PROCEPT Removes AquaBeam Exclusive License Dispute Over Procept Patents from Santa Clara Superior Court.

The removal

The federal case is AquaBeam LLC v. PROCEPT BioRobotics Corporation, No. 5:26-cv-11924 (N.D. Cal.). Defendant PROCEPT BioRobotics Corporation filed a 15-page notice of removal on October 15, 2026, ECF No. 1. PROCEPT removes under 28 U.S.C. 1338, 1441, 1446, and 1454 from the Superior Court of California, County of Santa Clara, Case No. 26CV500791.

The state court action

According to the notice, AquaBeam filed its complaint in Santa Clara Superior Court on August 13, 2026, and PROCEPT was served on August 17, 2026. The notice says the complaint and its exhibits were filed under seal in state court, with a redacted version filed separately; the sealed complaint is Exhibit A to the notice and the redacted complaint is Exhibit B. The public notice is itself partly redacted.

The license dispute

The notice describes the dispute as concerning the scope of AquaBeam's exclusive patent license and PROCEPT's related patent prosecution and maintenance obligations under the parties' Amended and Restated Exclusive License Agreement effective September 13, 2019. Under that agreement, the notice states, citing the complaint, AquaBeam holds an exclusive license to Procept Patents outside the Field of urology. The notice also states that the agreement gives AquaBeam the first right to sue for infringement of Procept Patents occurring outside the Field.

The notice quotes the 2019 Agreement's definition of Procept Patents: Patent Rights owned by PROCEPT as a result of its own research and development activities "that claim any methods, apparatus, or systems for the delivery of energy to tissue by directing a liquid fluid stream at the tissue," filed from the Original Effective Date until the earlier of the tenth anniversary of the First Amendment Date or the date a third party acquires all or substantially all of PROCEPT's assets, stock, or business. Patent Rights PROCEPT acquired from third parties are excluded, and the Procept Patents as of the Effective Date are listed on Exhibit B to the agreement.

The claim-scope dispute

According to the notice, AquaBeam alleges that "Procept has taken the position that AquaBeam's license excludes patents and patent applications that do not include claims explicitly reciting 'delivery of energy to tissue by directing a liquid fluid stream at the tissue.'" The notice says AquaBeam seeks a declaration that Procept Patents include the patents and applications listed on Exhibit B and their patent families, and every PROCEPT patent and application filed between December 10, 2008 and October 28, 2021 that claims subject matter that "may be part of or incorporated into" a fluid-stream method, apparatus, or system, regardless of whether its claims recite one.

The four causes of action

Based on AquaBeam's allegations as summarized in the notice, AquaBeam asserts four causes of action: (1) declaratory judgment on the scope of its exclusive license to the Procept Patents; (2) declaratory judgment on PROCEPT's prosecution and maintenance obligations for the Procept Patents; (3) breach of contract for PROCEPT's alleged failure to meet those obligations; and (4) breach of the implied covenant of good faith and fair dealing. The notice states that Counts I and II seek declarations defining which patents are Procept Patents under the exclusive license and, in turn, PROCEPT's prosecution and maintenance obligations, and that Counts III and IV allege breach of Section 3.3.1 of the 2019 Agreement and an implied covenant by failing to provide prosecution materials for all Procept Patents.

Why PROCEPT removed

PROCEPT contends that federal question jurisdiction exists because AquaBeam's claims arise under federal patent law under 28 U.S.C. 1338(a) and may be removed under 28 U.S.C. 1454(a), applying the Grable and Gunn embedded-federal-issue framework. It argues that determining which patents and applications are Procept Patents requires claim-scope determinations under patent law. It also invokes supplemental jurisdiction under 28 U.S.C. 1367(a) and 1454(d) over Counts III and IV. The notice further cites the 2019 Agreement's consent to jurisdiction in California state courts and the United States District Court for the Northern District of California.

Timing of the removal

The notice states that PROCEPT was served on August 17, 2026, that the 30-day removal period under 28 U.S.C. 1446(b)(1) ran on or about September 16, 2026, and that PROCEPT filed the notice 29 days after that. PROCEPT asks the court, to the extent necessary, to extend the time for removal for cause under 28 U.S.C. 1454(b)(2). It points to the early stage of the state case, the parties' continued efforts to resolve the dispute, a conflict with the litigation counsel PROCEPT first engaged that the notice says was finally determined on September 8, 2026, and the complexity of the case, and it contends that AquaBeam will suffer no prejudice.

What to watch next

Watch for any motion to remand by AquaBeam, including on the timeliness of the removal, PROCEPT's response to the complaint in the Northern District of California, and any ruling on whether the license-scope claims arise under federal patent law.