The Regents of the University of Michigan v. Leica Microsystems Inc.

Background

The University alleged direct, indirect, and willful infringement of U.S. Patent No. 7,277,169, which concerns a fluorescence-detection system using a white-light laser and a time-resolving detector. The University accused Leica’s SP8 and Stellaris microscope models of infringement.

The patent includes independent Claims 1, 10, and 19. The court had previously construed disputed claim terms and determined that the sample containing fluorescent markers was a required claim element. The parties disputed whether Leica’s products satisfied the claims’ requirement for “said supercontinuum”—a supercontinuum white-light pulse comprising the entire spectrum of white light that excites the fluorescent markers.

Standing motion

Leica moved to dismiss for lack of standing, arguing that one of the patent’s original inventors had assigned rights to NanoBio, later renamed BlueWillow Biologics, Inc., and that NanoBio had not assigned those rights to the University. Leica contended that the University was at most a co-owner and had failed to join BlueWillow as a plaintiff.

The court held that the University had constitutional standing even assuming Leica’s ownership allegations were accurate. The court explained that standing depends on the substance of the alleged injury, not the labels used to describe the University’s patent rights. The court also stated that whether the University possessed all substantial rights in the patent did not implicate standing or subject-matter jurisdiction.

Leica raised statutory-standing arguments in its reply. Because Leica’s motion was filed after its answer and relied on evidence outside the pleadings, the court treated the motion as a second motion for summary judgment. The court’s standing order limited parties to one summary-judgment motion without court permission. Because Leica had already filed a motion for summary judgment of noninfringement, the court denied the motion titled “Motion to Dismiss” as a second summary-judgment motion and considered only the separately filed noninfringement motion.

Summary judgment of noninfringement

Summary judgment is appropriate when there is no genuine dispute about a material fact and the moving party is entitled to judgment under the law. In a patent case, the court determines the meaning and scope of the claims, and the accused device must then be compared with those claims. Direct infringement requires the accused product to contain every claim limitation, either literally or, in some circumstances, under the doctrine of equivalents.

Leica argued that its products did not infringe because they used an acousto-optical filter to select limited wavelength bands rather than sending the entire white-light spectrum to excite the sample. Leica also argued that its systems used multiple light sources and did not include sample slides. The court decided the motion on the “said supercontinuum” argument and declined to reach the other arguments.

The court further construed the phrase “said supercontinuum” to refer to the full supercontinuum white-light pulse comprising the entire spectrum of white light. It concluded that the claims require the full spectrum—not merely selected portions—to excite the fluorescent markers in the sample. The court relied on the word “said,” the patent’s prosecution history, and the patent’s use elsewhere of the phrase “at least a portion” when referring to a subset of the supercontinuum.

The University argued that its patent required the system to output the full spectrum but did not require the entire spectrum to reach the sample. It also argued that Leica’s products could use “bandlets” and lambda or lambda-lambda scans involving the full breadth of the white-light source.

The court rejected those arguments. It found that bandlets were only limited segments of the spectrum. It also found that lambda scans used separate, consecutive excitation steps rather than a single pulse containing the entire spectrum exciting the sample simultaneously. The court concluded that no reasonable jury could find that Leica’s products met the “said supercontinuum” limitation.

Disposition

The court denied Leica’s motion to dismiss for lack of standing and granted Leica’s motion for summary judgment of noninfringement. The court did not decide Leica’s arguments concerning the “single source” claim language or the University’s argument about Leica’s use of sample slides.

The court also ruled on administrative sealing motions: Leica’s motions to seal were granted in part and denied in part; the University’s motion to seal at Docket No. 151 was granted in part and denied in part; and the University’s motion to seal at Docket No. 153 was granted in part. The court ordered certain materials unsealed as described in the order.