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Anticancer, Inc., A California Corporation v. U.S.A.

March 11, 2013


The opinion of the court was delivered by: Hon. Gonzalo P. CURIELUnited States District Judge


[DKT. NO. 101]

The matter before the Court is Defendants Fujifilm Medical Systems U.S.A., Inc., Fujifilm Corporation (collectively, "Fujifilm"), and GE Healthcare Inc.'s ("GE," together "Defendants") motion for summary judgment of non-infringement (Dkt. No. 101.)


This is a lawsuit for patent infringement of imaging and cancer research technologies. On June 17, 2009, Plaintiff AntiCancer, Inc. ("AntiCancer" or "Plaintiff") filed a Complaint asserting violations of three patents. (Dkt. No. 1.) On August 20, 2009, AntiCancer filed its first amended complaint and on November 16, 2009, AntiCancer filed its second amended complaint. (Dkt. Nos. 6, 22.) After the Court struck the second amended complaint due to failure to obtain leave to file, Plaintiffs filed its second amended complaint again, which is now the operative pleading in this case. (Dkt. No. 44, Second Amended Complaint, hereinafter "SAC".) On April 29, 2010, Defendant GE filed a motion to dismiss. (Dkt. No. 45.) The Court denied GE's motion to dismiss, finding that "AntiCancer has not adequately alleged a claim for contributory infringement but AntiCancer has adequately alleged a claim for inducement of infringement." (Dkt. No. 53.) On October 31, 2011, the parties filed a revised joint claim construction hearing statement and construction chart, coming to full agreement on all terms. (Dkt. No. 91.)

On September 12, 2012, Defendants Fujifilm and GE filed a motion for summary judgment of non-infringement. (Dkt. No. 101.) On October 5, 2012, Plaintiff AntiCancer filed an opposition to Defendants' motion for summary judgment. (Dkt. No. 105.) On October 19, 2012, Defendants filed a reply. (Dkt. No. 110.) A hearing was held on the motion on March 8, 2013. For the reasons below, the Court GRANTS Defendants motion for summary judgment.


AntiCancer alleges that it holds patents for techniques which allow researchers to track metastasis of tumor cells in live lab animals through the use of fluorescent proteins, including green fluorescent protein ("GFP"), a protein which occurs naturally in a species of jellyfish; do whole-body external optical imaging of gene expression in live animals; and evaluate candidate protocols or drugs for treating disease using fluorophores, i.e., proteins which self-fluoresce. (Dkt. No. 44 at 1.) AntiCancer engineers tumor cells encoded with GFP and other fluorophores which glow when exposed to blue light. Id. AntiCancer then injects the tumor cells into animals which allows scientists to monitor the tumors' "growth and spread in the living fluorescence imaging." Id. at 1-2. This allows researchers to test the efficacy of cancer treatments. Id. at 2.

AntiCancer identifies three patents at issue in this case.*fn1 First, the '384 claims methods for "a real-time model of tumor invasion and metasasis formation. The method enables testing of candidate protocols or drugs in animal models before they are tried in the clinic." Id. at 5. One of the key terms in the patent is green fluorescent protein, or "GFP." The '384 patent claims a method for testing cancer drugs by administering them to mammals with primary tumors which "express" the GFP when the cancer metastasis and monitoring the progress of the metastasises via fluorescence optical tumor imaging. Id. The patent also covers a process of removing organ tissue samples containing GFP-expressing cancer cells and examining them under a fluorescence microscope. Id.

The '038 patent is a method of monitoring the growth of tumor cells in live animals via the expression of green fluorescent protein that express when the tumor metastasizes. According to the Joint Claim chart, Claim 1 of the '038 patent is "a method to evaluate a candidate protocol or drug for the inhibition of metastasis of a primary tumor which method comprises administering said protocol or drug to a subject which is a mouse, rat or rabbit which contains a primary tumor that stably expresses green fluorescent protein (GFP) in cells of said tumor." (Dkt. No. 91, Revised Claim Construction Worksheet, October 31, 2011 at 6.) Claim 1 also requires monitoring of the fluorescence in treated and controlled subjects. (Id. at 7-8.) In short, the patent method requires the injection of a tumor with the GFP into a small live animal, which is then monitored to determine the growth of the tumor by the expression of the GFP. The additional claims under the '038 patent similarly require monitoring the progression of the metastasis using GFP. (Id. at 9-10.)

The '159 patent claim method is used to monitor the ability of a promoter (i.e., a genetic segment that acts as the 'on/off switch' for the expression of that gene) to promote expression in an animal of a gene that is controlled by the said promoter. (Id. at 1.) The claim also includes delivering cells containing nucleic acid with fluorophore and observing the presence of the fluorescence generated by the fluorophore. (Id. at 2-3.) Claim 5 expands claim 1 to include green, blue and red fluorescent proteins. (Id. at 4.) Additional claims also expand upon claim 1 to include a variety of tissues, organs and animals. (Id. at 4-6.)

AntiCancer bases Defendant Fufifilm's wrongful conduct on a series of emails and interactions regarding specific Fujifilm products that have the capability to conduct similar imaging technologies patented by AntiCancer. (Dkt. No. 44, SAC.) On May 30, 2007, an employee of Fujifilm, Stephanie Pappas and the president of AntiCancer, Robert Hoffman, met to discuss "in-vivo imaging of small animals." During the meeting, they discussed Fujifilm's new LAS-4000 multi color fluoresecence imaging system which is "one of the industry's fastest and most sensitive imaging systems" for "imaging of tumor cells and gene expression in live laboratory animals using GFP." Id. Ms. Pappas informed Dr. Hoffman that she would begin to have the two companies work together, and seek to have Fujifilm obtain a license from AntiCancer to market the LAS-4000 for in-vivo imaging. Id. One month later, Ms. Pappas informed Dr. Hoffman that Fujifilm was releasing the LAS-4000, but that Fiujifilm was unable to advertise the LAS-4000 for "GFP-based in vivo imaging because of 'patents' and 'lawsuits'." Id. On September 13, 2007 Fuijifilm conducted a demo of the LAS-4000 at AntiCancer's facilities. Id. at 8. In December, Fujifilm conducted a "mini product show" where the LAS-4000 was also demonstrated. AntiCancer never heard back from Fujifilm about obtaining a license, and claims that "Fujifilm used the information obtained from AntiCancer under the pretense of seeking a collaboration with AntiCancer for the sole purpose of gaining an advantage in the marketing of its LAS-4000 for GFP-based in vivo imaging, and had no intention of a collaboration with AntiCancer at all." Id.

In May 2008, Fujifilm published "Application Note No. 6," entitled In Vivo Imaging of Tumor-Bearing Nude Mouse with DY-676 Labeled Monoclonal Antibody Using Near-Infrared Light. Id. "This paper proved both the suitability of the LAS-4000 for performing the methods claimed in several claims of the patents-in-suit and Fujifilm's attempt to induce actual and potential customers to use the LAS-4000 for that very purpose." Id. AntiCancer accuses Fujifilm of marketing the LAS-4000 for sale in the United States. Its marketing materials lists the "proper filter and reagents to use for imaging with GFP...and contain a general, boilerplate notice to its customers regarding use of the LAS-4000 an potential patent liability." Another advertisement states that the LAS-4000 can do fluorescent imaging as well as "small animal in vivo imaging." Fujifilm continues to market and sell the LAS-4000 in the United States. In addition to the LAS-4000, AntiCancer believes additional products also violate their patents, including the LAS-1000plus, LAS-3000 luminescent image analyzer, FLA-5100 fluorescent image analyzer, and FLA-8000 fluorescent image analyzer, as well as the "mini" versions of each of the LAS-labeled devices. Id. at 9. "It provides its customers with detailed user manuals which provide filter settings and lens configurations necessary to use Fujifilm image analyzers to do fluorescent imaging. In so doing, Fujifilm actively has induced and...will continue to induce infringement of AntiCancer's patents by knowingly causing its customers to infring those patents directly by using the Fujifilm image analyzers to perform methods claimed in those patents." Id.

On May 26, 2009, Fujifilm and GE Healthcare announced the formation of a strategic alliance in which Fujifilm sells to GE Healthcare image analyzers to be re-sold by GE Healthcare. Id. On October 1, 2009, GE Healthcare began offering for sale a line of imaging products "capable of infringing the patents-in-suit." Id. The "products equivalent" to the LAS-4000 and LAS-4000 mini, GE's products, the "ImageQuant LAS 400 and Image Quant LAS 4000 mini," allegedly infringe the patents-in-suit. Id. AntiCancer asserts that both Fujifilm ...

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