Co. Says Embryo Imaging Devices Don't Infringe Patent

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By John T. Aquino

Sept. 10 — A Danish medical device company Sept. 9 revived its pursuit of a court judgment that its device used to detect embryonic abnormalities doesn't infringe a Stanford University patent by appealing a three-year-old federal district court ruling.

Unisense FertiliTech AS (FertiliTech) sued Stanford and Auxogyn Inc., which is based in Menlo Park, Calif., and licenses the patent, in 2011 seeking a declaratory judgment that its product didn't infringe Stanford's patent and that the patent is invalid or unenforceable, or both.

The U.S. District Court for the Northern District of California dismissed the case on Sept. 14, 2012, saying that there was no controversy between the parties because neither Stanford nor Auxogyn had accused FertiliTech of infringement.

FertiliTech filed a notice of appeal to the U.S. Court of Appeals for the Federal Circuit with the district court on Oct. 15, 2012, one month after the district court's order of dismissal. But the district court's docket noted that the appeals packet wasn't electronically mailed to the Federal Circuit until Sept. 3, 2015.

Since the district court's order, FertiliTech was acquired by Swedish company Vitrolife in 2014 and has patent applications pending in the U.S. and Europe for its embryo incubator/imaging apparatus and a method for using it. In its June 2015 financial statement, Vitrolife cited the FertiliTech acquisition's positive contribution to its overall sales.

Company Cites Auxogyn Letters

According to court records, Stanford owns by assignment U.S. Patent No. 7,963,906 (“Imaging and Evaluating Embryos, Oocytes and Stem Cells,” issued 9/21/11), which covers methods, compositions and kits for determining the presence of abnormalities in embryos using time-lapse microscopy. FertiliTech makes and sells incubators that take time-lapse images of developing embryos.

In its complaint for declaratory judgment, FertiliTech cited three letters it had received from Auxogyn, the first indicating that Auxogyn had learned that FertiliTech had been discussing procedures that might fall within the scope of the '906 patent, the second noting a FertiliTech publication titled “The Use of Morphokinetics as a Predictor of Embryo Implantation,” and the third suggesting that FertiliTech's planned presentations at the American Society for Reproductive Medicine (ASRM) annual meeting in Orlando, Fla., in October 2011 could induce others to infringe the '906 patent.

No Infringing Conduct, No Controversy

In the district court's order dismissing the litigation, Judge Yvonne Gonzalez Rogers wrote, “There has been no charge of infringement made by Auxogyn against Fertilitech, no charge of infringement made by Auxogyn against any reader of Fertilitech’s publications, and no charge of infringement made by Auxogyn against a viewer of Fertilitech’s presentations. Where no one is engaging in potentially infringing conduct, there is no controversy to support declaratory judgment jurisdiction to test the validity of a patent.”

FertiliTech's attorneys, writing on behalf of the company, declined in a Sept. 11 e-mail Bloomberg BNA's request for comment or additional background about the filing. Auxogyn didn't respond to Bloomberg BNA's e-mail request for comment.

The appeal was filed by Sterne, Kessler, Goldstein & Fox, PLLC, Washington, and Smithers Law Firm, San Jose, Calif.

To contact the reporter on this story: John T. Aquino in Washington at jaquino@bna.com

To contact the editor responsible for this story: Randy Kubetin at rkubetin@bna.com

The appeals court filing, which includes the district court's order, is at http://www.bloomberglaw.com/public/document/Unisense_Fertilitech_AS_v_Auxogyn_Inc_Docket_No_1501999_Fed_Cir_S.