Justia Civil Procedure Opinion Summaries

The 1995 agreement, arising from a research collaboration that resulted in the antibody adalimumab, the active ingredient in the drug Humira, is governed by British law. The agreement licensed AbbVie to practice the 516 patent but AbbVie does not presently practice it. The agreement required AbbVie to pay royalties on certain sales “until the last to expire of [certain] Patents or the expiry of fifteen years from the date of First Commercial Sale of a Product by [AbbVie’s predecessor] . . . (whichever is later).” The last of those patents to expire is the 516 patent, with an expiration date in June 2018. The first commercial sale occurred in January 2003. AbbVie’s obligation to pay royalties either ceased in January 2018 (based on the first commercial sale) or will cease in June 2018 (based on the patent’s expiration date). AbbVie sought a declaratory judgment that the patent is invalid, arguing that a declaration of invalidity would constitute expiration under the contract, but did not seek the contract’s interpretation. The Federal Circuit affirmed dismissal the complaint. AbbVie does not practice the patent and is not at risk of an infringement suit. Even if AbbVie had standing, interpretation of the agreement would implicate the rights of the British government, which jointly owns the patent through one of its research councils. Deciding the invalidity question would not resolve the parties’ ultimate dispute and would raise concerns about foreign law and sovereign immunity. View "AbbVie Inc. v. MedImmune Limited" on Justia Law

Tawas, Michigan hosts an annual festival called “Perchville.” Its Chamber of Commerce obtained federal trademark registration for the term “Perchville,” in 2003. Trading Post allegedly was selling merchandise depicting the term “Perchville.” The Chamber filed suit against Agnello, a Trading Post employee, and obtained an ex parte injunctive order prohibiting sales of t-shirts with the mark, which stated: “this order shall be binding upon the parties to this action, their officers, agents, servants, employees, and attorneys and on those persons in active concert or participation with them who receive actual notice of this order by personal service [or] otherwise.” Agnello appeared at a hearing without an attorney, indicated that he had spoken to Trading Post's partial owner about the lawsuit, but repeatedly stated that he was confused. Agnello consented to a permanent injunction. The judge stated that the order would be binding on anyone acting in concert with Agnello. Trading Post filed suit, challenging the Chamber’s trademark of “Perchville.” The district court found the challenge barred by res judicata because a final determination on the merits occurred in the state court. The Sixth Circuit reversed. There may be circumstances when an employee’s interests are so aligned with his employer as to be in privity for purposes of res judicata, that was not true here. Agnello was an hourly employee given a few days’ notice of an injunction. View "AuSable River Trading Post, LLC v. Dovetail Solutions, Inc." on Justia Law

Inselberg is the inventor systems by which audiences interact with live events, such as concerts and football games. In 2010, his company received a $500,000 loan from Bisignano, who received security interest in the patents.Federal authorities brought criminal charges against Inselberg. He defaulted on the loan. Inselberg and Bisignano entered into an agreement that purported to convey the patent portfolio to Bisignano. , Bisignano became the CEO of First Data. In 2014, Inselberg began claiming that the assignment was invalid.and that First Data was infringing. Bisignano granted First Data a royalty-free license and sought a federal declaratory judgment regarding the validity of the license agreement and ownership of the patents, to preempt "an inevitable infringement action. Inselberg filed a complaint in New Jersey Superior Court, asserting only state law claims. Bisignano and First Data filed an answer with counterclaims, seeking declaratory judgments of noninfringement and invalidity, then removed the action to federal court. The Federal Circuit affirmed a dismissal for lack of jurisdiction. Inselberg’s claims were all state law property rights claims; the alleged patent law issues were “incidental and contingent.” It did not become a patent case merely because some of the damages might be measured based on “forgone royalties. Bisignano remains the owner of the patents unless a state court invalidates the assignment; the district court did not have jurisdiction to consider the matter. View "First Data Corp. v. Inselberg" on Justia Law

The Biologics Price Competition and Innovation Act, 42 U.S.C. 262, establishes a scheme for adjudicating claims of patent infringement in the FDA's approval of “biological products.” To obtain FDA approval, the sponsor of a new biological product must demonstrate that it is “safe, pure, and potent.” For a “biosimilar” product based on an approved “reference” product, a party may submit an abbreviated “subsection (k)” application that “piggybacks” on the showing made for an approved reference product but must provide the reference product's sponsor with its subsection (k) application and information that describes the manufacturing process. The parties then collaborate to identify patents for immediate litigation. The second phase is triggered by the applicant’s notice of commercial marketing and involves any patents that were included on the lists but not previously litigated. Hospira's subsection (k) application sought approval of a biosimilar of EPOGEN®, Amgen’s FDA-approved product, Although Amgen asserted that Hospira failed to disclose the composition of the cell-culture medium used during manufacturing, the parties began identifying patents. Amgen claimed that it could not assess the reasonableness of asserting infringement claims concerning other patents for culturing cells and moved to compel discovery on the composition of Hospira’s cell-culture medium in its suit on listed patents. The court denied Amgen’s motion, stating that the information had no relevance to the asserted patents. Amgen appealed that interlocutory order. The Federal Circuit dismissed, holding that it lacked jurisdiction under the collateral order doctrine and that Amgen failed to satisfy the prerequisites for mandamus. View "Amgen, Inc.. v. Hospira, Inc.." on Justia Law

The District Court for the Northern District of Texas dismissed, for lack of personal jurisdiction, New World’s declaratory judgment complaint against FGTL, a wholly owned subsidiary of the automaker Ford Motor Company. FGTL had previously filed an infringement suit against New World in the Eastern District of Michigan. The Federal Circuit affirmed the dismissal of the declaratory judgment action. Both FGTL and the Ford Motor Company are incorporated in Delaware and headquartered in Michigan. FGTL does no business in Texas and neither maintains an office nor has any employees in Texas. FGTL does not make or sell automobiles or automotive products; it owns, manages, and licenses intellectual property for Ford. FTGL’s pertinent contacts with Texas are limited to the cease and desist letters. While those letters may be sufficient to constitute minimum contacts with the forum, they are not sufficient to satisfy the fairness part of the test for specific personal jurisdiction. View "New World International, Inc. v. Ford Global Technologies, LLC" on Justia Law

A jury found that Pulse directly infringed Halo’s patents with products that it shipped into the U.S. and induced others to infringe those patents with products delivered outside the U.S. that ultimately were imported into the U.S. in finished products; it was highly probable that Pulse’s infringement was willful; and the Halo patents were not invalid. The jury awarded Halo $1.5 million in royalty damages. The court held that Pulse had not willfully infringed and taxed costs. Halo did not seek interest. The Federal Circuit affirmed that Pulse’s infringement was not willful. In June 2015, in the district court, Halo sought an accounting for supplemental damages and awards of interest. The Supreme Court subsequently held that the enhanced damages test applied by the Federal Circuit was inconsistent with 35 U.S.C. 284. On remand, the Federal Circuit vacated the unenhanced damages award with respect to products delivered in the U.S. and remanded. In the meantime, the district court awarded Halo prejudgment and post-judgment interest and supplemental damages for direct infringement. In November 2016, the court entered a stipulation of satisfaction of judgment for the $1.5 million damages award, including costs, supplemental damages, and post-judgment interest, expressly excluding prejudgment interest, enhanced damages, and attorney fees. The Federal Circuit dismissed an appeal for lack of jurisdiction. There is no final decision because the district court has not specified the means for determining the amount of prejudgment interest. View "Halo Eelectronics, Inc. v. Pulse Electronics, Inc." on Justia Law

The consolidated appeals involve allegations that the companies holding the patents for Lipitor and Effexor XR delayed entry into the market by generic versions of those drugs by engaging in an overarching monopolistic scheme that involved fraudulently procuring and enforcing the underlying patents and then entering into a reverse-payment settlement agreement with a generic manufacturer. In 2013, the Supreme Court recognized that reverse payment schemes can violate antitrust laws and that it is normally not necessary to litigate patent validity to answer the antitrust question. The district judge dismissed most of plaintiffs’ claims. The Third Circuit remanded after rejecting an argument that plaintiffs’ allegations required transfer of the appeals to the Federal Circuit, which has exclusive jurisdiction over appeals from civil actions “arising under” patent law, 28 U.S.C. 1295(a)(1). Not all cases presenting questions of patent law necessarily arise under patent law; here, patent law neither creates plaintiffs’ cause of action nor is a necessary element to any of plaintiffs’ well-pleaded claims. The court remanded one of the Lipitor appeals, brought by a group of California pharmacists and involving claims solely under California law, for jurisdictional discovery and determination of whether remand to state court was appropriate. View "In re: Lipitor Antitrust Litigation" on Justia Law

Defendant Donald Bowers was previously involved in a civil trade secret misappropriation case that was litigated in the United States Federal District Court. During the course of that litigation, Bowers willfully and repeatedly violated a permanent injunction, and refused to purge himself of civil contempt. His actions resulted in findings of civil contempt against him, judgments against him for the plaintiff’s attorneys’ fees, and, ultimately, a criminal referral to the United States Attorney for the District of Utah. A federal grand jury subsequently indicted Bowers on two counts of contempt. The case proceeded to trial, where a jury found Bowers guilty of both counts. Bowers was sentenced to a term of imprisonment of fifteen months, to be followed by a thirty-six month term of supervised release. He was also directed, as a condition of supervised release, to make monthly payments on the outstanding amount owed by him to the plaintiff in the underlying civil case. Bowers appealed, arguing that the district court erred in: (1) imposing a special condition of supervised release requiring him to make monthly payments on the outstanding judgments owed to the plaintiff in the civil case; (2) denying his motion for disclosure of the criminal referral; and (3) sentencing him to a term of imprisonment that exceeded six months. Finding no reversible error, the Tenth Circuit affirmed. View "United States v. Bowers" on Justia Law

MOVA technology can capture an actor’s facial performance for use in motion picture special effects and video games; it is secured by trademarks, copyrights, and patents, and is reflected in hardware, source code, and physical assets. VGHL claims that Perlman, the head of Rearden, declined to acquire the MOVA assets from OL2 and proposed OL2 sell to a Rearden employee, LaSalle. Perlman introduced LaSalle to Rearden’s corporate attorney who helped LaSalle establish his own company, MO2, and negotiated with OL2. Perlman later demanded that LaSalle convey the MOVA assets to Rearden and terminated LaSalle’s employment when LaSalle refused. MO2 sold the MOVA assets to SHST, which hired LaSalle, and began selling the technology. The Rearden parties claimed that SHST never obtained ownership and that LaSalle was simply hired to handle the acquisition on Rearden’s behalf. SHST sued, alleging that Rearden had made “false or misleading representations ... concerning the ownership of the MOVA Assets ... to mislead the public and actual and prospective users and licensees” and had falsely recorded assignments of the MOVA patents. During discovery, SHST moved to compel Rearden to produce documents exchanged between MO2 and Rearden’s corporate attorney. The district court granted the request, concluding that Rearden had not shown entitlement to assert attorney-client privilege on behalf of MO2 and that LaSalle waived privilege when he shared documents. The Federal Circuit denied a petition for mandamus. Rearden's arguments failed to carry the high burden required on mandamus to overturn the court’s discovery determination. View "In re: Rearden, LLC" on Justia Law

From 2003-2014, Bornmann directed a research laboratory that synthesized cancer drugs at University of Texas MD Anderson Cancer Center. In 2013, Bornmann’s team apparently discovered an antibiotic with the potential to treat cancer and type-2 diabetes. Bornmann signed an invention disclosure report (IDR) describing the antibiotic and listing Bornmann among several contributors, including DePinho, President of MD Anderson, who was credited with providing laboratory space and supervision. Later MD Anderson decided not to renew Bornmann's contract and to close his lab. Bornmann filed a petition to take Rule 202 depositions of DePinho and Dennis. Rule 202 of the Texas Rules of Civil Procedure allows a court to authorize a deposition “to investigate a potential claim or suit.” Bornmann theorized that “his lab [was being] closed to benefit the personal interests of Dr. DePinho,” that an IDR without his signature would be filed, and that a provisional patent would be filed and licensed to a company owned by DePinho or his wife.Bornmann sought to depose Depinho concerning the IDR signatures and Dennis on timing and filing, in order to “investigate a potential tortious interference claim against Dr. DePinho as well as other potential causes of action.” The Texas Supreme Court vacated an order authorizing the discovery. A court may not order Rule 202 depositions to investigate unripe claims View "In re: DePinho and Dennis" on Justia Law