Syntrix Biosystems, Inc. v. Illumina Inc, No. 3:2010cv05870 - Document 183 (W.D. Wash. 2013)
Court Description: ORDER denying 106 Motion for Partial Summary Judgment by Judge Benjamin H Settle.(TG)
Download PDF
<![CDATA[
Syntrix Biosystems, Inc. v. Illumina Inc Doc. 183 1 2 3 4 5 UNITED STATES DISTRICT COURT WESTERN DISTRICT OF WASHINGTON AT TACOMA 6 7 SYNTRIX BIOSYSTEMS, INC., 8 9 10 Plaintiff, ORDER DENYING PLAINTIFF’S MOTION FOR PARTIAL SUMMARY JUDGMENT v. ILLUMINA, INC., 11 CASE NO. C10-5870 BHS Defendant. 12 13 This matter comes before the Court on Plaintiff Syntrix Biosystems, Inc.’s 14 (“Syntrix”) motion for partial summary judgment (Dkt. 106). The Court has considered 15 the pleadings filed in support of and in opposition to the motion and the remainder of the 16 file and hereby denies the motion for the reasons stated herein. 17 18 I. PROCEDURAL HISTORY On November 24, 2010, Syntrix filed a complaint against Defendant Illumina, Inc. 19 (“Illumina”) alleging infringement of United States Patent No. 6,951,682 (“‘682 patent”); 20 trade secret misappropriation under the Uniform Trade Secrets Act, RCW Chapter 19.108 21 (“UTSA”); breach of contract; and unjust enrichment. Dkt. 1. On January 31, 2011, 22 Illumina answered and asserted the affirmative defense that the ‘682 Patent is “invalid for ORDER - 1 Dockets.Justia.com 1 failure to satisfy one or more conditions of patentability set forth in Title 35 of the United 2 States Code, including but not limited to 35 22 U.S.C. §§ 101, 102, 103, and/or 112.” 3 Dkt. 39. 4 On December 19, 2012, Syntrix filed a motion for partial summary judgment. 5 Dkt. 106. On January 7, 2013, Illumina responded. Dkt. 117. On January 11, 2013, 6 Syntrix replied. Dkt. 130. 7 8 II. FACTUAL BACKGROUND On September 17, 1999, Dr. John A. Zebala, filed U.S. utility patent application 9 09/332,815 (“‘815 application”), which claimed priority to U.S. provisional patent 10 application number 60/110,529 filed on December 1, 1998. On October 4, 2005 the ‘815 11 application issued as the ‘682 Patent, which is titled “Porous Coatings Bearing Ligand 12 Arrays and Use Thereof.” 13 On June 11, 2008, Illumina filed a re-examination petition requesting that the ‘682 14 Patent be re-examined in light of prior art references. Dkt. 107, Declaration of 15 Christopher Schenck, Exh. F. During the re-examination, the examiner considered two of 16 the currently cited references, U.S. Patent No. 6,023,540 (“Walt ’540”) and U.S. Patent 17 No. 5,900,481 (“Lough”). Id., Exh. D. On June 29, 2010, the USPTO issued a re18 examination certificate confirming the patentability of the claims, with only two minor 19 amendments to those claims. Id., Exh. H. 20 Illumina’s expert, Dr. Milan Mrksich, Ph.D., asserts that the ‘682 Patent is 21 anticipated and/or obvious in light of seven references. Id., Exh. B. Syntrix categorizes 22 the references into three families based on similarities in the disclosed technologies: (1) ORDER - 2 1 the Walt Family that includes Walt ‘540, U.S. Patent No. 6,327,410 (“Walt ’410”), and 2 U.S. Patent No. 7,060,431 (“Chee”); (2) the Lough Family that includes Lough and U.S. 3 Patent No. 6,133,436 (“Köster”); and (3) the Brenner Family that includes Patent 4 Application No. PCT/US95/12791 published as WO96/12014 (“Brenner”) and U.S. 5 Patent No. 6,406,848 (“Bridgham”). Dkt. 106 at 8. 6 III. DISCUSSION 7 Syntrix moves for summary judgment on Illumina’s affirmative defenses that the 8 ‘682 Patent is invalid “due to lack of utility, anticipation, or obviousness.” Dkt. 106 at 1. 9 A. 10 Summary Judgment Standard Summary judgment is proper only if the pleadings, the discovery and disclosure 11 materials on file, and any affidavits show that there is no genuine issue as to any material 12 fact and that the movant is entitled to judgment as a matter of law. Fed. R. Civ. P. 56(c). 13 The moving party is entitled to judgment as a matter of law when the nonmoving party 14 fails to make a sufficient showing on an essential element of a claim in the case on which 15 the nonmoving party has the burden of proof. Celotex Corp. v. Catrett, 477 U.S. 317, 16 323 (1986). There is no genuine issue of fact for trial where the record, taken as a whole, 17 could not lead a rational trier of fact to find for the nonmoving party. Matsushita Elec. 18 Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 586 (1986) (nonmoving party must 19 present specific, significant probative evidence, not simply “some metaphysical doubt”). 20 See also Fed. R. Civ. P. 56(e). Conversely, a genuine dispute over a material fact exists 21 if there is sufficient evidence supporting the claimed factual dispute, requiring a judge or 22 jury to resolve the differing versions of the truth. Anderson v. Liberty Lobby, Inc., 477 ORDER - 3 1 U.S. 242, 253 (1986); T.W. Elec. Serv., Inc. v. Pac. Elec. Contractors Ass’n, 809 F.2d 2 626, 630 (9th Cir. 1987). 3 The determination of the existence of a material fact is often a close question. The 4 Court must consider the substantive evidentiary burden that the nonmoving party must 5 meet at trial – e.g., a preponderance of the evidence in most civil cases. Anderson, 477 6 U.S. at 254; T.W. Elec. Serv., Inc., 809 F.2d at 630. The Court must resolve any factual 7 issues of controversy in favor of the nonmoving party only when the facts specifically 8 attested by that party contradict facts specifically attested by the moving party. The 9 nonmoving party may not merely state that it will discredit the moving party’s evidence 10 at trial, in the hopes that evidence can be developed at trial to support the claim. T.W. 11 Elec. Serv., Inc., 809 F.2d at 630 (relying on Anderson, 477 U.S. at 255). Conclusory, 12 nonspecific statements in affidavits are not sufficient, and missing facts will not be 13 presumed. Lujan v. Nat’l Wildlife Fed’n, 497 U.S. 871, 888-89 (1990). 14 B. Standard of Proof 15 “[I]n ruling on a motion for summary judgment, the judge must view the evidence 16 presented through the prism of the substantive evidentiary burden.” Anderson, 477 U.S. 17 at 254. “A patent shall be presumed valid.” 35 U.S.C. § 282 (2006). The party asserting 18 invalidity carries “[t]he burden of establishing invalidity of a patent or any claim 19 thereof.” Id. Invalidity, as a defense to infringement, must be proved by clear and 20 convincing evidence. Microsoft Corp. v. i4i Ltd., 564 U.S. ____, 131 S. Ct. 2238, 2242 21 (2011). When an issue requires clear and convincing evidence, “the appropriate 22 summary judgment question will be whether the evidence in the record could support a ORDER - 4 1 reasonable jury finding either that the [party] has shown [invalidity] by clear and 2 convincing evidence or that the [party] has not.” Anderson, 477 U.S. at 255. 3 C. Lack of Utility 4 In its response, Illumina withdrew the affirmative defense of lack of utility. Dkt. 5 117 at 2. Therefore, the Court denies Syntrix’s motion on this issue as moot. 6 D. Anticipation 7 Invalidation based on anticipation requires the party challenging validity to show, 8 by clear and convincing evidence, that “every element and limitation of the claim was 9 previously described in a single prior art reference.” 35 U.S.C. § 102 (2006); Sanofi10 Synthelabo v. Apotex, Inc., 550 F.3d 1075, 1082 (Fed. Cir. 2008). A defendant’s burden 11 is reflected in the clear and convincing standard and a reexamination does not increase or 12 enhance it. Sciele Pharma Inc. v. Lupin Ltd., 684 F.3d 1253, 1259–61 (Fed. Cir. 2012) 13 (citing Microsoft v. i4i Ltd. Partnership, 131 S. Ct. 2238, 2250 (2011)). On the other 14 hand, prior art that differs from the prior art considered by the Patent Office may carry 15 more weight than the prior art that was considered. Microsoft, 131 S. Ct. at 2251. In 16 addition to the references themselves, “testimony concerning anticipation must be 17 testimony from one skilled in the art and must identify each claim element, state the 18 witnesses’ interpretation of the claim element, and explain in detail how each claim 19 element is disclosed in the prior art reference.” Schumer v. Laboratory Computer 20 Systems, Inc., 308 F.3d 1304, 1315 (Fed. Cir. 2002). 21 In this case, Syntrix argues that Illumina has failed to provide clear and convincing 22 evidence of anticipation for every element of Claim 1 in the ‘682 Patent. Dkt. 106 at 14– ORDER - 5 1 18. Specifically, Syntrix contends that “Dr. Mrksich did not articulate anywhere in his 2 report what specific aspect of each cited reference discloses the required ‘continuous’ 3 element of Claim 1.” Id. at 14. The Court construed the term “continuous” as follows: 4 “A ‘porous coating’ is said to be ‘continuous’ when the coating covers the surface of the 5 substrate with virtually no discontinuities or gaps.” Dkt. 75 at 6. 6 With regard to the Walt Family of references, the anticipation argument is 7 intertwined with an infringement argument. Syntrix alleges that Illumina’s product 8 infringes the ‘682 Patent, and Illumina contends that its product is “effectively 9 indistinguishable” from the beads-in-wells structure disclosed by the Walt references. 10 Dkt. 117 at 7. Thus, the argument goes that the two Walt references, which were issued 11 before the ‘682 Patent, anticipate the ‘682 Patent because a product “which would 12 literally infringe if later in time anticipates if earlier.” Upsher-Smith Laboratories, Inc. v. 13 Pamlab, L.L.C., 412 F.3d 1319, 1322 (Fed. Cir. 2005) (citations omitted). Taking the 14 inferences in the light most favorable to Illumina – (1) Illumina’s product is similar to the 15 technology disclosed by Walt and (2) Illumina infringes the Court finds that Illumina 16 has produced evidence that a juror could find clear and convincing evidence of 17 anticipation of the term “continuous.” Therefore, the Court denies Syntrix’s motion as to 18 the Walt Family of references. 19 With regard to the Lough Family of references, Dr. Mrksich specifically addresses 20 the continuous term. For example, he states that “Lough describes a ‘high-density 21 binding of beads to the solid support,’ consistent with the [sic] a coating that covers the 22 surface of the substrate with virtually no discontinuities or gaps.” Mrksich Report, ¶ 253. ORDER - 6 1 The Court finds that Illumina has produced evidence that a juror could find clear and 2 convincing evidence of anticipation of the term “continuous.” Therefore, the Court 3 denies Syntrix’s motion as to the Lough Family of references. 4 With regard to the Brenner Family of references, Dr. Mrksich’s report sufficiently 5 addresses the term “continuous.” Dr. Mrksich initially addresses the ‘682 Patent claim 6 limitation and then proceeds to describe monolayers and arrays of beads attached to a 7 substrate. See, e.g., Mrksich Report, ¶¶ 188–193. The Court finds that this is evidence 8 that a juror could find clear and convincing evidence on the issue of anticipation of the 9 term “continuous.” Therefore, the Court denies Syntrix’s motion as to the Brenner 10 Family of references and the motion as to the affirmative defense of anticipation. 11 E. Obviousness 12 If “the differences between the subject matter [patented] and the prior art are such 13 that the subject matter as a whole would have been obvious” then the patent is rendered 14 obvious. 35 U.S.C. § 103 (2006). Obviousness is a question of law based on underlying 15 facts, as set forth in Graham v. John Deere Co., 383 U.S. 1 (1966). The Graham factors 16 are (1) the scope and content of the prior art, (2) the difference between the prior art and 17 the claimed invention, (3) the level of ordinary skill in the field of the invention, and (4) 18 any relevant objective considerations. 19 In this case, the parties dispute the elements of obviousness as well as Illumina’s 20 evidence as to obviousness. First, the Court agrees with Syntrix that “[t]he tests for 21 anticipation and obviousness are different.” Cohesive Technologies, Inc. v. Waters 22 Corp., 543 F.3d 1351, 1364 (Fed. Cir. 2008) (“it does not follow that every technically ORDER - 7 1 anticipated invention would also have been obvious.” (citation omitted)). Therefore, 2 Illumina may not rely on the affirmative defense that the ‘682 Patent is obvious based on 3 inherent anticipation. 4 Second, Syntrix argues that “Dr. Mrksich’s analysis fails on its face to provide 5 clear and convincing evidence of obviousness.” Dkt. 106 at 18. While Dr. Mrksich fails 6 to provide a detailed, step-by-step determination of obviousness, the report cites evidence 7 that a juror could find clear and convincing evidence that creates a genuine issue of 8 material fact as to obviousness. The obviousness inquiry is “expansive and flexible” and 9 is “not subject to a rigid formula.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 415, 419 10 (2007). The Court finds that Illumina has submitted sufficient information to raise 11 questions of fact on the Graham factors. Therefore, the Court denies Syntrix’s motion 12 for summary judgment on Illumina’s affirmative defense of obviousness. 13 14 IV. ORDER Therefore, it is hereby ORDERED that Syntrix’s motion for partial summary 15 judgment (Dkt. 106) is DENIED. 16 Dated this 30th day of January, 2013. A 17 18 BENJAMIN H. SETTLE United States District Judge 19 20 21 22 ORDER - 8
]]>
Some case metadata and case summaries were written with the help of AI, which can produce inaccuracies. You
should read the full case before relying on it for legal research purposes.
This site is protected by reCAPTCHA and the Google
Privacy Policy and
Terms of Service apply.
