Orrick Team Wins Key Ruling in Lawrence Livermore National Security Patent Case


A federal judge in the Central District of California has backed Lawrence Livermore National Security’s right to continue to press a patent infringement lawsuit, rejecting arguments that the medical technology at issue in the case is invalid for lack of patentable subject matter. Siding with an Orrick team’s arguments, U.S. District Judge James Selna in June 2016 denied a motion to dismiss LLNS’s lawsuit with a key finding that the patent at issue in the case is valid under section 101 of the patent statute. LLNS contends six companies overall have infringed the patent on “ultrashort pulse duration laser systems suitable for material and biological tissue processing,” which can be used for various types of medical surgery. LLNS is a federal research facility primarily funded by the National Nuclear Security Administration and the Department of Energy and owns the licensing rights to the ‘894 patent at the center of the infringement case.

Last year, one of LLNS’s former licensees, Femto-Sec Tech, Inc., filed suit against six companies, one of which was Lensar, the company that challenged the validity of the ‘894 patent. LLNS was brought in as a plaintiff and filed its own patent infringement complaint earlier this year. Lensar moved to dismiss the suit arguing the patent on the laser technology covers unpatentable subject matter, specifically a law of nature or “natural phenomena.”

Orrick opposed the motion to dismiss, arguing the system and method of using an ultrashort pulse laser as described in the patent clearly falls under patent-eligible subject matter, including because lasers are not “natural phenomena.” The judge agreed and denied the motion, finding the patent claims are “not directed to natural laws or natural phenomena; instead, they are the application of a narrow and specific principle: ultrashort lasers have advantageous material removing properties.”

The decision allows LLNS claims of infringement to proceed against Lensar. While Lensar was the only defendant to bring an invalidity challenge, the other five defendants also face claims of infringing the same patent.

“We’re very pleased with the court’s ruling,” Amy Van Zant told Law360 (subscription required). “We recognize that post-Alice, section 101 motions are very en vogue, and while they’re appropriate in many situations, we think that the court got it right here and that this technology falls within one of the statutorily recognized patent eligible categories.”

Intellectual property partner Amy Van Zant led Orrick’s team which also included associates Jesse Cheng, Cam Phan, Cathy Shyong, and Evan Brewer.