Justia Civil Procedure Opinion Summaries

In consolidated cases, patent-holder plaintiffs market drugs and have patents in the FDA’s Approved Drug Products with Therapeutic Equivalence Evaluations publication (Orange Book), 21 U.S.C. 355(b)(1). Mylan filed Abbreviated New Drug Applications (ANDA), 21 U.S.C. 355(j), seeking FDA approval to market generic versions of the drugs, certifying that the Orange Book patents are invalid or would not be infringed by the proposed drugs. The plaintiffs sued in Delaware under 35 U.S.C. 271(e)(2)(A). Mylan is incorporated in, and has its principal place of business in, West Virginia and submitted its ANDAs in Maryland; it intends to direct sales into Delaware, among other places, once it has FDA approval. Mylan sent notices to the plaintiffs in New York, Ireland, Delaware and Sweden. One plaintiff is incorporated in Delaware, the U.S. subsidiary of another has its principal place of business in Delaware. Both have sued others for infringement in Delaware. Each district court concluded that Delaware had sufficient contacts related to the subject of these cases to exercise specific personal jurisdiction over Mylan. The judges disagreed about whether Delaware could exercise general personal jurisdiction (independent of suit-related contacts) on the ground that Mylan consented to jurisdiction in registering to do business. Each declined to dismiss. The Federal Circuit affirmed on the issue of specific jurisdiction, declining to address general personal jurisdiction. View "Acorda Therapeutics, Inc. v. Mylan Pharma., Inc." on Justia Law

Halo, a Hong Kong company that designs and sells high-end modern furniture, owns two U.S. design patents, 13 U.S. copyrights, and one U.S. common law trademark, all relating to its furniture designs. Halo’s common law trademark, ODEON, is used in association with at least four of its designs. Halo sells its furniture in the U.S., including through its own retail stores. Comptoir, a Canadian corporation, also designs and markets high-end furniture that is manufactured in China, Vietnam, and India. Comptoir’s furniture is imported and sold to U.S. consumers directly at furniture shows and through distributors, including in Illinois. Halo sued, alleging infringement and violation of Illinois consumer fraud and deceptive business practices statutes. The district court dismissed on forum non conveniens grounds, finding that the balance of interests favored Canada and that Canada, where the defendants reside, was an adequate forum. The Federal Circuit reversed. The policies underlying U.S. copyright, patent, and trademark laws would be defeated if a domestic forum to adjudicate the rights they convey was denied without a sufficient showing of the adequacy of the alternative foreign jurisdiction; the Federal Court of Canada would not provide any “potential avenue for redress for the subject matter” of Halo’s dispute. View "Halo Creative & Design, Ltd. v. Comptoir des Indes Inc." on Justia Law

Queen’s University at Kingston, Canada, owns patents directed to Attentive User Interfaces, which allow devices to change their behavior based on the attentiveness of a user—for example, pausing or starting a video based on a user’s eye-contact with the device. Queen’s sued, alleging that Samsung’s SmartPause feature infringed those patents. Throughout fact discovery, Queen’s University refused to produce certain documents. It produced privilege logs that withheld documents based on its assertion of a privilege relating to communications with its patent agents. A magistrate granted Samsung’s motion to compel, finding that the communications between Queen’s University employees and their non-attorney patent agents are not subject to the attorney-client privilege and that a separate patent-agent privilege does not exist. The district court declined to certify the issue for interlocutory appeal, but agreed to stay the production of the documents at issue pending a petition for writ of mandamus. The Federal Circuit granted that petition, finding that, consistent with Federal Rule of Evidence 501, a patent-agent privilege is justified “in the light of reason and experience” and extends to communications with non-attorney patent agents when those agents are acting within the agent’s authorized practice of law before the Patent Office. View "In Re: Queen's Univ. at Kingston" on Justia Law

Binzel, which manufactures welding equipment, owns the German DE 934 patent, filed in 1997, and the U.S. 406 patent, issued in 2002, which claims priority to the German application, for a method of manufacturing a contact tip for metal inert gas welding. Lismont, a resident of Belgium asserts that, beginning in 1995, he developed the method disclosed in both patents for Binzel and, that by mid-1997, he had disclosed the details to Binzel. Lismont contends that, despite Binzel's representations that he was the first to conceive of this method, Binzel filed the DE 934 application naming its employee, Sattler, as the inventor. In 2000-2002 Lismont initiated suits in the German Federal Court and sought information about the countries in which Binzel was pursuing patents and about the manufacture and sales of contact tips that used the method at issue. The German courts ruled against Lismont, finding that he failed to prove that he had an inventorship interest. The German Supreme Court rejected his appeal in 2009. Lismont then filed actions in the German Constitutional Court and in the European Court of Human Rights. In 2012, Lismont initiated U.S. litigation seeking to correct inventorship of the 406 patent (35 U.S.C. 256(a)). After discovery concerning the issue of laches, the court granted the defendants summary judgment. The Federal Circuit affirmed: Lismont failed to rebut the presumption of laches. View "Lismont v. Alexander Binzel Corp." on Justia Law

Waters’ patent relates to systems that use highly compressed gas, compressible liquid, or supercritical fluid. In liquid chromatography. The patent is directed to using a pump as a pressure source for supercritical fluid chromatography (SFC), a more efficient and advanced form of chromatography. SFC uses pumps to regulate the flow of compressible fluids, such as supercritical carbon dioxide, through a column. The patent provides an alternative SFC system, allowing the effective use of a less expensive pump than was required by prior art. In 2011, Waters sued Aurora for infringement. Aurora sought inter partes reexamination of all claims, citing new prior art. In response to an initial Office Action rejecting all claims, Waters amended independent claims and added dependent claims, with an additional limitation. In 2012 Agilent acquired substantially all of Aurora’s assets, agreeing to be bound by the outcome of the reexamination proceedings.The Board reversed all of the rejections, listing Aurora as the third-party requester and Aurora’s counsel as counsel for the third-party requester. The Federal Circuit dismissed Agilent’s appeal; Aurora, not Agilent, is the third-party requester. Agilent lacked a cause of action to appeal. View "Agilent Techs., Inc. v. Waters Techs. Corp." on Justia Law

Arunachalam is a plaintiff in several related patent infringement actions in the U.S. District Court for the District of Delaware. Arunachalam unsuccessfully moved to disqualify the district judge on the basis of the judge’s ownership of mutual funds that have holdings in certain of the defendant corporations. Arunachalam challenged that ruling by seeking a writ of mandamus to order the judge’s disqualification. The Third Circuit concluded that it lacked jurisdiction and directed the Clerk to transfer the case to the United States Court of Appeals for the Federal Circuit. The court stated that it may issue writs of mandamus only “in aid of” its jurisdiction, and it will not possess appellate jurisdiction over the final orders in the patent infringement actions. View "In re: Dr. Lakshmi Arunachalam" on Justia Law

Expro Americas, LLC ("Expro") filed a complaint seeking, inter alia, a temporary restraining order and preliminary injunction against Eddie Walters, a former Expro employee, and H&H Welding, LLC. Expro offered "oil and gas well and pipeline services," including providing "specially designed flaring products and services to pipeline transmission companies and refineries along the Gulf Coast." Expro's six-inch, trailer-mounted flare stacks were at the heart of this dispute. Eddie Walters was an Expro employee until August 5, 2013. Thereafter, Walters was employed by Clean Combustion, a competitor of Expro's that was created in 2013 by former Expro employees. Expro filed its application for a restraining order against H&H and Walters, alleging that both defendants stole the design for its flare stack. Expro specifically alleged that "[t]he information used to design and create the trailer-mounted flaring system is a ‘trade secret' of Expro's." Furthermore, it alleged breach of contract against H&H, claiming that the terms of Expro's purchase orders with H&H contained a "Proprietary Rights" section "in which H&H ‘warrants to keep all design, information, blueprints and engineering data with respect to the Goods confidential and to not make use of but to assign to Expro each invention, improvement and discovery relating thereto (whether or not patentable) conceived or reduced to practice in the performance of the Purchase Order by any person employed by or working under the directions of the Supplier Group.'" The trial court granted the restraining order, but after conducting an evidentiary hearing, the chancellor dissolved the temporary restraining order and found no facts to justify the issuance of a preliminary injunction. The chancellor awarded the defendants attorneys' fees and expenses in excess of the $5,000 injunction bond that Expro had posted. After determining that Expro's suit against H&H was meritless, the chancellor sua sponte dismissed H&H from the suit with prejudice. Expro appealed, and the Supreme Court affirmed in part and reversed in part. The Court found that the chancellor did not err by awarding the defendants attorneys' fees and expenses, because Expro's application for a preliminary injunction was frivolous and was made in bad faith. However, the Court found the chancellor misapplied Mississippi Rules of Civil Procedure Rule 4, and therefore erred by dismissing H&H from the suit with prejudice. View "Expro Americas, LLC v. Walters" on Justia Law

Tesco sued NOV for infringement of patents that involve an apparatus and method for handling sections of pipe used for lining a well-bore. NOV filed an answer, counterclaims, a request for attorney’s fees, and motions to compel requesting information about documents to show what occurred during the six months before the on-sale bar date. Ultimately, based on non-production of an original brochure, the court sanctioned Tesco by reversing the burden of proof on validity, setting the burden at a preponderance of evidence. The jury concluded that NOV infringed the relevant claims, found certain of those claims to be not invalid, and found that the brochure was not enabling. During post-trial discovery on the brochure. NOV filed “post-trial summary judgment motions of invalidity” (35 U.S.C. 102(b) and 103) based on what it asserts was disclosed in the brochure. The court granted NOV’s motion for obviousness, relying on an obvious-to-try analysis, set a trial date for the exceptional case counterclaim, and, later, issued an order sua sponte dismissing the case with prejudice under its inherent authority, finding that certain testimony was “contrary to the representations Tesco made to the Court during trial,” stating that the attorneys’ conduct was “entirely out of character ... serious and has had significant and costly ramifications.” The parties, including the attorneys, later entered into a settlement resolving all outstanding issues, and signed releases. The attorneys contend that, despite the settlement, the harm to their reputation from the court’s opinion justified continued jurisdiction. The Federal Circuit dismissed, finding no remaining case or controversy. View "Tesco Corp. v. Nat'l Oilwell Varco, L.P." on Justia Law

Achates sued QuickOffice, Apple, and others for infringing its patents.Apple sought inter partes review. The Patent and Trademark Office found certain claims invalid, rejecting Achates’s claim that, based on a blank indemnification agreement, Apple had a relationship with QuickOffice and that such relationship caused Apple’s petitions for IPR to be time-barred under 35 U.S.C. 315(b). The Board denied Achates’s motion for discovery of evidence to prove Apple’s specific relationships with the codefendants, finding no basis to believe that even if the blank indemnification agreement had been signed, it would show QuickOffice or any other codefendants to be real parties in interest or in privity with Apple as those terms are used in section 315(b). The Federal Circuit dismissed an appeal for lack of jurisdiction, stating that the decision to institute inter partes review were final and nonappealable under 35 U.S.C. 314(d). View "Achates Reference Publ'g, Inc. v. Apple Inc." on Justia Law

The state filed a complaint, alleging that letters mailed by MPHJ to Vermont businesses informing them that they may be infringing certain patents were deceptive and violated the Vermont Consumer Protection Act, 9 V.S.A. 2451. MPHJ is a non-practicing entity incorporated in Delaware that acts through shell corporations incorporated in many states. MPHJ removed the case twice to federal court, once under the original complaint and once under an amended complaint. The district court remanded the case to state court both times. The Federal Circuit affirmed. While 28 U.S.C. 1442(a)(2), provides jurisdiction “in any civil action arising under, or in any civil action in which a party has asserted a compulsory counterclaim arising under, any Act of Congress relating to patents,” the patents at issue were transferred to MPHJ from the original patent owner; they were not directly “derived from a federal officer.” The complaint neither alleged violation of nor sought relief under the Vermont Bad Faith Assertions of Patent Infringement Act so there is no risk that the state court action can affect the validity of federal law. View "Vermont v. MPHJ Tech. Inv., LLC" on Justia Law