Wuhan Healthgen Biotechnology Corporation et al v. ExpressTec LLC et al

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF KANSAS
)
Wuhan Healthgen Biotechnology Corp., et al., )
)
Plaintiff/ )
Counterclaim Def., )
) CIVIL ACTION
v. )
) No. 24-4089-KHV
ExpressTec LLC, et al., )
)
Defendant/ )
Counterclaim Pltf. )
____________________________________________)
)
Ventria Bioscience Inc., )
)
Plaintiff, )
) CIVIL ACTION
v. )
) No. 21-4008-KHV
Wuhan Healthgen Biotechnology Corp., )
)
Defendant. )
____________________________________________)
MEMORANDUM AND ORDER
In these cases, defendants/counterclaimants and consolidated plaintiffs InVitria, Inc.,
ExpressTec LLC, and Ventria Bioscience, Inc. (collectively, “InVitria”) brought claims against
Wuhan Healthgen Biotechnology Corporation and Healthgen Biotechnology Co., Ltd.
(collectively, “Healthgen”) for infringement of U.S. Patent No. 10,618,951 (the “‘951 Patent”) and
U.S. Patent No. 11,492,389 (the “‘389 Patent”). Magistrate Judge Angel D. Mitchell allowed
InVitria to omit these claims from the Pretrial Order (Doc. #279) filed December 9, 2025 at n.11,
thus effectively dismissing them, but left to this Court the issue whether the dismissal should be
with or without prejudice.
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This matter comes before the Court on Healthgen’s Motion For Entry Of Dismissal With
Prejudice Of InVitria Patents (Doc. #282) filed December 11, 2025. On February 3, 2026, the
Court held an evidentiary hearing on this motion. For reasons stated below and at the hearing, the
Court overrules Healthgen’s motion for entry of dismissal with prejudice. Healthgen is not entitled
to an order requiring InVitria to dismiss its claims with prejudice, and InVitria is not entitled to
dismiss its claims without prejudice. The Court therefore dismisses with conditions InVitria’s
infringement claims in Case No. 21-4008 on the ‘951 Patent and its infringement counterclaim in
Case No. 24-4089 on the ‘389 Patent.
As noted at the hearing, over many years, in various venues, both sides have contributed
to excessive cost and delay in never-ending litigation over these patents. InVitria’s stated reasons
for dismissing its infringement claims, at the time it did, are not credible and suggest that these
dismissals were tactical in nature. Although InVitria announced on August 5 and 8, 2025 that it
had plans to withdraw its claims, it did not formally drop them until December 9, 2025, when
Judge Mitchell finalized the Pretrial Order. In the meantime, InVitria inflicted further litigation
expense and motion practice on Healthgen and the Court. Trial is set for March 9, 2026. Discovery
has closed, claim construction is complete, experts have been retained and the proceedings are far
advanced. See Lipari v. US Bancorp NA, C.A. No. 07-2146-CM, 2008 WL 5119845, at *2 (D.
Kan. Nov. 26, 2008); see also Ohlander v. Larson, 114 F.3d 1531, 1537 (10th Cir. 1997).
Healthgen also bears responsibility for unnecessary delay and expense, dubious litigation strategy,
and tactical obstruction and delay in seeking a resolution of these claims.
Legal Standard
After the opposing side answers, an action shall not be dismissed at claimant’s instance
save upon order of the Court and upon such terms and conditions as the Court deems proper.
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Fed. R. Civ. P. 41(a).1 Dismissal under Rule 41(a)(2) is within the sound discretion of the Court.
See Phillips USA, Inc. v. Allflex USA, Inc., 77 F .3d 354, 357 (10th Cir. 1996). In exercising that
discretion, the Court must consider the purposes of Rule 41(a)(2). The rule is designed primarily
to prevent voluntary dismissals which unfairly affect the other side, and to allow the Court to
impose curative conditions. See id. (citing 9 C. Wright and A. Miller, Federal Practice and
Procedure § 2364 (2d ed.1994) at 279). Under Rule 41(a)(2), the Court has discretion to dismiss
an action without prejudice upon such terms and conditions as the court deems proper. Am. Nat’l
Bank & Trust Co. v. Bic Corp., 931 F.2d 1411, 1412 (10th Cir.1991).
When considering a motion to dismiss without prejudice, “the important aspect is whether
the opposing party will suffer prejudice in the light of the valid interests of the parties.” Clark v.
Tansy, 13 F.3d 1407, 1411 (10th Cir.1993). Courts generally allow dismissal without prejudice
unless defendant will suffer plain legal prejudice. Wimber v. Dep’t of Soc. & Rehab. Servs., 156
F.R.D. 259, 261 (D. Kan. 1994); see also Clark, 13 F.3d at 1411. The Tenth Circuit has set out
factors for courts to consider in determining whether to grant a motion to dismiss without
prejudice: (1) defendant’s efforts and funds expended towards preparing for trial; (2) plaintiff’s
1 InVitria argued that Healthgen’s motion is procedurally improper because it was
brought under Rule 41(a)(2). Rule 41(a)(2) applies to dismissals of “actions,” i.e. all remaining
claims. The proper course to dismiss part of an action is to seek leave to amend the complaint or
the pretrial order depending on the stage of the litigation. See 8 James Wm. Moore et al., Moore’s
Federal Practice § 41.21[2] (3rd ed.1997); In re Wyoming Tight Sands Antitrust Cases, 128 F.R.D.
121, 123 (D.Kan.1989).
The Court nevertheless finds that the standards for a Rule 15(a) motion to amend (which
deletes claims asserted earlier) and a Rule 41(a)(2) motion are substantially the same. See Moore’s
Federal Practice § 41.21[2] at 41–33 (both motions are addressed to discretion of court, require
that leave be granted freely unless defendant is prejudiced, and permit court to impose curative
conditions if leave granted). In this case, the Court would reach the same result whether InVitria’s
request for dismissal and Healthgen’s motion are construed under Rule 15(a), Rule 41(a)(2) or the
Court’s inherent authority.
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undue delay or lack of diligence in prosecuting the action; (3) the adequacy of plaintiff’s
explanation for needing to dismiss; (4) plaintiff’s diligence in moving to dismiss; (5) the present
stage of litigation; and (6) duplicative expenses involved in a likely second suit. See Nunez v.
IBP, Inc., 163 F.R.D. 356, 359 (D. Kan. 1995); see also Clark, 13 F.3d at 1411. Neither the mere
prospect of a second lawsuit nor a tactical advantage to plaintiff amounts to legal prejudice. See
Am. Nat’l Bank & Trust Co., 931 F.2d at 1412. For dismissal to be appropriate, all factors need
not be resolved in favor of the moving party; likewise, for dismissal to be inappropriate, all factors
need not be resolved in favor of the party opposing it. See United States v. Outboard Marine Corp.,
789 F.2d 497, 502 (7th Cir.1986). Further, the factors are not exclusive; they are merely guides
for the district court. See Phillips USA, Inc., 77 F.3d at 357–58.
Healthgen has incurred significant effort and expense in litigating this case. InVitria’s
stated reason for withdrawing its claims (to conserve resources) lacks credibility, especially
because during the same time, in August of 2025, it did not even respond to a settlement offer from
Healthgen. Here, however, neither party has clean hands. Accordingly, a dismissal with prejudice
would be unfair to InVitria and a dismissal without prejudice would be equally unfair to Healthgen.
Because Healthgen will suffer manifest and substantial injustice if the claims are dismissed
without prejudice, virtually on the eve of trial, conditions are warranted. Accordingly, the Court
finds that InVitria should be allowed to dismiss its ‘951 and ‘389 patent infringement claims on
the following conditions:
(1) If InVitria reasserts these claims against Healthgen in any future lawsuit, the claims
must be brought in the U.S. District Court for the District of Kansas and they will be
assigned to the undersigned Judge;
(2) all discovery conducted in this case will be available to both parties in the new case
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and duplicative discovery will not be allowed;
(3) all Markman and claim construction rulings will remain binding;
(4) all rulings, including protective orders, confidentiality orders and orders to seal or
redact will be reinstated on the refiling of any claim;
(5) InVitria will pay Healthgen all court costs, expert fees, attorneys fees and expenses
which are attributable to re-litigation of these infringement claims; and
(6) If InVitria fails to timely make any payments which the Court orders in the refiled case,
the Court shall stay the refiled case until InVitria makes payment in full and the Court
may also modify its judgments in Case No. 24-4089 and Case No. 21-4008 to stipulate
that those dismissals are converted from dismissals on conditions to dismissals with
prejudice.
If these conditions seem too onerous, InVitria may proceed to trial on the claims or dismiss
them with prejudice. 9 Charles Alan Wright et al., Fed. Prac. & Proc. Civ. § 2366 (2018);
Rule 41(a)(2) Fed. R. Civ. P. Acceptance of the Court’s terms must be voluntary, however, so
InVitria must have an opportunity to consider its options before making its decision. Paysys Int’l,
Inc. v. Atos IT Servs. Ltd., 901 F.3d 105, 109 (2d Cir. 2018)(quoting Marlow v. Winston &
Strawn, 19 F.3d 300, 305 (7th Cir. 1994)). In short, InVitria has the choice between accepting the
conditions and obtaining dismissal on conditions, or if it believes that the conditions are too
burdensome, proceed to trial on the claims or voluntarily dismiss them with prejudice. GAF Corp.
v. Transamerica Ins. Co., 665 F.2d 364, 367–68 (D.C. Cir. 1981).
IT IS THEREFORE ORDERED that Plaintiff/Counterclaim Defendant Healthgen’s
Motion For Entry Of Dismissal With Prejudice Of InVitria Patents (Doc. #282) filed
December 11, 2025 is OVERRULED.
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IT IS FURTHER ORDERED that no later than 5:00 p.m. on Monday, February 9,
2026 InVitria file a formal acceptance of the foregoing conditions on dismissal. If InVitria
does not formally accept such conditions, its claims will proceed to trial commencing March
9, 2026 at 9:00 a.m.
Dated this 4th day of February, 2026 at Kansas City, Kansas.
s/ Kathryn H. Vratil
KATHRYN H. VRATIL
United States District Judge
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