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Exergen Corp. v. Brooklands Inc.

United States District Court, D. Massachusetts

August 28, 2015

EXERGEN CORPORATION, Plaintiff,
v.
BROOKLANDS INC., Defendant

Page 308

          For Exergen Corporation, Plaintiff: Kerry L. Timbers, Robert M. Asher, LEAD ATTORNEY, Brandon T. Scruggs, Joel R. Leeman, Sharona H. Sternberg, Sunstein Kann Murphy & Timbers LLP, Boston, MA.

         For Brooklands Inc., Defendant: James J. Lukas, Jr., Matthew J. Levinstein, LEAD ATTORNEY, PRO HAC VICE, Zachary C. Kleinsasser, Greenberg Traurig, LLP, Chicago, IL; Richard D. Harris, LEAD ATTORNEY, PRO HAC VICE, Law Offices of Dick and Harris, Chicago, IL.

         For Brooklands Inc., Counter Claimant: James J. Lukas, Jr., LEAD ATTORNEY, PRO HAC VICE, Zachary C. Kleinsasser, Greenberg Traurig, LLP, Chicago, IL; Richard D. Harris, LEAD ATTORNEY, PRO HAC VICE, Law Offices of Dick and Harris, Chicago, IL.

         For Exergen Corporation, Counter Defendant: Kerry L. Timbers, Robert M. Asher, LEAD ATTORNEY, Brandon T. Scruggs, Joel R. Leeman, Sharona H. Sternberg, Sunstein Kann Murphy & Timbers LLP, Boston, MA.

Page 309

          MEMORANDUM AND ORDER

         DOUGLAS P. WOODLOCK, UNITED STATES DISTRICT JUDGE.

         In this action, Exergen Corporation alleges that Brooklands, Inc. has infringed United States Patent No. 7,787,938 (" '938 patent" ) by selling infrared thermometers. Brooklands moves for summary judgment on the affirmative defenses that the

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'938 patent is invalid under 35 U.S.C. § 101 (unpatentable subject matter), § 102 (anticipation), and § 103 (obviousness). Brooklands also moves for Rule 11 sanctions against Exergen and its counsel, Sunstein Kann Murphy & Timbers LLP (" Sunstein" ).

         I. BACKGROUND

         Exergen asserts that Brooklands has infringed two method claims of the '938 patent, which is entitled " Temporal Artery Temperature Detector." These are claims 51 and 54.

         Claim 51 of the '938 patent claims: " A method of detecting human body temperature comprising: measuring temperature of a region of skin of the forehead; and processing the measured temperature to provide a body temperature approximation based on heat flow from an internal body temperature to ambient temperature."

         Claim 54 of the '938 patent claims: " A method of detecting human body temperature comprising: measuring radiation as target skin surface of the forehead is viewed, and processing the measured radiation to provide a body temperature approximation based on heat flow from an internal body temperature to ambient temperature."

         Exergen's CEO, Dr. Francesco Pompei, is the named inventor of the '938 patent as well as of numerous other patents held by Exergen related to thermometry. The '938 patent, which issued on January 25, 2008, is a continuation of an application previously filed on September 11, 1998, and it references twenty-five of Dr. Pompei's own patents. Two of these patents are Patent No. 5,012,813 ('813), issued May 7, 1991, and Patent No. 5,653,238 ('238), issued August 5, 1997, which include claims directed to a radiation-detecting machine designed primarily to take measurements at the ear's tympanic membrane and convert it to internal body temperature. As discussed below, however, those two patents also included broader claims about measuring a target of biological surface tissue.

         Exergen previously brought suit against manufacturers of forehead thermometers in Exergen Corp. v. Wal-Mart Stores, Inc., No. 01-cv-11306-RCL (D. Mass.), consolidated with Exergen Corp. v. CVS Corp., No. 02-cv-10436-RCL (D. Mass.), which included allegations that the defendants were manufacturing forehead thermometers that infringed certain Exergen patents -- including the '813 and '238 patents, as well as Patent No. 6,319,206 (" '206 patent" ) -- claiming a method and various devices for measuring temperature at the forehead. See Exergen Corp. v. Wal-Mart Stores, Inc., 575 F.3d 1312 (Fed. Cir. 2009)(reversing jury finding of infringement of '813 patent). Exergen brought a similar claim in Exergen Corp v. Kidz-Med, Inc., No. 1:08-cv-11416-DPW (D. Mass.) During the prior litigation, Exergen and Dr. Pompei made a number of statements about the language of these prior patents, which will be discussed below.

         In this case, Brooklands filed a motion before claim construction for summary judgment of invalidity due to unpatentable subject matter under 35 U.S.C. § 101. This case thereafter was consolidated with two other pending matters for claim construction before Judge Stearns, who issued a claim construction decision on August 15, 2014. Exergen v. Brooklands, Inc., 2014 WL 4049879 (D. Mass. August 15, 2014).[1] The claim construction provided by

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Judge Stearns largely tracks the plain language of the claims themselves. The parties agreed that the term " human body temperature" should be constructed as " the core temperature of a human being," and Judge Stearns construed " body temperature approximation" to mean " a temperature approximating human body temperature encompassing all such possible temperatures." Id. at *9.

         After the claim construction, Brooklands filed additional motions for summary judgment on the issues of patent validity under 35 U.S.C. § § 102 and 103. Partial discovery, specifically document production, had already occurred prior to the filing of these motions. Brooklands moved, however, for a stay of further discovery, which I have granted, pending resolution of these motions.

         II. ANALYSIS

         A. Standard of Review

         Summary judgment is proper only when the movant shows that there is " no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law." Fed.R.Civ.P. 56. All reasonable inferences must be drawn in favor of the nonmovant, Exergen.

         All patents are entitled to a presumption of validity. 35 U.S.C. § 282; see also Minnesota Min. & Mfg. Co. v. Chemque, Inc., 303 F.3d 1294, 1301 (Fed. Cir. 2002) (" An issued patent is presumed valid and the burden is on the party challenging the validity of a patent to show that it is invalid by clear and convincing evidence." ) Whether an inquiry into patentable subject matter under § 101 is subject to the same presumption of validity has recently become a matter of debate. Historically, § 101 analysis for patentable subject matter has been assessed with a presumption of validity. See CLS Bank Intern. v. Alice Corp. Pty. Ltd., 717 F.3d 1269, 1284 (Fed. Cir. 2013), aff'd 134 S.Ct. 2347, 82 L.Ed.2d 296, 189 L.Ed.2d 296 (2014) (" as with obviousness and enablement, that presumption applies when § 101 is raised as a basis for invalidity in district court proceedings." ).

         In a concurring opinion in Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709 (Fed. Cir. 2014)(Mayer, J. concurring), Judge Mayer noted that because recent Supreme Court decisions make clear that the Patent and Trademark Office has " for many years applied an insufficiently rigorous subject matter eligibility standard, no presumption of eligibility should attach when assessing whether claims meet the demands of section 101." Id. at 720. He further observed that the Supreme Court has not mentioned or applied any presumption of eligibility in § 101 cases in recent years. Id. at 720-21. In Microsoft Corp. v. i4i Ltd. Partnership, 564 U.S. 91, 131 S.Ct. 2238, 2242-43, 180 L.Ed.2d 131 (2011), the Supreme Court discussed the requirement that patent invalidity be shown by clear and convincing evidence due to the presumption of validity. In its discussion, the court did not distinguish § 101 from § § 102 and 103, which are plainly covered by the presumption. Id. Justice Breyer suggested in his concurring opinion that the " clear and convincing" standard arising from the presumption of validity applies only when a court is considering questions of fact, not questions of

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law. Id. at 2253. Whether the claims at issue here contain patentable subject matter is a question of law, see In re Roslin Institute, 750 F.3d 1333, 1335 (Fed. Cir. 2014), albeit one that may build on factual determinations. Given the plain language of 35 U.S.C. § 282 which codifies a general presumption of validity and the fact that no Supreme Court or Federal Circuit majority has disavowed the presumption of validity for § 101, I will apply the heightened standard to all three validity sections, although I agree with Justice Breyer that the presumption has less significance in the context of a largely legal determination.

         In evaluating this motion for summary judgment, I must view the record " through the prism of the evidentiary standard of proof that would pertain at a trial on the merits . . . Thus, a moving party seeking to invalidate a patent at summary judgment must submit such clear and convincing evidence of invalidity so that no reasonable jury could find otherwise." Eli Lilly Co. v. Barr Labs., Inc., 251 F.3d 955, 962 (Fed. Cir. 2001)(citations omitted).

         B. Unpatentable Subject Matter under Section 101

         The statute outlining patentable subject matter, 35 U.S.C. § 101, contains broad language. It provides: " Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title." The Supreme Court has held that based on the use of the term " any" in the statute, " Congress plainly contemplated that the patent laws would be given wide scope." Bilski v. Kappos, 561 U.S. 593, 130 S.Ct. 3218, 3225, 177 L.Ed.2d 792 (2010)(quoting Diamond v. Chakrabarty, 447 U.S. 303, 308, 100 S.Ct. 2204, 65 L.Ed.2d 144 (1980)). The term " process" is defined by the Patent Act to mean " process, art, or method, and includes a new use of a known process, machine, manufacture, composition of matter, or material." 35 U.S.C. § 100(b). Claims 51 and 54 in the '938 patent are method claims.

         Courts have long held that § 101 " 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, 134 S.Ct. 2347, 2354, 82 L.Ed.2d 296, 189 L.Ed.2d 296 (2014). An experienced Federal Circuit panel member thereafter criticized the Federal Circuit's own prior interpretation of § 101 as a " coarse filter" not designed to limit significantly what is eligible for a patent, and suggested instead that courts have a significant and active role to play at the § 101 analysis stage. Ultramercial, 772 F.3d 709, 2014 WL 5904902 at *10 (Mayer J., concurring). Such a realignment of approach has been prompted by a number of Supreme Court decisions in recent years requiring courts to conduct a more probing and demanding § 101 subject matter eligibility analysis than before. See, e.g., Alice Corp., 134 S.Ct. at 2354-55; Ass'n for Molecular Pathology v. Myriad Genetics, Inc., 133 S.Ct. 2107, 2116, 186 L.Ed.2d 124 (2013); Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S.Ct. 1289, 1293-94, 182 L.Ed.2d 321 (2012). Nevertheless, at the same time the concept of rigorous § 101 analysis has been expanding, the Supreme Court has reaffirmed that exceptions to patentability cannot be read too broadly because " all inventions at some level embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas." Mayo, 132 S.Ct. at 1293.

         The Supreme Court reaffirmed in Alice Corp, 134 S.Ct. at 2355, that the two-part framework for § 101, drawn from

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its earlier decision in Mayo, 132 S.Ct. at 1296-97, controls the analysis of whether the subject matter of a particular claim is eligible to be patented.[2] Under this framework, a court must first " determine whether the claims at issue are directed to one of those patent-ineligible concepts" and, if so, whether the claims include " an element or combination of elements that are 'sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.'" Alice, 134 S.Ct. at 2355 (quoting Mayo, 132 S.Ct. at 1294).

         The first part of the inquiry is easily resolved and essentially undisputed here. The claims in the '938 patent clearly are directed to a law of nature. The language of the " processing" step of claims 51 and 54 states that they process " the measured temperature [/radiation] to provide a body temperature approximation based on heat flow from an internal body temperature to ambient temperature." The claim construction did not change this language. Exergen acknowledges, as it must based on the language of the claim, that the " process" step of the claims involves the application of mathematical formulas that model heat transfer principles. Mathematical formulas are quintessential laws of nature that, standing alone, may not be patented. Mayo 132 S.Ct. at 1303 (" the cases have endorsed a bright-line prohibition against patenting laws of nature, mathematical formulas and the like . . ." ). As the Supreme Court held in Mayo, " if a law ...


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