Merial Ltd. v. Cipla Ltd.
681 F.3d 1283
| Fed. Cir. | 2012Background
- Merial sued Cipla and Velcera in the M.D. Georgia action for patent infringement and sought a default judgment and injunction in 2008 after Cipla/Velcera did not respond.
- The 2008 default injunction barred Cipla and parties acting in concert from making, using, selling, or importing products infringing the ’940 or ’329 patents (Frontline/Frontline Plus context).
- Velcera developed PetArmor Plus with Omnipharm and QE Detal; Cipla manufactured and shipped PetArmor Plus to the U.S. via a multi-entity supply chain involving QEDetal and LoradoChem, with packaging and EPA data aligned to Frontline Plus.
- Merial later sought contempt in 2011, asserting PetArmor Plus violated the 2008 injunction by being an infringing rebranding of Protektor Plus (Cipla’s product).
- The district court held Cipla subject to Rule 4(k)(2) jurisdiction for the 2008 order, found PetArmor Plus not meaningfully different from Protektor Plus, and held Cipla and Velcera in contempt; Velcera was also held in contempt for acting in active concert with Cipla.
- This appeal presents whether Rule 4(k)(2) supported the district court’s jurisdiction, whether contempt, ongoing infringement, and extraterritorial conduct were properly established, and whether the injunction was appropriate against Velcera as a non-party.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether Rule 4(k)(2) supports Cipla’s jurisdiction in 2008 | Cipla cannot be hauled into Georgia; Illinois consent cannot cure lack of jurisdiction | Rule 4(k)(2) negation requirement was not satisfied; Illinois consent cannot override lack of forum jurisdiction | Rule 4(k)(2) supported the district court's jurisdiction and denial of vacatur |
| Whether ex post consent to Illinois defeats Rule 4(k)(2) | Ex post consent does not defeat 4(k)(2) if Illinois had no independent jurisdiction in 2007 | Consent could defeat 4(k)(2) and allow vacatur | Consent cannot simply cure lack of independent jurisdiction; district court properly denied vacatur |
| Whether PetArmor Plus is colorably different and infringes the ’329 patent | PetArmor Plus is a rebranded Protektor Plus and infringes | PetArmor Plus is not more than colorably different from Protektor Plus | PetArmor Plus infringes the ’329 patent and is not merely colorably different |
| Whether Velcera can be held in contempt as a non-party in active concert | Velcera knowingly aided and abetted infringement with Cipla | Velcera lacked independent infringement authority and should not be liable as a non-party | Velcera held in contempt for acting in active concert with Cipla |
| Whether permanent injunction was appropriate against PetArmor Plus | Injunction necessary to prevent irreparable harm and market disruption | Balance of hardships may favor Velcera; irreparable harm insufficient | Permanent injunction proper against further PetArmor Plus sales |
Key Cases Cited
- Synthes (U.S.A) v. G.M. Dos Reis Jr. Ind. Com. De Equip. Medico, 563 F.3d 1285 (Fed. Cir. 2009) (Rule 4(k)(2) jurisdiction/source)
- Touchcom, Inc. v. Bereskin & Parr, 574 F.3d 1403 (Fed. Cir. 2009) (Rule 4(k)(2) negation and forum choice)
- ISI Int’l, Inc. v. Borden Ladner Gervais LLP, 256 F.3d 548 (7th Cir. 2001) (Consent to substitute forum can defeat 4(k)(2))
- TiVo Inc. v. EchoStar Corp., 646 F.3d 869 (Fed. Cir. 2011) (TiVo standards for continuing infringement contempt)
- Additive Controls & Measurement Sys., Inc. v. Flowdata, Inc., 154 F.3d 1345 (Fed. Cir. 1998) (Active-concert liability and contempt)
- Oldfield v. Pueblo de Bahia Lora, S.A., 558 F.3d 1210 (11th Cir. 2009) (Retroactive 4(k)(2) application post-default)
- International Rectifier Corp. v. Samsung Electronics Co., 361 F.3d 1355 (Fed. Cir. 2004) (Injunction scope and extraterritoriality considerations)
- DSU Med. Corp. v. JMS Co., 471 F.3d 1293 (Fed. Cir. 2006) (Inducement and infringement scope)
- Ins. Co. of Ireland, Ltd. v. Compagnie des Bauxites de Guinee, 456 U.S. 694 (U.S. 1982) (Personal jurisdiction and waivability)