United States District Court, D. Oregon
K. Legaard and Angela E. Addae, Schwabe, Williamson &
Wyatt pc, Of Attorneys for Plaintiff.
Kristin L. Cleveland, KLARKQUIST SPARKMAN LLP, Orion Armon,
COOLEY LLP, Alexandra Mayhugh, COOLEY LLP, Of Attorneys for
OPINION AND ORDER
Michael H. Simon United States District Judge.
patent action, the Court previously granted partial summary
judgment in favor of Plaintiff Ni-Q, LLC
(“Ni-Q”), finding that the asserted claims of the
subject patent are invalid and that Plaintiff did not
infringe the asserted claims. Ni-Q had sought a declaration
of invalidity and noninfringement and Defendant Prolacta
Bioscience, Inc. (“Prolacta”) had asserted a
counterclaim against Ni-Q for infringement, seeking money
damages and injunctive relief. Those claims have now been
resolved with the Court's Opinion and Order granting
Plaintiff's motion for summary judgment. The sole claim
remaining in this case is Plaintiff's claim for money
damages and injunctive relief under Oregon's Unlawful
Trade Practices Act (“UTPA”), Oregon Revised
Statutes (“ORS”) § 646.605, et seq.
Prolacta moves for summary judgment against this claim. For
the reasons discussed below, Prolacta's motion for
summary judgment is denied.
is entitled to summary judgment if the “movant shows
that there is no genuine dispute as to any material fact and
the movant is entitled to judgment as a matter of law.”
Fed.R.Civ.P. 56(a). The moving party has the burden of
establishing the absence of a genuine dispute of material
fact. Celotex Corp. v. Catrett, 477 U.S. 317, 323
(1986). The court must view the evidence in the light most
favorable to the non-movant and draw all reasonable
inferences in the non-movant's favor. Clicks
Billiards Inc. v. Sixshooters Inc., 251 F.3d 1252, 1257
(9th Cir. 2001). Although “[c]redibility
determinations, the weighing of the evidence, and the drawing
of legitimate inferences from the facts are jury functions,
not those of a judge . . . ruling on a motion for summary
judgment, ” the “mere existence of a scintilla of
evidence in support of the plaintiff's position [is]
insufficient.” Anderson v. Liberty Lobby,
Inc., 477 U.S. 242, 252, 255 (1986). “Where the
record taken as a whole could not lead a rational trier of
fact to find for the non-moving party, there is no genuine
issue for trial.” Matsushita Elec. Indus. Co. v.
Zenith Radio Corp., 475 U.S. 574, 587 (1986) (citation
and quotation marks omitted).
alleges that Prolacta has violated Oregon's UTPA.
Specifically, Ni-Q alleges that Prolacta violated ORS §
646A.810(2) by asserting a patent infringement claim in bad
faith. ORS § 646A.810(2) provides:
A person or the person's affiliate may not communicate a
demand, or cause another person to communicate a demand, to a
recipient if in the demand the person or the person's
affiliate alleges, asserts or claims in bad faith that the
recipient has infringed or contributed to infringing a patent
or the rights that a patentee has . . . under the patent.
addition, ORS § 646A.810(4) provides a list of possible
conditions that “[a] court may consider . . . as
evidence that a person or the person's affiliate has, in
bad faith, alleged, asserted or claimed an infringement of a
patent.” These include that the person making the
demand did not properly compare the claims of the patent to
the features of the allegedly infringing product (§
646A.810(4)(d)) and that the person making the demand knew or
should have known that the claim of infringement was without
merit or was deceptive (§ 646A.810(4)(f)). Any violation
of ORS § 646A.810(2) constitutes an unlawful practice
under ORS § 646.608, which triggers the right to file
is a corporation that produces and sells human milk formula
to medical service providers. Prolacta sells its formula to
hospitals for $180 per ounce, and a single premature infant
might consume thousands of dollars' worth of formula
during the course of his or her hospital stay. Ni-Q is a
relatively new entrant into the market for producing and
selling human milk formula. Ni-Q is a competitor of Prolacta.
Ni-Q's human milk formula is sold at a significantly
lower price than is Prolacta's.
November 11, 2016, Prolacta sent a letter (“November 11
Letter”) to the Chief Executive Officer
(“CEO”) of Ni-Q, Bill Pfost. ECF 25-2 at 1. The
letter's stated intent was to apprise Mr. Pfost of the
patents owned by Prolacta. Prolacta admitted to having
“very limited visibility into the products and
processes being developed by [Ni-Q].” Id.
Nonetheless, Prolacta expressed a suspicion “that
[Ni-Q] may be relying on matching donor genetic identity
marker profiles with donated milk samples.”
November 11 Letter, Prolacta alleges that Ni-Q infringed U.S.
Patent No. 8, 628, 921 (the '921 Patent), among other
patents. This patent involves “methods and systems for
diagnosing or screening human milk samples to confirm that
the milk is from a defined source.” ECF 57-1 at 5.
Prolacta acquired the '921 Patent through an assignment
of ownership rights from the inventors. Ni-Q asserts that the
'921 Patent has an effective filing date of March 20,
2008, and Prolacta does not dispute this date.
of the '921 Patent describes “[a] method for
determining whether a donated mammary fluid was obtained from
a specific subject.” This method comprises:
(a) testing a donated biological sample from the specific
subject to obtain a least one reference identity marker
profile for at least one marker;
(b) testing a sample of the donated mammary fluid to obtain
at least one identity marker profile in step (a);
(c) comparing the identity marker profiles, wherein a match
between [them] indicates that the mammary fluid was obtained
from the specific subject; and
(d) processing the donated mammary fluid . . . wherein the
processed donated mammary fluid comprises a human protein
constituent of 11-20 mg/mL; a human fat constituent of 35-55
mg/mL; and a human carbohydrate constituent of 70-120 mg/mL.
'921 Patent at 21:45-65. In the November 11 Letter,
Prolacta encouraged Ni-Q to review the '921 Patent, among
others, to ensure that Ni-Q was not infringing the patented
method of using genetic information from donated ...