Shire LLC v. Mickle, 7:10-cv-00434

This is a diversity action in W.D. Va. where Shire LLC sues KemPharm, Inc. and Travis Mickle for breach of employment, assignment, and settlement agreements, plus tortious interference.
Mickle answers with six counterclaims—Counterclaims I-IV seek declarations that Mickle did not breach or that agreements are unenforceable; Counterclaim V alleges breach of the settlement's non-disparagement/confidentiality provisions; Counterclaim VI asserts defamation.
Mickle previously worked for New River Pharmaceuticals (NRP); Shire acquired NRP in 2007, making Shire NRP’s successor.
Mickle signed an employment agreement prohibiting post-employment use of confidential information; he later assigned patent rights to NRP and, after founding KemPharm in 2006, assigned patent interests to KemPharm.
A settlement between Mickle and Shire/NRP included a confidentiality clause and a non-disparagement provision aimed at avoiding disparaging remarks and protecting confidential terms.
At a 2010 conference, Shire’s Michael Cola made statements implying ownership of certain IP tied to Mickle, leading to the defamation and related counterclaims.

Issue	Plaintiff's Argument	Defendant's Argument	Held
Whether Mickle's counterclaims for declaratory relief are justiciable.	Mickle seeks to clarify rights and interests; independent of merits.	Shire argues they are duplicative and unnecessary.	Declaratory claims are appropriate; useful purpose served.
Whether Cola's conference statements are actionable defamation.	Statements could be factual about IP ownership; not protected opinion.	Statements are opinion or non-actionable.	Statements plausibly factual; defamation claim survives.
Whether Shire breached the settlement's non-disparagement clause.	Cola’s remarks disparaged Mickle and harmed reputation.	Statements were not disparaging toward Mickle specifically.	Plaintiff's breach claim plausible; survives.
Whether Shire breached the settlement's confidentiality by filing under seal.	Confidentiality extended to filings; sealing requested.	No injury shown; lack of procedural justification.	Claim dismissed for lack of plausible injury and sealing basis.
Whether the court should dismiss Mickle's counterclaims under Rule 12(b)(6) for failure to state a claim.	Counterclaims present plausible relief beyond mere defense.	Mickle’s counterclaims are duplicative or improperly framed.	All counterclaims survive except the confidentiality breach claim.

Volvo Constr. Equip. N. Am., Inc. v. CLM Equip. Co., 386 F.3d 581 (4th Cir. 2004) (use of declaratory judgment warranted if controversy is real and jurisdiction exists)
Aetna Cas. & Sur. Co. v. Quarles, 92 F.2d 321 (4th Cir. 1937) (requirement to terminate uncertainty when declaratory relief will clarify rights)
Phelan v. May Dept. Stores Co., 443 Mass. 52 (Mass. 2004) (defamation threshold: whether communication is reasonably susceptible of defamatory meaning)
King v. Globe Newspaper Co., 400 Mass. 705 (Mass. 1987) (pure opinions are protected; context matters)
Howell v. Enterprise Publ'g Co., 455 Mass. 641 (Mass. 2010) (cautionary language is only one factor in treating a statement as opinion)
Consulting Eng'rs, Inc. v. Dist. of Columbia, 561 F.3d 273 (4th Cir. 2009) (choice-of-law framework; Massachusetts defamation law applied here)
Toon v. Wackenhut Corr. Corp., 250 F.3d 950 (5th Cir. 2001) (seal orders and confidentiality; injury considerations in disclosure cases)
Flotesh, Inc. v. E.I. Du Pont de Nemours & Co., 814 F.2d 775 (1st Cir. 1987) (defining whether a statement is actionable as defamation when mixed with opinion)