DCT

1:23-cv-11121

MSTM LLC v. Ab Sciex LLC

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:23-cv-11121, D. Mass., 08/28/2023
  • Venue Allegations: Venue is alleged to be proper in the District of Massachusetts because Defendant AB Sciex has a principal place of business and corporate headquarters in Framingham, Massachusetts, and allegedly engages in infringing activities within the District.
  • Core Dispute: Plaintiffs allege that Defendant’s mass spectrometry devices and related components infringe eight patents related to technologies for ionizing molecules for analysis in mass spectrometry.
  • Technical Context: Mass spectrometry is a foundational analytical technique used in drug development, proteomics, and chemical analysis to identify and quantify compounds by measuring the mass-to-charge ratio of their ions.
  • Key Procedural History: The complaint alleges a detailed pre-suit history where Defendant Sciex engaged in licensing and collaboration discussions with Plaintiffs under non-disclosure agreements beginning as early as 2015. Plaintiffs allege that during these discussions, they disclosed confidential information and demonstrated their patented technologies, which Defendant praised but ultimately declined to license before allegedly incorporating the technologies into its own products, including the Echo MS System. This history forms the basis for allegations of willful infringement and trade secret misappropriation.

Case Timeline

Date Event
2007-09-26 U.S. Patent No. 7,977,629 Priority Date
2010-09-02 U.S. Patent Nos. 9,552,973, 10,128,096, and 10,796,894 Priority Date
2011-07-12 U.S. Patent No. 7,977,629 Issues
2012-05-21 U.S. Patent Nos. 9,105,458, 10,679,838, and 11,430,648 Priority Date
2014-06-13 U.S. Patent No. 9,870,909 Priority Date
2015-05-01 Sciex and MSTM enter confidentiality agreement and hold meetings
2015-08-11 U.S. Patent No. 9,105,458 Issues
2015-10-01 Sciex and MSTM hold additional meetings
2017-01-24 U.S. Patent No. 9,552,973 Issues
2018-01-16 U.S. Patent No. 9,870,909 Issues
2018-11-13 U.S. Patent No. 10,128,096 Issues
2020-06-09 U.S. Patent No. 10,679,838 Issues
2020-07-01 Sciex announces launch of the Echo MS System
2020-10-06 U.S. Patent No. 10,796,894 Issues
2022-08-30 U.S. Patent No. 11,430,648 Issues
2023-08-28 Complaint Filed

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 7,977,629 - “Atmospheric Pressure Ion Source Probe for a Mass Spectrometer”

The Invention Explained

  • Problem Addressed: The patent addresses the need for a versatile ion source that can analyze both liquid and solid samples, and ionize volatile, semi-volatile, and nonvolatile compounds, which conventional methods struggled to do efficiently in a single apparatus (’629 Patent, col. 1:15-46).
  • The Patented Solution: The invention is an atmospheric pressure ion source probe that uses a heated gas stream to vaporize compounds from a solid or liquid sample placed on the probe. These vapors are then ionized by a corona or Townsend electrical discharge for analysis by a mass spectrometer (’629 Patent, Abstract; col. 2:20-33). This allows for rapid analysis of diverse sample types without extensive preparation.
  • Technical Importance: The technology provides a method for direct, rapid analysis of solids and liquids at atmospheric pressure, simplifying the workflow for mass spectrometry in various applications (Compl. ¶56).

Key Claims at a Glance

  • The complaint asserts infringement of one or more claims of the ’629 Patent but does not identify specific claims in the body of the complaint, instead referring to an exhibit not provided with the complaint (Compl. ¶127). The first independent apparatus claim is Claim 16.
  • Essential elements of Independent Claim 16 include:
    • An atmospheric pressure ion source probe for making and introducing ions of a sample into a mass spectrometer.
    • An enclosure defining an ionization region at substantially atmospheric pressure.
    • A flange for mounting the probe to the enclosure.
    • A sample holding means comprised of a heat tolerant material for receiving a solid or neat liquid sample.
    • An adjusting means for positioning the sample holding means within the ionization region.
    • A means for ionizing the sample by forming a vaporized analyte.
    • A port for transferring ions into the mass spectrometer.

U.S. Patent No. 9,552,973 - “System and Method for Ionization of Molecules for Mass Spectrometry and Ion Mobility Spectrometry”

The Invention Explained

  • Problem Addressed: Conventional ionization methods like electrospray ionization (ESI) or matrix-assisted laser desorption/ionization (MALDI) often require a high electric field, a high-velocity gas, or a laser, increasing system complexity and cost. Transferring ions from atmospheric pressure to the lower pressure of a mass analyzer is also an inefficient process (’973 Patent, col. 2:1-6).
  • The Patented Solution: The invention describes an ionizing system where a channel connects a high-pressure region to a low-pressure region. A sample introduced into this channel is ionized by heat from a heater coupled to the channel, driven by the pressure differential without needing an external electric field or laser (’973 Patent, Abstract; col. 2:21-28). This pressure- and heat-driven process generates charged particles from the sample for analysis.
  • Technical Importance: This approach simplifies the ionization source, potentially improving sensitivity by generating ions more efficiently within a contained channel that directly feeds the mass analyzer (Compl. ¶66).

Key Claims at a Glance

  • The complaint asserts infringement of one or more claims of the ’973 Patent but does not identify specific claims, referring to an exhibit not provided with the complaint (Compl. ¶137). The first independent claim is Claim 1.
  • Essential elements of Independent Claim 1 include:
    • An ionizing system comprising a tube defining a channel.
    • The channel has an inlet in a first pressure region and an outlet in a second, lower-pressure region.
    • The inlet is configured to allow passage of a neutral analyte sample.
    • A heater is coupled to the tube for heating the channel.
    • The channel is configured to facilitate the generation of a charged analyte sample from the neutral sample, where generation is due to the pressure differential and heat from the heater.

U.S. Patent No. 10,128,096 - “System and Method for Ionization of Molecules for Mass Spectrometry and Ion Mobility Spectrometry”

  • Technology Synopsis: This patent is part of the same family as the ’973 Patent and shares its specification. It further claims methods and systems for ionizing molecules by creating a pressure differential across a heated channel, thereby generating charged particles from a sample introduced into the channel (’096 Patent, col. 2:21-33).
  • Asserted Claims: The complaint asserts infringement of one or more claims, referring to an exhibit not provided (Compl. ¶147). Claim 1 is the first independent claim.
  • Accused Features: The complaint alleges infringement by Sciex mass spectrometers equipped with SelexIon, D-Jet, OptiFlow Turbo V, or Echo MS systems, which allegedly incorporate the patented ionization method (Compl. ¶147).

U.S. Patent No. 10,796,894 - “System and Method for Ionization of Molecules for Mass Spectrometry and Ion Mobility Spectrometry”

  • Technology Synopsis: As a member of the ’973 patent family, this patent also relates to systems that ionize analyte molecules using a combination of heat and a pressure differential across a channel. This process generates charged particles for analysis without requiring lasers or high voltages, simplifying the ion source design (’894 Patent, col. 2:21-33).
  • Asserted Claims: The complaint asserts infringement of one or more claims, referring to an exhibit not provided (Compl. ¶157). Claim 1 is the first independent claim.
  • Accused Features: Infringement is alleged against Sciex mass spectrometers with SelexIon, D-Jet, OptiFlow Turbo V, Intabio ZT, or Echo MS systems installed (Compl. ¶157).

U.S. Patent No. 9,105,458 - “System and Methods for Ionizing Compounds Using Matrix-Assistance for Mass Spectrometry and Ion Mobility Spectrometry”

  • Technology Synopsis: This patent describes an ionization method where an analyte is incorporated into a small molecule matrix that sublimates or evaporates when placed in a vacuum. This process, termed matrix-assisted ionization vacuum ("MAIV"), produces gas-phase ions from the analyte without requiring a laser, high voltage, or a heated transfer region, and can generate multiply charged ions similar to electrospray ionization (’458 Patent, Abstract).
  • Asserted Claims: The complaint asserts infringement of one or more claims, referring to an exhibit not provided (Compl. ¶167). Claim 1 is the first independent claim.
  • Accused Features: The complaint accuses Sciex mass spectrometers equipped with SelexIon, D-Jet, OptiFlow Turbo V, Intabio ZT, or Echo MS systems of infringement (Compl. ¶167).

U.S. Patent No. 9,870,909 - “Compositions and Methods for Mass Spectrometry”

  • Technology Synopsis: The patent relates to specific ionizing matrix compounds that facilitate the transfer of analyte compounds into gas-phase ions. This occurs when a mixture of the matrix and analyte is exposed to vacuum conditions, causing the matrix to sublime or evaporate without the need for a laser or high voltage (’909 Patent, col. 1:21-28).
  • Asserted Claims: The complaint asserts infringement of one or more claims, referring to an exhibit not provided (Compl. ¶177). Claim 1 is the first independent claim.
  • Accused Features: Infringement allegations are directed at Sciex mass spectrometers with SelexIon, D-Jet, OptiFlow Turbo V, Intabio ZT, or Echo MS systems installed (Compl. ¶177).

U.S. Patent No. 10,679,838 - “System and Methods for Ionizing Compounds Using Matrix-Assistance for Mass Spectrometry and Ion Mobility Spectrometry”

  • Technology Synopsis: This patent, from the same family as the ’458 Patent, covers systems and methods for matrix-assisted ionization in a vacuum ("MAIV"). The technology involves placing a sample containing an analyte and a specific matrix into a sub-atmospheric pressure region, which causes the spontaneous generation of gas-phase analyte ions for mass analysis (’838 Patent, Abstract).
  • Asserted Claims: The complaint asserts infringement of one or more claims, referring to an exhibit not provided (Compl. ¶187). Claim 1 is the first independent claim.
  • Accused Features: The infringement allegations target Sciex mass spectrometers equipped with SelexIon, D-Jet, OptiFlow Turbo V, Intabio ZT, or Echo MS systems (Compl. ¶187).

U.S. Patent No. 11,430,648 - “System and Methods for Ionizing Compounds Using Matrix-Assistance for Mass Spectrometry and Ion Mobility Spectrometry”

  • Technology Synopsis: Also a member of the ’458 patent family, this patent further protects the MAIV technology. The invention facilitates the analysis of diverse compounds, from small molecules to large proteins, by producing ions with charge states similar to electrospray ionization but through a vacuum- and matrix-driven process without external energy sources (’648 Patent, Abstract).
  • Asserted Claims: The complaint asserts infringement of one or more claims, referring to an exhibit not provided (Compl. ¶197). Claim 1 is the first independent claim.
  • Accused Features: The complaint alleges infringement by Sciex mass spectrometers with the Intabio ZT or OptiFlow Turbo V systems installed (Compl. ¶197).

III. The Accused Instrumentality

  • Product Identification: The accused instrumentalities are Defendant Sciex's mass spectrometer devices when installed with certain ionization sources or interfaces, including the SelexIon, D-Jet, OptiFlow Turbo V, Intabio ZT, and Echo MS systems (collectively, the "Sciex MS Devices") (Compl. ¶127, 137). The complaint places particular emphasis on the Echo MS System in its trade secret misappropriation claims (Compl. ¶212).
  • Functionality and Market Context: The complaint alleges that these devices and systems perform mass spectrometry for analytical applications such as drug development and proteomics (Compl. ¶2). The Echo MS System is described as incorporating an "open port interface" for sample introduction via continuous aspiration of ambient gas into a heated transfer tube (Compl. ¶213). A diagram in the complaint shows the Echo MS System's open-port interface, which uses a carrier solvent pump and an acoustic transducer to deliver sample droplets from a microplate for analysis (Compl. p. 52). A screenshot provided in the complaint from a 2015 meeting shows a test being run on a Sciex instrument with a file header "YLB_Wayne State (MAIV)," which allegedly links a Sciex scientist (Yves Le Blanc) to Plaintiffs' patented MAIV technology (Compl. ¶95).

IV. Analysis of Infringement Allegations

The complaint alleges that the Sciex MS Devices directly and indirectly infringe the patents-in-suit by practicing the claimed methods and embodying the claimed systems for ionizing molecules (Compl. ¶128, 138). For each asserted patent, the complaint references an appended exhibit containing detailed infringement contentions, such as an element-by-element claim chart (Compl. ¶127, 137, 147, 157, 167, 177, 187, 197). As these exhibits were not available for this analysis, a tabular summary cannot be constructed.

The narrative theory of infringement for the '973 patent family centers on the allegation that accused Sciex systems (e.g., those with SelexIon or Echo MS) utilize a heated channel connecting regions of different pressures to ionize an analyte, thereby practicing the core claimed invention (Compl. ¶66, 137). For the '629 Patent, the theory suggests that certain installed components, like the OptiFlow Turbo V, function as the claimed "atmospheric pressure ion source probe" (Compl. ¶127). For the '458 patent family, the complaint alleges that the accused systems practice the claimed "MAIV" technology for producing ions using a matrix in a vacuum (Compl. ¶69, 167). A sketch allegedly made by a Sciex scientist during a 2015 meeting depicts a system configuration related to Plaintiffs' technology, which Plaintiffs may offer as evidence of Sciex's implementation of the patented concepts (Compl. ¶97).

  • Identified Points of Contention:
    • Scope Questions: A central question may be whether the components identified in the complaint (e.g., SelexIon, OptiFlow Turbo V, Echo MS) meet the specific definitions of the claim terms "probe" ('629 Patent) or "ionizing system" ('973 Patent) as understood in the context of the patent specifications. The dispute may turn on whether these commercially-named modules perform the exact functions recited in the patent claims.
    • Technical Questions: For the '973 patent family, a key technical question will be whether the accused devices generate ions primarily due to the claimed mechanism of a pressure differential across a heated channel, or if ionization is driven by other conventional principles not covered by the claims. For the '458 patent family, a factual dispute may arise over whether the accused products, when in operation, create the conditions for the claimed "matrix-assisted ionization vacuum" to occur.

V. Key Claim Terms for Construction

  • Term from the ’973 Patent: "a channel... configured to facilitate the generation of a charged analyte sample... due to a pressure differential across the channel and due to heat"

    • The Term: "a channel... configured to facilitate the generation of a charged analyte sample... due to a pressure differential across the channel and due to heat" (from Claim 1 of the ’973 Patent and related patents).
    • Context and Importance: This term defines the core mechanism of the invention. Its construction will be critical because Defendant may argue its accused devices use channels primarily for ion transport, not ion generation, or that any ionization occurring is incidental and not "due to" the claimed combination of heat and pressure differential.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The specification describes the channel broadly as a "transfer capillary" or "transfer tube" that communicatively couples two pressure regions, and can be fabricated from various materials including metals, ceramics, and glass (’096 Patent, col. 4:50-59). This could support a reading on any tube-like structure that connects different pressure zones in a mass spectrometer.
      • Evidence for a Narrower Interpretation: The summary of the invention and detailed descriptions repeatedly emphasize that the channel itself is "configured to generate charged particles" in response to the sample's introduction, implying the channel is not merely a passive conduit but an active component of the ionization system (’096 Patent, col. 2:21-28). An embodiment notes that the process "advantageously produces singly and multiply charged ions without requiring an electric field, a high velocity gas outside of the transfer tube 102, or a laser," which could be used to argue that channels operating with these external forces are excluded from the claim scope (’096 Patent, col. 12:15-19).

  • Term from the ’629 Patent: "atmospheric pressure ion source probe"

    • The Term: "atmospheric pressure ion source probe" (from Claim 16 of the ’629 Patent).
    • Context and Importance: The infringement allegation for the ’629 patent appears to target Sciex mass spectrometers when specific front-end equipment is installed, such as the Intabio ZT or OptiFlow Turbo V (Compl. ¶127). Whether these systems constitute a "probe" as claimed will be a central point of dispute. Practitioners may focus on whether "probe" implies a specific physical structure, such as a manually insertable device, versus a more functional definition that could read on an integrated, automated source.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The detailed description states the "invention also relates to a device, using a commercial mass spectrometer ionization source, of introducing the analyte on the surface of a heat tolerant material into a heated nitrogen stream" (’629 Patent, col. 2:20-24). This functional language may support an argument that any device performing this function is a "probe."
      • Evidence for a Narrower Interpretation: The figures and associated text consistently depict the "probe" as a distinct, insertable apparatus with a flange for mounting and a shaft for holding a sample (e.g., FIG. 1, probe 40; ’629 Patent, col. 11:1-12:67). This could support a narrower construction requiring a physically distinct and manipulable object, potentially distinguishing it from more integrated ion source modules.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges that Sciex actively induces infringement by providing customers with instructions, videos, operating manuals, and technical support that encourage and facilitate the use of the accused Sciex MS Devices in an infringing manner (Compl. ¶130, 140). It also alleges contributory infringement, stating that the accused devices are not staple articles of commerce and were specifically adapted for an infringing use (Compl. ¶131, 141).
  • Willful Infringement: Willfulness is alleged based on Sciex's extensive pre-suit knowledge of the patents-in-suit. The complaint details a history of Sciex entering into NDAs, receiving patent information directly from the inventors via email in October 2015, attending technology demonstrations, and praising the patented technology in a letter to the National Science Foundation, all before declining to take a license (Compl. ¶13-14, 72-86, 117-122).

VII. Analyst’s Conclusion: Key Questions for the Case

  • A core issue will be one of technical mechanism: can Plaintiffs demonstrate that the accused Sciex MS Devices generate ions using the specific heat- and pressure-driven mechanism claimed in the '973 patent family, or the probe-based vaporization claimed in the '629 patent, as opposed to conventional or alternative ionization methods not covered by the patents?
  • A key evidentiary question will be one of misappropriation and intent: given the detailed allegations of pre-suit collaboration under NDA, what evidence will show that Sciex developed its accused products, particularly the Echo MS System, by improperly using Plaintiffs' confidential information and with knowledge of their patents? The resolution of this question will be central to the claims for willful infringement and trade secret misappropriation.
  • The case will also turn on a question of definitional scope: can terms like "ionizing system" and "probe", which are described in the patents with specific structural and functional attributes, be construed broadly enough to read on the accused integrated, multi-component commercial systems sold by Sciex?