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Mauna Kea Technologies v. Anticancer

November 9, 2011


The opinion of the court was delivered by: Hon. Anthony J. Battaglia U.S. District Judge


Plaintiff Mauna Kea Technologies ("MKT") brings this action against Defendant AntiCancer, Inc. ("AntiCancer") for a declaratory judgment of non-infringement, invalidity, and unenforceability of AntiCancer's seven patents. AntiCancer filed a motion to dismiss for lack of subject matter jurisdiction [Doc. No. 8]. The Plaintiff filed an opposition [Doc. No. 10], and the Defendant filed a reply [Doc. No. 12]. The hearing set for November 10, 2011 at 1:30 p.m. before Judge Battaglia is hereby VACATED as this motion is appropriate for submission on the papers without oral argument pursuant to Civil Local Rule 7.1.d.1. Based upon the parties' moving papers and for the reasons set forth herein, the Defendant's motion to dismiss [Doc. No. 8] is hereby DENIED.


AntiCancer is a California corporation with its principal place of business in San Diego and holds numerous patents covering in vivo green fluorescence protein ("GFP") imaging. MKT is a French corporation with its principal place of business in Paris, France and sells the CellVizio imaging device.

MKT filed this Complaint for declaratory relief seeking a determination that MKT does not infringe any claim of AntiCancer's U.S. Patent Nos. 6,232,523; 6,235,967; 6,235,968; 6,251,384; 6,649,159; 6,759,038; and 6,905,831 ("Patents-In-Suit"). MKT contends that AntiCancer created an actual case or controversy through: 1) repeated assertions in correspondence between MKT and AntiCancer, that MKT must obtain a license under at least six patents identified by AntiCancer, as well as other unidentified AntiCancer patents; and 2) filing numerous actions in this Court accusing other companies of infringing the same patents which AntiCancer is asserting against MKT.

I. The Correspondence at Issue

The communications MKT relies upon in bringing the instant action consist of four letters between MKT and AntiCancer in 2006 and one letter in 2010.

A. The 2006 Letters

The correspondence begins with the January 17, 2006 letter from AntiCancer's founder and CEO, Dr. Robert Hoffman, to Dr. Sacha Loisseau of MKT. [Doc. No. 8-3.] The letter specifically identifies six patents as well as unspecified "pending world-wide patents" and alleges that "[i]t is clear" that the "prime use" of the instruments sold and promoted by MKT is to practice the imaging techniques claimed in AntiCancer's patents and pending applications.*fn1 The letter states, "Therefore, it is necessary for MKT to have a license from AntiCancer to sell this instrument." The letter goes on to dictate conditions for the demanded licenses, noting that the license will provide MKT's customers "full rights to sell and use" MKT's product. The letter closes by requesting AntiCancer designate a person to "begin negotiations."

On February 9, 2006, MKT's counsel sent a letter to Dr. Hoffman, informing AntiCancer that its license demand was "far too broadly stated." MKT's counsel cited AntiCancer's lack of specifics regarding the alleged infringement and requested AntiCancer identify the specific patent claims allegedly infringed and the specific products accused, as well as identify and provide copies of the pending applications referenced by Dr. Hoffman to allow MKT to make a good faith evaluation of AntiCancer's assertions that a license was "necessary." [Doc. No. 10-1, p.3.]

Dr. Hoffman's response on March 22, 2006 did not address any of the concerns of MKT's counsel set forth in the February 9, 2006 letter and was addressed to Dr. Sacha Loisseau of MKT. Dr. Hoffman again alleged that AntiCancer's patents "clearly cover" MKT's product(s) and application(s) and included a "term sheet" requiring the payment of hundreds of thousands of dollars.

MKT's counsel wrote back to Dr. Hoffman on April 6, 2006, again stating that it was unreasonable for AntiCancer to allege infringement in such unspecified terms. [Doc. No. 10-1 p.8.] MKT's counsel further stated that MKT was unwilling to consider negotiation of a license without knowing at least which claims of which patents were asserted to cover which products or activity and in what manner. MKT again requested AntiCancer identify the relevant claims of each patent. Id. AntiCancer did not respond to this request.

B. The 2010 Letter

On November 22, 2010, more than four years later, AntiCancer's counsel sent MKT's counsel a letter accompanied by an email that acknowledged the prior 2006 correspondence, stating that MKT's counsel was being contacted "based on review of prior correspondence." [Doc. No. 8-5 p.1-3.] AntiCancer's letter stated that it was not accusing MKT of infringement, but demanded MKT respond to a series of interrogatory-like questions regarding ...

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