Justia Civil Procedure Opinion Summaries

Defendants, VSL Pharmaceuticals, Inc. and Alfasigma USA, Inc., appealed the district court’s order finding them in contempt of the court’s permanent injunction. The injunction prohibited Defendants from suggesting in promotional materials that their probiotic contained the same formulation as one marketed by Claudio De Simone and ExeGi Pharma, LLC.   On appeal, Defendants (1) their statements weren’t contemptuous, (2) their statements didn’t harm Plaintiffs (3) the district court improperly awarded attorneys’ fees, and (4) VSL and Alfasigma shouldn’t be jointly liable for the fee award. The Fourth Circuit affirmed the district court’s order.   The court explained a party moving for civil contempt must establish four elements by clear and convincing evidence, relevant here are the last two: that the alleged contemnor by its conduct violated the terms of the decree, and had knowledge (at least constructive knowledge) of such violations; and that the movant suffered harm as a result.   Defendants emphasized that consumers couldn’t access the Letter from Alfasigma’s home page. That’s true, as De Simone and ExeGi showed only that consumers could access the Letter by searching “vsl3 litigation” on Google. But the way in which consumers could access the Letter is irrelevant to Alfasigma’s constructive knowledge that it remained on the website.   Further, under the Lanham Act, “commercial advertising or promotion” is “commercial speech . . . for the purpose of influencing consumers to buy goods or services.” Here, Defendants’ press release’s final sentence emphasizes VSL#3’s commercial availability, so the district court reasonably viewed the message as an attempt to realize economic gain. View "Claudio De Simone v. VSL Pharmaceuticals, Inc." on Justia Law

USAA, a reciprocal inter-insurance exchange organized under Texas law with its principal place of business in San Antonio, owns the four patents, which address the use of a mobile device to capture an image of a bank check and transmit it for deposit. Mitek filed suit in the Northern District of California, seeking a declaratory judgment (28 U.S.C. 2201(a)), that Mitek and its customers have not infringed, either directly or indirectly, any valid and enforceable claim of USAA’s patents. USAA moved for dismissal of the complaint, arguing that there was no case or controversy between USAA and Mitek and that the court should exercise discretion not to hear Mitek’s claim. In the alternative, USAA requested the transfer of the action to the Eastern District of Texas under 28 U.S.C. 1404. The California court, without ruling on the dismissal motion, ordered the case transferred to Texas.The Texas court dismissed for want of a case or controversy, stating that, even if jurisdiction existed, it would exercise its discretion to decline to entertain the action. The Federal Circuit vacated the Texas court’s dismissal and remanded, affirming the California court’s transfer order. To make the “case or controversy” determination, the district court’s primary task will be to ascertain the alleged role of the Mitek technology in the banks’ applications and the alleged role that the Mitek technology plays in infringement claims. View "Mitek Systems, Inc. v. United Services Automobile Association" on Justia Law

Bennett sued Atlanta Gas, a Georgia distributor of natural gas, for infringement of Bennett's patent, directed to an anti-icing device for a gas pressure regulator. Atlanta Gas was served with the complaint on July 18, 2012. That litigation was dismissed without prejudice for lack of personal jurisdiction. On July 18, 2013, Atlanta Gas filed an inter partes review (IPR) petition concerning the patent.The Patent Trial and Appeal Board rejected Bennett’s argument that Atlanta Gas was time-barred from petitioning for IPR under 35 U.S.C. 315(b) and determined that the challenged claims were unpatentable over the prior art. The Federal Circuit held that Atlanta Gas should have been barred, vacated the unpatentability determination, and remanded with directions to dismiss the IPR and to further consider a sanctions order. Before the Board acted, the Supreme Court held that time-bar determinations were unreviewable, "Thryv," (2020). On remand, the Federal Circuit affirmed the unpatentability determination on the merits and again remanded for the Board to reconsider and finalize its sanctions order. The Board then terminated the proceeding due in part to reconsideration of its decision on the time bar. Atlanta Gas appealed.The Federal Circuit dismissed, holding that it lacked jurisdiction to review the Board’s decision to vacate its institution decision, a decision made based in part on the Board's evaluation of the time bar and changed Patent and Trademark Office policy. View "Atlanta Gas Light Co. v. Bennett Regulator Guards, Inc" on Justia Law

Zipit, a Delaware corporation with a principal place of business in South Carolina, and with all of its employees in South Carolina, is the assignee of the patents-in-suit, which are generally directed to wireless instant messaging devices that use Wi-Fi. In 2013, Zipit contacted Apple in California. For three years, the parties exchanged correspondence and met in person at Apple’s Cupertino headquarters. Zipit filed a patent infringement action against Apple in Georgia but later dismissed the case without prejudice.Apple sought a declaratory judgment of noninfringement in the Northern District of California. The district court dismissed, holding that it lacked specific personal jurisdiction over Zipit (general jurisdiction was not asserted). The court concluded that Apple had established the requisite minimum contacts but that “the exercise of personal jurisdiction . . . would be unconstitutional when ‘[a]ll of the contacts were for the purpose of warning against infringement or negotiating license agreements, and [the defendant] lacked a binding obligation in the forum.’” The Federal Circuit reversed, Zipit is subject to specific personal jurisdiction in the Northern District of California for purposes of Apple’s declaratory judgment action. Zipit has not presented a compelling case that the relevant factors in the aggregate would render the exercise of jurisdiction unreasonable. View "Apple, Inc. v. Zipit Wireless, Inc." on Justia Law

Continental, an auto-parts supplier, brought suit in the Northern District of California against several standard-essential patent holders and their licensing agent, claiming violations of federal antitrust law and attendant state law. The case was then transferred to federal district court where it was dismissed at the pleadings stage.The Fifth Circuit vacated the district court's judgment and remanded with instructions to dismiss for lack of standing. The court concluded that the two theories Continental alleges, based on indemnity obligations and a refusal to license, are inadequate to prove the supplier has Article III standing, let alone that it has antitrust standing or has suffered harm flowing from an antitrust violation. In this case, defendants' harm to Continental on account of Continental's indemnity obligations to original equipment manufacturers remains speculative. Furthermore, the court disagreed with the district court's conclusion that Continental's alleged unsuccessful attempts to obtain licenses on fair, reasonable, and nondiscriminatory terms from defendants comprise an injury in fact conferring Article III standing. View "Continental Automotive Systems v. Avanci, LLC" on Justia Law

In litigation between Uniloc and Apple, Uniloc unsuccessfully sought to seal matters of public record, such as quotations of Federal Circuit opinions and a list of patent cases Uniloc had filed. The Federal Circuit affirmed but held that the district court must conduct a detailed analysis on whether confidential licensing information of third-party licensees of Uniloc’s patents should be sealed and remanded for “particularized determinations.”On remand, Uniloc moved to seal or redact third-party documents that revealed licensing terms, licensees’ names, amounts paid, including a Fortress (Uniloc’s financier) investment memorandum, containing Fortress’s investment criteria and other third-party licensing information. The district court ordered that the licensing information, including the licensees' identities, be unsealed in full. explaining that “patent licenses carry unique considerations” that bolster the public’s right of access, including the valuation of patent rights, and that disclosure of patent licensing terms would facilitate “up-front cost evaluations of potentially infringing conduct,” “driv[e] license values to a more accurate representation of the technological value,” and help “inform reasonable royalties.” The Federal Circuit vacated. The district court failed to follow the previous remand instructions to make particularized determinations. Any procedural failings of Uniloc and Fortress cannot justify unsealing the information of third parties in the investment memo. The court should have considered whether the interests of the third parties outweigh the public’s interest in seeing licensing details that are not necessary for resolving this case. View "Uniloc USA, Inc. v. Apple Inc." on Justia Law

The Eighth Circuit dismissed, based on lack of jurisdiction, plaintiffs' appeal of a district court order staying a federal action for trademark infringement and unfair competition pending resolution of common trademark license issues in a long-pending state court litigation between the parties. The court concluded that the stay order is neither a final order under 28 U.S.C. 1291 nor a collateral interlocutory order that may be appealed. In this case, the district court did not abuse its discretion in concluding that if the Lomax Parties prevail on their broad allegations in state court, then the state proceedings will fully dispose of the claims in federal court. View "Window World International v. O'Toole" on Justia Law

Celgene markets pomalidomide as a multiple-myeloma drug under the brand name Pomalyst. Many drug companies questioned the validity or applicability of Celgene's patents and sought to bring generic pomalidomide to market. The defendants submitted an abbreviated new drug application (ANDA) to the FDA. Celgene filed suit in New Jersey. Celgene is headquartered there, but no defendant is. MPI is based in West Virginia, Mylan Inc. in Pennsylvania, and Mylan N.V. in Pennsylvania and the Netherlands. The district court dismissed the case for improper venue (MPI; Mylan Inc.) and for failure to state a claim (as to Mylan N.V.).The Federal Circuit affirmed. Under the Hatch-Waxman Act, 21 U.S.C. 355(j)(5)(B)(iii), venue was improper in New Jersey for the domestic corporation defendants, MPI and Mylan Inc. Celgene did not show that those defendants committed acts of infringement in New Jersey and have a regular and established place of business there. The court rejected Celgene’s argument that receipt of the ANDA notice letter is an infringing act in New Jersey. Under section 271(e)(2), submitting an ANDA is the act of infringement; although the ANDA applicant must later send a notice letter that happens after the infringing submission. As to the foreign-corporation defendant, Mylan N.V., Celgene’s pleadings failed to state a claim upon which relief could be granted. View "Celgene Corp. v. Mylan Pharmaceuticals Inc." on Justia Law

In 2007, ROHM Japan and MaxPower entered into a technology license agreement (TLA). ROHM Japan was permitted “to use certain power [metal oxide semiconductor field-effect transistors (MOSFET)]-related technologies of” MaxPower (Licensor) developed under a Development and Stock Purchase Agreement in exchange for royalties paid to MaxPower. The TLA, as amended in 2011, includes an agreement to arbitrate “[a]ny dispute, controversy, or claim arising out of or in relation to this Agreement or at law, or the breach, termination, or validity thereof.” Arbitration is to be conducted “in accordance with the provisions of the California Code of Civil Procedure.”In 2019, a dispute arose between ROHM Japan and MaxPower concerning whether the TLA covers ROHM’s silicon carbide MOSFET products. MaxPower notified ROHM Japan of its intent to initiate arbitration. Shortly thereafter, ROHM's subsidiary, ROHM USA, sought a declaratory judgment of noninfringement of four MaxPower patents in the Northern District of California and four inter partes review petitions. The district court granted MaxPower’s motion to compel arbitration and dismissed the case without prejudice, reasoning that the TLA “unmistakably delegate[s] the question of arbitrability to the arbitrator.” The Federal Circuit affirmed. In contracts between sophisticated parties, incorporation of rules with a provision on the subject is normally sufficient “clear and unmistakable” evidence of the parties’ intent to delegate arbitrability to an arbitrator. View "ROHM Semiconductor USA, LLC v. MaxPower Semiconductor, Inc." on Justia Law

OptiNose AS and OptiNose, Inc. (collectively, OptiNose) agreed to license its Exhalation Delivery Systems (“EDS”) technology to Currax Pharmaceuticals, LLC. The parties limited the License Agreement to a product which used a powder EDS device to deliver the migraine treatment drug sumatriptan into the nasal cavity. The product covered by the license, a powder EDS device and sumatriptan together, was trade-named ONZETRA(R) XSAIL(R). Currax had a limited right to sell the sumatriptan powder EDS device (the “Product”) in Canada, the United States, and Mexico. OptiNose retained the right to sell EDS devices: (1) with powders and liquids other than sumatriptan around the world; and (2) EDS devices with sumatriptan in every area other than those three countries. OptiNose also gave Currax the “first right” to “prosecute and maintain” certain patents related to the Product, listed in the License Agreement as the Product Patents. During Currax’s prosecution of the ’009 Patent Application, the U.S. Patent and Trademark Office (“USPTO”) rejected claims because they were not “patentably distinct” from the claims in another Product Patent. To overcome the patent office rejection, Currax needed to file a terminal disclaimer over the issued Product Patent. Currax needed a power of attorney from OptiNose to file a terminal disclaimer. OptiNose refused to provide it. Currax filed suit against OptiNose in the Court of Chancery, seeking an order of specific performance requiring OptiNose to grant it a power of attorney. OptiNose counterclaimed for a declaration that the License Agreement did not require it to provide a power of attorney. According to OptiNose, Currax’s right to prosecute Product Patents did not include a power of attorney, and, in any event, Currax could not file a terminal disclaimer without OptiNose’s advance approval, which it had not given. The Court of Chancery granted Currax’s motion for judgment on the pleadings, finding the License Agreement OptiNose to provide a power of attorney to prosecute the ’009 Application. On appeal, the parties focused primarily on OptiNose’s advance approval right, and whether a terminal disclaimer “relate[s] to or characterize[s] the Device component of the Patent or other OptiNose intellectual property.” The Delaware Supreme Court affirmed the Court of Chancery’s judgment that filing a terminal disclaimer in the ’009 Application prosecution was included in the rights OptiNose gave to Currax under the License Agreement. View "Optinose AS v. Currax Pharmaceuticals, LLC" on Justia Law