NeuroGrafix et al v. Beth Israel Deaconess Medical Center, Inc. et al

MOTION to Dismiss under Rules 12

D. Mass.October 15, 2012

- 1 - UNITED STATES DISTRICT COURT DISTRICT OF MASSACHUSETTS ) NEUROGRAFIX; NEUROGRAPHY ) INSTITUTE MEDICAL ASSOCIATES, ) INC.; and IMAGE-BASED ) SURGICENTER CORPORATION, ) ) Plaintiffs, ) ) v. ) Civil Action No. 12-11274-RGS ) BETH ISRAEL DEACONESS MEDICAL ) CENTER, INC.; HARVARD MEDICAL ) FACULTY PHYSICIANS AT BETH ) ISRAEL DEACONESS MEDICAL ) CENTER, INC.; BETH ISRAEL ) DEACONESS PHYSICIANS ) ORGANIZATION, INC.; CAREGROUP, ) INC.; BETH ISRAEL DEACONESS ) MEDICAL CENTER AND CHILDREN’S ) HOSPITAL MEDICAL CARE ) CORPORATION; and PRESIDENT AND ) FELLOWS OF HARVARD COLLEGE, ) ) Defendants. ) ) MOTION TO DISMISS BY DEFENDANTS BETH ISRAEL DEACONESS MEDICAL CENTER, CAREGROUP, INC., BETH ISRAEL DEACONESS MEDICAL CENTER AND CHILDREN’S HOSPITAL MEDICAL CARE CORPORATION, AND PRESIDENT AND FELLOWS OF HARVARD COLLEGE Pursuant to Federal Rules of Civil Procedure 12(b)(1), 12(b)(7) and 12(b)(6), Defendants Beth Israel Deaconess Medical Center, CareGroup, Inc., Beth Israel Deaconess Medical Center and Children’s Hospital Medical Care Corporation, and President and Fellows of Harvard College (collectively, “the Moving Defendants”) move for dismissal of the complaint. Specifically, the Moving Defendants move to dismiss plaintiffs’ patent infringement claim for Case 1:12-cv-11274-RGS Document 32 Filed 10/15/12 Page 1 of 3 - 2 - lack of prudential standing, constitutional standing and for failure to state a claim upon which relief may be granted. The complaint should be dismissed in its entirety because the plaintiffs have failed to join a necessary and indispensable party: the owner(s) of the patent-in-suit, U.S. Patent No. 5,560,360 (“the ’360 patent”). The plaintiffs’ complaint should be dismissed for lack of Article III standing to the extent their infringement claim is based upon the defendants’ offers to sell or import allegedly infringing products or services because the plaintiffs have not suffered any legal injury from those alleged acts of infringement. The plaintiffs’ complaint should be dismissed for lack of standing insofar as NeuroGrafix brings suit on behalf of the other plaintiffs because NeuroGrafix has no proprietary interest in their respective fields of use. In the alternative, the plaintiffs’ joint patent infringement claim should be dismissed because, among other things, they have failed to state a claim upon which relief can be granted. For the foregoing reasons, and the reasons set forth in the Moving Defendants’ accompanying memorandum of law, the Court should grant their motion to dismiss. Alternatively, if the court does not grant the motion, the Court should limit any discovery to the ownership of and other legal interests related to the ’360 patent so that questions concerning its subject matter jurisdiction might be first resolved. Request for Oral Argument Pursuant to LR 7.1(D), the defendants respectfully request that the Court schedule a hearing at its earliest convenience to address this motion. The Moving Defendants believe that oral argument will assist the Court in resolving the issues herein. Case 1:12-cv-11274-RGS Document 32 Filed 10/15/12 Page 2 of 3 - 3 - Respectfully submitted, DEFENDANTS BETH ISRAEL DEACONESS MEDICAL CENTER, CAREGROUP, INC., BETH ISRAEL DEACONESS MEDICAL CENTER AND CHILDREN’S HOSPITAL MEDICAL CARE CORPORATION, AND PRESIDENT AND FELLOWS OF HARVARD COLLEGE, By their attorneys, /s/ Philip C. Swain Philip C. Swain (BBO No. 544632) David E. Cole (BBO No. 658705) FOLEY HOAG LLP Seaport West 155 Seaport Boulevard Boston, MA 02210-2600 Tel: (617) 832-1000 Fax: (617) 832-7000 pswain@foleyhoag.com Dated: October 15, 2012 dcole@foleyhoag.com Certification Pursuant to Local Rule 7.1(A)(2) The undersigned hereby certifies that counsel for the Moving Defendants conferred with counsel for the plaintiffs, but was unable to narrow or resolve the issues presented by this motion. /s/ Philip C. Swain Certificate of Service I hereby certify that this document, filed through the ECF system, will be sent electronically to the registered participants as identified on the Notice of Electronic Filing (NEF), and paper copies will be sent to those indicated as unregistered participants on October 15, 2012. /s/ Philip C. Swain Case 1:12-cv-11274-RGS Document 32 Filed 10/15/12 Page 3 of 3