Optigen, LLC v. Int'l Genetics, Inc.
877 F. Supp. 2d 33
N.D.N.Y.2012Background
- Optigen, LLC filed consolidated patent infringement actions against PinPoint DNA Technologies, Inc., InGen, and Richard B. Dobbins, with Genetic Fulfillment USA, Inc. as a defendant in one action.
- Two motions before the court: Optigen’s motion for partial summary judgment on several claims, and defendants’ motion to strike that motion and accompanying expert declaration.
- Plaintiff asserts six claims: direct patent infringement and inducement under 35 U.S.C. § 271(a),(b) for PinPoint and Dobbins; similar claims against InGen and Dobbins; Lanham Act misrepresentation; NY unfair competition; and Dobbins’ individual liability.
- The patents in suit are U.S. Patent No. 5,804,388 ('388) and U.S. Patent No. 7,312,037 ('037) relating to PRCD genetic testing in dogs; Cornell Research Foundation is the assignee and Optigen the exclusive licensee.
- Defendants operated PRCD testing via PinPoint’s Pawsitive I.D. service and later via InGen (Bahamas) with Genetic handling shipping and testing workflows involving U.S. and Bahamian components.
- Key undisputed facts include Dobbins’ control of PinPoint and InGen, InGen’s offshore operation, and the flow of samples and kits between Georgia, the Bahamas, and offshore labs.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Infringement liability under §271(a) | PinPoint/InGen/Dobbins infringe the '388/'037 patents in the U.S. | Testing occurs offshore; offshore testing insulates from U.S. patent liability. | Denied; disputes of material fact and sufficiency prevent summary judgment. |
| Lanham Act misrepresentation | Defendants made false statements about operations and patent status harming Optigen. | Statements were truthful or non-actionable; some mischaracterizations not proven. | Granted in part; second, third, and fourth statements support Lanham Act liability; first and fifth do not. |
| Unfair competition under New York law | Defendants used plaintiff’s IP to divert business and compete unlawfully. | No actionable infringement or misappropriation proven; no competition link shown. | Denied; insufficient proof of unauthorized reproduction and market disruption. |
| Successor liability (de facto merger/mere continuation) | InGen’s purchase of PinPoint constitutes de facto merger or mere continuation. | No conclusive evidence of merger-like continuity or liability transfer. | Denied; genuine disputes of material fact on continuity and liability transfer. |
| Individual liability of Dobbins | Dobbins dominates both corporations and should be personally liable. | Domination alone is insufficient to pierce the corporate veil; no misuse shown. | Denied; no admissible record evidence showing personal wrongdoing to justify veil piercing. |
Key Cases Cited
- Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996) (claim construction is a two-step process in patent cases)
- Laitram Corp. v. Rexnord, Inc., 939 F.2d 1533 (Fed. Cir. 1991) (to prove infringement, every limitation must be met exactly or by equivalent)
- Time Warner Cable, Inc. v. DIRECTV, Inc., 497 F.3d 144 (2d Cir. 2007) (literal falsehood creates presumptive consumer deception)
- Schering Corp. v. Pfizer, Inc., 189 F.3d 218 (2d Cir. 1999) (extrinsic evidence required for implied deception in Lanham Act claims)
- In re New York City Asbestos Litig., 15 A.D.3d 254 (N.Y. App. Div., 1st Dep’t 2005) (de facto merger factors and continuity of ownership guide successor liability)
- Schumacher v. Richards Shear Co., Inc., 59 N.Y.2d 239 (N.Y. 1983) (mere continuation requires one surviving entity; dissolution not necessary for some factors)