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

Background

The Regents of the University of Michigan sued Leica Microsystems Inc. for allegedly infringing U.S. Patent No. 7,277,169, titled “Whole Spectrum Fluorescence Detection with Ultrafast White Light Excitation.” Michigan alleged literal infringement and infringement under the doctrine of equivalents, as well as induced and contributory infringement. Michigan also alleged that Leica’s infringement was willful and sought enhanced damages.

The accused products were Leica’s SP8 confocal microscope family, including the TCS SP8 X and TCS SP8 microscopes. Michigan alleged that these microscopes use a white-light laser and detect fluorescence from samples. Leica sought dismissal for failure to state a claim.

Direct infringement

Leica argued that the SP8 microscopes did not satisfy a limitation in claim 1 requiring a “supercontinuum white light pulse” to excite fluorophores. Leica contended that the limitation required the entire white-light spectrum to reach and excite the fluorophores, while Michigan argued that the claim could cover a system in which the light used for excitation originated from a single-source white-light generation system, even if only some wavelengths reached the sample.

The court held that this dispute required claim construction—the process of determining the meaning and scope of patent claims. The court concluded that Michigan’s interpretation was plausible and that deciding whether the SP8 microscopes infringed would also require resolving factual issues. Because those issues were premature on a motion to dismiss, the court declined to construe the disputed limitation.

The court therefore concluded that Michigan adequately pleaded literal direct infringement and denied Leica’s motion to dismiss that claim. Because literal infringement was sufficiently pleaded, the court did not reach Leica’s argument that prosecution-history estoppel barred infringement under the doctrine of equivalents. The court nevertheless denied Leica’s motion to dismiss Michigan’s doctrine-of-equivalents claim.

Indirect and willful infringement

Michigan alleged induced and contributory infringement. The court noted that Leica’s arguments for dismissing those claims depended on its unsuccessful argument that Michigan had not adequately pleaded direct infringement. The court therefore denied Leica’s motion to dismiss the indirect-infringement claims.

Michigan also alleged that Leica’s conduct was willful and justified enhanced damages. Leica argued that the willful-infringement claim failed because the complaint did not adequately plead direct infringement. Because the court rejected that basis for dismissal, it denied Leica’s motion to dismiss the willful-infringement claim.

Other requests and disposition

Leica asked the court to take judicial notice of the ’169 Patent’s prosecution history. Because the court found claim construction premature and did not evaluate that history, it denied Leica’s request. The court also overruled Michigan’s objection to evidence in Leica’s reply brief and denied as moot Leica’s request for review of that objection.

The court’s final order states: “For the foregoing reasons, the Court DENIES Leica’s motion to dismiss.” The opinion did not decide whether Leica ultimately infringed the patent; it allowed Michigan’s claims to proceed beyond the pleading stage.