Sartorius Bioanalytical Instruments, Inc. v. Gator Bio, Inc. et al

Case No.: 5:22-cv-01417-EJD
ORDER RE MOTIONS TO DISMISS AND STAY
1
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
United States District Court
Northern District of
 California
UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA
SAN JOSE DIVISION
SARTORIUS BIOANALYTICAL
INSTRUMENTS, INC.,
Plaintiff,
v.
GATOR BIO, INC., et al.,
Defendants.
Case No. 5:22-cv-01417-EJD
ORDER GRANTING IN PART AND
DENYING IN PART MOTION TO
DISMISS; STAYING CASE
Re: ECF Nos. 67, 89
Plaintiff Sartorius Bioanalytical Instruments, Inc. brings this action for patent infringement
against Defendants Gator Bio, Inc. and Dr. Hong Tan (together, “Gator Bio”). Sartorius alleges
that Gator Bio infringed U.S. Patent Nos. 8,305,585 (the “’585 Patent”), 7,394,547 (the “’547
Patent”), 7,445,887 (the “’887 Patent”), and 8,647,588 (the “’588 Patent”) (collectively, the
“Asserted Patents”), which generally relate to apparatuses and methods for detecting biomolecular
interactions. Second Am. Compl., ECF No. 56 (“SAC”).
Before the Court are two related motions. The first is Gator Bio’s motion to dismiss
Sartorius’s claims of infringement as to the ’585, ’547, and ’887 Patents under Rule 12(b)(6).
MTD, ECF No. 67. The second is Gator Bio’s motion to stay this case after the Court rules on
Gator Bio’s motion to dismiss pending resolution of an ex parte reexamination (EPR) of the ’588
Patent. Stay Mot., ECF No. 89. The Court has reviewed the parties’ papers and heard oral
argument on Gator Bio’s motion to dismiss on May 1, 2025. MTD Opp., ECF No. 71; MTD
Reply, ECF No. 72; Stay Opp., ECF No. 90; Stay Reply, ECF No. 91; ECF No. 84. The Court
finds Gator Bio’s motion to stay suitable for decision without oral argument pursuant to Local
Rule 7-1(b). After careful consideration, the Court GRANTS IN PART and DENIES IN PART
Case 5:22-cv-01417-EJD Document 95 Filed 02/19/26 Page 1 of 23

Case No.: 5:22-cv-01417-EJD
ORDER RE MOTIONS TO DISMISS AND STAY
2
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
United States District Court
Northern District of
 California
Gator Bio’s motion to dismiss. Additionally, the Court GRANTS Gator Bio’s motion to stay.
I. BACKGROUND
A. Factual Background
This is a case about biolayer interferometry (“BLI”), an optical technique for analyzing the
interaction between two different types of biological molecules. SAC ¶ 16. BLI, as relevant here,
involves directing a beam of white light through an optical fiber and into a film comprised of two
reflecting surfaces located at the tip of fiber. See id. The distal reflecting surface is coated with a
layer of immobilized ligand, or molecules intended to interact with the substance of interest
(analyte). Id. When the beam of light reaches the film, it generates two partially reflected light
beams: one when striking the proximal reflecting surface, and another when striking the distal
surface. Id. The two reflected beams interfere with one another, creating an interference pattern
that a detector can measure to ascertain the film’s optical thickness. When the film is positioned
to interact with the analyte, analyte molecules bind to ligand molecules on the distal reflecting
surface, increasing the film’s optical thickness and resulting in measurable changes to the
interference pattern.
Sartorius alleges that in 2001, Dr. Hong Tan founded and served as an officer of FortéBio,
Inc., where he helped develop BLI technology, including a line of products named Octet. Id. ¶ 17.
Dr. Tan left FortéBio in 2008, and the company was later acquired. Id. ¶¶ 17–18. In 2020,
Sartorius acquired the company that held what was once FortéBio and continued to sell the Octet
line of BLI products. Id. ¶ 18.
After leaving FortéBio, Dr. Tan formed and began working at what is now Gator Bio, Inc.
Id. ¶¶ 19–24. Gator Bio, Inc. sells the Gator Bioanalysis System line of BLI devices (the
“Accused Products”) that allegedly infringe the Asserted Patents. Id. ¶¶ 49–56. The Accused
Products include the GatorPrime and GatorPlus instruments, as well as consumable Gator
Biosensor Probes that are designed for use with such instruments. Id.
B. Procedural Background
Sartorius initiated this action in March 2022, alleging that Gator Bio’s Accused Products
Case 5:22-cv-01417-EJD Document 95 Filed 02/19/26 Page 2 of 23

Case No.: 5:22-cv-01417-EJD
ORDER RE MOTIONS TO DISMISS AND STAY
3
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
United States District Court
Northern District of
 California
infringe four patents, including the ’585, ’547, and ’887 Patents.1 After Gator Bio moved to
dismiss, Sartorius filed an amended complaint, which Gator Bio also moved to dismiss. ECF Nos.
20, 28, 29. Before it ruled on Gator Bio’s motion, the Court stayed this action pending resolution
of a related ITC action (No. 337-TA-1344). ECF No. 38.
In the ITC action, Sartorius initially asserted the same four patents it asserted here, and the
parties conducted discovery regarding the same. Sartorius later terminated the investigation as to
all patents and claims except claim 8 of the ’887 Patent. ECF No. 52-2 at 3. Meanwhile, Gator
Bio filed a petition for inter partes review (IPR) challenging all claims of the ’585 Patent
(IPR2023-00215) (the “’585 IPR”). The PTAB denied institution of the ’585 IPR on June 20,
2023. ECF No. 68-5. After an evidentiary hearing in the ITC action, the ALJ issued a Final Initial
Determination of noninfringement. ECF No. 52-1. The Commission affirmed the ALJ’s
determination with modifications on July 16, 2024, and Sartorius elected not to appeal. ECF No.
52-2.
On February 12, 2025, the Court lifted the stay on this case at the parties’ request. ECF
No. 55. Shortly thereafter, Sartorius filed the operative Second Amended Complaint, which
reasserts Sartorius’s claims for direct, indirect, and willful infringement of the ’585, ’547, and
’887 Patents, and adds new claims based on the newly-asserted ’588 Patent. SAC ¶¶ 3, 58
(asserting claim 21 of the ’547 Patent), 104 (asserting claim 1 of the ’887 Patent), 131 (asserting
claim 1 of the ’585 Patent), 152 (asserting claim 1 of the ’588 Patent). One month later, Gator Bio
filed the instant motion to dismiss.
In parallel, Gator Bio filed another petition for IPR, this time challenging all claims of the
’588 Patent (IPR2025-00633). ECF No. 79. The PTAB denied Gator Bio’s petition on
discretionary grounds without reaching the petition’s merits. ECF No. 87. A few weeks later, on
August 13, 2025, Gator Bio filed a request for EPR of the ’588 Patent based on the same grounds.
ECF No. 89-1. The PTO granted the request and ordered reexamination of the ’588 Patent on
1 Sartorius also asserted U.S. Patent No. 7,728,982 in its original complaint but has since
withdrawn all claims based on that patent. ECF No. 57 at 3.
Case 5:22-cv-01417-EJD Document 95 Filed 02/19/26 Page 3 of 23

Case No.: 5:22-cv-01417-EJD
ORDER RE MOTIONS TO DISMISS AND STAY
4
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
United States District Court
Northern District of
 California
September 9, 2025. Id. at 2.
On September 30, 2025, Gator Bio filed the instant motion to stay the case. Gator Bio
requests that the Court proceed to rule on its motion to dismiss, then stay the remaining claims in
this case pending resolution of the EPR of the ’588 Patent.
II. LEGAL STANDARD
A. Motion to Dismiss
To survive Gator Bio’s Rule 12(b)(6) motion, the SAC must allege sufficient facts from
which the Court can reasonably infer that Gator Bio is liable for the alleged patent infringement.
See Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) (quoting Bell Atl. Corp. v. Twombly, 550 U.S.
544, 570 (2007)). The Court accepts well-pled allegations in the complaint as true, but
unsupported legal conclusions are not afforded the same treatment. Iqbal, 556 U.S. at 678 (citing
Twombly, 550 U.S. at 555). As such, “[t]hreadbare recitals of the elements of a cause of action
supported by mere conclusory statements” are insufficient to state a plausible claim for relief. Id.
Likewise, in the patent context, a plaintiff does not assert a plausible claim for
infringement by merely reciting the elements of patent claims and concluding that the accused
product practices those elements. Bot M8 LLC v. Sony Corp. of Am., 4 F.4th 1342, 1353 (Fed. Cir.
2021). “A plaintiff is not required to plead infringement on an element-by-element basis,” but the
claim must be supported by factual allegations that, when taken as true, give rise to a plausible
inference of infringement beyond the speculative level. Id. at 1352 (citing Nalco Co. v. Chem-
Mod, LLC, 883 F.3d 1337, 1350 (Fed. Cir. 2018)).
B. Motion to Stay
Courts have inherent power to manage their dockets, “including the discretion to grant a
stay pending concurrent proceedings before the PTO.” Capella Photonics, Inc. v. Cisco Sys., Inc.,
2015 WL 1006582, at *1 (N.D. Cal. Mar. 6, 2015) (citing Ethicon, Inc. v. Quigg, 849 F.2d 1422,
1426–27 (Fed. Cir. 1988)). In determining whether to stay a patent infringement case pending
reexamination of the patents-in-suit, courts in this District consider three factors: “(1) whether
discovery is complete and whether a trial date has been set; (2) whether a stay will simplify the
Case 5:22-cv-01417-EJD Document 95 Filed 02/19/26 Page 4 of 23

Case No.: 5:22-cv-01417-EJD
ORDER RE MOTIONS TO DISMISS AND STAY
5
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
United States District Court
Northern District of
 California
issues in question and trial of the case; and (3) whether a stay would unduly prejudice or present a
clear tactical disadvantage to the nonmoving party.” PersonalWeb, LLC v. Apple, Inc., 69 F.
Supp. 3d 1022, 1025 (N.D. Cal. 2014) (citations and quotations omitted). Courts recognize “a
liberal policy in favor of granting motions to stay proceedings” pending the resolution of PTO
proceedings, like EPR. Zomm, LLC v. Apple Inc., 391 F. Supp. 3d 946, 956 (N.D. Cal. 2019);
Pragmatus AV, LLC v. Facebook, Inc., No. 11-CV-02168, 2011 WL 4802958, at *2 (N.D. Cal.
Oct. 11, 2011) (citing ASCII Corp. v. STD Entm't USA, 844 F. Supp. 1378, 1381 (N.D. Cal.
1994)). However, the moving party still bears the burden of demonstrating that a stay is
appropriate, and courts must evaluate stay requests on a case-by-case basis. Zomm, 391 F. Supp.
3d at 956.
III. MOTION TO DISMISS
Gator Bio moves to dismiss Sartorius’s claims of direct, indirect, and willful infringement
as to the ’585, ’547, and ’887 Patents, but not the ’588 Patent. Gator Bio asserts various
arguments in support of dismissal, which the Court takes in turn.
A. Direct Infringement
1. ’585 Patent – Prosecution Disclaimer
Gator Bio argues that the doctrine of prosecution disclaimer forecloses infringement of
asserted claim 1 of the ’585 Patent as a matter of law. According to Gator Bio, Sartorius
disavowed any position that the ’585 Patent covers a so-called “fiber-in-fiber-out” design when
opposing institution of the ’585 IPR but accuses Gator Bio’s products of infringement for
practicing the same design.2 Gator Bio asks the Court to hold Sartorius to its disclaimer and find
that the Accused Products do not infringe.
2 To support its prosecution disclaimer argument, Gator Bio requests that the Court take judicial
notice of the records in the ’585 IPR and ITC action, portions of which Gator Bio filed as exhibits
to its motion. Exs. 1-7, ECF Nos. 68-1–68-7. Sartorius did not object. Courts regularly take
judicial notice of public records of proceedings before other courts and administrative agencies,
including the PTAB and ITC. See, e.g., Seoul Semiconductor Co. v. Finelite, Inc., No. 22-CV-
02869, 2023 WL 7106480, at *2 (N.D. Cal. Jan. 27, 2023); Realtek Semiconductor Corp. v.
MediaTek, Inc., 732 F. Supp. 3d 1101, 1111 (N.D. Cal. 2024). As such, the Court GRANTS
Gator Bio’s request and takes judicial notice of the exhibits.
Case 5:22-cv-01417-EJD Document 95 Filed 02/19/26 Page 5 of 23

Case No.: 5:22-cv-01417-EJD
ORDER RE MOTIONS TO DISMISS AND STAY
6
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
United States District Court
Northern District of
 California
The doctrine of prosecution disclaimer “preclud[es] patentees from recapturing through
claim interpretation specific meanings disclaimed during prosecution.” Omega Eng'g, Inc. v.
Raytek Corp., 334 F.3d 1314, 1323 (Fed. Cir. 2003). In other words, when a patentee argues for a
circumscribed interpretation of a claim in order to obtain a patent, this representation “narrows the
meaning of the claim consistent with the scope of the claim surrendered.” Biogen Idec, Inc. v.
GlaxoSmithKline LLC, 713 F.3d 1090, 1095 (Fed. Cir. 2013). The doctrine nominally applies
only to pre-issuance prosecution, but the Federal Circuit has extended its scope to encompass
patentees’ representations made “during an IPR proceeding, whether before or after an institution
decision.” Aylus Networks, Inc. v. Apple Inc., 856 F.3d 1353, 1362 (Fed. Cir. 2017). However,
not all statements made during IPR will narrow the scope of a claim. For prosecution disclaimer
to attach, the alleged disavowing statements “must be both clear and unmistakable.” 3M
Innovative Props. Co. v. Tredegar Corp., 725 F.3d 1315, 1325 (Fed. Cir. 2013) (citations
omitted).
Here, asserted claim 1 of the ’585 Patent requires “an optical element removably attached
to the tip of [an] optical fiber.” SAC, Ex. C at 17, ECF No. 59-3 (’585 Patent at 15:18-19).
During the ’585 IPR proceedings, Gator Bio argued that this claim is invalid as obvious over the
Sun prior art reference. Gator Bio read Sun as disclosing a BLI setup in which a probe (the
“optical element”) is removably attached to the tip of a Y-shaped optical fiber using a connector,
the same configuration in claim 1 of the ’585 Patent.
In opposing institution, Sartorius argued that the probe in Sun was not itself an optical
element. Rather, Sun’s probe was an extension of the Y-shaped optical fiber with a fixed optical
element at its distal end or tip. Sartorius further asserted that the “connector” in Sun was merely
an “intermediate break” in the optical fiber—what Gator Bio calls the “fiber-in-fiber-out”
Case 5:22-cv-01417-EJD Document 95 Filed 02/19/26 Page 6 of 23

Case No.: 5:22-cv-01417-EJD
ORDER RE MOTIONS TO DISMISS AND STAY
7
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
United States District Court
Northern District of
 California
design—as shown in the following diagram:
MTD at 17 (Figure 3 in the Sun reference, ECF No. 68-6 at 4, with Gator Bio’s annotations).
Sartorius argued that Sun therefore disclosed an “unclaimed embodiment” represented in Figure 2
of the ’585 Patent (reproduced below, left) because the “optical element” in Sun was fixed to the
tip of the optical fiber. ECF No. 68-4 at 22.
MTD at 17 (’585 Patent at Figs. 2, 4, with Gator Bio’s annotations).
Returning to the instant motion, Gator Bio contends that the Accused Products embody the
same fiber-in-fiber-out design that Sartorius disclaimed during the ’585 IPR, so there can be no
infringement as a matter of law. Sartorius counters that it did not make any disclaimer—let alone
a “clear and unmistakable” one—of a fiber-in-fiber-out arrangement because its IPR arguments
were limited to the “removably attached” limitation of the ’585 Patent. Moreover, Sartorius
argues that its infringement theory here does not rely on a fiber-in-fiber-out design. Sartorius
alleges that the Accused Products consist of an optical fiber running into a sensor housing and
removably coupling with a Gator Bio probe. SAC ¶ 64, Fig. 8. Sartorius further alleges that,
Case 5:22-cv-01417-EJD Document 95 Filed 02/19/26 Page 7 of 23

Case No.: 5:22-cv-01417-EJD
ORDER RE MOTIONS TO DISMISS AND STAY
8
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
United States District Court
Northern District of
 California
unlike Sun, the entirety of the Gator Bio probe is an optical element. Id. ¶ 134 & Fig. 7. As such,
the optical element is removably attached to the optical fiber and not merely a continuation of the
optical fiber. In any case, Sartorius contends that Gator Bio’s arguments are better adjudicated
after claim construction and discovery and not on a 12(b)(6) motion, because the relevant pleading
standard only requires Sartorius to “plead facts sufficient to place the alleged infringer on notice as
to what he must defend.” K-Tech Telecomms., Inc. v. Time Warner Cable, Inc., 714 F.3d 1277,
1284 (Fed. Cir. 2013) (quoting McZeal v. Sprint Nextel Corp., 501 F.3d 1354, 1357 (Fed. Cir.
2007)); Nalco, 883 F.3d at 1350.
As a threshold matter, the Court is not persuaded that it is improper to address prosecution
disclaimer at the pleading stage. There is no categorical rule against claim construction when
adjudicating a motion to dismiss. See UTTO Inc. v. Metrotech Corp., 119 F.4th 984, 993 (Fed.
Cir. 2024). Indeed, some claim construction is appropriate on a Rule 12(b)(6) motion where, as
here, the claim at issue can be construed using only intrinsic evidence. Id. (“Where claims are
construed based on intrinsic evidence alone, a decision on claim construction is not different in
kind from the interpretation of other legal standards, which is proper and routine in ruling on a
motion under Rule 12(b)(6).”).
Applying the doctrine here, the Court finds that Sartorius clearly and unmistakably
disclaimed a BLI configuration in which the optical element is adhered directly to the tip of the
optical fiber. This includes arrangements where, as in Sun, a connector constitutes an
“intermediate break” between two pieces of optical fiber. In its decision denying institution, the
PTAB recognized that Sartorius “unambiguously admit[ted]” that the ’585 Patent does not cover
such an arrangement. See ECF No. 68-5 at 5. Sartorius takes issue with Gator Bio’s
characterization of this disclaimer as one of “fiber-in-fiber-out” designs, but the fact remains that
Sartorius disclaimed embodiments in which the optical element is adhered directly to the optical
fiber.
The parties’ remaining dispute appears to center around how to identify parts of the Gator
Bio probe. According to Gator Bio, its probes consist of a short segment of optical fiber that is
Case 5:22-cv-01417-EJD Document 95 Filed 02/19/26 Page 8 of 23

Case No.: 5:22-cv-01417-EJD
ORDER RE MOTIONS TO DISMISS AND STAY
9
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
United States District Court
Northern District of
 California
coated on its distal end with an unremovable optical element. This arrangement is identical to
what Sartorius disclaimed as an unclaimed embodiment during IPR. Sartorius, on the other hand,
alleges that there is no optical fiber in Gator Bio’s probe because the entire probe is an optical
element. On a motion to dismiss, the Court must take Sartorius’s factual allegations as true. The
Court cannot decide the actual composition of Gator Bio’s probe at this early stage.
That being said, Sartorius’s infringement theory still runs into a bigger issue. Sartorius’s
theory that Gator Bio’s probe is an optical element with no optical fiber plainly contradicts
judicially noticed material and, more importantly, other allegations in the SAC. At the ITC
hearing, Sartorius’s expert Dr. Ryan Bailey testified that in the Accused Products, “fiber bundles
are inserted into . . . the mechanical coupling,” and “coming out of the mechanical coupling . . .
are the Gator fiber probes.” Mot., Ex. 1 at 10–11, ECF No. 68-1 (ITC Evidentiary Hrg. Tr. at
666:16–667:2) (emphasis added). This suggests that Gator Bio probes do, in fact, comprise
optical fiber and not just an optical element.
Indeed, Sartorius alleges as much elsewhere in the SAC. In the context of the ’588 Patent,
Sartorius alleges that Gator Bio’s probe is an “optical sensing assembly” that has “a transparent
optical element having end faces and first and second reflecting surfaces formed on the end faces”
at the tip of the probe. Id. ¶ 154. This allegation is at odds with Sartorius’s theory that Gator
Bio’s probe is entirely an “optical element” and instead suggests that the Accused Products
practice an arrangement like the one in Sun, which Sartorius disavowed as an unclaimed
embodiment. Thus, Sartorius’s own allegations undermine and render implausible its claim that
the Accused Products infringe claim 1 of the ’585 Patent. See Bot M8, 4 F.4th at 1354 (“Where,
as here, the factual allegations are actually inconsistent with and contradict infringement, they are
likewise insufficient to state a plausible claim.”).
For that reason, the Court GRANTS Gator Bio’s motion to dismiss the claim for direct
infringement as to the ’585 Patent. Sartorius’s self-contradictory infringement position leaves the
Court doubtful that Sartorius could successfully amend its claim to state a plausible claim for
direct infringement of the ’585 Patent, especially given that Sartorius has had two opportunities to
Case 5:22-cv-01417-EJD Document 95 Filed 02/19/26 Page 9 of 23

Case No.: 5:22-cv-01417-EJD
ORDER RE MOTIONS TO DISMISS AND STAY
10
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
United States District Court
Northern District of
 California
amend. However, out of an abundance of caution, the Court grants Sartorius leave to amend one
more time.
2. ’547 Patent and ’887 Patent – Prosecution Disclaimer
Next, Gator Bio contends that Sartorius’s disclaimer at the ’585 IPR also precludes
infringement of the ’547 and ’887 Patents. Gator Bio argues that Sartorius’s disclaimer based on
the “removably attached” limitation in claim 1 of the ’585 Patent applies with equal force to the
“mechanical coupling” limitation in asserted claim 21 of the ’547 Patent (via independent claim 1)
and asserted claim 1 of the ’887 Patent. Gator Bio acknowledges that the ALJ in the ITC action
found the “removably attached” and “mechanical coupling” limitations to be distinguishable and
that any disclaimer concerning the former limitation does not attach to the latter (ECF No. 52-1 at
51–57) but asks this Court to find differently. As explained below, the Court declines to do so.
The asserted claims in the ’547 and ’887 Patents require “a mechanical coupling that
engages [an] optical element with [a] fiber.” SAC, Ex. A at 17, ECF No. 59-1 (’547 Patent at
15:13-14); SAC, Ex. B at 21, ECF No. 59-2 (’887 Patent at 9:65-66). Though not asserted in this
case, claims 13 and 18 of the ’585 Patent also recite “a mechanical coupling that engages [an]
optical element with [a] fiber.” ’585 Patent at 16:23-25, 16:36-38.
Gator Bio contends that the ’585 and ’547 Patents issued from the same family and share a
common specification that is incorporated by reference into the ’887 Patent, so the ’585 IPR can
inform construction of the ’547 and ’887 Patents’ claims. See Malvern Panalytical Inc. v. TA
Instruments-Waters LLC, 85 F.4th 1365, 1375 (Fed. Cir. 2023). Gator Bio then points to the
following argument Sartorius made when opposing institution of the ’585 IPR:
Because claims 1, 13, and 18 all unambiguously require a coupling
between an optical fiber and an optical element, [Gator Bio] is
forced to contend that the portion of optical fiber running out the distal
end of the SMA connector is, in fact, no longer optical fiber, but is
instead the claimed “optical element” to which the optical fiber is
coupled. This makes little sense; applicants understood the difference
between the various optical components in their assembly, and the
unique terms that identified them.
ECF No. 68-4 at 17 (emphasis added). Gator Bio asserts that, by specifically referencing the
“mechanical coupling” limitation in claims 13 and 18 of the ’585 Patent and equating it to the
Case 5:22-cv-01417-EJD Document 95 Filed 02/19/26 Page 10 of 23

Case No.: 5:22-cv-01417-EJD
ORDER RE MOTIONS TO DISMISS AND STAY
11
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
United States District Court
Northern District of
 California
“removably attached” limitation in claim 1 of the same patent, Sartorius’s disclaimer applies to
both the “removably attached” limitation and the “mechanical coupling” limitation in all the
Asserted Patents.
In the ITC action, the ALJ rejected this argument and found no disclaimer as to the ’887
Patent, reasoning that the “primary focus” of the ’585 IPR was on the “removably attached”
limitation. ECF No. 52-1 at 51. Gator Bio argues here that the focus of the ’585 IPR is irrelevant,
because the scope of what a patentee surrenders “is not limited to what is absolutely necessary to
avoid a prior art reference.” Tech. Props. Ltd. LLC v. Huawei Techs. Co., 849 F.3d 1349, 1358–
59 (Fed. Cir. 2017). Instead, “patentees may surrender more than necessary,” and “[w]hen this
happens, [courts] hold patentees to the actual arguments made.” Id. at 1359. Gator Bio asks this
Court to hold Sartorius to its disclaimer of the “mechanical coupling” limitation.
The Court accepts that any disclaimer at the ’585 IPR can inform the scope of the ’547 and
’887 Patents’ claims and that Sartorius must be held to any disavowing arguments it made during
that proceeding. However, the Court is not persuaded that Sartorius’s disclaimer concerning the
“removably attached” limitation extends to the “mechanically coupled” limitation for two reasons.
First, it is not clear that the ’585 Patent’s claims can inform the scope of the ’547 and ’887
Patents’ claims. The ALJ’s decision in the ITC action is instructive on this issue. There, the ALJ
reasoned that claim 8 of the ’887 Patent does not correspond to claims 13 and 18 of the ’585
Patent, despite their similar language, because the former is not subject to the same removability
requirement as the latter. Claims 13 and 18 of the ’585 Patent both depend on claim 1, which
recites the “removably attached” limitation. In contrast, there is no removability requirement in
claim 8 of the ’887 Patent. Likewise, there is no removability requirement in claim 21 of the ’547
Patent nor in claim 1 from which claim 21 depends.
Second, as previously mentioned, disclaimer or disavowal of claim scope at IPR “must be
both clear and unmistakable.” 3M Innovative Props. Co., 725 F.3d at 1325. The lone statement
Gator Bio relies upon to extend Sartorius’s disclaimer is neither, notwithstanding Sartorius’s use
of the word “unambiguously.” From what the Court can discern, Sartorius had no need to
Case 5:22-cv-01417-EJD Document 95 Filed 02/19/26 Page 11 of 23

Case No.: 5:22-cv-01417-EJD
ORDER RE MOTIONS TO DISMISS AND STAY
12
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
United States District Court
Northern District of
 California
reference the “mechanical coupling” limitation of claims 13 and 18, because its arguments at the
’585 IPR primarily concerned the “removably attached” limitation. Why Sartorius chose to do so
is unclear at best, and it is this lack of clarity that makes extending prosecution disclaimer to the
’547 and ’887 Patents inappropriate. Accordingly, the Court finds that Sartorius’s prosecution
disclaimer does not preclude infringement of the ’547 Patent or ’887 Patent.
3. ’887 Patent – Failure to Allege Claim Limitation
Gator Bio also contends that Sartorius’s direct infringement claim as to the ’887 Patent
should be dismissed for the separate reason that Sartorius fails to plausibly allege that Gator Bio’s
probes practice certain claim limitations. Asserted claim 1 of the ’887 Patent requires an “optical
element including . . . a layer of enzyme substrate molecules,” and “exposing the optical element
to an enzyme.” SAC, Ex. B at 17, ECF No. 59-2 (’887 Patent at 9:67–10:9). Gator Bio argues
that Sartorius has not plausibly alleged that the Accused Products practice these limitations.
In the SAC, Sartorius alleges “[u]pon information and belief” that the accused probes meet
these limitations. SAC ¶¶ 116, 118. Without more, these allegations are insufficient to state a
plausible claim for infringement because they simply recite the claim requirements and conclude
that the Accused Products practice them. Bot M8, 4 F.4th at 1353. Perhaps recognizing this,
Sartorius argues that the SAC provides the factual basis for these otherwise conclusory allegations
through citations to pages of Gator Bio’s website and a screenshot of a Gator Bio video. Neither
are availing.
In footnote 17 to paragraph 116 of the SAC, Sartorius cites pages of Gator Bio’s website
that reference “small molecules, antibody, and protein (SMAP) Probes” and “a layer of
immobilized biomolecules on the surface chemistry of the biosensor.” SAC ¶ 116 n.17. Without
further explanation, Sartorius claims that these webpages support its allegation that the Accused
Products practice “a layer of enzyme substrate molecules” that interacts with enzymes. Not so.
The cited materials do not mention any enzyme or substrate, let alone suggest that Gator Bio’s
probes comprise a layer of enzyme substrate molecules. At most, they suggest that Gator Bio’s
probes have the capability to bind a wide variety of different molecules, which may or may not
Case 5:22-cv-01417-EJD Document 95 Filed 02/19/26 Page 12 of 23

Case No.: 5:22-cv-01417-EJD
ORDER RE MOTIONS TO DISMISS AND STAY
13
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
United States District Court
Northern District of
 California
include enzyme substrate. Without any allegation of instances in which Gator Bio actually used
its probes to perform the claim limitation, Sartorius’s claim for direct infringement remains in the
realm of speculation and fails to reach plausibility. See Fujitsu Ltd. v. Netgear Inc., 620 F.3d
1321, 1329 (Fed. Cir. 2010) (“Unless the claim language only requires the capacity to perform a
particular claim element . . . it is not enough to simply show that a product is capable of
infringement; the patent owner must show evidence of specific instances of direct infringement.”);
ACCO Brands, Inc. v. ABA Locks Mfrs. Co., 501 F.3d 1307, 1313 (Fed. Cir. 2007) (holding that
the patentee must show actual infringement, rather than just the capability to infringe).
In paragraph 118 of the SAC, Sartorius reproduces a screenshot of a Gator Bio webinar
video displaying a diagram of an unidentified probe with labels purportedly identifying a layer of
enzyme substrate molecules on an optical element. Id. ¶ 118 Fig. 6; see also id., Ex. F at 10–11,
ECF No. 59-6 (claim chart with the same diagram). Sartorius argues that this screenshot shows
the Accused Products practicing the elements of the asserted claims, particularly “exposing the
optical element to an enzyme.” Again, not so. As Gator Bio points out, it was Sartorius, not
Gator Bio, that annotated the diagram to match up with the asserted claim language. The original
video from which Sartorius pulled the diagram nowhere mentions enzymes or enzyme substrate.
Compare ECF No. 68-7 at 2 (screenshot of original video without Sartorius’s labels), with SAC ¶
118, Fig. 6. Sartorius’s corporate witnesses admitted as much at the ITC evidentiary hearing.
ECF No. 68-1 at 175:19-21. The annotated diagram therefore lends little to no support to
Sartorius’s direct infringement claim. And without such factual support, the SAC is left with only
the conclusory allegation that Gator Bio infringes claim 1 of the ’887 Patent. That is insufficient
to state a claim for relief.
Still, Sartorius asserts that Gator Bio’s criticism of the annotated diagram is immaterial
because the diagram at least puts Gator Bio on notice of its theory of infringement. That argument
misconstrues the relevant pleading standard. Under the operative Iqbal/Twombly plausibility
standard, it is not enough to just match up the language of the asserted claim with the Accused
Products and conclude that the products infringe. That is, simply labeling a diagram of an accused
Case 5:22-cv-01417-EJD Document 95 Filed 02/19/26 Page 13 of 23

Case No.: 5:22-cv-01417-EJD
ORDER RE MOTIONS TO DISMISS AND STAY
14
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
United States District Court
Northern District of
 California
probe with language from the asserted claim does not make an infringement theory plausible.
“There must be some factual allegations that, when taken as true, articulate why it is plausible that
the accused product infringes the patent claim.” Bot M8, 4 F.4th at 1353. Sartorius’s self-serving
annotations do not lend plausibility to its infringement claim.
Lastly, Sartorius argues that Gator Bio’s arguments are premature because they ask the
Court to construe claim language, limit Sartorius to a preferred embodiment, or make factual
determinations as to whether the Accused Products meet the limitations of asserted claim 1. The
Court disagrees. As addressed above, the Gator Bio attacks the sufficiency of Sartorius’s pleading
and argues that the allegations are insufficient to make infringement plausible. Gator Bio’s
arguments as to the ’887 Patent do not require claim construction or factual determinations.
* * *
In sum, the Court finds that Sartorius fails to plead a claim for direct infringement of the
’585 and ’887 Patents. Sartorius asserts allegations that contradict infringement of the ’585 Patent
and fails to plausibly allege that the Accused Products practice key claim limitations of the ’887
Patent. Though Sartorius disclaimed some of the scope of the ’585 Patent at IPR, that disclaimer
does not extend to or preclude infringement of the ’547 Patent. The Court therefore GRANTS
Gator Bio’s motion to dismiss Sartorius’s direct infringement claim for the ’585 and ’887 Patents
and DENIES the motion as to the ’547 Patent.
B. Indirect Infringement
Gator Bio argues that Sartorius also fails to state a plausible claim for indirect infringement
of the ’585, ’887, and ’547 Patents, whether by inducement under 35 U.S.C. §§ 271(b) or (f)(1), or
by contributory infringement under §§ 271(c) or (f)(2). Gator Bio argues that Sartorius’s indirect
infringement claims fail for several reasons. First, Sartorius has not pled an underlying product or
process that directly infringes (or, in the context of § 271(f), a combination that would directly
infringe if it occurred in the United States). Second, Sartorius does not plausibly allege that Gator
Bio had knowledge of the’547 Patent or of infringement. Third, the induced infringement claims
under § 271(b) and (f)(1) fail because the SAC does not plausibly allege that Gator Bio had the
Case 5:22-cv-01417-EJD Document 95 Filed 02/19/26 Page 14 of 23

Case No.: 5:22-cv-01417-EJD
ORDER RE MOTIONS TO DISMISS AND STAY
15
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
United States District Court
Northern District of
 California
requisite specific intent to cause infringement. And fourth, the induced infringement claims under
§ 271(f)(1) fail for the additional reason that Sartorius’s allegations are based on the supply of a
single component of the claimed invention. The Court takes each argument in turn and ultimately
finds that Sartorius has not adequately pled its indirect infringement claims.
1. Indirect Infringement (§§ 271(b), (c), (f)) – Underlying Direct
Infringement
As an initial matter, a claim for indirect infringement must be predicated on an underlying
direct infringement, or in the case of § 271(f), a combination that would directly infringe if it
“occurred within the United States.” See In re Bill of Lading Transmission & Processing Sys.
Patent Litig., 681 F.3d 1323, 1333 (Fed. Cir. 2012) (“It is axiomatic that ‘[t]here can be no
inducement or contributory infringement without an underlying act of direct infringement.’”
(citation omitted)); see also AlterG, Inc. v. Boost Treadmills LLC, 388 F. Supp. 3d 1133, 1143
(N.D. Cal. 2019) (dismissing indirect infringement claims for failure to adequately plead direct
infringement). Sartorius does not dispute this. The Court found that Sartorius failed to plausibly
allege direct infringement of the ’585 and ’887 Patents, so its indirect infringement claims as to
those patents necessarily fail as well. Thus, the Court limits its consideration of Gator Bio’s other
indirect infringement arguments to the ’547 Patent.
2. Indirect Infringement (§§ 271(b), (c), (f)) – Knowledge
Induced and contributory infringement under §§ 271(b) and (c) “require[] knowledge of
the patent in suit and knowledge of patent infringement.” Commil USA, LLC v. Cisco Sys., Inc.,
575 U.S. 632, 639 (2015). Sections 271(f)(1) and (f)(2) mirror the induced and contributory
infringement provisions under §§ 271(b) and (c), respectively, but address the supply of
components that are combined outside of the United States “in a manner that would infringe the
patent if such combination occurred within the United States.” 35 U.S.C §§ 271(f)(1), (f)(2). Like
their counterparts, sections 271(f)(1) and (f)(2) require knowledge of the asserted patent and of
infringement. See TriDiNetworks Ltd. v. NXP-USA, Inc., No. 19-CV-1062, 2020 WL 2514086, at
*2–3 n.3–4 (D. Del. May 15, 2020); Universal City Studios v. Nissim Corp., No. 14-CV-81344,
Case 5:22-cv-01417-EJD Document 95 Filed 02/19/26 Page 15 of 23

Case No.: 5:22-cv-01417-EJD
ORDER RE MOTIONS TO DISMISS AND STAY
16
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
United States District Court
Northern District of
 California
2015 WL 1124704, at *3–5 (S.D. Fla. Mar. 12, 2015).
Gator Bio argues that Sartorius did not provide any pre-suit notice of the ’547 Patent or of
any infringement of that patent. Sartorius concedes that it did not provide pre-suit notice but
counters that Gator Bio still had knowledge of the ’547 Patent. According to Sartorius, Dr. Tan
knew of the ’547 Patent as of the date of its issuance (July 1, 2008) because he founded and served
as an officer of FortéBio—the predecessor company of Sartorius that filed and obtained the ’547
Patent—until August 2008. SAC ¶¶ 17–18, 30; MTD Opp. at 20–22 (citing a separation
agreement Dr. Tan signed on August 27, 2008). Dr. Tan is also a named inventor on the ’547
Patent and submitted documents to the PTO during the patent’s prosecution. Id. ¶ 26, 30.
Taking the SAC’s factual allegations as true and drawing reasonable inferences in
Sartorius’s favor, the Court finds that Sartorius has sufficiently pled that Gator Bio had knowledge
of the ’547 Patent. Gator Bio argues that Dr. Tan’s awareness of the patent application that issued
as the ’547 Patent is insufficient to infer knowledge of the patent itself, citing the general rule in
this District that knowledge of a pending patent application alone is insufficient to meet the
knowledge requirement for induced infringement. E.g., Software Rsch., Inc. v. Dynatrace LLC,
316 F. Supp. 3d 1112, 1133 (N.D. Cal. 2018). But as Gator Bio itself acknowledges, the ’547
Patent issued in July 2008, before Dr. Tan departed from FortéBio. SAC, Ex. A at 2, ECF No. 59-
1 (’547 Patent). As such, the general rule concerning pending patent applications is inapposite.
Sartorius’s allegations regarding Gator Bio’s knowledge of infringement, on the other
hand, are lacking. Sartorius claims that Gator Bio had knowledge of the underlying infringement
because after leaving FortéBio, Dr. Tan founded Gator Bio, which developed and sold the
Accused Products with BLI technology covered by the Asserted Patents. See id. ¶ 17, 49–56.
According to Sartorius, Gator Bio knew of the ’547 Patent and how BLI instruments function
from Dr. Tan’s tenure at FortéBio, so Gator Bio must have known that the Accused Products
would infringe.
The Court is unconvinced. Sartorius’s argument appears to be premised on the assumption
that the ’547 Patent covers all applications of BLI. The logical consequence of this assumption is
Case 5:22-cv-01417-EJD Document 95 Filed 02/19/26 Page 16 of 23

Case No.: 5:22-cv-01417-EJD
ORDER RE MOTIONS TO DISMISS AND STAY
17
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
United States District Court
Northern District of
 California
that Dr. Tan must have known he would be infringing the ’547 Patent by continuing to work on
BLI technology after leaving FortéBio. Yet, Sartorius does not (and likely cannot) plausibly
allege facts to substantiate this assumption. Indeed, the ’547 Patent itself recognizes other prior
art BLI applications. ’547 Patent at 1:51-63. The Court cannot reasonably infer from Dr. Tan’s
decision to continue producing BLI instruments at Gator Bio, Inc. that he knew the Accused
Products would infringe.
Accordingly, Sartorius does not sufficiently allege that Gator Bio knew the Accused
Products infringed the ’547 Patent and has therefore not stated a claim for indirect infringement as
to that patent.
3. Induced Infringement (§§ 271(b), (f)(1)) – Specific Intent
Gator Bio argues that Sartorius’s induced infringement claims also fail because Sartorius
does not plausibly allege that Gator Bio had the requisite specific intent to cause the alleged
infringement. “For an allegation of induced infringement to survive a motion to dismiss, a
complaint must plead facts plausibly showing that the accused infringer specifically intended
[another party] to infringe [the patent] and knew that the [other party]'s acts constituted
infringement.” Nalco, 883 F.3d at 1355 (quoting Lifetime Indus., Inc. v. Trim-Lok, Inc., 869 F.3d
1372, 1379 (Fed. Cir. 2017)). This specific intent requirement applies to claims under both §
271(b) and § (f)(1). See Uniloc USA, Inc. v. Logitech, Inc., No. 18-CV-01304, 2018 WL 6025597,
at *2-3 (N.D. Cal. Nov. 17, 2018) (dismissing induced infringement claim under § 271(b) for
failure to allege specific intent); Universal City, 2015 WL 1124704, at *3-5 (same for claim under
§ 271(f)(1)). Gator Bio contends that Sartorius’ allegations as to specific intent are insufficient
because Sartorius merely alleges that “Defendants have induced and continue to induce others to
directly infringe . . . by, among other things, and with specific intent or willful blindness, actively
aiding and abetting others to directly infringe.” SAC ¶ 92. This allegation is a formulaic recitation
of the elements of the claim and by itself insufficient to state a claim. Twombly, 550 U.S. at 555.
Sartorius, on the other hand, argues that Gator Bio specifically intended its customers to
infringe by offering the Accused Products for sale on its website and telling customers to use the
Case 5:22-cv-01417-EJD Document 95 Filed 02/19/26 Page 17 of 23

Case No.: 5:22-cv-01417-EJD
ORDER RE MOTIONS TO DISMISS AND STAY
18
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
United States District Court
Northern District of
 California
products to perform an infringing method. See SAC ¶¶ 86–89. Sartorius cites several Gator Bio
materials that purportedly show Gator Bio teaching and encouraging customers to use the Accused
Products to infringe. See, e.g., SAC ¶¶ 55 n.4, 60 n.5, 61 n.6, 62 n.7, 69 n.8. To be sure,
“[e]vidence of active steps taken to encourage direct infringement,” such as “recommend[ing],”
encourage[ing],” or “promot[ing]” an infringing use can be sufficient to establish specific intent to
induce infringement. Takeda Pharms. U.S.A., Inc. v. W.-Ward Pharm. Corp., 785 F.3d 625, 631
(Fed. Cir. 2015). Here, however, the Court cannot reasonably make such an inference from the
SAC. The Gator Bio materials Sartorius cites do seem to recommend, encourage, and promote
use of the Accused Products generally, but it is not at all apparent that the materials specifically
teach an infringing use of the products. Nor does Sartorius explain where in the cited materials
Gator Bio supposedly does so. As such, Sartorius has not sufficiently alleged that Gator Bio
specifically intended to induce infringement of the ’547 Patent.
4. Induced Infringement (§ 271(f)(1))– Supply of a Single Component
Gator Bio also contends that Sartorius’s invocation of 35 U.S.C. § 271(f)(1) is improper.
In the SAC, Sartorius alleges that Gator Bio infringed the ’547 Patent “by supplying in or from the
United States the Gator Biosensor Probes.” SAC ¶ 96. Gator Bio argues that this conduct cannot
form the basis of a § 271(f)(1) claim, because in Life Techs. Corp. v. Promega Corp., the United
States Supreme Court clarified that “the supply of a single component of a multicomponent
invention” is not an infringing act under that section. 580 U.S. 140, 145 (2017). Sartorius does
not respond to this argument in its opposition brief, so the Court considers this issue conceded.
See Ramirez v. Ghilotti Bros. Inc., 941 F. Supp. 2d 1197, 1210 n.7 (N.D. Cal. 2013) (collecting
cases).
* * *
Ultimately, the Court finds that Sartorius’s claims of indirect infringement as to the ’585,
’887, and ’547 Patents are insufficiently pled. The causes of action as to the ’585 and ’887 Patents
lack a predicate direct infringement claim. And as for the ’547 Patent, Sartorius fails to allege that
Gator Bio had knowledge of infringement or specifically intended for its customers to infringe.
Case 5:22-cv-01417-EJD Document 95 Filed 02/19/26 Page 18 of 23

Case No.: 5:22-cv-01417-EJD
ORDER RE MOTIONS TO DISMISS AND STAY
19
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
United States District Court
Northern District of
 California
As such, the Court GRANTS Gator Bio’s motion to dismiss the indirect infringement claims.
C. Willful Infringement and Enhanced Damages
Finally, Gator Bio argues that Sartorius fails to state a claim for willful infringement and
entitlement to enhanced damages under 35 U.S.C. § 284. Willfulness is a factor in the Court’s
determination of whether to award enhanced damages under section 284. See Google LLC v.
Princeps Interface Techs. LLC, No. 19-CV-06566, 2020 WL 1478352, at *2 (N.D. Cal. Mar. 26,
2020). “Section 284 allows district courts to punish the full range of culpable behavior,” but
awards of enhanced damages under the statute are generally reserved for “egregious cases typified
by willful misconduct.” Halo Elecs., Inc. v. Pulse Elecs., Inc., 579 U.S. 93, 106 (2016). In other
words, enhanced damages are meant to punish behavior that “willful, wanton, malicious, bad-
faith, deliberate, consciously wrongful, flagrant, or—indeed—characteristic of a pirate.” Id. at
103–04. As with induced infringement, a finding of direct infringement is a prerequisite for a
willful infringement claim. AlterG, 388 F. Supp. 3d at 1143. Courts in this District also require
plausible allegations of pre-suit knowledge of the asserted patents and of infringement as
prerequisites for enhanced damages. Fluidigm Corp. v. IONpath, Inc., No. C 19-05639 WHA,
2020 WL 408988, at *5 (N.D. Cal. Jan. 24, 2020) (collecting cases).3
For the reasons discussed above, Sartorius has not sufficiently pled direct infringement of
the ’585 and ’887 Patents or that Gator Bio knew of the alleged infringement of the ’547 Patent.
Without these prerequisites being met, Sartorius’s willful infringement claim fails. Even if
Sartorius had met these requirements, the SAC’s allegations as to willfulness and egregious
conduct are plainly deficient. Sartorius alleges that “Defendants’ infringement . . . has been, and
continues to be, deliberate, willful, and knowing, thus entitling Plaintiff to treble damages under
3 Sartorius also attempts to save its willful infringement claim by arguing that Gator Bio now has
knowledge of the Asserted Patents because of Sartorius’s original filing of this action in March
2022. Opp. at 27. However, the Court squarely rejected this same argument in a prior case,
finding that willfulness “must necessarily be grounded exclusively in the accused infringer’s pre-
filing conduct.” NetFuel, Inc. v. Cisco Sys. Inc., No. 5:18-CV-02352-EJD, 2018 WL 4510737, at
*3 (N.D. Cal. Sept. 18, 2018). Sartorius’s citation to IOENGINE, LLC v. PayPal Holdings, Inc., a
case from the District of Delaware, does not persuade the Court otherwise. No. CV 18-452-WCB,
2019 WL 330515, at *7 (D. Del. Jan. 25, 2019)
Case 5:22-cv-01417-EJD Document 95 Filed 02/19/26 Page 19 of 23

Case No.: 5:22-cv-01417-EJD
ORDER RE MOTIONS TO DISMISS AND STAY
20
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
United States District Court
Northern District of
 California
35 U.S.C. § 284.” SAC ¶¶ 101, 128, 149. As the Court has previously stated, such legal
conclusions unsupported by factual allegations are insufficient to state a claim. Twombly, 550
U.S. at 555. Sartorius’s attempt to salvage its willfulness claim by reiterating that Dr. Tan is a co-
inventor of the Asserted Patents falls flat. That fact alone does not give rise to a plausible
inference that Dr. Tan willfully infringed the Asserted Patents. Accordingly, the Court GRANTS
dismissal of Sartorius’s claim for willful infringement and enhanced damages.
IV. MOTION TO STAY
Having found that only Sartorius’s claim for direct infringement as to the ’547 Patent
survives dismissal, the Court proceeds to address Gator Bio’s motion to stay the case. Gator Bio
seeks to stay this action pending EPR of the ’588 Patent. As noted above, courts consider three
factors to determine whether to stay a patent infringement case pending reexamination of the
asserted patents. For the reasons that follow, the Court finds that the factors weigh in favor of a
stay here.
A. Stage of the Case
The first factor looks to whether the litigation has progressed significantly enough for a
stay to be disfavored. Gator Bio argues that this factor weighs in favor of a stay because “[t]he
case is still at the pleading stage, discovery has not begun, and the Court has yet to set a schedule
for the case, much less a trial date.” Samsung Elecs. Co. v. Blaze Mobile, Inc., No. 5:21-CV-
02989, 2023 WL 5418756, at *2 (N.D. Cal. Aug. 22, 2023). But as Sartorius points out, and Gator
Bio acknowledges, this case is in a unique procedural posture. The parties already conducted fact
and expert discovery in the ITC case as to the ’547, ’585, and ’887 Patents and litigated claim
construction issues. Sartorius therefore contends that, despite this case being at the pleading stage,
full discovery has already been conducted as to three of the four Asserted Patents and this
discovery applies equally to the related ’588 Patent.
On balance, the Court finds this factor weighs slightly in favor of a stay. It is undisputed
that the parties conducted discovery as to three of the four Asserted Patents and that these patents
are related to the ’588 Patent, but it is not so clear that these factors obviate the need for fulsome
Case 5:22-cv-01417-EJD Document 95 Filed 02/19/26 Page 20 of 23

Case No.: 5:22-cv-01417-EJD
ORDER RE MOTIONS TO DISMISS AND STAY
21
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
United States District Court
Northern District of
 California
discovery specific to the ’588 Patent. The parties have yet to even exchange contentions as to the
’588 Patent or conduct discovery on damages issues in this case. Though the parties have a
significant head-start from the ITC action, they will still need to engage in lengthy claim
construction and dispositive motions before this case is ready for trial. Given that substantial
work still lies ahead, a stay at this stage is not disfavored.
B. Simplification of the Case
Next, the Court considers whether a stay would simplify the issues in this case. Gator Bio
contends that reexamination of the ’588 Patent will simplify this case as to all Asserted Patents.
All four Asserted Patents are interrelated, are generally directed to the same BLI technology,
employ similar claim language, and are asserted against the same Accused Products. Sartorius
counters that because the ’588 Patent is the only patent-in-suit subject to reexamination, and that
EPR (unlike IPR) will have no estoppel effect on Gator Bio, a stay will not simplify the issues in
this case.4 Sartorius further argues that the ’588 Patent is not part of the same patent family as the
other Asserted Patents, so the results of the reexamination will have little relevance to the other
Asserted Patents.
This factor also cuts slightly in favor of a stay. The ’588 Patent’s not being part of the
same family as the other Asserted Patents and the lack of a binding estoppel effect in this litigation
significantly diminishes the power of reexamination to simplify the issues in this litigation.
However, the outcome of the EPR will still promote resolution of the issues in this case and trial
by providing guidance from the PTO. Evolutionary Intel., LLC v. Facebook, Inc, No. C 13-4202
SI, 2014 WL 261837, at *2 (N.D. Cal. Jan. 23, 2014) (“[W]aiting for the outcome of the
reexamination could eliminate the need for trial if the claims are cancelled or, if the claims
4 Sartorius briefly raises the argument that Gator Bio should be precluded from raising invalidity
defenses as to the ’588 Patent based on the doctrine of assignor estoppel, because Dr. Tan and
Robert Zuk are named inventors on the patent. Stay Opp. at 13 n.4 (citing Minerva Surgical, Inc.
v. Hologic, Inc., 594 U.S. 559, 567 (2021)). However, Sartorius does not develop this argument,
address the limitations of the doctrine (see Minerva, 594 U.S. at 576–77), or cite authority for
denying a stay on this ground. As such, the Court need not resolve the issue of assignor estoppel
to reach its conclusion.
Case 5:22-cv-01417-EJD Document 95 Filed 02/19/26 Page 21 of 23

Case No.: 5:22-cv-01417-EJD
ORDER RE MOTIONS TO DISMISS AND STAY
22
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
United States District Court
Northern District of
 California
survive, facilitate trial by providing the court with expert opinion of the PTO and clarifying the
scope of the claims.” (citation omitted)). Furthermore, Gator Bio stipulates that if the case is
stayed and EPR proceeds to a reexamination certificate, Gator Bio will not raise statutory
anticipation or obviousness defenses based on prior art that it could reasonably have raised at
EPR. Reply at 14–15. Taking Gator Bio at its word, the Court finds that EPR of the ’588 Patent
will simplify the issues in this case.
C. Undue Prejudice
For the third factor, the Court looks to whether a stay would unduly prejudice or present a
clear tactical disadvantage to Sartorius. “This district applies a four sub-factor analysis
considering: (i) the timing of the reexamination request; (ii) the timing of the request for stay; (iii)
the status of reexamination proceedings; and (iv) the relationship of the parties.” Contour IP
Holding, LLC v. GoPro, Inc., No. 17-CV-04738, 2018 WL 6574188, at *6 (N.D. Cal. Dec. 12,
2018) (quotation marks omitted). For the reasons that follow, the Court finds that the four sub-
factors weigh in favor of a stay.
First, Gator Bio sought reexamination of the ’588 Patent in a timely manner. Sartorius
notified Gator Bio that the ’588 Patent was at issue in December 2024 and first asserted the patent
in February 2025 when it filed the SAC. Gator Bio filed an IPR petition challenging the patent
less than a week after Sartorius filed the SAC, then sought EPR of the patent within a few weeks
of the PTO’s denial of the IPR petition.
Second, Gator Bio timely filed its request for a stay. The PTO ordered reexamination of
the ’588 Patent on September 9, 2025, and Gator Bio brought the instant stay motion on
September 30, 2025, less than three weeks later.
Third, the EPR of the ’588 Patent is well underway. The PTO ordered reexamination on
September 9 and is committed by statute to conducting “reexamination proceedings . . . with
special dispatch.” 35 U.S.C. § 305. Delay based on the length of the PTO’s review alone do not
amount to undue prejudice. PersonalWeb Techs., LLC v. Facebook, Inc., No. 13-CV-01356, 2014
WL 116340, at *5 (N.D. Cal. Jan. 13, 2014); Neodron, Ltd. v. Lenovo Grp., Ltd., No. 19-CV-
Case 5:22-cv-01417-EJD Document 95 Filed 02/19/26 Page 22 of 23

Case No.: 5:22-cv-01417-EJD
ORDER RE MOTIONS TO DISMISS AND STAY
23
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
United States District Court
Northern District of
 California
05644, 2020 WL 5074308, at *2 (N.D. Cal. Aug. 27, 2020) (“Courts have repeatedly found no
undue prejudice unless the patentee makes a specific showing of prejudice beyond the delay
necessarily inherent in any stay.”).
Fourth, the parties’ relationship does not weigh heavily against a stay. As Gator Bio notes,
the ’547 and ’585 Patents already expired in November 2024. The ’887 Patent expires in July
2026, and the ’588 Patent expires in January 2027. Sartorius is thus unlikely to obtain injunctive
relief for the alleged infringement and is likely limited to damages for any alleged past
infringement, which it could pursue after reexamination. The Court recognizes Sartorius’s interest
in the timely enforcement of its patent rights but does not find that Sartorius has made a
convincing showing of any prejudice beyond the delay inherent in a stay.
At bottom, the Court finds that a stay of this case is warranted.
V. CONCLUSION
For the foregoing reasons, the Court GRANTS IN PART and DENIES IN PART Gator
Bio’s motion to dismiss and GRANTS its motion to stay the case. All of Sartorius’s infringement
claims as to the ’585 and ’887 Patents and its indirect infringement claim as to the ’547 Patent are
dismissed. The direct infringement claim as to the ’547 Patent and Sartorius’s claims as to the
’588 Patent, which were not subject to Gator Bio’s motion, remain. The Court finds that
amendment would not be futile and thus grants Sartorius leave to amend all dismissed claims.
Further, the Court STAYS this case pending resolution of the EPR of the ’588 Patent. The
parties are ordered to file a status report by March 19, 2026 apprising the Court of the status of the
EPR.
IT IS SO ORDERED.
Dated: February 19, 2026
EDWARD J. DAVILA
United States District Judge
Case 5:22-cv-01417-EJD Document 95 Filed 02/19/26 Page 23 of 23