D. Mass. Patent Litigation Update: March 2026

Published: 2026-05-12 02:13:13 ET WAT

Published on 05/12/2026 at 02:13 am EDT

This is part of a series of articles discussing recent orders of interest issued in patent cases by the United States District Court for the District of Massachusetts.

In two related opinions, Judge Guzman denied Defendants Waters Corporation and AB Sciex LLC's motions to dismiss for failure to state a claim related to contractual and patent infringement causes of action, while dismissing the unjust-enrichment claim against Sciex.

The asserted patents are directed to mass-spectrometry ionization technology used to identify and quantify compounds within a sample. M&M markets and sells a product with this technology, and MSTM serves as its distributor. A subset of the asserted patents are assigned to non-party universities and licensed to MSTM exclusively.

Before the lawsuits, each Defendant separately entered into confidentiality arrangements with Plaintiffs to evaluate the patented technology, during which Plaintiffs shared patent-related and other proprietary technical information. Waters later obtained a license to the '629 patent (the “Agreement”); Sciex did not. Plaintiffs alleged that Waters underpaid royalties under the Agreement resulting in breach and a violation of the implied covenant of good faith and fair dealing, and that both Defendants breached various contractual obligations and later developed accused products that allegedly infringed the asserted patents to which they were previously licensed.

In MSTM, LLC et al. v. Waters Corp.,No. 4:23-cv-40027-MRG, Waters moved to dismiss as to Plaintiffs' (1) breach of contract claim related to the Agreement; (2) implied covenant of good faith and fair dealing claim related to the Agreement, (3) patent infringement claim as to the '629 patent, (4) direct infringement claims as to certain patents, and (5) indirect infringement claims as to certain patents. The Court denied Waters' Motion to Dismiss in full.

First, Waters argued that Plaintiffs failed to provide proper notice and an opportunity to cure before asserting breach of contract. The Court rejected that argument, reasoning that the Agreement's notice-and-cure provision governed termination of the Agreement, not whether Plaintiffs could assert a breach claim in the first place. The Court also held that Plaintiffs had plausibly alleged breach by asserting that Waters underpaid.

Second, Waters argued that the claim for breach of the implied covenant of good faith and fair dealing was duplicative of the breach of contract claim. The Court disagreed, holding that the claims were not necessarily coextensive and that Plaintiffs had alleged sufficient facts to support bad faith at the pleading stage.

Third, Waters sought dismissal of the infringement claim on the '629 patent because Waters allegedly remained licensed under the Agreement and therefore could not infringe. The Court rejected Water's argument, reasoning that the agreement permitted either party to terminate it and that Plaintiffs plausibly alleged post-termination infringement.

Fourth, Waters challenged the direct infringement claims as to certain patents by arguing that Plaintiffs failed to show every accused product includes all elements of at least one claim. The Court rejected this argument, noting that while an element-by-element infringement presentation is not required at the pleadings stage, the amended complaint alleged each accused product individually infringes every element of at least one asserted claim. Therefore, the Court found that Plaintiffs have adequately put Waters on notice as to what it must defend.

Fifth, Waters challenged indirect infringement claims as to certain patents by arguing that Plaintiffs had not plausibly alleged Waters' pre-suit knowledge of those patents. The court held that Plaintiffs had plausibly alleged pre-suit knowledge by alleging confidentiality arrangements, licensing discussions, and the fact that some asserted Patents were referenced during prosecution of Waters' own patent families.

In MSTM, LLC et al v AB SCIEX LLC, No. 1:23-cv-11121-MRG, Sciex moved to dismiss (1) patent claims related to patents owned by non-party universities; (2) direct and indirect patent infringement claims as to certain patents owned by Plaintiffs; (3) contributory infringement claims; and (4) the claim of unjust enrichment claim. The Court granted Sciex's Motion to Dismiss as to the allegations of unjust enrichment and otherwise denied the motion.

First, Sciex argued that MSTM lacked standing to assert the university-owned patents because the universities were not joined as plaintiffs. The Court rejected that argument, finding “no threat to successive or duplicative infringement suits from the Universities,” the Court held that the exclusive license agreement, together with the universities' express consent authorizing MSTM to pursue this action against Sciex, provided Plaintiffs the requisite statutory standing.

Second, Sciex argued that Plaintiffs failed to plausibly plead direct infringement for certain patents because Plaintiffs had not identified specific alleged direct infringement of the accused products and therefore there could be no direct or indirect infringement. The Court rejected this argument, holding that Plaintiffs' identification of the accused activity was sufficient at the pleading stage. The Court further concluded that the indirect infringement claims were sufficiently pled through the plausible link between Plaintiffs' confidentiality disclosures and the accused products.

Third, Sciex moved to dismiss the contributory infringement claims by arguing its products had substantial non-infringing uses. The Court declined to resolve this issue at the pleading stage, finding that Sciex's argument is better addressed after claim construction and discovery.

Fourth, the Court dismissed Plaintiffs' unjust enrichment claim against Sciex. The Court held that unjust enrichment was unavailable because Plaintiffs already had adequate remedies at law, such as contractual claims.

Accordingly, the Court denied Waters's Motion to Dismiss in full. The Court granted Sciex's Motion to Dismiss as to the allegations of unjust enrichment and otherwise denied the motion.

In Swissdigital USA Co., Ltd., v. Samsonite Group S.A., et al., No. 1:24-cv-11636-JEK, Judge Kobick granted-in-part and denied-in-part Defendants' motion for summary judgment of invalidity and resultant non-infringement of certain asserted claims, and also conducted limited claim construction that is addressed here only to the extent it bears on summary judgement.

Defendants argued that select related asserted patents were not entitled to the earlier priority date of their ultimate parent, from which they claimed continuation-in-part status, and as a result of the later priority date those patents are invalid and thus non-infringed under the on-sale bar. Regarding the priority date, the Court agreed with Defendants that the correct priority date for the disputed patents is the filing date of the first continuation-in-part application in the family.

The determination of the correct priority date turned on the construction of the term “surrounding bottom portion” in the luggage context. Swissdigital argued that the Court should adopt the plain and ordinary meaning of the term, while Defendants argued that the Court should construe the term to mean “a flat portion that extends outward from the bottom of.”

While construing this term, the Court noted that embodiments in certain disputed patents described the surrounding bottom portion as extending on multiple sides from the sheath, concluding that the “surrounding bottom portion” “unmistakably extend[ed] outward from the sheath.” However, since dependent claims in some of the disputed patents included a limitation that the “surrounding bottom portion” is a flat portion, the Court found that interpreting “surrounding bottom portion” to be flat would render the limitation in the dependent claims “superfluous” and render the dependent claims invalid. Accordingly, the Court construed “surrounding bottom portion” to mean “a portion that extends outward from the bottom of” and did not adopt the “flat” limitation contained in the Defendants' proposed construction.

In view of this construction, the Court found that the ultimate parent application did not contain adequate written description support for the “surrounding bottom portion” limitation set forth in the disputed patents. As an initial matter, the Court noted that not only did the ultimate parent lack the phrase “surrounding bottom portion,” it lacked “surround,” “surrounding,” or “portion” separately. The Court further noted that the embodiments of the disputed patents disclosed the sheath as having a left side, right side, top side, a first closed end, a second open end, and a surrounding bottom portion that could be attached to the body, whereas the ultimate parent included no embodiment where anything extended outward from the bottom of the sheath that could be used for attachment. The Court also found Swissdigital's arguments that a person of skill in the art would understand that Figure 6 of the ultimate parent depicts a “surrounding bottom portion” and that the “surrounding bottom portion” is inherently disclosed in the ultimate parent unpersuasive, primarily because the Court found Swissdigital's expert's analysis conclusory. Accordingly, the Court found that the disputed patents were not entitled to claim priority to their ultimate parent but rather the first continuation-in-part application.

After finding that the disputed patents were not entitled to claim priority to their ultimate parent but rather the first continuation-in-part application, the Court turned to the question of whether intervening sales of Plaintiff's own products constitute an on-sale bar to patentability of the disputed patents.

The Defendants alleged that Swissdigital's TSG4H157 Bag and Group III 6067 Bag with the SG-X27 sheath practiced certain claims of the disputed patents and were commercially available for more than a year before the priority date of the disputed patents, and thus, those claims of the disputed patents were invalid in view of the on-sale bar. The Court agreed with the Defendants with respect to the Group III 6067 bag but not the TSG4H157 Bag.

Specifically, the Court found that Swissdigital's Group III 6067 Bag with the SG-X27 sheath – which was available for more than a year before the priority date of the disputed patents – practiced certain claims of some of two patents based on testimony of a corporate representative and exhibits depicting the SG-X27 sheath and its design specification that showed a surrounding portion extending outward from the bottom of the sides of a sheath that it surrounds. Accordingly, the Court found certain claims of those two patents to be invalid in view of the on-sale bar and granted-in-part Defendants' partial summary judgment on Swissdigital's claims of infringement.

Of note, the Court found that the on-sale bar did not apply to Swissdigital's TSG4H157 Bag, as the alleged proof of sale – a photograph of the bag with a USB sheath in a 2015 sales brochure produced in prior litigation and a confidential design specification of a prototype produced in this litigation – was not sufficient to demonstrate, by clear and convincing evidence, that prior art bag comprised the patented feature.

Accordingly, the Court found that the disputed patents were not entitled to claim priority of the ultimate parent, were invalid due to the on-sale bar because of Plaintiff's own products and thus, were not infringed.

Matthew C. Berntsen Finnegan, Henderson, Farabow, Garrett & Dunner, LLP 901 New York Avenue, NW Washington, DC 20001-4413 UNITED STATES Tel: 2024084000 Fax: 2024084400 E-mail: [email protected] URL: www.finnegan.com