Waters Corporation v. Agilent Technologies Inc.

CourtDistrict Court, D. Delaware
DecidedSeptember 20, 2019
Docket1:18-cv-01450
StatusUnknown

This text of Waters Corporation v. Agilent Technologies Inc. (Waters Corporation v. Agilent Technologies Inc.) is published on Counsel Stack Legal Research, covering District Court, D. Delaware primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Waters Corporation v. Agilent Technologies Inc., (D. Del. 2019).

Opinion

IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE

WATERS CORPORATION AND ) WATERS TECHNOLOGIES ) CORPORATION, ) ) Plaintiffs, ) ) v. ) C.A. No. 18-1450 (MN) ) AGILENT TECHNOLOGIES INC., ) ) Defendant. ) ) ) )

MEMORANDUM OPINION

Karen L. Pascale, Robert M. Vrana, YOUNG CONAWAY STARGATT & TAYLOR LLP, Wilmington, DE; Matthew M. Wolf, David McMullen, Jennifer A. Sklenar, Katie J.L. Scott, ARNOLD & PORTER KAYE SCHOLER LLP – attorneys for Plaintiffs

Chad M. Shandler, Travis S. Hunter, RICHARDS, LAYTON & FINGER, P.A., Wilmington, DE; Anne Elise Herold Li, James K. Stronski, Mark Jansen, Molly Jones, Chiemi Suzuki, CROWELL & MORING LLP – attorneys for Defendants

September 20, 2019 Wilmington, Delaware NOREIKA, U.S. DISTRICT JUDGE: Presently before the Court is the motion of Plaintiffs Waters Corporation and Waters Technologies Corporation (collectively, “Plaintiffs” or “Waters”) for preliminary injunction seeking to enjoin Defendant “Agilent [Technologies Inc. (“Defendant” or “Agilent’)] and their officers, partners, agents, servants, employees, parents, subsidiaries, divisions, affiliate corporations, other related business entities and all other persons acting in concert, participation, or in privity with them” from “any commercial manufacture, use, offer to sell, or sale within the United States, or importation into the United States, of the InstantPC glycan reagent, and any product that is similar to or only colorably different from that product.” (D.I. 7). Defendant opposes the motion. (D.I. 18). The Court has reviewed the briefing, declarations and exhibits (e.g., D.L. 7, 8, 9, 10, 11, 12, 13, 18, 19, 20, 21, 23, 24, 27, 36, 37, 38, 41, 71, 72, 73, 77, 78, 81) and held oral argument on December 21, 2018. For the reasons set forth below, the Court DENIES Plaintiffs’ motion. This opinion constitutes the Court’s findings of fact and conclusions of law pursuant to Federal Rule of Civil Procedure 52(a). I. BACKGROUND Plaintiffs develop “analytical solutions . . . to support its customers’ scientific discoveries, operations, performance, and regulatory compliance.” (D.I. 12 at] 8). In particular, Plaintiffs sell the “GlycoWorks RapiFluor-MS N-Glycan Kit” (“GlycoWorks Kit”) which they assert “‘enables unprecedented fluorescent and mass spectrometric performance for glycan detection while also improving the speed and simplicity of N-glycan sample preparation.” (D.I. 8 at 3 (citing D.I. 12 at 10-11)). The chemical structure of the labeling reagent in the GlycoWorks Kit is (D.I. 13 at q 16):

ok Zl wl Ms

Plaintiffs’ GlycoWorks kits make up approximately 75 to 80% of the market for such products. (D.I. 11 at 98; DI. 12 at 14). Plaintiffs also sell mass spectrometry reagents and instruments to be used in conjunction with the GlycoWorks Kit. (D.I. 12 at ¥ 11). Defendant, through its 2018 acquisition of acompany called ProZyme, manufactures products containing InstantPC glycan reagents, which like the GlycoWorks Kit, are used to assist in the detection and labeling of compounds, including for identification of glycosylated proteins during the development of biopharmaceuticals or biologics. (D.I. 18 at 4). The chemical structure of the labeling reagent in InstantPC is Ud.; see also D.I. 19 at ¥ 10):

~~ □ Ao 6 ProZyme announced its development of InstantPC in May of 2015,' and began selling InstantPC in October of 2015. (D.1.19 at Jf] 10, 14). As of December of 2018, ProZyme’s InstantPC reagent products had approximately 20 to 25% of the market. (D.I. 11 at 48; D.I. 12 at {| 14). Defendant sells mass spectrometry reagents and instruments, which according to Plaintiffs will be marketed and used in conjunction with InstantPC. (See D.I. 12 at ff 17-18).

The announcement included the structure of the labelling reagent in InstantPC. (D.I. 19 at 4] 10).

On January 14, 2013, Plaintiffs obtained the exclusive license (“Patent License Agreement”) to U.S. Patent No. 9,658,234 (“the ’234 Patent”)2 from Ajinomoto Co., Inc. (“Ajinomoto”) of Tokyo, Japan. (Id. at ¶ 13). The ‘234 Patent, a continuation of patent applications filed by Ajinomoto, issued on May 23, 2017. (D.I. 8 at 4). On August 7, 2018, Ajinomoto assigned

its rights and interests in the ’234 Patent to Waters Technologies Corporation. (D.I. 8 at 4). On September 18, 2018, Plaintiffs filed this patent infringement action, alleging infringement of the ’234 patent by Agilent “via the manufacture, use, sale, offer to sell, exportation, and/or importation, in whole or in part, of Agilent’s InstantPC reagent.” (D.I. 1 at ¶ 2). II. LEGAL STANDARD Preliminary injunctive relief is an “extraordinary” remedy appropriate only in “limited circumstances.” Kos Pharm., Inc. v. Andrx Corp., 369 F.3d 700, 708 (3d Cir. 2004); see also Intel Corp. v. ULSI Sys. Tech., Inc., 995 F.2d 1566, 1568 (Fed. Cir. 1993) (“[A] preliminary injunction is a drastic and extraordinary remedy that is not to be routinely granted.”). A preliminary injunction may be granted only if the moving party shows (1) a likelihood of success on the merits,

(2) irreparable harm is likely if an injunction is not granted, (3) the balance of equities tips in favor of the moving party, and (4) an injunction is in the public interest. See Winter v. Nat. Res. Def. Council, Inc., 555 U.S. 7, 20 (2008); see also Osorio-Martinez v. Attorney Gen. United States of Am., 893 F.3d 153, 178 (3d Cir. 2018); Altana Pharma AG v. Teva Pharm. USA, Inc., 566 F.3d 999, 1005 (Fed. Cir. 2009). “These factors, taken individually, are not dispositive; rather, the district court must weigh and measure each factor against the other factors and against the form and magnitude of the relief requested.” Hybritech, Inc. v. Abbott Labs., 849 F.2d 1446, 1451 (Fed.

2 The ’234 Patent is attached as Exhibit 1 to the McMullen Declaration (D.I. 9). For purposes of this opinion the Court will refer to that patent itself rather than to its docket number. Cir. 1988). The Court, however, cannot grant a preliminary injunction unless the moving party establishes both a likelihood of success on the merits and the existence of irreparable harm without the injunctive relief. Amazon.com, Inc. v. Barnesandnoble.com, Inc., 239 F.3d 1343, 1350 (Fed. Cir. 2001). “[A]ll findings of fact and conclusions of law at the preliminary injunction stage are

subject to change upon the ultimate trial on the merits.” Purdue Pharma L.P. v. Boehringer Ingelheim GmbH, 237 F.3d 1359, 1363 (Fed. Cir. 2001). III. DISCUSSION Plaintiffs assert that “Agilent is infringing several claims of the ’234 Patent,” but for purposes of its motion, it has focused on “independent claims 1 and 6.” (D.I. 8 at 7).3 The Court begins its analysis by addressing the first preliminary injunction factor – i.e., likelihood of success on the merits – in the context of the asserted claims and defenses. A. Likelihood of Success

“With regard to the first factor – establishing a likelihood of success on the merits – the patentee seeking a preliminary injunction in a patent infringement suit must show that it will likely prove infringement, and that it will likely withstand challenges, if any, to the validity of the patent.” Titan Tire Corp. v.

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