fluorescence; 7 and
8 a time-resolving detector receiving said fluorescence and at least a portion of said supercontinuum white light pulse, said time-resolving detector separating said 9 fluorescence from said portion of said supercontinuum white light pulse. 10 ’169 Patent col. 7:43–55. 11 3. Leica’s Accused Products 12 Michigan alleges that Leica’s infringing products are “each and every model of Leica’s 13 SP8 confocal microscope family that employs a white light laser, including, for example, without 14 limitation, the TCS SP8 X and TCS SP8 microscopes” (the “SP8 microscopes”). Compl. ¶ 25. 15 Michigan alleges that the SP8 microscopes are fluorescence detection systems that allow for 16 exciting a fluorophore in a sample and then detecting the fluorescence the sample emits. Id. ¶ 28– 17 31; Mot. at 13–14. The SP8 microscopes “employ an innovative Leica White Light Laser that is a 18 single device that produces a continuous spectral output between the wavelengths of 470 and 670 19 nanometers” and that “covers the full spectrum of visible light.” Compl. ¶ 28 (quotation marks 20 omitted). Using this light source, the SP8 microscopes function “[b]y tuning both excitation and 21 detection [wavelengths to obtain] complete excitation and emission spectra.” Id. ¶ 32. This 22 tuning process also features a “beam splitter,” which splits the initial light from the light source 23 into “up to eight discrete wavelengths” that ultimately contact the sample. ECF No. 17 at 13. 24 Further, the SP8 microscopes feature a detector that observes the fluorescence emitted from the 25 sample and also “[a]n adjustable time gate” that can function to remove “non-wanted 26 fluorescence” by “switch[ing] off the data collection.” Compl. ¶¶ 35–36. 27 B. Procedural History 1 On November 13, 2019, Michigan filed its complaint for patent infringement against 2 Leica. See Compl. Michigan alleges that Leica directly infringes the ’169 Patent “literally and/or 3 under the doctrine of equivalents,” and also indirectly infringes through induced and contributory 4 infringement. Id. ¶¶ 25, 40–45. Michigan further alleges that Leica’s infringement merits 5 enhanced damages because Leica’s infringement of the ’169 Patent is willful. Id. ¶¶ 46–52. 6 On January 15, 2020, Leica filed the present motion to dismiss Michigan’s complaint for 7 failure to state a claim. ECF No. 17 (“Mot.”). In conjunction with Leica’s motion to dismiss, 8 Leica also filed a request that the Court take judicial notice of the prosecution history of the ’169 9 Patent. ECF No. 17-2. On March 5, 2020, Michigan filed an opposition to Leica’s motion to 10 dismiss. ECF No. 41 (“Opp’n”). On March 19, 2020, Leica filed a reply. ECF No. 45 (“Reply”). 11 On March 26, 2020, Michigan filed an objection to evidence contained in Leica’s reply brief. 12 ECF No. 46. On April 1, 2020, Leica filed a response to Michigan’s objection, ECF No. 49, as 13 well as a motion for the Court to review Michigan’s objection, ECF No. 50. 14 II. LEGAL STANDARD 15 A. Motion to Dismiss 16 Rule 8(a)(2) of the Federal Rules of Civil Procedure requires a complaint to include “a 17 short and plain statement of the claim showing that the pleader is entitled to relief.” A complaint 18 that fails to meet this standard may be dismissed pursuant to Rule 12(b)(6). Rule 8(a) requires a 19 plaintiff to plead “enough facts to state a claim to relief that is plausible on its face.” Bell Atl. 20 Corp. v. Twombly, 550 U.S. 544, 570 (2007). “A claim has facial plausibility when the plaintiff 21 pleads factual content that allows the court to draw the reasonable inference that the defendant is 22 liable for the misconduct alleged.” Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009). “The plausibility 23 standard is not akin to a probability requirement, but it asks for more than a sheer possibility that a 24 defendant has acted unlawfully.” Id. (internal quotation marks omitted). 25 Generally, motions to dismiss for failure to state a claim raise “purely procedural 26 question[s] not pertaining to patent law” and are therefore governed by regional circuit law. 27 McZeal v. Spring Nextel Corp., 501 F.3d 1354, 1356 (Fed. Cir. 2007) (applying Fifth Circuit case 1 law and vacating dismissal of a patent infringement case). However, where “the issue pertains to 2 or is unique to patent law,” courts follow Federal Circuit law for “both substantive and procedural 3 issues ‘intimately involved in the enforcement of the patent right.’” Flex-Foot, Inc. v. CRP, Inc., 4 238 F.3d 1362, 1365 (Fed. Cir. 2001) (citing Amana Refrigeration, Inc. v. Quadlux, Inc., 172 F.3d 5 852, 855–56 (Fed. Cir. 1999)); see, e.g., Takeda Pharm. Co., Ltd. v. Mylan Inc., 62 F. Supp. 3d 6 1115, 1121 (N.D. Cal. 2014). 7 Accordingly, with respect to the pleading standard, the Court applies Ninth Circuit law to 8 “accept factual allegations in the complaint as true and construe[s] the pleadings in the light most 9 favorable to the nonmoving party.” Manzarek v. St. Paul Fire & Marine Ins. Co., 519 F.3d 1025, 10 1031 (9th Cir. 2008). The Court, however, need not accept as true allegations contradicted by 11 judicially noticeable facts, see Shwarz v. United States, 234 F.3d 428, 435 (9th Cir. 2000), and it 12 “may look beyond the plaintiff’s complaint to matters of public record” without converting the 13 Rule 12(b)(6) motion into a motion for summary judgment, Shaw v. Hahn, 56 F.3d 1128, 1129 n.1 14 (9th Cir. 1995). Nor must the Court “assume the truth of legal conclusions merely because they 15 are cast in the form of factual allegations.” Fayer v. Vaughn, 649 F.3d 1061, 1064 (9th Cir. 2011) 16 (per curiam). Indeed, mere “conclusory allegations of law and unwarranted inferences are 17 insufficient to defeat a motion to dismiss.” Adams v. Johnson, 355 F.3d 1179, 1183 (9th Cir. 18 2004). 19 B. Direct Infringement 20 Direct infringement occurs when an unauthorized party “makes, uses, offers to sell, or sells 21 any patented invention, within the United States or imports into the United States any patented 22 invention during the term of the patent.” 35 U.S.C. § 271(a). 23 Infringement is a question of fact and “can be found when a defendant makes a product 24 containing ‘each and every limitation set forth in a [patent] claim.’” CenTrak, Inc. v. Sonitor 25 Techs., Inc., 915 F.3d 1360 (Fed. Cir. 2019) (quoting Cross Med. Prods. v. Medtronic Sofamor 26 Danek, Inc., 424 F.3d 1293, 1310 (Fed. Cir. 2005)). To sufficiently plead a claim of direct 27 infringement under Twombly and Iqbal, “plaintiffs [must] plausibly allege that the accused product 1 practices each of the limitations found in at least one asserted claim.” e.Digital Corp. v. iBaby 2 Labs, Inc., No. 15-cv-05790-JST, 2016 WL 4427209, at *3 (N.D. Cal. Aug. 22, 2016) (collecting 3 cases). 4 However, to state a claim of direct infringement, the accused products may satisfy all of a 5 claim’s limitations “either literally or under the doctrine of equivalents.” Cheese Sys. V. Tetra Pak 6 Cheese & Powder Sys., 725 F.3d 1341, 1348 (Fed. Cir. 2013). “[L]iteral infringement requires 7 that each and every limitation set forth in a claim appear in an accused product.” Frank’s Casing 8 Crew & Rental Tools, Inc. v. Weatherford Int’l, Inc., 389 F.3d 1370, 1348 (Fed. Cir. 2013). 9 By contrast, “[i]nfringement under the doctrine of equivalents requires the patentee to 10 prove that the accused device contains an equivalent for each limitation not literally satisfied.” 11 Wi-LAN, Inc. v. Apple Inc., 811 F.3d 455, 463 (Fed. Cir. 2016). “An element in the accused 12 product is equivalent to a claimed element if the differences between the two elements are 13 ‘insubstantial’ to one of ordinary skill in the art.” Id. 14 Because the doctrine of equivalents is only relevant in the absence of literal infringement, 15 courts regularly decline to consider infringement under the doctrine of equivalents where literal 16 infringement has been found. See, e.g., Cheese Sys., Inc., 725 F.3d at 1349 (“This court affirms on 17 the ground that the accused products literally infringe this element and so does not reach the 18 alternative ground of infringement under the doctrine of equivalents.”); Hybritech Inc. v. Abbott 19 Labs., 849 F.2d 1446, 1456 (Fed. Cir. 1988) (“Because of this holding on the question of literal 20 infringement, we need not reach Abbott's arguments concerning infringement pursuant to the 21 doctrine of equivalents.”). 22 C. Indirect Infringement 23 In addition to any direct infringement claim, a patentee may bring a claim for indirect 24 infringement against a defendant under either a theory of induced infringement or contributory 25 infringement. 26 Induced infringement may apply where a defendant has induced a third party to directly 27 infringe a patent. See 35 U.S.C. § 271(b). “For an allegation of induced infringement to survive a 1 motion to dismiss, a complaint must plead facts plausibly showing that the accused infringement 2 specifically intended [another party] to infringe [the patent] and knew that the [other party]’s acts 3 constituted infringement.” Nalco Co. v. Chem-Mod, LLC, 883 F.3d 1337, 1355 (Fed. Cir. 2018) 4 (quoting Lifetime Indus., Inc. v. Trim-Lok, Inc., 869 F.3d 1372, 1379 (Fed. Cir. 2017)) (internal 5 quotation marks omitted). Thus, for an allegation of induced infringement, the plaintiff must 6 allege that a defendant knew that another party was infringing and intended for that other party to 7 infringe. Id. 8 A theory of contributory infringement may apply where a defendant has contributed to a 9 third party’s direct infringement. See id. § 271(c). Contributory infringement refers to the “core 10 notion that one who sells a component especially designed for use in a patented invention may be 11 liable as a contributory infringer, provided that the component is not a staple article of commerce 12 suitable for substantial noninfringing use.” Ricoh Co., Ltd. v. Quanta Computer Inc., 550 F.3d 13 1325, 1337 (Fed. Cir. 2008); see also 35 U.S.C. § 271(c). Therefore, to state a claim 14 for contributory infringement, one must plead that a party sells or offers to sell “a component of a 15 patented . . . combination, . . . or a material . . . for use in practicing a patented processing 16 constituting a material part of the invention, knowing the same to be especially made or especially 17 adapted for use in an infringement of such patent, and not a staple article or commodity of 18 commerce suitable for substantial noninfringing use.” Nalco, 883 F.3d at 1356 (Fed. Cir. 2018) 19 (quoting 35 U.S.C. § 271(c)). 20 Under either a theory of induced infringement or contributory infringement, indirect 21 infringement requires an act of direct infringement as a predicate, and thus, there cannot be 22 indirect infringement without direct infringement. See Limelight Networks, Inc. v. Akamai Techs., 23 Inc., 572 U.S. 915, 920–26 (2014). 24 D. Willful Infringement 25 Furthermore, a patentee can allege willful infringement and seek enhanced damages 26 pursuant to “Section 284 of the Patent Act[,] [which] provides that, in a case of infringement, 27 courts ‘may increase the damages up to three times the amount found or assessed.’” Halo Elecs., 1 Inc. v. Pulse Elecs., Inc., 136 S. Ct. 1923, 1928 (2016) (citing 35 U.S.C. § 284). For infringement 2 to be willful and to merit enhanced damages, an infringer must act despite a risk of infringement 3 that was “either known or so obvious that it should have been known to the accused 4 infringer.” Halo, 136 S. Ct. at 1930. “Accordingly, to state a claim for willful infringement [and 5 enhanced damages], a complaint must allege that an infringer knew of the patents and then acted 6 or continued to act even though the infringer knew that it was infringing or that the risk of such 7 infringement was obvious.” Corephotonics, Ltd. v. Apple, Inc., No. 17-CV-06457-LHK, 2018 WL 8 4772340, at *7 (N.D. Cal. Oct. 1, 2018) (citing Arctic Cat Inc. v. Bombardier Rec. Prods., 876 9 F.3d at 1350, 1371 (Fed. Cir. 2017)). 10 III. DISCUSSION 11 In Leica’s motion to dismiss, Leica argues that the Court should dismiss Michigan’s claims 12 for direct infringement, indirect infringement, and willful infringement. The Court first addresses 13 Michigan’s direct infringement claim, which alleges both literal infringement and infringement 14 under the doctrine of equivalents. Next, the Court turns to Michigan’s indirect infringement 15 claim, and then finally, Michigan’s claim for enhanced damages via willful infringement.1 16 A. Direct Infringement 17 Leica’s motion alleges that Leica’s accused products, i.e., the SP8 microscopes, do not 18 directly infringe—either literally or under the doctrine of equivalents—because the SP8 19 microscopes fail to satisfy the following limitation of independent claim 1: “said supercontinuum 20 white light pulse exciting the plurality of fluorophores of the sample to emit fluorescence” 21 (hereafter, the “supercontinuum white light limitation”). See Mot. at 18 (quoting ’169 Patent col. 22 7:45–50). Leica argues, and Michigan does not dispute for purposes of this motion, that this 23 limitation is identical or functionally identical to a limitation present in the remaining independent 24 25 26 1 Michigan alleges willful infringement as a separate count in the Complaint, whereby Michigan 27 asserts that all of Leica’s allegedly infringing conduct, including both direct infringement and indirect infringement, was willful. See Compl. ¶¶ 46–52. 1 claims of the ’169 Patent.2 See id. at 18; Opp’n at 1. Moreover, Leica does not dispute that 2 Michigan sufficiently alleges that the SP8 microscopes satisfy the remaining limitations of claim 3 1. See Mot. at 18–23. As such, the Court need only address the parties’ dispute with regard to the 4 supercontinuum white light limitation. See Mot. at 18–23. 5 Below, the Court first addresses literal infringement before turning to infringement under 6 the doctrine of equivalents. 7 1. Literal Infringement 8 Leica argues that the SP8 microscopes cannot satisfy the supercontinuum white light 9 limitation in light of the limitation’s plain meaning and the patent’s specification and prosecution 10 history. See id. However, Leica does not otherwise dispute that Michigan sufficiently pleads that 11 the SP8 microscopes satisfy this limitation under Michigan’s interpretation of the claim. See id. 12 For the reasons stated below, the Court finds that Leica’s motion would require the Court to 13 construe a disputed clam term, which is inappropriate at this procedural posture. 14 Specifically, Leica argues that the supercontinuum white limitation, as informed by the 15 ’169 Patent’s specification and prosecution history, requires that the entirety of the 16 “supercontinuum white light pulse” reach and excite the fluorophores in the sample. See id. at 18– 17 21; Reply at 6–11. Leica argues that the SP8 microscopes cannot literally infringe because the 18 “SP8 microscopes excite fluorophores . . . with up to eight narrow-band (1 nm) discrete 19 wavelengths” and not with the entirety of the “supercontinuum white light pulse.” Mot. at 18. 20 On the other hand, Michigan argues that under the “plain meaning of the [limitation]” 21 “[t]he claims would [] encompass Leica’s purported [eight] excitation lines.” Opp’n at 4–6. 22 Moreover, Michigan argues that Leica mischaracterizes both the specification of the ’169 Patent 23 and the patent’s prosecution history. Id. at 6–14. Michigan protests that Leica’s “entire argument 24 25 2 The other independent claims from the ’169 Patent are claims 10 and 19. Claim 10 recites an 26 identical limitation as to that in claim 1. ’169 Patent col. 8:29–31. Claim 19 features an analogous limitation that recites “said supercontinuum white light pulse exciting the first 27 fluorophore and the second fluorophore to emit a first florescence and a second fluorescence respectively.” Id. at col. 9:5–8. 1 in its motion to dismiss” is an improper attempt at premature claim construction. Id. at 8–9. 2 Although Leica argues that “[n]o claim construction is needed,” Reply at 2, the Court 3 disagrees. Leica’s motion to dismiss would require the Court to decide whether the 4 supercontinuum white light limitation requires all or only a portion of the “supercontinuum white 5 light pulse” to physically reach and excite the fluorophores in the sample. See Mot. at 18; Opp’n 6 at 9. Leica’s argument for dismissal is fundamentally an issue of claim construction. See 7 Clearstream Wastewater Sys. V. Hydro-Action, 206 F.3d 1440, 1444 (Fed. Cir. 2000) (“[C]laim 8 construction [is where] the scope and meaning of the patent claims asserted are determined.”); 9 United States Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568 (Fed. Cir. 1997) (“Claim 10 construction is a matter of resolution of disputed meanings and technical scope.”). Thus, 11 unsurprisingly, both parties rely on the claim language, the specification, and the prosecution 12 history of the ’169 Patent to justify their respective interpretations of the supercontinuum white 13 light limitation and argue whether this construction could encompass Leica’s SP8 microscopes. 14 See Mot. at 19–20; Opp’n at 4–8; Reply at 6–10. 15 These arguments, and this type of evidence, are more appropriately presented during claim 16 construction. See Phillips v. AWH Corp., 415 F.3d 1303, 1314–19 (Fed. Cir. 2005) (describing 17 claim construction as heavily dependent on “intrinsic evidence,” which includes the claims 18 themselves, the patent’s specification, and the patent’s prosecution history). By contrast, it is 19 inappropriate to resolve a claim construction dispute on a motion to dismiss for failure to state a 20 claim of infringement for at least three reasons. First, this District's Patent Local Rules establish 21 the proper procedure for claim construction proceedings. See Patent L.R. 4. Under Patent Local 22 Rule 4, claim construction proceeds in an orderly fashion after the parties disclose their asserted 23 claims, infringement contentions, and invalidity contentions. 24 Second, an assessment of claim construction often requires the consideration of extrinsic 25 evidence—such as expert reports—which are not generally considered on a motion to dismiss for 26 failure to state a claim. “The words of a claim are generally given their ordinary and customary 27 meaning as understood by a person of ordinary skill in the art in question at the time of the 1 invention.” Kara Tech. Inc. v. Stamps.com Inc., 582 F.3d 1341, 1345 (Fed. Cir. 2009) (citation 2 omitted). “Because the meaning of a claim term as understood by persons of skill in the art is 3 often not immediately apparent, and because patentees frequently use terms idiosyncratically, the 4 court looks to those sources available to the public that show what a person of skill in the art 5 would have understood disputed claim language to mean.’” Id. at 1314 (quotation marks omitted). 6 “Those sources include the words of the claims themselves, the remainder of the specification, the 7 prosecution history, and extrinsic evidence concerning relevant scientific principles, the meaning 8 of technical terms, and the state of the art.’” Id. (quotation marks and citations omitted). 9 Third, even if the Court adopted a construction favorable to Leica, the Court would still 10 need to assess infringement, which itself is “a question of fact.” Bd. of Regents v. BENQ Am. 11 Corp., 533 F.3d 1362, 1367 (Fed. Cir. 2008). Fact disputes, such as the question of infringement, 12 are inappropriate for a Court to resolve on a motion to dismiss, where a court must resolve factual 13 disputes in favor of the plaintiff. See Manzarek, 519 F.3d at 1031 (“[A court must] accept factual 14 allegations in the complaint as true and construe[s] the pleadings in the light most favorable to the 15 nonmoving party.”). 16 Along these lines, both the Federal Circuit and this Court have held that a claim 17 construction dispute is not appropriate to resolve on a motion to dismiss for failure to state a claim 18 of infringement. For instance, in Nalco Co. v. Chem-Mod, LLC, the Federal Circuit reversed a 19 district court’s dismissal of a patent infringement case because the defendants’ “objections to [the 20 plaintiff’s] proposed claim construction [was] a dispute not suitable for resolution on a motion to 21 dismiss.” 883 F.3d 1337, 1349 (Fed. Cir. 2018). In Nalco, the district court dismissed the 22 plaintiff’s claims because the district court “concluded that the ‘[accused product] differ[ed] from 23 the [asserted patent claims] in both the location and method of application.’” Id. at 1347. On 24 appeal, plaintiff argued that the “district court must have [implicitly] construed” a disputed claim 25 term, which plaintiff argued on appeal “was inappropriate at the Rule 12(b)(6) stage.” Id. In 26 reversing the district court, the Federal Circuit found that plaintiff’s infringement theory rested on 27 a plausible interpretation of the disputed term and that “[d]efendants’ objections to [plaintiff’s] 1 theory of infringement read like classic Markman [claim construction] arguments.” Id. at 1349. 2 As such, the Federal Circuit concluded that “[d]efendants’ arguments boil down to objections to 3 [plaintiff’s] proposed claim construction,” which the panel held was “not appropriate to 4 resolve . . . on a Rule 12(b)(6) motion, without the benefit of claim construction.” Id. at 1350. 5 Similarly, in Fujitsu Ltd. v. Belkin Int’l, Inc., this Court held that “[c]laim construction and 6 infringement analysis should not be resolved on a motion to dismiss.” 782 F. Supp. 2d 868, 890 7 (N.D. Cal. 2011). There, the defendants argued in a motion to dismiss that defendants’ product 8 could not plausibly infringe the asserted patent because “in order to infringe the [patent], they 9 must operate three separate and distinct devices.” Id. at 886. In opposition, plaintiff argued that 10 defendants’ “argument rest[ed] on an erroneous construction” of the claims and that infringement 11 could occur “with only a single device.” Id. In ruling on the motion to dismiss, the Court found 12 that the “[dispositive] issue turn[ed] on claim construction” and that defendants’ briefing largely 13 amounted to an argument on the scope of the patent’s claims. Id. at 889. As such, the Court 14 found that “[i]f the Court were to construe the [patent’s] claims at the motion to dismiss stage, it 15 would be starting the process of evaluating the merits of [plaintiff’s] case.” Id. Accordingly, the 16 Court ruled that defendants’ motion was “not the proper time to initiate claim construction.” Id. at 17 890. 18 Other district courts have similarly denied motions to dismiss that would require the court 19 to construe claims and resolve questions of infringement. Opp’n at 14–15; see, e.g., Par Pharm., 20 Inc. v. Hospira, Inc., No. 17-944-JFB-SRF, 2018 WL 3343238, at *3 (D. Del. May 11, 2018) 21 (“Because construction of the disputed claim term is critical to the viability of [Plaintiff’s] 22 infringement contentions, the court cannot properly render a dispositive decision on infringement 23 prior to the issuance of a Markman ruling in the present case.”); Pressure Specialist, Inc. v. Next 24 Gen Mfg., No. 17-CV-6582, 2018 WL 572834, at *5 (N.D. Ill. Jan. 24, 2018) (“[T]he Court will 25 not ‘engage in an infringement analysis at the pleading stage’ or attempt to analyze—before any 26 claim construction—the scope of the patent or the differences between the [accused product] and 27 Plaintiff’s [claim].” (quoting Lecat’s Ventriloscope v. MT Tool & Mfg., No. 16-C-5298, 2017 WL 1 1362036, at *5 (N.D. Ill. Jan. 6, 2017)); Anglefix Tech, LLC v. Nuvasive, Inc., No. 13-CV-983- 2 BEN (RBB), 2014 WL 197736, at *2–3 (S.D. Cal. Jan. 14, 2014) (“[Defendant’s] [m]otion must 3 fail because its argument requires this Court to construe key terms in the patent at the pleading 4 stage.”); Deston Therapeutics LLC v. Trigen Labs., Inc., 723 F. Supp. 2d 665, 672 (D. Del. 2010) 5 (“While it is true that claim construction is a matter of law to be determined by the Court, the 6 process for properly construing a patent claim is unsuited for a motion to dismiss.”). 7 However, the Federal Circuit has created a narrow exception when an infringement theory 8 rests on an implausible claim construction. Specifically, in Ottah v. Fiat Chrysler, the Federal 9 Circuit affirmed a district court’s dismissal of a pro se plaintiff’s claim of patent infringement. 10 884 F.3d 1135, 1141–42 (Fed. Cir. 2018). There, the district court had found that the asserted 11 patent contained “no claim that c[ould] be plausibly construed” to cover the defendants’ product. 12 Id. Specifically, the complaint alleged that the patent’s claim, which was to a “book holder,” 13 covered the defendants’ camera even though the patent “d[id] not mention a camera or recite 14 typical functions or components of a camera.” Id. at 1141. In affirming the district court, the 15 Federal Circuit held that the “[asserted] claim . . . is explicitly limited to books” and that “the 16 ‘book holder’ cannot plausibly be construed to include [defendants’ device].” Id. at 1141–42. 17 Here, Leica attempts to get around Nalco and Fujitsu by simply arguing that Michigan’s 18 “infringement allegations rest on an unreasonable view of the claim language.” See Reply at 2. 19 As such, Leica argues that Ottah applies to the current case, rather than Nalco or Fujitsu. See id. 20 at 10–11. The Court disagrees. 21 Contrary to Leica’s assertion, Michigan identifies language in the claims and in the 22 specification to argue that the disputed limitation does not require the entirety of the 23 “supercontinuum white light pulse” to reach and excite the fluorophores in the samples. See 24 Opp’n at 4–8. Specifically, Michigan argues that “‘said supercontinuum white light pulse exciting 25 the plurality of fluorophores of the sample to emit fluorescence’ refers to the fact that the light that 26 excites the fluorophores . . . is supplied by, and must originate at, the ‘single-source white light 27 generation system.’” Id. at 6. Michigan explains that “[t]he plain language of the claims requires 1 a single-source of white light that supplies the light for excitation regardless of whether one or 2 hundreds of wavelengths reach the sample as the purpose of that portion of the invention was to 3 eliminate the need for multiple lasers.” Id. At this juncture, the Court cannot agree that it is 4 implausible that a person of ordinary skill in the art could understand the limitation’s recitation of 5 a “supercontinuum white light pulse exciting the [] fluorophores” to mean that the supercontinuum 6 of white light merely provides the source of light to excite the fluorophores, as Michigan argues, 7 rather than that the full spectrum of light must excite the fluorophores, as Leica argues. See ’169 8 Patent col. 7:45–50. 9 Accordingly, the instant case is readily distinguishable from Ottah. In Ottah, the Federal 10 Circuit found that the patentee’s claim was facially implausible because it attempted to stretch a 11 patent claim for a “book holder” to cover a “camera,” which was entirely absent and distinct from 12 the patented invention. Ottah, 884 F.3d at 1141–42. By contrast, Leica merely disputes 13 Michigan’s plausible interpretation of a claim term. Opp’n at 4–8. Unlike Ottah, the instant case 14 presents legal questions as to the interpretation of the supercontinuum white light limitation and 15 factual questions as to whether the SP8 microscopes infringe. As such, in contrast to Ottah, the 16 Court here requires a complete record with which to decide questions of claim construction and 17 infringement. Ottah is inapposite. 18 Therefore, the Court finds that Leica’s motion to dismiss for noninfringement amounts to 19 an objection to Michigan’s plausible interpretation of a disputed claim limitation, which the Court 20 finds premature to resolve at this point. Accordingly, Nalco and Fujitsu are on all fours with this 21 case. As a result, as in Nalco and Fujitsu, the Court declines to construe the scope of the disputed 22 limitation “without the benefit of claim construction.” Nalco, 883 F.3d at 1350. Moreover, 23 because the Court finds that claim construction of the supercontinuum white light limitation is 24 premature, the Court finds that it is unnecessary to assess and weigh the prosecution history of the 25 ’169 Patent. Because the Court does not evaluate the ’169 Patent’s prosecution history at this 26 27 1 time, the Court DENIES Leica’s motion to take judicial notice of the prosecution history.3 ECF 2 No. 17-2. 3 In sum, because Leica does not dispute that the SP8 microscopes infringe under 4 Michigan’s interpretation of the supercontinuum white light limitation, and because the Court 5 finds Michigan’s interpretation of this limitation plausible, the Court concludes that Michigan has 6 adequately pled literal direct infringement. Accordingly, the Court DENIES Leica’s motion to 7 dismiss Michigan’s claim of literal direct infringement. 8 2. Infringement Under the Doctrine of Equivalents 9 The Court next turns to Leica’s argument that Michigan fails to state a claim of 10 infringement under the doctrine of equivalents. Specifically, Leica argues that “any allegation of 11 infringement under the doctrine of equivalents is precluded by prosecution history estoppel.” Mot. 12 at 21. However, “[p]rosecution history estoppel applies as a limitation to the doctrine of 13 equivalents after the claims have been properly interpreted and no literal infringement is found.” 14 GE Co. v. Nintendo Co. Ltd., 179 F.3d 1350, 1362 (Fed. Cir. 1999) (quoting Loctite Corp. v. 15 Ultraseal Ltd., 781 F.2d 861, 870 (Fed. Cir. 1985)). As discussed above, courts regularly decline 16 to reach arguments about infringement under the doctrine of equivalents where literal infringement 17 has been sufficiently established. See, e.g., Cheese Sys., Inc., 725 F.3d at 1349. Accordingly, 18 because the Court found that Michigan sufficiently pleaded literal infringement, the Court need 19 not reach any of Leica’s arguments concerning infringement under the doctrine of equivalents. 20 Accordingly, the Court DENIES Leica’s motion to dismiss Michigan’s claim of direct 21 infringement under the doctrine of equivalents. 22 23 3 The Court also notes that Michigan filed an objection to Leica’s inclusion of and reliance on a 24 provisional patent application in Leica’s reply brief. See ECF No. 46. However, because the Court denies Leica’s request for judicial notice as to the ’169 Patent’s prosecution history, and 25 because the provisional application is part of the ’169 Patent’s prosecution history, the Court need not separately address Michigan’s objection. See, e.g., L.A. Biomedical Research Inst. at Harbor- 26 UCLA Med. Ctr. v. Eli Lilly Co., 849 F.3d 1049, 1063 (Fed. Cir. 2017) (assessing a provisional patent application as part of a patent’s prosecution history). Accordingly, Michigan’s objection is 27 OVERRULED. Similarly, Leica’s motion seeking review of Michigan’s objection is DENIED as moot. ECF No. 50. ' B. Indirect Infringement 5 Michigan alleges that Leica indirectly infringes the ’169 Patent through induced
3 infringement and contributory infringement. See Compl. §] 40-43. However, Leica’s arguments 4 regarding indirect infringement merely restate Leica’s arguments regarding direct infringement, 5 and Leica does not offer any independent reason why the Court should dismiss Michigan’s ‘ remaining claims. See Mot. at 23 (“Because the Complaint does not state a plausible claim for
4 direct infringement for the reasons discussed above, there can be no indirect infringement as a
matter of law.”). Therefore, because the Court already rejected Leica’s arguments concerning 9 direct infringement as discussed above, the Court DENIES Leica’s motion to dismiss with respect 10 to indirect infringement. C. Willful Infringement Finally, Michigan alleges that Leica’s direct and indirect infringement warrant enhanced 3 damages because the infringement was willful. See Compl. 46-52. Leica merely argues that 4 Michigan’s willful infringement claim fails “[b]ecause the Complaint does not state a plausible 3 15 claim for direct infringement.” See Mot. at 23 (“[I]t is axiomatic that in the absence of 6 infringement there can be no willful infringement.”). Therefore, because the Court already § rejected Leica’s arguments concerning direct infringement as discussed above, the Court DENIES 5 18 Leica’s motion to dismiss with respect to willful infringement. 19 IV. CONCLUSION
50 For the foregoing reasons, the Court DENIES Leica’s motion to dismiss.
IT ISSO ORDERED.
22 33 Dated: April 30, 2020 i bh. 24 LUCY d KOH 5 United States District Judge 26 27 28 16 Case No. 19-CV-07470-LHK