Minnesota Patent Litigation Wrap-Up: Q3 2023


This post continues our summary of substantive orders in patent litigation in the District of Minnesota. This summary includes a motion to compel production of chemical intermediates from an overseas manufacturer in pharmaceutical litigation and summary judgment concerning infringement and validity.

Bristol-Myers Squibb Co. v. Nanocopoeia, LLC, Case No. 22-cv-1283 (KMM/JFD), Dkt. No. 251 (D. Minn. August 2, 2023)

Plaintiff Bristol-Myers Squibb (“BMS”) sued Nanocopoeia for infringement of patents to a cancer medication, dasatinib, which Nanocopoeia used in developing its own leukemia drug, Phyrago. Order at 1. Nanocopoeia argued that its dasatinib does not have the “physical, crystalline monohydrate form covered by BMS’s patents,” and is instead an amorphous solid dispersion. Id. BMS moved to compel production of certain samples from Nanocopoeia’s overseas manufacturer. Id. at 1-2. Magistrate Judge Docherty denied BMS’s motion because Nanocopoeia represented it would produce samples of the tablet form of its drug, which would be the only form imported into the United States. Id. at 2. In particular, Judge Docherty denied BMS’s requests to samples of “expired tablets, bulk ingredients, and in-process intermediates” as irrelevant because “none of these items would ever enter the United States and therefore had no bearing on infringement of BMS’s patents.” Id. at 2. BMS objected Judge Docherty’s denial to Judge Menendez. Id.

Judge Menendez began by noting that review of a magistrate judge’s ruling on discovery is “extremely deferential.” Id. (quoting Scott v. United States, 552 F.Supp.2d 917, 919 (D. Minn. 2008)). She agreed with Judge Docherty that the requested intermediates and other samples “would not meaningfully inform whether the Phyrago that enters the U.S. is infringing,” which BMS’s counsel conceded at a prior hearing for judgment on the pleadings. Id. at 3. Judge Menendez concluded that the cases cited by BMS either supported Judge Docherty’s reasoning or were inapposite. Id. at 3-4. While BMS had argued the inactive ingredients should be produced because they could “mask” the presence of peaks from crystalline dasatinib detected by X-ray diffraction, Judge Menendez agreed with Judge Docherty’s conclusion that BMS “needed something more than ‘suspicion’ that potentially infringing dasatinib was not completely dissolved during the manufacturing process.” Id. at 5. She also noted that BMS had not raised the “masking” argument prior to hearing, and regardless there was no “specific support in the record” for this possibility. Id., n.1. Accordingly, Judge Menendez overruled BMS’s objections to Judge Docherty’s order denying BMS’s motion to compel. Id. at 5-6.

Halverson Wood Products., Inc. v. Classified Systems, LLC, Case No. 22-801 (JRT/LIB), 2023 WL 5515892 (D. Minn. Aug. 25, 2023)

Plaintiff Halverson sued Defendant Classified for infringement of U.S Patent No. 7,669,618, which was directed to “an automated wood processing system designed to cut logs into usable firewood.” Id. at *1. After claim construction, the parties cross-moved for summary judgment of infringement/non-infringement, and Halverson moved for summary judgment of no invalidity. The main dispute regarding infringement was whether Classified’s product included a “loading apparatus” that “pivots with the support structure, about the skid steer loader vehicle, and via said skid steer loader vehicle” as required by claim 1. Id. at *5. Classified argued that the grapple in its product uses gravity to remain vertical and thus does not “pivot with the support structure.” Id. Judge Tunheim disagreed. Id. Instead, he noted that Classified had conceded that the grapple is a part of the loading apparatus, and thus “pivots with the support structure” as the claim required. Id. He therefore concluded that Classified’s wood processor met all elements of claim 1 of the ’618 patent, and thus infringed, as a matter of law. Id.

Regarding invalidity, Classified argued that the ’618 patent was invalid as obvious over several references that taught log splitters, skid steer loader vehicles, and firewood processors. Id. at *7-8. Judge Tunheim found that Classified failed to meet its burden to prove invalidity as a matter of law. Id. at *8. He explained that Classified had “failed to explain which elements of the prior art references invalidate the ’618 patent, as was required by the Pretrial Order.” Id. He also noted that prior art had “pivotally attached” main loading apparatus, while the ’618 taught a “rigidly attached one,” and Classified’s motivation to combine amounted to little more than impermissible hindsight. *8-9. Classified’s motivation of “ease of use” to combine the prior art elements failed to meet its clear and convincing burden. Id. at *9.

Classified also argued that literal infringement was precluded by arguments made by Halverson during prosecution under the doctrine of prosecution history estoppel. Id. at *10. But Judge Tunheim explained that the arguments made by Halverson during prosecution to distinguish prior art were the same as the reasons he identified above why the ’618 patent was not obvious. Id. Instead, he noted, it was not clear what Classified was in fact arguing Halverson was trying to recapture that it purportedly gave up during prosecution. Id. Judge Tunheim thus found prosecution history estoppel inapplicable and denied Classified’s motion for summary judgment.