Litigation Details for Trutek Corp. v. BlueWillow Biologics, Inc. (E.D. Mich. 2021)

Trutek Corp. v. BlueWillow Biologics, Inc. (E.D. Mich. 2021)

Docket		Date Filed	2021-02-10
Court	District Court, E.D. Michigan	Date Terminated	2024-02-02
Cause	15:1126 Patent Infringement	Assigned To	F. Kay Behm
Jury Demand	Defendant	Referred To	R. Steven Whalen
Parties	BLUEWILLOW BIOLOGICS, INC.
Patents	10,112,021; 10,138,279; 10,525,121; 12,146,003; 4,826,683; 5,662,957; 5,759,764; 6,375,986; 7,276,249; 7,314,624; 7,320,802
Attorneys	Liane M. Peterson
Firms	The Law Office of Keith Altman
Link to Docket	External link to docket

Biologic Drugs cited in Trutek Corp. v. BlueWillow Biologics, Inc.

Details for Trutek Corp. v. BlueWillow Biologics, Inc. (E.D. Mich. 2021)

Date Filed	Document No.	Description	Snippet	Link To Document
2021-02-10				External link to document
2021-02-10	12	Response to Motion	6,559,189; U.S. Patent No. 6,506,803; U.S. Patent No. 10,138,279; U.S. Published… 6,506,803; U.S. Patent No. 10,138,279; U.S. Published Application No. 2006/0163149; U.S. Published …one count of patent infringement of United States Patent No. 8,163,802 (“the ’802 Patent”) against BlueWillow…’802 Patent invalid under 35 U.S.C. § 102 and/or § 103: U.S. Patent No. 6,559,189; U.S. Patent No. 6,506,803…BlueWillow did not infringe Trutek’s patent; and (ii) Trutek’s patent is invalid. Trutek	External link to document
2021-02-10	16	Answer to Counterclaim	6,559,189; U.S. Patent No. 6,506,803; U.S. Patent No. 10,138,279; U.S. 19 Published Application…infringement of 11 U.S. Patent No. 8,163,802 ("the '802 Patent") by BlueWillow, but …suit alleging one count of patent infringement 15 of the '802 Patent against BlueWillow. 16 … '802 Patent invalid under 35 U.S.C. § 102 and/or § 103; U.S. Patent No. 18 …Further, while Defendant cited four patents and 23 two patent application publications to support	External link to document
2021-02-10	28	Exhibit Proposed Amended Complaint	the Same." c. U.S. Patent No. 10,138,279 issued on November 27, 2018 to James R. …proper under the Patent Venue Statute, 28 U.S.C. § 1400(b) since the tort of patent infringement occurred…1995, United States Patent No. 5,468,488 (hereinafter the '488 Patent) was issued to WAHI …x27;488 Patent was assigned to TRUTEK. 8. On October 7, 1997, United States Patent No. 5,674,481…2005, United States Patent No. 6,844,005 (hereinafter the '005 Patent) was issued to WAHI	External link to document
2021-02-10	30	Exhibit E - October 25, 2021 Email from S. Kremen to L. Peterson and Attached Oc	206,996; and 10,525,121, all assigned to Nanobio. Further, I reviewed United States PatentNumbers 7,314,624… associated with the Nanobio patents. It is my belief that these patents as well as other publications…claims 1 and 2 of the.'802 Patent (owned by Tfutek) wifh the patents apd other publications describins…researched the patents'claims of both Trutek and Blue Willow and noting the patents and public armouncements…14312. At your request, I reviewed United States Patent No. 8,163,802 (hereinafter the '802 PatenJ	External link to document
2021-02-10	39	Exhibit 1 - Trutek's Interrogatory Answers	No. 6,506,803; U.S. Patent No. 10,138,279; U.S. Published Application No. 2006/0163149; U.S. Published…The term "Asserted Patent" or “Patent-in-Suit” shall mean U.S. Patent No. 8,163,802 (…802 Patent invalid under 35 U.S.C. § 102 and/or § 103: U.S. Patent No. 6,559,189; U.S. Patent …identifying each patent claim that You contend has been infringed by the asserted patent or will be … of the '802 Patent invalid. According to the law, the '802 Patent is presumed valid	External link to document

Trutek Corp. v. BlueWillow Biologics, Inc.: A Comprehensive Litigation Summary and Analysis

Background of the Case

The litigation between Trutek Corp. and BlueWillow Biologics, Inc. (Case No. 21-10312) is a patent infringement case heard in the United States District Court for the Eastern District of Michigan. Trutek Corp., a New Jersey-based company, alleged that BlueWillow Biologics, Inc., a Delaware corporation with operations in Michigan, infringed on Trutek's '802 Patent related to an "electrostatically charged nasal application" technology[2].

Key Allegations and Relief Sought

Trutek Corp. filed a complaint on February 10, 2021, asserting that BlueWillow Biologics had infringed on the '802 Patent through the manufacture, sale, and use of its NanoBio® products. Trutek sought various forms of relief, including damages for past infringement, an injunction to prevent future infringement, and other related relief such as preventing the export and inducing the sale of the infringing products[2].

Court Proceedings and Rulings

Denial of Damages

The court issued a significant ruling on January 17, 2024, granting BlueWillow's motion for summary judgment of no damages. The court found that Trutek could not recover damages due to two independent reasons: first, Trutek failed to provide sufficient evidence to support a nonspeculative damages award; second, Trutek did not comply with the marking requirement under 35 U.S.C. § 287(a), which is necessary for recovering pre-suit damages[3].

Mootness of Injunctive Relief

Following BlueWillow's stipulation to not manufacture, use, sell, or import the NanoBio® product for the life of the '802 Patent, the court determined that Trutek's request for an injunction was moot. This decision was based on the lack of ongoing irreparable injury to Trutek, as BlueWillow's products in development were intranasal vaccine products, a business area in which Trutek was not engaged[1].

Denial of Motions to Amend the Complaint

Trutek's attempts to amend the complaint to include additional infringement claims were denied. On June 2, 2022, and November 17, 2022, the court rejected Trutek's motions to add claims related to BlueWillow's developmental vaccine candidates and willful infringement, respectively[1].

Arguments and Counterarguments

Trutek's Arguments

Trutek argued that the case should proceed to adjudication of the infringement and validity issues, emphasizing that the core issue was BlueWillow's use of Trutek's patented technology in both the NanoBio® Protect product and its developmental vaccines. Trutek contended that the availability of relief rested on the use of this infringing technology in BlueWillow's products[1].

BlueWillow's Arguments

BlueWillow argued that the case should be dismissed due to the mootness of Trutek's requests for relief. BlueWillow pointed out that Trutek no longer had standing to maintain the case since its requests for damages and an injunction were moot. BlueWillow also argued that there was no ongoing irreparable injury to Trutek, as their products were not in the same business area[1].

Court's Decision on Mootness

The court ultimately found that Trutek's remaining request for injunctive relief was moot given BlueWillow's stipulation. The court decided that the remaining issues in the case were now moot and thus dismissed BlueWillow's request to dismiss the case without a hearing, citing Local Rule 7.1(f)(2)[1].

Motion for Reconsideration

Trutek filed a motion for reconsideration of the court's order granting summary judgment of no pre-suit damages. However, the court denied this motion, finding that Trutek had not met the requirements for reconsideration. The court noted that denying BlueWillow's motion would not change the overall outcome, as Trutek could not recover damages on two independent grounds[3].

Legal Implications

The case highlights several important legal implications:

• Marking Requirement: The court's emphasis on the marking requirement under 35 U.S.C. § 287(a) underscores the importance of compliance with this provision for patent holders seeking damages.
• Mootness: The stipulation by BlueWillow to cease infringing activities rendered Trutek's request for an injunction moot, illustrating how such stipulations can significantly impact the trajectory of patent infringement cases.
• Evidence of Damages: The court's ruling on the lack of sufficient evidence to support a damages award emphasizes the need for robust and specific evidence in patent infringement cases.

Industry Insights

This case provides valuable insights for companies involved in patent litigation:

• Patent Marking: Companies must ensure compliance with patent marking requirements to avoid losing the right to recover pre-suit damages.
• Stipulations and Mootness: Defendants can potentially moot certain claims by stipulating to cease infringing activities, which can significantly alter the legal landscape of the case.
• Evidence and Documentation: Plaintiffs must gather and present strong evidence to support their claims for damages and injunctive relief.

Key Takeaways

• Trutek Corp.'s claims for damages and injunctive relief were denied due to lack of evidence and mootness.
• Compliance with the marking requirement under 35 U.S.C. § 287(a) is crucial for recovering pre-suit damages.
• Stipulations by defendants can render certain claims moot.
• Robust evidence is essential for supporting claims in patent infringement cases.

Frequently Asked Questions (FAQs)

What was the primary issue in the Trutek Corp. v. BlueWillow Biologics, Inc. case?

The primary issue was whether BlueWillow Biologics, Inc. infringed on Trutek Corp.'s '802 Patent related to an "electrostatically charged nasal application" technology.

Why was Trutek Corp.'s request for damages denied?

Trutek Corp.'s request for damages was denied because they failed to provide sufficient evidence to support a nonspeculative damages award and did not comply with the marking requirement under 35 U.S.C. § 287(a).

What was the impact of BlueWillow Biologics, Inc.'s stipulation on the case?

BlueWillow Biologics, Inc.'s stipulation to not manufacture, use, sell, or import the NanoBio® product for the life of the '802 Patent rendered Trutek Corp.'s request for an injunction moot.

Why were Trutek Corp.'s motions to amend the complaint denied?

Trutek Corp.'s motions to amend the complaint were denied because the court found that adding new claims would not change the outcome of the case given the existing rulings on damages and mootness.

What are the key legal implications of this case?

The case highlights the importance of complying with the marking requirement, the potential for stipulations to render claims moot, and the necessity of robust evidence in patent infringement cases.

Cited Sources

1. Trutek Corp. v. BlueWillow Biologics, Inc., No. 21-10312 - United States District Court, E.D. Michigan, Southern Division, Feb 2, 2024.
2. TRUTEK CORP., Plaintiff, v. BlueWillow Biologics, Inc. - IN THE UNITED STATES DISTRICT COURT EASTERN DISTRICT OF MICHIGAN.
3. Trutek Corp. v. Bluewillow Biologics, Inc., No. 21-10312 - United States District Court, E.D. Michigan, Southern Division, Jan 17, 2024.