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University of Virginia Patent Foundation v. General Electric Co.

United States District Court, W.D. Virginia, Charlottesville Division

May 6, 2019

UNIVERSITY OF VIRGINIA PATENT FOUNDATION, Plaintiff,
v.
GENERAL ELECTRIC COMPANY d/b/a GE HEALTHCARE, Defendant.

          MEMORANDUM OPINION

          Joel C. Hoppe United States Magistrate Judge

         This matter is before the Court on Plaintiff University of Virginia Patent Foundation's (“UVAPF”) Sealed Motion to Lift the Stay and to Assert Claims from U.S. Patent No. RE44, 644. ECF No. 200. The parties have thoroughly briefed the issues, ECF Nos. 200, 202, 203, 207, and the Court heard oral argument on March 29, 2019, ECF No. 212. Based on the parties' written submissions and oral arguments and the relevant law, I conclude that UVAPF has not shown good cause to be permitted to assert new claims in this action.

         I. Procedural History

         This case concerns two patents related to magnetic resonance (“MR”) imaging. In its Amended Complaint, UVAPF alleged that Defendant General Electric Company (“GE”), a manufacturer of MR technologies, infringed upon Patent Nos. RE44, 644 (“the '644 patent”) and RE45, 725 (“the '725 patent”), both titled “Method and apparatus for spin-echo-train MR imaging using prescribed signal evolutions.”[1] Am. Compl. ¶¶ 7, 18, ECF No. 117. The primary issue before the Court is whether UVAPF may assert two claims from the '644 patent that it had not previously asserted in this litigation. An examination of the case's procedural history informs the Court's resolution of this issue.

         UVAPF filed its Complaint on December 8, 2014. ECF No. 1. In March 2015, the parties submitted to the Court their Joint Report under Rule 26(f) of the Federal Rules of Civil Procedure. ECF No. 42. Pursuant to their report, the parties agreed that UVAPF's Disclosure of Asserted Claims and Infringement Contentions, as well as its accompanying document production, would comply with Rule 3-1(a)-(h) and Rule 3-2 of the Patent Local Rules for the United States District Court for the Northern District of California (the “N.D. Cal. Loc. Pat. Rules”). Likewise, Defendant's Invalidity Contentions and accompanying document production would comply with Rules 3-3(a)-(d) of the N.D. Cal. Loc. Pat. Rules. The parties disagreed, however, as to whether “upper limits should be placed on the number of claims asserted by Plaintiff . . . at various milestones in the case.” Joint Report ¶ 6.

         On June 26, 2015, UVAPF served on GE its Disclosure of Asserted Claims and Infringement Contentions (“Initial Claim Disclosure”), asserting 170 claims from the '644 Patent and the '725 Patent. Def.'s Br. in Supp. of Limiting No. of Asserted Claims, Ex. D, ECF No. 110-5.[2] Approximately two months later, GE served its Preliminary Invalidity Contentions, comprising over 3, 000 pages of arguments and claim charts. See id., Decl. of Jonathan Detrixhe ¶ 8, ECF No. 110-1. GE thereafter moved to limit the number of claims UVAPF could assert in this case. ECF No. 110. In November 2015, this Court extended the deadline for the parties to exchange preliminary term construction and extrinsic evidence and suspended all remaining deadlines in the scheduling order pending the resolution of GE's motion. ECF No. 121.[3] The Court later suspended the preliminary term construction and extrinsic evidence deadline because of a pending summary judgment motion filed by GE, as well as the likelihood that GE would soon petition for Inter Partes Review (“IPR”), pursuant to 35 U.S.C. § 312. See Order of Nov. 24, 2015, ECF No. 132.

         On November 10, 2015, this Court entered an Order limiting the number of claims that UVAPF may assert to twenty-five claims from the '644 patent and fifteen claims from the '725 Patent. Mem. Op. & Order of Nov. 10, 2015, ECF No. 123. It further ordered that UVAPF could “petition the Court to assert additional claims” and that it would be permitted to do so “upon a showing that the new claim presents a unique issue of liability or damages.” Id. at 11. In a subsequent order, the Court allowed UVAPF to assert identical method and apparatus claims as a pair. Order of Nov. 24, 2015, at 2. UVAPF reduced its claims in accordance with the Court's orders, asserting twenty-five pairs of method and apparatus claims on patent '644 and fifteen claims on patent '725 (the “Amended Claim Disclosure”). Pl.'s Br. in Supp. of Mot. to Lift Stay & Assert Claims, Ex. A to Decl. of Ari B. Rafilson, ECF No. 200-4.

         In December 2015, GE filed a Notice advising the Court that it had filed IPR petitions challenging the claims that UVAPF had identified in its Initial Claim Disclosure under the '644 Patent. See ECF No. 164. In June 2016, the Patent Trial and Appeal Board (“PTAB”) of the United States Patent and Trademark Office accepted GE's petitions. Notice of USPTO Inst. of IPR Ex. 1, ECF No. 180-1. In July, Senior District Judge Normal K. Moon stayed this matter pending resolution of GE's IPRs. Order of July 5, 2016, ECF No. 182. Judge Moon's Order further required the parties to notify the Court within seven days of the conclusion of the IPRs. In October 2016, GE filed an additional IPR petition challenging UVAPF's claims under the '725 patent that UVAPF had asserted in this litigation. See ECF No. 183. In June 2017, the PTAB issued a final written decision in the '644 Patent IPRs finding all challenged claims were invalid.

         Id. The PTAB issued a second decision in April 2018 also finding invalid the challenged claims under the '725 Patent. See ECF No. 192. UVAPF appealed the '725 Patent IPR decision and portions of the '644 Patent IPR decisions to the United States Court of Appeals for the Federal Circuit. See ECF No. 201. In December 2018, the Court of Appeals affirmed the PTAB's decisions with regard to the '644 Patent claims and subsequently denied UVAPF's petition for a panel rehearing. UVAPF thereafter voluntarily dismissed its appeal of the '725 IPR decision. Id.

         In February 2019, UVAPF filed the present motion seeking to lift the stay issued by Judge Moon and to permit it to disclose previously unasserted claims. Specifically, UVAPF seeks to assert claims 51 and 58 under the '644 Patent. Pl.'s Mot. to Lift Stay & Assert Claims 1, ECF No. 200. UVAPF did not include these claims in its Initial Claim Disclosure, nor were they submitted to GE as part of the Amended Claim Disclosure following the Court's Order that UVAPF reduce its total claims. Nevertheless, UVAPF contends that these new claims should be allowed pursuant to the Court's Order that it could petition the Court to assert additional claims upon a showing that the new claim “presents a unique issue of liability or damages.” Id. at 5 (citing ECF No. 123).

         II. Discussion

         UVAPF asserts that claims 51 and 58 present “unique issues of liability” because they do not contain “echo-time ratio, ” “flip-angle ratio, ” or “single-amplitude ratio” limitations, each of which were a part of the IPR challenges to the '644 Patent and '725 Patent. Pl.'s Br. in Supp. of Mot. to Lift Stay & Assert Claims 1. It also argues that claims 51 and 58 are unique in that they include a limitation requiring T1 and T2 relaxation times to be “selected” when flip angles for MR pulse sequences are calculated, a limitation that was not contained in previously asserted claims. Id. GE argues that, regardless of whether claims 51 and 58 are unique from those previously asserted, UVAPF has failed to show good cause for seeking to assert new claims that were omitted from its previous claim disclosures. Def.'s Br. in Opp'n to Mot. to Lift Stay & Assert Claims, ECF No. 202. Assuming, without deciding, that the new claims alleged are distinctive from those set forth in the Initial Claim Disclosure and Amended Claim Disclosure, I agree that UVAPF must demonstrate good cause for its failure to assert these claims previously. Because UVAPF has failed to do so, I will deny its motion to assert these additional claims at this stage of the litigation.

         i. Whether “Good Cause” is required for Plaintiff to assert additional claims

         The Court first addresses the appropriate standard for deciding whether UVAPF may assert additional claims. GE argues that the Plaintiff must show “good cause” to add claims 51 and 58 at this stage of the proceeding. UVAPF relies principally on language from this Court's prior Order instructing that UVAPF could “petition the Court to assert additional claims and will be allowed to do so upon a showing that the new claim[s] present[] a unique issue of liability or damages.” Mem. Op. & Order of Nov. 10, 2015, at 12. GE argues that UVAPF's present motion to assert new claims does not account for its delay in asserting the new claims and is “cloak[ed] . . . as a response to the Court's order limiting the asserted claims.” Def.'s Br. in Opp'n to Mot. to Lift Stay & Assert Claims 1. I agree. Even when presented with an opportunity to assert an unrestricted number of claims in their Initial Claim Disclosure, UVAPF did not contend that GE infringed claims 51 and 58. Nevertheless, on the heels ...


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