Justia Civil Procedure Opinion Summaries

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

In 2010, Keranos sued 49 parties for infringing three patents by using a specific type of flash memory technology developed by SST, called “SuperFlash,” that implements a split-gate flash memory design. Keranos, which was formed weeks earlier, obtained the rights to the asserted patents from UMC, through an “Exclusive Patent License and Royalty Agreement.” UMC continued to hold the legal title to the asserted patents, all of which expired in 2006-2008. Keranos did not join UMC as co-plaintiff. SST and certain defendants then sued Keranos, UMC, and others, seeking declaratory judgments of noninfringement and invalidity of the same patents. The cases were consolidated into two cases. Following a joint Markman hearing, the district court regrouped the defendants into two new cases: case 00017 pitting Keranos, UMC, and individuals against the manufacturers of the accused products, and case 00018, pitting Keranos against the alleged customers of the accused products who incorporated those products into larger products for sale. The Federal Circuit agreed with the district court that Keranos has standing to sue for infringement of the asserted patents, but vacated and remanded for consideration of Keranos’s motions for leave to amend infringement contentions based on the local patent rules. View "Keranos, LLC v. Silicon Storage Tech., Inc." on Justia Law

In April 2011, while its patent application was pending with the USPTO, U.S. Water Services, which “sell[s] water treatment and purification equipment, materials, and services,” especially “to ethanol process technologies,” sued its competitor, ChemTreat, for misappropriation of trade secrets. In October 2011, the USPTO issued the 244 patent covering a method to reduce the formation of insoluble scale deposits during the production of ethanol using enzyme, phytase, in its “pHytOUT® system.”Three days before U.S. Water and ChemTreat settled the misappropriation claim, ChemTreat filed counterclaims requesting declaratory judgments of noninfringement and invalidity of the 244 patent. The suit was filed before the Leahy-Smith America Invents Act, 125 Stat. 284, took effect, so the counterclaims independently did not establish appellate jurisdiction for the Federal Circuit. The district court granted ChemTreat summary judgment as to the noninfringement counterclaim and dismissed the invalidity counterclaim. The Eighth Circuit affirmed. Evaluating the “totality of [the] circumstances,” the district court did not err in finding the misappropriation action, together with U.S. Water’s statements to its customers and supplier, produced an objective, “reasonable apprehension of suit,” and did not err in concluding declaratory judgment subject matter jurisdiction existed. The decision did not constitute an advisory opinion. View "U.S. Water Servs., Inc. v. ChemTreat, Inc." on Justia Law

Attorney John Cogswell appealed the imposition of a Rule 11 sanction. Acting on behalf of Predator International, Inc., Cogswell filed a lawsuit in April 2009 against Gamo Outdoor USA, Inc. and Industrias El Gamo, S.A. (collectively, Gamo). The original complaint alleged patent infringement and other claims. When it appeared that Lee Phillips, a co-inventor of the patent at issue, was asserting that he still owned half the patent, Cogswell moved to dismiss the infringement claim, explaining that Predator would litigate ownership in state court with the expectation of reviving the patent-infringement claim once it had established its ownership. The state litigation expanded after Gamo purchased Phillips’s interest in the patent. Cogswell then moved in federal court to supplement Predator’s complaint with a challenge to Gamo’s claimed interest in the patent and moved to amend the complaint by reviving the patent-infringement claim. The district court denied the motion. Eventually the district court imposed a Rule 11 sanction on Cogswell for filing the motion to supplement and amend Predator’s complaint, justifying the sanction on grounds that he was forum shopping on the claims he wished to add, his motion came too long after he had learned of Gamo’s purchase of Phillips’s interest in the patent, and nothing had changed to justify his reinstating the patent-infringement claim. The Tenth Circuit reversed: the motion to supplement and amend was not unwarranted under existing law. View "Predator International v. Gamo Outdoor" on Justia Law

This appeal stems from a patent dispute involving Amity's patent for a device that dispenses both toothpicks and tablets and Market Quest's alleged infringement of the patent. The court concluded that this case arises under the patent laws and therefore falls within the exclusive appellate jurisdiction of the Federal Circuit. The court lacked jurisdiction to resolve the merits of the appeal, but concluded that, had this appeal been filed with the Federal Circuit at the time it was filed with this court, the Federal Circuit would have had jurisdiction. And because this appeal is neither frivolous nor is there any indication that it was filed in bad faith, the court concluded that transfer is in the interest of justice. Therefore, the court ordered the matter transferred to the Federal Circuit pursuant to 28 U.S.C. 1631. View "Amity Rubberized Pen Co. v. Market Quest Grp." on Justia Law

Versata successfully sued SAP for infringement. The Federal Circuit affirmed a damages award, but vacated an injunction, and remanded. Meanwhile, SAP petitioned the U.S. Patent and Trademark Office to institute covered business method (CBM) review --an administrative review procedure established in the Leahy-Smith America Invents Act (AIA), 125 Stat. 284 (2011), asserting that key claims were unpatentable and invalid. While the Patent Trial and Appeal Board (PTAB) was conducting CBM review, Versata sued to set aside the decision to institute review. The court held that it lacked subject matter jurisdiction: “AIA’s express language, detailed structure and scheme for administrative and judicial review, legislative purpose, and nature of administrative action evince Congress’s clear intent to preclude subject matter jurisdiction over the PTAB’s decision to institute patent reexamination.” The court state that “the decision to institute post-grant review is merely an initial step in the PTAB’s process to resolve the ultimate question of patent validity, not a final agency action. . . . Plaintiff retains an alternative adequate remedy through appeal to the Court of Appeals for the Federal Circuit.” The Federal Circuit affirmed; Versata’s attempt to obtain judicial review was addressed to the decision to institute stage, so the court was correct in barring judicial review, 35 U.S.C. 324(e). View "Versata Dev. Grp. v. Lee" on Justia Law

Celgard is a developer and manufacturer of battery membranes, used to separate chemical cell components in lithium-ion batteries, preventing contact between the positive and negative electrodes. The patents concerns a separator technology that uses a ceramic composite coating that helps prevent electrical shorting. This technology is used in rechargeable batteries in electronic vehicles and consumer electronic devices such as laptops and cellular phones. Celgard is headquartered in Charlotte, North Carolina. SKI is a manufacturer of separators for use in lithium-ion batteries. SKI mainly supplies the separators to third-party manufacturers, but also manufactures batteries that include the separators it produces. SKI’s principal place of business is in Seoul, Korea. All of SKI’s design, manufacturing, and sales operations are based in Korea. Celgard sued SKI for infringement. Celgard sought to establish the district court’s jurisdiction based on allegations that SKI purposefully directed activities at the forum state through sales and offers for sale of its accused separators to residents of North Carolina. The Federal Circuit affirmed dismissal for lack of personal jurisdiction, under either a purposeful-direction theory or a stream-of-commerce theory, noting an absence of evidence that SKI ever sold or offered for sale the accused products in North Carolina. View "Celgard, LLC v. SK Innovation Co., Ltd." on Justia Law