D. Mass. Patent Litigation Update: August 2024

This is part of a series of articles discussing recent orders of interest issued in patent cases by the United States District Court for the District of Massachusetts.

In Endobotics, LLC v. Hologic, Inc, No. 24-cv-10746, Judge Saris allowed-in-part and denied-in-part Defendant Hologic’s motion to dismiss Plaintiff Endobotics’ patent infringement claims.

This case involves minimally invasive surgical instruments. Plaintiff asserted various patent infringement claims of three, almost-expired, patents titled “Surgical Instrument.”  

Defendant moved to dismiss the direct infringement claim, arguing that the complaint does not plausibly allege that the accused products satisfy two material limitations: “bendable motion member” and “proximal bendable member.” Plaintiff responded that it was not required to plead infringement on an element-by-element basis and argued that its identification of the name and model number of the accused products, as well as images annotated of those accused products, sufficiently put Defendant on notice of its allegations.

For the first disputed claim limitation, the Court analyzed the annotations and found that, making all inferences in Plaintiff’s favor, that the limitation was plausibly alleged. The Court denied the motion to dismiss this claim limitation.

Regarding the second limitation, the parties disputed whether the identified structure in the accused products was “bendable.” The Court observed that the complaint must plead “specific factual allegations illustrating alignment with at least certain elements, beyond the general assertion that the products have the claim elements, so as to render the patent infringement claim plausible” After the Plaintiff indicated at oral argument that it had additional evidence of this limitation “not yet cited in the complaint,” the Court ordered Defendant to provide samples of the accused products to Plaintiff for examination. In the interim, the Court granted the motion to dismiss as to claims reciting the second limitation, with leave to move to amend within 30 days.

Defendant also moved to dismiss claims of induced, contributory, and willful infringement based on the complaint’s alleged failure to plead pre-suit knowledge of the asserted patents. The Court agreed and granted the motion to dismiss these claims with prejudice.

In Nike, Inc. v. New Balance Athletics, Inc., No. 23-cv-12666, Judge Kobick denied Defendant New Balance’s motion to dismiss three of the nine asserted patents. The patents at issue are directed to the process for manufacturing the upper part of sneakers and other shoes, each claiming uppers that use “knit to shape” technology, where the upper is not cut from a larger sheet of knitted textile, but rather comes out of the knitting machine in its final form.

Relying on a Federal Circuit’s construction of similar claim language in a related patent in the Nike Inc. v. Adidas AG, 812 F.3d 1326, 1329 (Fed. Cir. 2016) decision, Defendant argued that the patents at issue only cover shoe uppers where all the edges are knit to shape, and Plaintiff’s complaint contradicts the claim language under that interpretation of the claims. Defendant purported to support its motion, inter alia, by attaching a letter it had previously sent to Plaintiff claiming that Defendant had not identified any of its shoes with knit uppers manufactured without cutting them from a larger web of textile. The Plaintiff advanced a different reading of the Federal Circuit’s decision.

The Court declined both to engage in claim construction at this stage of the case, and to consider Defendant’s letter as it was not attached to or otherwise incorporated into the complaint. Rather, the Court noted that a plaintiff is not required to prove its case at the pleadings stage and reiterated that an element-by-element analysis at the pleadings stage is not required. The Court examined the complaint, including Nike’s attached claim charts, finding that it identifies where Plaintiff believes this limitation to be found and that the allegations in the complaint are not inconsistent with Defendant's own proposed construction.

The Court thus found that even if Defendant’s claim interpretation is correct, Plaintiff’s complaint pled facts, interpreted in the light most favorable to Plaintiff, to put Defendant on notice of what is being accused of infringement. Accordingly, Plaintiff’s motion was denied.