Waters Technologies Corporation v. Aurora SFC Systems Inc.
1:11-cv-00708
D. Del.Aug 21, 2017Background
- Waters Technologies sued Aurora SFC and later added Agilent for infringement of U.S. Pat. Nos. 6,561,767 (’767) and 6,648,609 (’609).
- USPTO cancelled all claims of the ’767 patent during reexamination; Waters stipulated to dismissal of counts based on the ’767 patent.
- In inter partes reexamination of the ’609 patent, some original claims were cancelled, some were amended to include a differential pressure transducer limitation, and two new claims were added (including a CO2 flow-stream limitation).
- Defendants moved to dismiss under Rule 12(b)(6) for failure to state a claim and under Rule 12(b)(1) for lack of subject-matter jurisdiction, invoking 35 U.S.C. § 252 (effects of reexamination/reissue and intervening rights).
- Court took judicial notice of the reexamination certificate and evaluated whether amended claims were substantively identical to original claims and whether intervening rights barred relief for pre- and post-reexamination periods.
- Court dismissed counts based on the cancelled ’767 claims as moot; dismissed allegations of infringement prior to Oct. 14, 2016 (reexamination certificate date) and dismissed post-Oct. 14, 2016 allegations only to the extent they violate defendants’ absolute intervening rights; otherwise denied dismissal. Pleading sufficiency for infringement, inducement, contributory infringement, and willfulness was upheld at this stage. Court declined to decide equitable intervening rights or Aurora’s dissolution defense at this time.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Effect of PTO reexamination on claims | Waters did not contest substantive change; sought to proceed on amended claims | Defendants: reexamined/amended claims are substantively different, so pre-reexamination damages and some claims should be dismissed or moot under §252 | Court: Amended ’609 claims contain new differential-pressure limitation; not plausibly identical — pre-Oct.14,2016 infringement allegations dismissed as failure to state a claim and as moot |
| Intervening rights under 35 U.S.C. §252 | Waters: §252 not properly invoked to dismiss on motion; claim construction/discovery needed | Defendants: absolute and equitable intervening rights bar relief for certain post-reexam acts | Court: Absolute intervening rights can bar some post-Oct.14,2016 allegations (dismissed without prejudice); declined to resolve equitable intervening rights now |
| Sufficiency of infringement pleadings (direct, induced, contributory, willful) | Waters: amended complaint (filed >4 years earlier) pleads plausible facts of sales, customer use, inducement, and willfulness | Defendants: complaint fails to plead these with required specificity | Court: Pleadings are adequate at Rule 12(b)(6) stage; dismissal denied as to these claims |
| Aurora’s corporate status (dissolution) as defense | Waters: proceed against Aurora as pleaded | Defendants: Aurora dissolved, so should be dismissed | Court: Not decided now; no harm in keeping Aurora as defendant at this stage |
Key Cases Cited
- Bell Atl. Corp. v. Twombly, 550 U.S. 544 (plausibility standard for pleading)
- Ashcroft v. Iqbal, 556 U.S. 662 (facial plausibility and evaluating factual allegations)
- Tellabs, Inc. v. Makor Issues & Rights, Ltd., 551 U.S. 308 (judicial notice and consideration of certain matters)
- Fresenius USA, Inc. v. Baxter Int'l, Inc., 721 F.3d 1330 (effect of reexamination and §252 on claim scope and remedies)
- Predicate Logic, Inc. v. Distributive Software, Inc., 544 F.3d 1298 (test whether amended claim covers a conceivable process not covered by original claim)
- Laitram Corp. v. NEC Corp., 163 F.3d 1342 (when reexamined claims are "identical" and impact on damages period)
- Senju Pharm. Co. v. Apotex Inc., 746 F.3d 1344 (reexamined claims do not automatically create a new cause of action)
- Forte! Corp. v. Phone-Mate, Inc., 825 F.2d 1577 (amendments can create substantive differences preventing identity with original claims)
- BIC Leisure Prod., Inc. v. Windsurfing Int'l, Inc., 1 F.3d 1214 (absolute vs. equitable intervening rights under §252)