Justia Civil Procedure Opinion Summaries

M-I Drilling, a U.K. company owns five U.S. patents; M-1 LLC, a U.S. company, is an exclusive licensee of the patents, which are claimed to cover pneumatic conveyance systems installed around oil drilling rigs and used to transfer drill cuttings from the oil rigs to ships. DAL, organized under the laws of and with its principal place of business in Brazil, is a subsidiary of Dynamic, a Minnesota corporation. The Brazilian state-owned oil company Petrobras requested proposals for the installation of pneumatic conveyance systems on ships. DAL won the bid and designed, manufactured, and operated conveyance systems from offshore oil drilling rigs onto two U.S.-flagged ships. M-I sued DAL in the District of Minnesota, alleging infringement. The court dismissed the case, finding that, although the alleged infringing activities took place on U.S.-flagged ships that are U.S. territory, the contract between Petrobras and DAL did not identify the ships on which DAL would make installations, so DAL did not purposefully avail itself of the privilege of conducting activities within the U.S. The Federal Circuit reversed. The district court erroneously focused on the contract between Petrobras and DAL. Even if the contract directed where the systems were installed and operated, DAL controlled the specifics of its continued performance. DAL kept the systems operating on the ships. Such deliberate presence of DAL and its systems in the U.S. enhance its affiliation with the forum and “reinforce the reasonable foreseeability of suit there.” View "M-I Drilling Fluids, U.K. Ltd. v. Dynamic Air Ltda." on Justia Law

Defendants produce or sell patented drug products containing the antiviral agent tenofovir alafenamide fumarate (TAF), which is used in the treatment of AIDS. Healthcare provides medical care to persons afflicted with AIDS, including providing antiviral drugs, including the TAF products that Healthcare buys from Defendants. Healthcare sought declarations of invalidity for patents purportedly covering TAF and various combination products so that it could partner with generic makers and purchase generic TAF on the expiration of the five-year New Chemical Entity exclusivity s(21 U.S.C. 355(j)(5)(F)(ii)). Healthcare filed suit two months after the FDA approved Genvoya®—the first TAF-containing product to receive FDA approval; other TAF products were still undergoing clinical trials. No unlicensed source was offering a TAF product or preparing to do so. Healthcare told the court that “none of the generic makers wanted to enter the market because there was the fear of liability.” The court ruled that Healthcare’s actions in encouraging others to produce generic TAF products and interest in purchasing such products did not create an actual controversy under the Declaratory Judgment Act. The Federal Circuit affirmed. The declaratory requirement of immediacy and reality is not met by litigation delay. Healthcare has not otherwise shown that there is a controversy of sufficient immediacy and reality to create declaratory judgment jurisdiction. Liability for inducing infringement requires that there be direct infringement. An interest in buying infringing product is not an adverse legal interest for declaratory jurisdiction. View "AIDS Healthcare Foundation, Inc. v. Gilead Sciences, Inc." on Justia Law

Oil States sued Greene's Energy for infringement of a patent relating to technology for protecting wellhead equipment used in hydraulic fracturing. Greene’s challenged the patent’s validity in court and petitioned the Patent Office for inter partes review, 35 U.S.C. 311-319. The district court issued a claim-construction order favoring Oil States; the Board concluded that Oil States’ claims were unpatentable. The Federal Circuit rejected a challenge to the constitutionality of inter partes review. The Supreme Court affirmed. Inter partes review does not violate Article III. Congress may assign adjudication of public rights to entities other than Article III courts. Inter partes review falls within the public-rights doctrine. Patents are “public franchises” and granting patents is a constitutional function that can be carried out by the executive or legislative departments without “judicial determination.’ Inter partes review involves the same basic matter as granting a patent. Patents remain “subject to [the Board’s] authority” to cancel outside of an Article III court. The similarities between the procedures used in inter partes review and judicial procedures does not suggest that inter partes review violates Article III. The Court noted that its decision “should not be misconstrued as suggesting that patents are not property for purposes of the Due Process Clause or the Takings Clause.” When Congress properly assigns a matter to adjudication in a non-Article III tribunal, “the Seventh Amendment poses no independent bar to the adjudication of that action by a nonjury factfinder.” View "Oil States Energy Services, LLC v. Greene's Energy Group, LLC" on Justia Law

The Ninth Circuit affirmed the district court's dismissal of copyright infringement claims brought by a monkey over selfies he took on a wildlife photographer's unattended camera. Naruto, a crested macaque, took several photos of himself on the camera, and the photographer and Wildlife Personalities subsequently published the Monkey Selfies in a book. PETA filed suit as next friend to Naruto, alleging copyright infringement. The panel held that the complaint included facts sufficient to establish Article III standing because it alleged that Naruto was the author and owner of the photographs and had suffered concrete and particularized economic harms; the monkey's Article III standing was not dependent on the sufficiency of PETA; but Naruto lacked statutory standing because the Copyright Act did not expressly authorize animals to file copyright infringement suits. Finally, the panel granted defendants' request for attorneys' fees on appeal. View "Naruto v. Slater" on Justia Law

The district court held Early Education in contempt and awarded Rainbow School $60,000, plus attorney's fees and costs, after Early Education violated the terms of a consent judgment and permanent injunction. The Fourth Circuit affirmed and held that the district court did not clearly err in finding multiple violations of the injunction; Early Education's violations harmed the Rainbow School; and the district court did not abuse its discretion by awarding damages and attorney's fees and costs. The court dismissed Early Education's appeal from the order requiring it to undergo an audit based on lack of appellate jurisdiction. The court held that the question of whether Early Education should initially pay for an audit was neither inextricably linked nor a necessary precursor to the issues presented in the appeal from the district court's prior order, which made a determination of contempt and had nothing to do with paying for an audit. View "Rainbow School, Inc. v. Rainbow Early Education Holding LLC" on Justia Law

Xitronix filed, in the U.S. District Court for the Western District of Texas, a “Walker Process” monopolization claim under section 2 of the Sherman Act and sections 4 and 6 of the Clayton Act based on the alleged fraudulent prosecution of a patent. The parties believed that the Federal Circuit had jurisdiction over an appeal under 28 U.S.C. 1295(a)(1). The Federal Circuit transferred the case to the Fifth Circuit, citing the Supreme Court’s 2013 decision, Gunn v. Minton. The Xitronix complaint alleges that KLA “engaged in exclusionary conduct by fraudulently prosecuting to issuance the [’]260 patent” and its conduct “was and is specifically intended to monopolize and destroy competition in the market” and alleges KLA intentionally made false representations to the Patent Office on which the examiner relied during prosecution. On the face of the complaint, no allegation establishes “that federal patent law creates the cause of action.” The only question is whether the monopolization allegation “necessarily depends on resolution of a substantial question of federal patent law, in that patent law is a necessary element of one of the well-pleaded claims.” There is nothing unique to patent law about allegations of false statements. View "Xitronix Corp. v. KLA-Tencor Corp." on Justia Law

Xitronix filed, in the U.S. District Court for the Western District of Texas, a “Walker Process” monopolization claim under section 2 of the Sherman Act and sections 4 and 6 of the Clayton Act based on the alleged fraudulent prosecution of a patent. The parties believed that the Federal Circuit had jurisdiction over an appeal under 28 U.S.C. 1295(a)(1). The Federal Circuit transferred the case to the Fifth Circuit, citing the Supreme Court’s 2013 decision, Gunn v. Minton. The Xitronix complaint alleges that KLA “engaged in exclusionary conduct by fraudulently prosecuting to issuance the [’]260 patent” and its conduct “was and is specifically intended to monopolize and destroy competition in the market” and alleges KLA intentionally made false representations to the Patent Office on which the examiner relied during prosecution. On the face of the complaint, no allegation establishes “that federal patent law creates the cause of action.” The only question is whether the monopolization allegation “necessarily depends on resolution of a substantial question of federal patent law, in that patent law is a necessary element of one of the well-pleaded claims.” There is nothing unique to patent law about allegations of false statements. View "Xitronix Corp. v. KLA-Tencor Corp." on Justia Law

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