United States District Court, D. Arizona
DAVID G. CAMPBELL, District Judge.
Defendant Azbil BioVigilant, Inc. ("BioVigilant") has filed a motion for summary judgment. Doc. 227. The motion is fully briefed and neither party has requested oral argument. The Court will grant BioVigilant's motion.
BioVigilant and Plaintiff TSI, Inc. ("TSI") sell devices for detecting airborne biological particles. Biological aerosols can occur naturally or may be manmade, and they can become a health hazard, particularly in hospitals and war zones. The TSI devices at issue in this case detect bio-viable particles through a process known as "intrinsic fluorescence." The devices contact a particle with a laser beam and then detect and measure fluorescence emitted from biomolecules such as nicotinamide adenine dinucleotide (reduced form) ("NADH") and riboflavin, which are native to viable biological particles. The devices compare the intensity of each particle's fluorescence against pre-determined criteria to determine whether a given particle is viable (alive) or inert (not alive). Through this process, the devices can ascertain, in real time, whether airborne particles are present in a given sample, whether the particles are bio-viable, and at what concentration they exist. TSI's complaint alleges that BioVigilant has directly infringed, induced others to infringe, and contributed to the infringement of the patent that covers TSI's devices.
On December 14, 2004, the United States Patent and Trademark Office issued United States Patent No. 6, 831, 279 ("the '279 Patent"), entitled "Laser Diode-Excited Biological Particle Detection System." Jim Yew-Wah Ho is the sole inventor named on the '279 Patent. TSI owns the '279 Patent, and asserts Claims 1-4, 6-7, 17-20, and 23-24 of the '279 Patent (collectively, the "Asserted Claims").
In the section of the '279 Patent entitled "DETAILED DESCRIPTION OF THE PREFERRED EMBODIMENT, " the patent discloses use of a Nichia laser diode which emits beams at a frequency of about 402-405 nm. U.S. Patent No. 6, 831, 279 col.6 l.28-29. Lasers at this wavelength excite riboflavin. The patent explains that riboflavin is part of "a new range of biomolecules [that] can be used which are indicative of particle viability." U.S. Patent No. 6, 831, 279 col.3 l.3-5. The patent explains that "[o]ther laser diodes are available from the same manufacturer which range in output from 400 to about 450 nm, with others being developed." U.S. Patent No. 6, 831, 279 col.6 l.38-40. It acknowledges, however, that at the time the patent was filed, "laser diodes [were] not available at the wavelengths known to be most suited to excite the known reactive biomolecule NADH; however, they are currently available at slightly longer wavelengths." U.S. Patent No. 6, 831, 279 col.3 l.12-15.
II. Legal Standard.
A party seeking summary judgment "bears the initial responsibility of informing the district court of the basis for its motion, and identifying those portions of [the record] which it believes demonstrate the absence of a genuine issue of material fact." Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986). Summary judgment is appropriate if the evidence, viewed in the light most favorable to the nonmoving party, shows "that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law." Fed.R.Civ.P. 56(a). Only disputes over facts that might affect the outcome of the suit will preclude the entry of summary judgment, and the disputed evidence must be "such that a reasonable jury could return a verdict for the nonmoving party." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986). Furthermore, the party opposing summary judgment "may not rest upon the mere allegations or denials of [the party's] pleadings, but... must set forth specific facts showing that there is a genuine issue for trial." Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 586 n.11 (1986); see Fed.R.Civ.P. 56(e).
There is no issue for trial unless there is sufficient evidence favoring the nonmoving party; if the evidence is merely colorable or is not significantly probative, summary judgment may be granted. Anderson, 477 U.S. at 249-50. However, because "[c]redibility determinations, the weighing of evidence, and the drawing of inferences from the facts are jury functions, not those of a judge, " the evidence of the non-movant "is to be believed, and all justifiable inferences are to be drawn in his favor." Id. at 255 (citing Adickes v. S.H. Kress & Co., 398 U.S. 144, 158-59 (1970)).
BioVigilant argues that the Asserted Claims are invalid for two reasons. First, BioVigilant argues that the Asserted Claims are obvious. Second, it argues that the '279 Patent's disclosure is not sufficiently enabling. Because the Court agrees with the second argument, it need not reach the obviousness defense or BioVigilant's noninfringement arguments.
"By direction of 35 U.S.C. § 282, an issued patent is presumed valid." KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 412 (2007). "The burden of establishing invalidity of a patent or any claim thereof shall rest on the party asserting such invalidity." 35 U.S.C. § 282. BioVigilant must prove invalidity by clear and convincing evidence. Microsoft Corp. v. i4i Ltd. P'ship, 131 S.Ct. 2238, 2242, 180 L.Ed.2d 131 (2011). The Court must apply this standard of proof in ruling on BioVigilant's motion for summary judgment. See Creative Compounds, LLC v. Starmark Labs., 651 F.3d 1303, 1311 (Fed. Cir. 2011); Invitrogen Corp. v. Clontech Labs., Inc., 429 F.3d 1052, 1063 (Fed. Cir. 2005).
The statutory basis for the enablement requirement is found in 35 U.S.C. § 112, ¶ 1, which provides in relevant part:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with ...