778 F. Supp. 2d 667
E.D. Va.2011Background
- Gore sued Medtronic for patent infringement of the '870 patent (Intraluminal Stent Graft) in the Eastern District of Virginia.
- The '870 patent owners/licensees: Gore Enterprise Holdings owns the patent; Gore & Associates licenses rights to practice in the United States.
- The August 28, 2009 Settlement and License Agreement includes a forum for patent disputes in this court and waivers of jury trial, injunctions, exemplary damages, and attorneys' fees for such disputes.
- Plaintiffs allege direct and indirect infringement by Medtronic of the '870 patent, with claims that Medtronic's Talent abdominal and thoracic stent grafts infringe.
- Defendants moved to dismiss (Nov. 19, 2010) arguing (i) improper reliance on the Agreement for jurisdiction and (ii) failure to plead under Twombly/Iqbal.
- The court denied dismissal on personal jurisdiction and direct infringement, granted leave to amend for indirect infringement, and allowed clarifications consistent with Form 18.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether forum selection clause establishes personal jurisdiction | Gore contends the clause consents to jurisdiction in ED Va. | Medtronic argues clause does not bind personal jurisdiction in this court. | Clause valid; ED Va has personal jurisdiction. |
| Whether the complaint adheres to the Form 18 pleading standard after Twombly/Iqbal | Complaint tracks Form 18 and alleges direct infringement sufficiently. | Form 18 is outdated post-Twombly/Iqbal and requires more detailed pleading. | Complaint sufficiently tracks Form 18 to survive Rule 12(b)(6). |
| Whether the complaint properly alleges direct infringement against multiple Medtronic entities | Gore asserts all three Medtronic entities directly infringe. | Should specify which entity infringes; otherwise insufficient notice. | Court construes as direct infringement by each defendant; no amendment required. |
| Whether the complaint may include indirect infringement claims or must be amended first | Were indirect infringement still alleged; no immediate amendment necessary. | Indirect infringement should be addressed separately; may defeat claims. | Plaintiffs granted leave to amend to remove indirect infringement; such issues moot upon amendment. |
| Whether the damages relief sought is barred by the Agreement | Damages sought are within what the Agreement allows to be pursued. | Agreement precludes certain enhanced damages and injunctive relief. | Damages claim not dismissed; potential limits may exist, but not ground for 12(b)(6) dismissal. |
Key Cases Cited
- Avocent Huntsville Corp. v. Aten Int'l Co., 552 F.3d 1324 (Fed. Cir. 2008) (Federal Circuit governs patent jurisdiction questions)
- Monsanto Co. v. McFarling, 302 F.3d 1291 (Fed. Cir. 2002) (forum selection clauses can confer jurisdiction when valid)
- Patent Rights Prot. Grp., LLC v. Video Gaming Techs., Inc., 603 F.3d 1364 (Fed. Cir. 2010) (applies Federal Circuit law to personal jurisdiction in patent cases)
- TruServ Corp. v. Flegles, Inc., 419 F.3d 584 (7th Cir. 2005) (forum-selection clause can confer personal jurisdiction)
- McZeal v. Sprint Nextel Corp., 501 F.3d 1354 (Fed. Cir. 2007) (Form 18 can suffice to state a direct infringement claim)
- Cal. Inst. of Computer Assisted Surgery v. Med-Surgical Servs., Inc., 2010 WL 3063132 (N.D. Cal. 2010) (notice considerations in patent actions; damages timing)
- Colida v. Nokia, Inc., 347 Fed.Appx. 568 (Fed. Cir. 2009) (design patents and Form 18 context; not binding precedent here)
- McZeal v. Sprint Nextel Corp., 501 F.3d 1354 (Fed. Cir. 2007) (Form 18 sufficiency for notice pleading)