MSTM, LLC et al. v. AB Sciex LLC d/b/a SCIEX (D. Mass. 23-cv-11121).

MSTM and co-plaintiff M&M Mass Spec Consulting, LLC alleged that Sciex entered into confidentiality and non-disclosure agreements in connection with considering taking a license on the plaintiffs’ mass spectrometry ionization technology and patents, and subsequently breached those agreements and infringed one of the patents in making, importing and selling its own ionization equipment.

Sciex moved to dismiss the patent claims on a variety of grounds.  Three of the patents are owned by Wayne State University and the University of Sciences, with MSTM holding an exclusive license.  Sciex asserted that MSTM lacked standing to file suit without the two University’s being named as co-plaintiffs.  Judge Guzman looked to the substance of the license agreement and found that MSTM had obtained all substantial rights in the patents such that it would be treated as the patentee with standing to sue in its own name.  Sciex argued that MSTM was required to seek approval from the Universities to bring an infringement suit; the agreement actually merely provided the Universities with the right to bring suit if MSTM refused to do so.  Further, the license agreement expressly granted MSTM the right to pursue infringement claims against Sciex.  Finally, the license provided MSTM the exclusive right to “make, have made, use, lease, distribute, import, sell and have sold” licensed products, which is the central consideration in determining whether a licensee has standing to sue in its own name.  The Universities’ retention of limited rights to practice the patents solely for academic and research purposes did not risk duplicative suits, and thus did not strip standing from MSTM.

Judge Guzman also rejected Sciex’s argument that the complaint failed to adequately plead direct and contributory infringement.  The complaint specifically asserted that Sciex directly infringed the patents at least in the development and testing of the goods at issue, and that it contributorily infringed when its customers used Sciex goods to directly infringe.  Judge Guzman noted that, under First and Federal Circuit law, a plaintiff need not plead infringement on an element-by-element basis, and that instead need only provide enough information to put the defendant on notice as to what activity is being accused, which the complaint adequately set forth.  With respect to the knowledge requirement of contributory infringement and willfulness, First Circuit law requires actual, pre-suit knowledge.  Here, knowledge was alleged to have arisen through MSTM’s sharing of the patents and the underlying technology under the NDA.  She refused to consider Sciex’s arguments concerning whether the materials and instructions Sciex provided to customers rose to the level of infringement, deciding that this issue could not be determined without discovery and claim construction.  She similarly put off a determination on whether the accused goods had substantial non-infringing uses, finding that to hinge on a proper construction of the claims.

Judge Guzman reversed an earlier determination with respect to the unjust enrichment claim and granted dismissal on that claim.  She noted that unjust enrichment in Massachusetts serves as a “stop-gap for occasional inadequacies in contractual remedies at law,” but cannot proceed where the plaintiff has an adequate remedy at law, such as trade secret misappropriations, breach of contract, and unfair business practice claims that are available in this case.