Justia Civil Procedure Opinion Summaries

Appellant CPC Patent Technologies PTY Ltd. (“CPC”) sought documents to use in a potential lawsuit in Germany against an affiliate of appellee Apple, Inc. CPC filed an application in federal court seeking to compel Apple to turn over these documents pursuant to 28 U.S.C. Section 1782, which allows district courts to provide discovery assistance to foreign or international tribunals. After a magistrate judge denied the petition, a district judge reviewed the magistrate judge’s decision for clear error and declined to overturn it.The Ninth Circuit vacated the district court’s order and remanded for further proceedings because the district judge should have reviewed the magistrate judge’s decision de novo.Applying 28 U.S.C. Section 636(b) and its procedural counterpart, Fed. R. Civ. Pro. 72, the court held that CPC’s Section 1782 application was a dispositive matter because the magistrate judge’s order denied the only relief sought by CPC in this federal case: court-ordered discovery. Because both parties did not consent to the magistrate judge's jurisdiction, the magistrate judge lacked jurisdiction to enter an order denying the application, and the district court should have treated the magistrate judge’s ruling at most as a non-binding recommendation subject to de novo review. The court, therefore, remanded for the district court to apply the correct standard of review and left it to the district court to determine whether the case would benefit from further analysis and review by the magistrate judge. View "CPC PATENT TECHS. PTY LTD. V. APPLE, INC." 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

Sleep Number partnered with Defendants and through their partnership, Defendants’ inventions were adapted to create SleepIQ technology. After two years as employees, Defendants informed Sleep Number that they wished to pursue their own venture. The parties entered into a consulting agreement requiring Defendants to disclose and assign to Sleep Number the rights to inventions within a defined Product Development Scope (“PDS”).Sleep Number sued Defendants., asserting ownership of the inventions claimed in certain patent applications filed by UDP with the United States Patent and Trademark Office (“USPTO”). The district court granted Sleep Number’s motion for a preliminary injunction preventing the defendants from further prosecuting or amending the patent applications.   The Eighth Circuit affirmed the district court’s grant of Plaintiff’s motion for a preliminary injunction. The court held that the district court did not err in determining that Sleep Number had a fair chance of success on the merits of its claims; nor did the court err in concluding that Sleep Number has demonstrated a threat of irreparable harm in the absence of an injunction; further the remaining factors of the balance of the harms and public interest both weighed in favor of Sleep Number. The court reasoned that the plain meaning of the language in the consulting agreements clearly and unambiguously places the inventions described in the patent applications within the PDS. Finally, absent an injunction, Sleep Number faces a threat of harm if it cannot participate in the patent-prosecution process for the patent applications. View "Sleep Number Corporation v. Steven Young" 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

Stratos filed patent infringement complaints in the Western District of Texas against Volkswagen and Hyundai, car distributors that are incorporated in New Jersey and California, respectively, and hence do not “reside” for venue purposes in the Western District, 28 U.S.C. 1400(b); The defendants moved to dismiss or transfer the cases under 28 U.S.C. 1406(a). The district court denied the motions, concluding that venue in the Western District was proper. The court cited independent car dealerships located in the Western District that sell and service cars after purchasing them from the defendants under franchise agreements that impose transfer restrictions, staffing and reporting requirements, minimum inventory levels, employee training, and equipment requirements. The district court concluded those agreements gave the defendants sufficient control over the dealerships to establish a regular and established place of business for the defendants, although Texas law prohibits auto manufacturers and distributors from directly or indirectly “operat[ing] or control[ling] a franchised dealer or dealership.” The court noted, “the only way that [Volkswagen and Hyundai] can distribute [their] vehicles to consumers in this District is through [their] authorized dealerships.” The Federal Circuit disagreed, noting disagreement on the issue among the district courts. The district court clearly abused its discretion in failing to properly apply established agency law and reaching a patently erroneous result. View "In Re: Volkswagen Group of America, 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

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

Ravgen filed suit in the federal district court in Waco, Texas, accusing Quest’s QNatal Advanced test of infringing patents relating to non-invasive tests for prenatal genetic disorders. Quest moved to transfer the case (28 U.S.C. 1404(a)), arguing that the Central District of California was a more convenient forum; its knowledgeable employees work in that district and third-party witnesses reside in the district. Although Quest maintains patient service centers across the country—including in the Western District of Texas—Quest designed, developed, and continues to perform QNatal Advanced testing only in the Central District of California. Quest argued that Ravgen, headquartered in Maryland, has no meaningful connections to the Western District of Texas. Ravgen noted that it had filed three related complaints in the Western District of Texas, alleging infringement of the same patents. After analyzing the public and private interest factors that govern transfer determinations, the district court denied Quest’s motion.The Federal Circuit directed the district court to transfer the case. When there are numerous witnesses in the transferee venue and the only other witnesses are far outside the plaintiff’s chosen forum, the witness-convenience factor favors transfer. The court erroneously discounted documents located in California that relate to the development, validation, testing, and performance of the accused product and in weighing court congestion as strongly against transfer. View "In Re Quest Diagnostics, 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