Sysmex Corp. v. Beckman Coulter, Inc.

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SYSMEX CORPORATION and SYSMEX AMERICA, INC., Plaintiffs, v. BECKMAN COULTER, INC., Defendant.

Civil Action No. 19-1642-JFB-CJB

United States District Court, D. Delaware

June 2, 2022

REPORT AND RECOMMENDATION

CHRISTOPHER J. BURKE, UNITED STATES MAGISTRATE JUDGE

Presently before the Court in this patent infringement case is the portion of Defendant Beckman Coulter, Inc.'s (“BCI” or “Defendant”) “Motion for Summary Judgment of Invalidity” (the “Motion”), filed pursuant to Federal Rule of Civil Procedure 56, in which it argues that Plaintiffs Sysmex Corporation and Sysmex America, Inc.'s (“Sysmex” or “Plaintiffs”) asserted United States Patent Nos. 10, 401, 350 (the “'350 patent”) and 10, 401, 351 (the “'351 patent”) (collectively, the “asserted patents” or the “patents-in-suit”) are directed to non-patent-eligible subject matter pursuant to 35 U.S.C. § 101 (“Section 101”). (D.I 410)^[1] For the reasons set out below, the Court recommends that BCI's Motion be DENIED in this regard.

I. BACKGROUND

Sysmex commenced this action on September 3, 2019. (D.I. 1) The case was thereafter referred to the Court to hear and resolve all pretrial matters through the case-dispositive motion deadline, as well as to handle the pre-trial conference. (D.I. 11; 3/2/22 Oral Order)

BCI filed the instant Motion on November 30, 2021, (D.I. 410), and briefing was completed on January 14, 2022, (D.I. 435). The Court heard oral argument on the Motion (as well as on other summary judgment and Daubert motions) by videoconference on February 25, 2022. (D.I. 486 (hereinafter, “Tr.”))

The Court writes here primarily for the parties, and so any facts relevant to this Report and Recommendation will be discussed in Section III below.

II. STANDARD OF REVIEW

The Court incorporates by reference the standard of review applicable to summary judgment motions and the legal standards relating to Section 101, which were set out in S.I.SV.EL. Societa Italiana per lo Sviluppo Dell'Elettronica S.p.A v. Rhapsody Int'l Inc., Civil Action No. 18-69-MN-CJB, Civil Action No. 18-70-MN-CJB, 2019 WL 1102683, at *2-4 (D. Del. Mar. 8, 2019).

III. DISCUSSION

At step one of the Alice inquiry, BCI argues that the asserted claims are directed to the abstract concept of “operating conventional sample analyzers in a ‘distinct' body fluid mode” that “automatically collects, analyzes, and displays body fluid data.” (D.I. 411 at 6 (internal citation omitted), 15; D.I. 435 at 10-11, 13) BCI treats claim 16 of the '351 patent as representative, and it contends that the elements making up that claim amount to nothing more than “abstract ideas, routine computer automation, and hardware conventional to the field of automated hematology analyzers[.]” (D.I. 411 at 15; see also id. at 4-15; D.I. 435 at 12) From there, BCI contends that the step two inquiry cannot save the asserted claims because there is nothing left to consider in the claims. (D.I. 411 at 15-16; see also id. at 4 (“[T]he asserted claims ....recite no features that can participate in step two.”); D.I. 435 at 18)

Sysmex, for its part, disputes that claim 16 is representative of all other asserted claims. (D.I. 427 at 10) But beyond that, Sysmex retorts that claim 16 (and all of the asserted claims) are directed to an “improved analyzer that includes a controller programmed for new operations for sensing, counting and displaying particular types of body fluid cell counts in [a] way that was not done in conventional analyzers.” (Id. at 11-12)^[2] In support of the idea that the asserted patents claim such an improved analyzer, Sysmex points in part to the patents' specification, which describes a previously-published patent application that disclosed a “blood cell analyzer which is capable of measuring cells in a body fluid” but unsuitably so, as the operator (not the analyzer) had to prepare the measurement sample, and the analyzer did not “disclose measurement operations suited to the fluid when measuring a body fluid.” ('351 patent, col. 1:45-61 (cited in D.I. 427 at 2))^[3] Sysmex also attacks BCI's step one analysis as implicating several disputed questions of fact that should defeat BCI's Motion. (D.I. 427 at 12-15; Tr. at 92; Sysmex's Summary Judgment Presentation, Slide 26) Finally, Sysmex argues that even if the asserted claims are directed to an abstract idea, they nevertheless disclose an inventive concept in providing “several technological solutions, individually and as an ordered combination, for analyzing body fluids with a very low number of cells that is more accurate and reliable than the prior art.” (D.I. 427 at 15)

The Court begins at Alice's step one, which is where the parties focused nearly all of their attention in their briefing. In doing so, the Court will address claim 16-the claim that BCI says is representative of all asserted claims. As part of its step one inquiry, the Court asks: (1) What is claim 16 directed to?; and (2) Does whatever claim 16 is directed to amount to an abstract idea?

How does the Court make this determination? In this type of a case, the relevant inquiry at step one is whether the claims are directed to an improvement in computing devices or other technology (in which case the claim would be patent-eligible), or whether they are simply directed to a “process that qualifies as an ‘abstract idea' for which computers are invoked merely as a tool” (in which case they would be directed to an abstract idea, and the Court would then proceed to Alice's step two). See Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335-36 (Fed. Cir. 2016); see also Two-Way Media Ltd. v. Comcast Cable Commc'ns, 874 F.3d 1329, 1337 (Fed. Cir. 2017) (“We look to whether the claims in the patent focus on a specific means or method, or are instead directed to a result or effect that itself is the abstract idea and merely invokes generic processes and machinery.”).

At the start, it is worth noting that both parties agree that claim 16 is a claim to a sample analyzer that has a body fluid measuring mode that differs in operation from its blood measuring mode. (D.I. 411 at 3, 6; D.I. 427 at 11-12; D.I. 417, ex. 19 at ¶ 144)^[4] That is what the claim says, after all. But what is disputed is how the claimed sample analyzer should be properly characterized for purposes of the step one analysis. (Sysmex's Summary Judgment Presentation, Slide 20; Tr. at 88-89)

In that regard, BCI argues that claim 16 simply describes an abstract idea. Key to BCI's argument here is its repeated assertion that the sample analyzer in the claim is programmed to automatically follow entirely conventional processes. This is seen in the following excerpts from BCI's briefing:

• “[A] controller programmed to automatically follow known rules [such as initiating a pre-wash of the detectors before body fluid analysis] is not patentable subject matter.” (D.I. 411 at 2 (emphasis added));

• “The remaining elements of claim 16 address two automated sets of instructions [including] the ‘body fluid measuring mode.' . . . BCI's LH 750 system literally offered a distinct ‘Body Fluid mode' by 2004, almost three years before Sysmex filed its original patent application.” (Id. at 7 (internal citations omitted); see also id. at 2-3, 8);

• The “second clause [of claim 16] introduces ‘detectors' that sense cells in blood and body fluids” but prior art analyzers such as the LH 750 and XE-2100 included detectors that did just that, such that the claimed “conventional detectors” are irrelevant to the Alice analysis. (Id. at 8 (emphasis added); see also D.I. 435 at 12 n.3 (“Here, it is undisputed that the claims use detectors in a conventional manner.”) (emphasis added));

• “The . . . body fluid mode[] [is] merely [an] ineligible collection[] of generalized steps to be performed on a computer using conventional computer activity.” (D.I. 411 at 10 (internal quotation marks and citation omitted) (emphasis added));

• “[T]he seventh clause [of claim 16] recites performing a conventional body fluid sensing operation in response to another user input.” (Id. at 11 (emphasis added));

• “The eighth clause [of claim 16] finally identifies a difference between the blood and body fluid modes by reciting a pre-washing step” but this concept was conventional because it was “previously described in operator's manuals for the conventional workstations sold by both BCI and Sysmex[;]” “a controller programmed to automatically apply instructions that BCI (and Sysmex) published in 2004 [instructing users to always initiate a pre-wash before analyzing body fluid] is patent[-]ineligible subject matter.” (Id. at 12-13; see also D.I. 435 at 15-16);

• “What is allegedly ‘new' is organizing conventional blood and body fluid protocols into modes.” (D.I. 435 at 11 (emphasis added)); and

• “[S]teps that generically spell out what it means to apply a conventional body fluid protocol on a sample analyzer cannot confer patent eligibility.” (Id. at 12 (internal quotation marks and citation omitted) (emphasis added))

Sysmex, however, noted that BCI's arguments implicate material disputes of fact regarding whether the claimed sample analyzers do in fact only utilize conventional processes. (D.I. 427 at 12-15; Sysmex's Summary Judgment Presentation, Slide 26) For example, Sysmex points to record evidence such as the following:

• Sysmex's expert, Dr. J. Paul Robinson, opines in several paragraphs as to why BCI's prior art LH 750 system does not include the claimed system-i.e., because the LH 750 system operates the same whether it is measuring body fluid or blood samples, whereas the claimed system does not. (D.I. 417, ex. 16 at ¶¶ 188-97; see also, e.g., D.I. 133 at 4);

• The claimed detectors are not used in a conventional manner because the prior art LH 750 and

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